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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HEALTH CARE LOGISTICS, INC.,
`Petitioner,
`
`v.
`
`KIT CHECK, INC.,
`Patent Owner.
`
`Case No. IPR2019-00394
`Patent No. 9,367,665 B2
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`IPR2019-00394
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`B.
`
`C.
`
`
`TABLE OF CONTENTS
`I.
`Introduction ......................................................................................................... 1
`Overview of the ’665 Patent ............................................................................... 4
`II.
`III. The Petition’s Proposed Claim Constructions and Level of Ordinary
`Skill in the Art are Immaterial to the Contested Issues. ..................................... 7
`IV. Argument ............................................................................................................. 8
`A.
`The Petition Fails to Demonstrate or Even Allege Why a POSA
`Would Have Combined The Asserted References. ............................... 10
`The Petition Fails to Demonstrate or Even Allege How a POSA
`Would Have Combined The Asserted References. ............................... 15
`The Petition Fails to Demonstrate Where Each Element of the
`Challenged Claims Are Allegedly Found in the Asserted
`References. .............................................................................................. 17
`The Conclusory, Unsupported Statements In The Petition And
`Dr. Zoghi’s Declaration Should Be Given No Weight. ......................... 22
`Conclusion ......................................................................................................... 24
`
`D.
`
`V.
`
`
`
`i
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`IPR2019-00394
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`
`I.
`
`INTRODUCTION
`Petitioner Health Care Logistics, Inc. (“Petitioner”) argues that it would have
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`been obvious for a person of ordinary skill in the art (“POSA”) to arrive at the
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`invention of claims 1-3, 5, 7, 8, 24-28, and 30 of U.S. Patent No. 9,367,665 (“the
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`’665 Patent”), asserting four different grounds of asserted references.1
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`The allegations in the Petition (“Pet.”), however, fail to meet the basic
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`requirements of a prima facie showing of obviousness. Petitioner has failed to show
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`a reasonable likelihood of prevailing as to any of challenged claims 1-3, 5, 7, 8, 24-
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`28, and 30, for the following reasons:
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`First, Petitioner fails to demonstrate why a POSA would have allegedly been
`
`motivated to combine any of the references in its four proposed combinations, even
`
`though the Board and the Federal Circuit have repeatedly emphasized that such a
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`demonstration is necessary for a proper obviousness combination. Indeed, the
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`Petition does not even address whether and why a POSA would have been motivated
`
`
`1 Specifically: (1) Andreasson in view of Sriharto and further in view of Tethrake; (2)
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`Andreasson in view of Sriharto, further in view of Tethrake, and further in view of
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`Lowenstein; (3) Danilewitz in view of an RFID Journal article (which the Petition
`
`refers to as “Children’s”) and further in view of Vishik; and (4) Danilewitz in view of
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`Children’s, further in view of Vishik, and further in view of Higham.
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`1
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`to make these combinations—instead, it merely provides generalized descriptions of
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`the references, Pet. at 15-18 (Ground 1), 40 (Ground 2), 41-42 (Ground 3), and 62-
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`63 (Ground 4), and claim charts purporting to map certain elements of claims 1-3,
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`5, 7, 8, 24-28, and 30 to the individual references’ disclosures (but omitting any
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`explanation of why a POSA would have combined the reference with any other
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`reference), id. at 18-39 (Ground 1), 40 (Ground 2), 42-62 (Ground 3), and 63
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`(Ground 4).
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`Second, the Petition fails to address at all (let alone demonstrate) how a POSA
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`would have allegedly combined Petitioner’s asserted references. Instead, as
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`discussed above, the Petition only contains generalized descriptions of the references
`
`in isolation and attempts to map each reference individually to the elements of claims
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`1-3, 5, 7, 8, 24-28, and 30, without addressing how a combination of the references
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`would allegedly teach or suggest each and every limitation of claims 1-3, 5, 7, 8, 24-
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`28, and 30 (or even how the references would have purportedly been combined by a
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`POSA).
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`Third, the Petition also fails to demonstrate where each element of the asserted
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`claims is allegedly found in the asserted references. As noted above, the Petition
`
`attempts to map the individual references in isolation to the claim elements, without
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`addressing which particular disclosure the Petition is relying on to allegedly teach or
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`suggest each claim element. Further, the Petition fails to provide any argument
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`2
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`regarding how certain elements of claims 1-3, 5, 7, 8, 24-28, and 30 are allegedly
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`taught or suggested by the prior art, as discussed below.
