Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: May 3, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GARMIN INTERNATIONAL, INC., GARMIN USA, INC., AND
`GARMIN LTD.,
`Petitioners,
`v.
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`
`IPR2023-00188
`Patent 8,581,706 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, BRIAN J. MCNAMARA, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`SMITH, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Granting Motion for Joinder
`35 U.S.C. § 315(c), 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Date: May 3, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GARMIN INTERNATIONAL, INC., GARMIN USA, INC., AND
`GARMIN LTD.,
`Petitioners,
`v.
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`
`IPR2023-00188
`Patent 8,581,706 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, BRIAN J. MCNAMARA, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`SMITH, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Granting Motion for Joinder
`35 U.S.C. § 315(c), 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd.
`(collectively “Petitioner”), filed a Petition (Paper 2, “Pet.”) requesting inter
`partes review of claims 1–3, 11, 12, 16, 18, and 20 of U.S. Patent
`No. 8,581,706 B2 (Ex. 1001, “the ’706 patent”) pursuant to 35 U.S.C.
`§ 311(a). Petitioner also filed a Motion for Joinder seeking to be joined as a
`party to Apple Inc. v. Aire Technology Limited, IPR2022-01137 (“the Apple
`IPR”), which involves the same claims of the ’706 patent. Paper 3
`(“Motion” or “Mot.”).
`Aire Technology Ltd. (“Patent Owner”), did not oppose Petitioner’s
`Motion. Patent Owner also did not file a Preliminary Response to the
`Petition.
`For the reasons explained below, we determine that institution of inter
`partes review is warranted on the same grounds instituted in the Apple IPR,
`and we grant Petitioner’s Motion for Joinder.
`II. REAL PARTIES IN INTEREST
`Petitioner identifies Garmin International, Inc., Garmin USA, Inc.,
`and Garmin Ltd. as the real parties-in-interest. Pet. 88. Patent Owner
`identifies itself (Aire Technology Ltd.) as its sole real party-in-interest.
`Paper 5, 2.
`
`III. RELATED MATTERS
`The Petition states that the ’706 patent is the subject of the following
`proceedings:
`Aire Technology Ltd. v. Google LLC, No. 6-21-01104, W.D. Tex.,
`filed Oct. 25, 2021;
`
`
`2
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`Aire Technology Ltd. v. Apple, Inc., No. 6-21-01101, W.D. Tex., filed
`Oct. 22, 2021;
`
`Aire Technology Ltd. v. Samsung Electronics co, Ltd. et al., No.
`6-21-00955 W. D. Tex., filed Sep. 15, 2021;
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00876 (PTAB, May 2, 2022)
`
`Aire Technology Ltd. v. Garmin International, Inc., No. 8-22-01027,
`C.D. Ca., filed May 20, 2022.
`
`Apple Inc. v. Aire Technology Ltd., IPR2022-01137 (PTAB, June 15,
`2022).
`
`
`Pet. 88.
`
`IV. THE ’706 PATENT
`The ’706 patent relates to “a method for contactless communication of
`at least two applications stored on a common portable data carrier.”
`Ex. 1001, 1:8–11. The background of the ’706 patent explains “that a
`plurality of applications can be located on a portable data carrier at the same
`time.” Id. at 2:5–9. The ’706 patent describes that the portable data carrier
`transmits communication-readiness signals for each of its applications to the
`reading device. Id. at 3:5–20. For example, “a first communication-
`readiness signal to the reading device is generated for a first of the at least
`two applications . . . indicating to the reading device the communication
`readiness of said first application.” Id. at 3:8–13. Additionally, “a second
`communication-readiness signal to the reading device is generated for a
`second of the at least two applications . . . and indicates to the reading device
`the communication readiness of said second application.” Id. at 3:13–20.
`The communication-readiness signals include an application identification
`
`3
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`number assigned to the corresponding application. Id. at 3:5–20. Figure 1
`of the ’706 patent is reproduced below.