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`Finally, the Petition also contains a section entitled “VI.D. State of the Art
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`Prior to the Critical Date of the ’665 Patent,” in which the Petition argues that
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`everything “that is described and claimed in the ’665 Patent was known well prior
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`to the critical date.” Pet. at 9-11. But the broad, conclusory, and unsupported
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`statements in this section (such as the one quoted above) should be given no weight.
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`The section relies entirely on the declaration of Dr. Zoghi. Id. at 10-11 (citing Ex.
`
`1003 at ¶¶ 27, 30-45). But Dr. Zoghi’s declaration adds nothing in the way of
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`support. The cited-to portions of Dr. Zoghi’s declaration consist solely of conclusory
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`statements that Dr. Zoghi was “personally aware” of various capabilities of the prior
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`art. Ex. 1003 at ¶¶ 33-44. None of these statements are supported by or even cite to
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`underlying facts on which Dr. Zoghi’s opinion is purportedly based. “Expert
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`testimony that does not disclose the underlying facts or data on which the opinion is
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`based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Accordingly, neither
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`Zoghi’s conclusory and unsupported arguments, nor those in section VI.D. of the
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`Petition, should be given consideration.
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`For at least the reasons discussed above, Petitioner has failed to demonstrate
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`a reasonable likelihood of prevailing as to any of claims 1-3, 5, 7, 8, 24-28, and 30.
`
`3
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`II. OVERVIEW OF THE ’665 PATENT
`
`The ’665 patent relates “generally to management of pharmacy kits . . . such
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`as those commonly used in hospital environments or other medical facilities.” Ex.
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`1001 at 3:27-30. These “kits can be distinguished generally from other types of kits
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`used by hospitals, such as surgical instrumentation kits, electronic equipment kits,
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`and so on, due to the unique nature of pharmaceutical products. For example,
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`pharmaceutical products may be regulated very different from the items in surgical
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`kits due to the need to constantly monitor expiration dates, and also due to the
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`substitutability of some pharmaceutical products for others.” Id. at 3:30-37.
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`The ’665 patent notes that “[t]he automatic processing provided by RFID
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`technology and associated electronic equipment allows kit management to be
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`performed with greater efficiency and accuracy compared with conventional
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`approaches. For instance, in some embodiments, kit contents and expiration dates
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`can be validated in 15 seconds or less. Moreover, kit deficiencies can be reported to
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`a pharmacist automatically, allowing them to be addressed in an efficient manner.
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`This reporting can be accomplished, for instance, by an automatically generated
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`charge sheet showing kit contents and expirations.” Id. at 4:48-57. The ’412 patent
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`also discloses that its “kit management system . . . can provide many potential
`
`benefits compared with conventional
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`technologies. For example,
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`the kit
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`management system can provide more efficient verification and recording of kit
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`4
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`IPR2019-00394
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`contents, and more accurate monitoring of kits, items, and expiration dates. In certain
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`embodiments, the kit management system may also provide data analysis
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`capabilities for purposes such as patient billing, inventory tracking, and so on.” Id.
`
`at 5:42-50.
`
`Challenged independent claim 1 of the ’665 patent, for example, recites:
`
`1. A system, comprising:
`a pharmacy kit container that includes an enclosed
`space for receiving a pharmacy kit and at least one door,
`wherein the enclosed space is accessible through the at
`least one door, and wherein the pharmacy kit container
`provides electromagnetic shielding; and
`an information processing system communicatively
`coupled to a radio frequency identification (RFID) reader,
`the information processing system comprising computer-
`executable instructions that when executed by one or more
`processors cause the one or more processors to:
`cause an antenna coupled to the pharmacy kit
`container to emit a radio signal at least within the
`enclosed space of the pharmacy kit container when the
`at least one door is closed;
`receive tag information associated with a plurality
`of RFID tags located within the enclosed space based
`at least in part on the antenna emitting the radio signal
`at least within the enclosed space of the pharmacy kit
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`5
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`IPR2019-00394
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`container, the plurality of RFID tags being coupled to
`a plurality of pharmacy item containers,
`item
`wherein
`the plurality of pharmacy
`containers are configured to store a plurality of
`pharmacy items,
`wherein a particular RFID tag of the plurality of
`RFID tags is coupled to a particular pharmacy item
`container of the plurality of pharmacy item
`containers and
`the particular pharmacy
`item
`container is configured to store a particular
`pharmacy item of the plurality of pharmacy items,
`and
`wherein the particular RFID tag is associated
`with particular pharmacy item data comprising at
`least an identifier of the particular pharmacy item;
`verify the pharmacy kit based at least in part on the
`received tag information and a pharmacy kit template
`stored in a non-transitory computer-readable medium,
`wherein the pharmacy kit template identifies a group of
`pharmacy items that form at least a portion of the
`pharmacy kit, and wherein to verify the pharmacy kit,
`the computer-executable instructions cause the one or
`more processors to compare pharmacy item data
`associated with the tag information with the pharmacy
`kit
`template, wherein
`the pharmacy
`item data
`associated with the tag information comprises at least
`the particular pharmacy item data; and
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`6
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`cause a display to display results of the verification
`of the pharmacy kit.
`
`
`Id. at 17:38-18:18.
`
`III. THE PETITION’S PROPOSED CLAIM CONSTRUCTIONS AND
`LEVEL OF ORDINARY SKILL IN THE ART ARE IMMATERIAL
`TO THE CONTESTED ISSUES.
`The Board does not construe claim terms unnecessary for resolving the
`
`controversy. Shenzhen Liown Elecs. Co. v. Disney Enters., Inc., IPR2015-01656,
`
`Paper 7 at 10 (PTAB Feb. 8, 2016) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`Petitioner has provided the parties’ proposed claim constructions from the
`
`related district court litigation (S.D. Ohio Case No. 2:17-cv-01041). Pet. at 11-13
`
`(§ VII.) However, none of the terms identified by Petitioner requires construction in
`
`order to resolve the dispute between the parties. Instead, as discussed below in § IV
`
`of this Preliminary Response, the Board should deny institution regardless of
`
`Petitioner’s proposed constructions, because the Petition (among other deficiencies)
`
`fails to adequately show (or even to allege) why a POSA would have allegedly
`
`pursued Petitioner’s proposed combinations of reference, much less how a POSA
`
`would have done so. Accordingly, there is no need for the Board to construe any
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`claim terms at this time.
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`7
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`IPR2019-00394
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`Petitioner has also provided the parties’ proposed levels of ordinary skill from
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`the related district court litigation. Pet. at 14 (§ VIII.) However, because Petitioner
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`has failed to meet the basic requirements of a prima facie showing of obviousness
`
`as described below, the Board should deny institution regardless of the proper level
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`of skill of a POSA, and therefore there is no need for the Board to determine the
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`proper level of skill for a POSA at this time.
`
`IV. ARGUMENT
`As noted above, the Petition alleges that claims 1-3, 5, 7, 8, 24-28, and 30 of
`
`the ’665 patent are obvious over four separate combinations of references: (1)
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`Andreasson in view of Sriharto and further in view of Tethrake; (2) Andreasson in
`
`view of Sriharto, further in view of Tethrake, and further in view of Lowenstein; (3)
`
`Danilewitz in view of Children’s and further in view of Vishik; and (4) Danilewitz in
`
`view of Children’s, further in view of Vishik, and further in view of Higham.
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject matter,
`
`as a whole, would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
`
`v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved
`
`on the basis of underlying factual determinations including: (1) the scope and content
`
`of the prior art; (2) any differences between the claimed subject matter and the prior
`
`8
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`IPR2019-00394
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`art; (3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`“In an [inter partes review], the petitioner has the burden from the onset to
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`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
`
`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (quoting 35 U.S.C.
`
`§ 312(a)(3) (requiring inter partes review petitions to identify “with particularity . .
`
`. the evidence that supports the grounds for the challenge to each claim”) (internal
`
`quotations omitted)). “To satisfy its burden of proving obviousness, a petitioner
`
`cannot employ merely conclusory statements. The petitioner must instead articulate
`
`specific reasoning, based on evidence of record, to support the legal conclusion of
`
`obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380–81 (Fed. Cir.
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`2016) (citing KSR, 550 U.S. at 418). The petitioner must “articulate[] reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.” KSR,
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`550 U.S. at 418 (internal citation and quotations omitted).
`
`The “factual inquiry” into the reasons for “combin[ing] references must be
`
`thorough and searching,” and “the need for specificity pervades.” In re NuVasive,
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`Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (internal citation, bracketed alteration,
`
`and quotations omitted). And an obviousness determination cannot be reached where
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`the record lacks “explanation as to how or why the references would be combined to
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`9
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`IPR2019-00394
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`produce the claimed invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066
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`(Fed. Cir. 2016) (internal citation and quotations omitted).
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`Here, Petitioner has failed to meet its burden for at least four reasons, each of
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`which is alone sufficient to deny the Petition: (1) the Petition fails to even address
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`(much less demonstrate) why a POSA would have allegedly combined Petitioner’s
`
`proposed combinations of references; (2) the Petition also fails to address or
`
`demonstrate how a POSA would have allegedly combined Petitioner’s proposed
`
`combinations of references; (3) the Petition fails to demonstrate where each element
`
`of the challenged claims is allegedly found in those asserted references; and (4) the
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`testimony of Petitioner’s declarant, Dr. Zoghi (and the Petitioner’s arguments based
`
`on his testimony), consists solely of unsupported, conclusory statements that should
`
`be given little to no weight. Accordingly, the Petition should be denied.
`
`A. The Petition Fails to Demonstrate or Even Allege Why a POSA
`Would Have Combined The Asserted References.
`A Petition Must Articulate a Specific Reason Why a POSA
`1.
`Would have Combined the Asserted Prior Art.
`An allegation of obviousness based on a prior art combination cannot be
`
`sustained where the petition fails to demonstrate why a POSA would combine the
`
`art in the specific manner necessary to arrive at the limitations of the challenged
`
`claims. In re NuVasive, 842 F.3d at 1384 (where a petition merely states that a POSA
`
`would have been motivated to combine the prior art references but fails to articulate
`
`10
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`IPR2019-00394
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`a “reason why,” the petition’s “arguments amount to nothing more than conclusory
`
`statements” that cannot support a finding of obviousness) (emphasis original);
`
`Commvault Sys., Inc. v. Realtime Data LLC, IPR2017-02007, Paper 11 at 16 (PTAB
`
`March 15, 2018) (“The failure of Petitioner to address, let alone argue, why a person
`
`of ordinary skill would combine [the references] is enough to deny the Petition.”).
`
`The articulated reason to combine must be in reference to the specific
`
`combination of prior art elements the POSA would allegedly bring together, and the
`
`manner in which he or she would do so. See KSR, 550 U.S. at 418-19 (“[I]t can be
`
`important to identify a reason that would have prompted a person of ordinary skill
`
`in the relevant field to combine the elements in the way the claimed new invention
`
`does.”). Stated otherwise, a generic motivation to combine two or more references
`
`is inadequate; rather, the alleged motivation must demonstrate why a person of
`
`ordinary skill would have combined specific elements from the prior art in the
`
`specific manner the petition has proposed. ActiveVideo Networks, Inc. v. Verizon
`
`Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (holding that motivation to
`
`combine cannot be found based on “generic” evidence of a motivation to combine
`
`that “bears no relation to any specific combination of prior art elements.”) (emphasis
`
`added).
`
`Nor is it sufficient to allege that the prior art could be combined; rather, the
`
`petition must show why specific prior art elements would have been combined. See
`
`11
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`IPR2019-00394
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`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir. 2017)
`
`(“Obviousness concerns whether a skilled artisan not only could have made but
`
`would have been motivated to make the combinations or modifications of prior art
`
`to arrive at the claimed invention.”) (emphasis original; internal citations and
`
`quotations omitted); Apple, Inc. v. Realtime Data LLC, IPR2016-01737, Paper 57 at
`
`58 (PTAB March 13, 2018) (granting motion to amend in part because petitioner did
`
`not adequately “articulate a reason why a person of ordinary skill in the art would
`
`combine the prior art references”) (citing and quoting Belden Inc. v. Berk-Tek LLC,
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`805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled
`
`artisan not only could have made but would have been motivated to make the
`
`combinations or modifications of prior art to arrive at the claimed invention”)
`
`(internal emphasis omitted)).
`
`Moreover, “[r]ejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements.” KSR, 550 U.S. at 418 (internal citation omitted); Magnum
`
`Oil Tools, 829 F.3d at 1380-81 (“To satisfy its burden of proving obviousness, a
`
`petitioner cannot employ mere conclusory statements. The petitioner must instead
`
`articulate specific reasoning, based on evidence of record, to support the legal
`
`conclusion of obviousness.”). Rather, “the factual inquiry whether to combine
`
`references must be thorough and searching, and the need for specificity pervades
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`12
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`IPR2019-00394
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`[the Federal Circuit’s] authority on the PTAB’s findings on motivation to combine.”
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`In re NuVasive, 842 F.3d at 1381 (internal citations and quotations omitted).
`
`2.
`
`The Petition Fails To Even Allege That a POSA Would Have
`Combined The Asserted References, Let Alone Articulate a
`Reason Why.
`Here, the Petition fails to even allege that a POSA would have had a
`
`motivation for combining any of the references that make up its four grounds—never
`
`mind articulate any such supposed motivation that a POSA would have had for
`
`combining the references. Instead, the Petition merely provides (at most): (a)
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`generalized descriptions of the references, Pet. at 15-18 (Ground 1), 40 (Ground 2),
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`41-42 (Ground 3), and 62-63 (Ground 4); and then (b) claim charts purporting to
`
`map certain elements of claims 1-3, 5, 7, 8, 24-28, and 30 to the individual
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`references’ disclosures, id. at 18-39 (Ground 1), 40 (Ground 2), 42-62 (Ground 3),
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`and 63 (Ground 4). The Petition should be denied for this reason alone. Commvault
`
`Sys., IPR2017-02007, Paper 11 at 16 (“The failure of Petitioner to address, let alone
`
`argue, why a person of ordinary skill would combine [the references] is enough to
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`deny the Petition.”).
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`Indeed, the closest the Petition comes to attempting to provide or articulate
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`such a motivation to combine is its statement that the Sriharto and Andreasson
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`references allegedly disclose certain elements of the challenged claims “in a similar
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`13
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`IPR2019-00394
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`manner.”2 Pet. at 16. But even when this generic statement is viewed in the light
`
`most favorable to Petitioner, it cannot by itself serve as a motivation to combine the
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`Sriharto and Andreasson references—the Petition never explains which of the
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`elements of the challenged claims are missing from Andreasson, much less why a
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`POSA would have been motivated to combine Sriharto with Andreasson to result in
`
`a combination that addresses those deficiencies (or then to further combine these
`
`references with Tethrake). Indeed, the Petition fails to even cite to Graham v. John
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`Deere at all, much less analyze any of the Graham factors. 383 U.S. at 17-18.
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`The Petition similarly fails to explain which of the elements of the challenged
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`claims are missing from the primary references applied in each of the Petition’s other
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`three proposed grounds or why a POSA would have been motivated to make those
`
`proposed combinations of references. Indeed, some of the those proposed
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`combinations appear to have been guided solely by hindsight reasoning: the Petition
`
`expressly states that “the addition of the following disclosure of Lowenstein” in
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`proposed ground 2 was prompted only because “Petitioner acknowledges that the
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`recall limitation of independent Claim 24 could potentially be perceived as missing
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`from GROUND 1.” Pet. at 40. Similarly, the Petition states that “the addition of the
`
`
`2 Petitioner provides no such statements regarding the other proposed combinations
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`of references in its four grounds.
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`14
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`IPR2019-00394
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`disclosure of Higham” in proposed ground 4 was prompted only because “Petitioner
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`acknowledges that the ‘electromagnetic shielding’ limitation of independent Claims
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`1 and 24 could potentially be perceived as missing from GROUND 3.” Pet. at 62-
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`63.
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`Because the Petition fails to allege or articulate a specific motivation to
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`combine any of the asserted references in its four grounds, the Petition should be
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`denied.
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`B.
`
`The Petition Fails to Demonstrate or Even Allege How a POSA
`Would Have Combined The Asserted References.
`A Petition Must Contain A Specific Explanation of How The
`1.
`Asserted Prior Art Would Have Been Combined.
`To support an allegation of obviousness, it is not sufficient for a petition to
`
`merely show that all of the elements of the claims at issue are found in separate prior
`
`art references. Personal Web Techs., 848 F.3d at 991 (holding that such evidence
`
`“would not be enough”). After all, “[i]nventions in most, if not all, instances rely
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`upon building blocks long since uncovered, and claimed discoveries almost of
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`necessity will be combinations of what, in some sense, is already known . . . .” KSR,
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`550 U.S. at 418-19.
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`The Petition must thus go further, (1) “to explain how specific references
`
`could be combined,” (2) “which combination(s) of elements in specific references
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`would yield a predictable result,” and (3) “how any specific combination would
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`15
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`IPR2019-00394
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`operate or read on” the claims. ActiveVideo Networks, 694 F.3d at 1327-28; Dell
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`Inc. v. Realtime Data, LLC, IPR2016-01002, Paper 71 at 15 (PTAB October 31,
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`2017) (upholding validity of all claims because petitioner’s combination theory
`
`failed to articulate “how specific references could be combined, which
`
`combination(s) of elements in specific references would yield a predictable result,
`
`or how any specific combination would operate or read on the asserted claims,”
`
`citing ActiveVideo); Dell Inc. v. Realtime Data, LLC, IPR2016-00972, Paper 71 at
`
`10-11, 15-16 (PTAB May 15, 2018) (finding that petitioners’ allegations were
`
`“insufficient under the aforementioned requirements under ActiveVideo” and
`
`upholding patentability of all challenged claims partly on that basis); Commvault
`
`Sys., IPR2017-02007, Paper 11 at 13 (declining to institute a trial where the petition
`
`“fails to demonstrate how a person of ordinary skill in the art could combine the
`
`prior art”).
`
`2.
`
`The Petition Provides No Explanation for How a POSA
`Would Have Combined the Asserted References.
`The Petition fails to explain how the references would purportedly be
`
`combined and how that combination would allegedly read on the challenged claims.
`
`In fact, the Petition fails to even allege that a POSA could have combined any of the
`
`asserted prior art references. For example, the Petition provides no explanation of
`
`how Andreasson would purportedly be combined with Sriharto to meet the claimed
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`“pharmacy kit container [that] provides electromagnetic shielding” element of claim
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`16
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`1. Instead, as discussed supra in § IV.A.2., the Petition discusses the references
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`entirely in isolation: providing brief descriptions of each, Pet. at 15-18 (Ground 1),
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`40 (Ground 2), 41-42 (Ground 3), and 62-63 (Ground 4), and then mapping in claim
`
`charts how each reference alone allegedly teaches certain elements of the challenged
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`claims, id. at 18-39 (Ground 1), 40 (Ground 2), 42-62 (Ground 3), and 63 (Ground
`
`4).
`
`The Petition can and should be denied for this reason alone. Dell, IPR2016-
`
`01002, Paper 71 at 15 (citing ActiveVideo, 694 F.3d at 1327-28).
`
`C. The Petition Fails to Demonstrate Where Each Element of the
`Challenged Claims Are Allegedly Found in the Asserted
`References.
`It is Petitioner’s burden to identify, “in writing and with particularity, each
`
`claim challenged, the grounds on which the challenge to each claim is based, and the
`
`evidence that supports the grounds for the challenge to each claim.” 35 U.S.C.
`
`§ 312(a)(3); 37 C.F.R. § 42.104(b)(4)–(5); see also Intelligent Bio-Sys., Inc. v.
`
`Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost
`
`importance that petitioners in the IPR proceedings adhere to the requirement that the
`
`initial petition identify ‘with particularity’ the ‘evidence that supports the grounds
`
`for the challenge to each claim.’ 35 U.S.C. § 312(a)(3).”). Petitioner has not met that
`
`burden here.
`
`17
`
`
`
`IPR2019-00394
`
`1.
`
`The Petition Does Not Clearly Identify the Specific Reference
`That Allegedly Teaches Each Claim Element In Its Proposed
`Combinations.
`Indeed, it is difficult (if not impossible) to identify the specific reference out
`
`of the multiple references cited by Petitioner (and the specific portion of that
`
`reference) that Petitioner relies on to allegedly meet each of the elements of claims
`
`1-3, 5, 7, 8, 24-28, and 30. As discussed above, the Petition provides no explanation
`
`as to why or how each of the different references asserted in its four grounds would
`
`have allegedly been combined with each other. And the Petition further confuses the
`
`analysis by repeatedly mapping multiple portions of different references to the same
`
`claim element in its claim charts, making it virtually impossible to determine which
`
`reference (and which portion of that reference) is being relied on to meet that claim
`
`element in Petitioner’s purported combinations of references. Pet. at 18-39 (Ground
`
`1), 40 (Ground 2), 42-62 (Ground 3), and 63 (Ground 4).
`
`“It is incumbent upon Petitioner to ‘specify where each element of the claim
`
`is found in the prior art patents or printed publications relied upon.’” Securus Techs.,
`
`Inc. v. Global Tel*Link Corp., IPR2015-00153, Paper No. 12 at 8 (PTAB May 1,
`
`2015) (citing 37 C.F.R. 42.104(b)(4)). “‘A brief must make all arguments accessible
`
`to the judges, rather than ask them to play archaeologist with the record.’” Id.
`
`(quoting DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999)). The Petition
`
`fails to meet this standard.
`
`18
`
`
`
`IPR2019-00394
`
`For example, in the Petition’s claim charts that allegedly support the proposed
`
`combination of Andreasson in view of Sriharto, the Petition (without further
`
`explanation) repeatedly cites both Andreasson and Sriharto as allegedly disclosing a
`
`particular element of the challenged claims. Accordingly, it is virtually impossible
`
`to tell what portion of which reference Petitioner is relying to disclose that claim
`
`element—for example, is the Petition relying on Andreasson’s “dispensing unit
`
`having a casing” or the “enclosed intelligent medical material cart having a plurality
`
`of receptacles” of Sriharto to allegedly teach the claimed “pharmacy kit container”
`
`of claim 1? Pet. at 18-19.
`
`And the Petition’s three other grounds suffer from similar deficiencies. See
`
`Pet. at 15-39 (Ground 1), 40 (Ground 2), 41-62 (Ground 3), and 62-63 (Ground 4).
`
`For example, Ground 2 purports to include the “addition of the [] disclosure of
`
`Lowenstein,” Pet. at 40, yet this ground provides no explanation of this “addition”
`
`or how it would purportedly be accomplished other than a claim chart that allegedly
`
`maps Lowenstein to a single phrase from claim 24 pulled out of context (“determine
`
`that a second pharmacy item associated with a second RFID tag of the plurality of
`
`RFID tags is subject to a recall”). Is Lowenstein meant to replace the previously
`
`cited disclosures of other asserted references in Ground 1 that were allegedly
`
`mapped to that phrase (id. at 34)? Or to modify those disclosures of the other
`
`references (Andreasson and Sriharto)? The Petition never attempts to explain.
`
`19
`
`
`
`IPR2019-00394
`
`Similarly, Ground 4 purports to include the “addition of the disclosure of
`
`Higham,” Pet. at 62-63, yet this ground provides no explanation of this “addition”
`
`or how it would purportedly be accomplished other than a claim chart that allegedly
`
`maps Higham to a single phrase from claims 1 and 24 (respectively) pulled out of
`
`context (“the pharmacy kit container provides electromagnetic shielding” / “the
`
`pharmacy kit container providing electromagnetic shielding”), id. at 63.
`
`As with the Petition’s failures to allege or demonstrate how or why a POSA
`
`would have combined the asserted references, the Petition should also be denied for
`
`this reason alone.
`
`2.
`
`The Petition Fails To Establish That Each Claim Element Is
`Taught Or Suggested By The Asserted References (Either
`Alone Or In Combination).
`Further, in addition to failing to identify with particularity where the elements
`
`of claims 1-3, 5, 7, 8, 24-28, and 30 are allegedly found in the asserted combinations
`
`(as discussed above), the Petition provides no evidence at all for some of the
`
`elements of claims 1-3, 5, 7, 8, 24-28, and 30, and should also be rejected on this
`
`basis.
`
`For example, independent claim 24 recites that its “one or more processors . . .
`
`determine that a second pharmacy item associated with a second RFID tag of the
`
`plurality of RFID tags is subject to a recall”—yet the Petition fails to establish that
`
`this element of claim 24 is disclosed by any reference in its proposed Ground 1.
`
`20
`
`
`
`IPR2019-00394
`
`Instead, the Petition merely contains attorney argument that “[t]his is inherently
`
`disclosed in Andreasson and Sriharto because both systems allow for the searching
`
`of certain drugs, which could be performed for a pharmacy item that is subject to a
`
`recall.” Pet. at 34 (emphasis added). However, as this is merely a conclusory
`
`statement unsupported by any evidence, it should be given no weight,
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