`
`
`Figure 1 above illustrates data carrier 100 and reading device 200. Ex. 1001,
`7:8–10. Applications 10, 20, 30 are located on the data carrier. Id. at 7:10–
`11. Toggling device 50 is set up to toggle between the different
`applications. Id. at 7:12–13. Each of the applications is assigned an
`identification number UID1, UID2, UIDn, which are managed by
`communication device 70. Id. at 7:14–17. When the reading device enters
`into communication with one or more applications, the reading device can
`select them for further communication via the identification numbers and
`
`4
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`address them by means of session numbers CID1, CID2, CIDn. Id. at 7:17–
`21.
`
`V. ILLUSTRATIVE CLAIM
`Challenged claim 1 of the ’706 patent recites:
`1. A method for contactless communication of a reading
`device with
`at
`least
`two
`communication-ready
`applications located on a portable data carrier, comprising the
`steps:
`
`generating a first communication-readiness signal to the
`reading device for a first of the at least two applications, the
`communication-readiness signal comprising a first identification
`number which is assigned to the first of the at least two
`applications and
`indicates
`to
`the
`reading device
`the
`communication readiness of said first application, and
`generating a second communication-readiness signal to
`the reading device for a second of the at least two applications,
`the second communication-readiness signal comprising a second
`identification number different from the first identification
`number, which is assigned to said second application and
`indicates to the reading device the communication readiness of
`said second application, and
`storing information in a nonvolatile memory of the data
`carrier about which of the at least two applications was last
`selected for further communication by the reading device,
`wherein
`the
`reading device
`selects
`for
`further
`communication one or more of the at least two applications via
`the identification numbers assigned to the applications.
`Ex. 1001, 11:34–59.
`
`VI. ASSERTED GROUNDS
`Petitioner asserts that claims 1–3, 11, 12, 16, 18, and 20 of the ’706
`patent are unpatentable on the following grounds.
`
`5
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`Claim(s) Challenged 35 U.S.C. §1
`1–3, 11, 12
`103(a)
`
`16
`
`18
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Guthery2, Nozawa3
`Guthery, Nozawa, RFID
`Handbook4
`Guthery, Nozawa, Smart
`Card Handbook5
`Guthery, RFID Handbook
`
`103(a)
`
`20
`
`As further support, Petitioner offers the Declaration of Joshua Pinney,
`Ph.D. (Ex. 1003).
`
`VII. ANALYSIS
`A. Legal Standards
`Joinder for purposes of an inter partes review is governed by
`35 U.S.C. § 315(c), which states:
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`“To join a party to an instituted [inter partes review (IPR)], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’706 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of § 103.
`2 U.S. Patent No. 6,824,064 B2 (Ex. 1005).
`3 Japanese Patent Application No. 2000-163539A (Ex. 1006).
`4 RFID Handbook: Radio-Frequency Identification Fundamentals and
`Applications, Klause Finkenzeller, 1999 (Ex. 1007).
`5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008).
`
`6
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`the statute requires that the Director (or the Board acting through a
`delegation of authority . . . ) determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`joinder, § 315(c) requires the Director to exercise [her] discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id.
`B. Whether the Petition Warrants Institution
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition and the
`Preliminary Response shows “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`The patentability challenges in the Apple IPR met the “reasonable
`likelihood” standard of § 314(a). IPR2022-01137, Paper 11, 2, 30. There is
`no dispute that the Petition presents the same patentability challenges as
`those for which a trial was instituted in the Apple IPR. See Mot. 5 (asserting
`that the Petition “is substantively identical to the petition in the Apple IPR”);
`see Pet. 21–87. Specifically, the Petition “challeng[es] the same claims of
`the same patent, relying on the same expert declaration, and on the same
`grounds and combinations of prior art submitted in the Apple petition.” Id.
`In the present proceeding, Patent Owner does not dispute the patentability
`merits of Petitioner’s challenges.
`We conclude that Petitioner has demonstrated a reasonable likelihood
`of prevailing with respect to the challenged claims of the ’706 patent for the
`reasons set forth in the Apple IPR. See IPR2022-01137, Paper 11, 14–30.
`Patent Owner makes no argument for discretionary denial of the Petition.
`
`7
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`We accordingly determine that the Petition warrants institution under § 314,
`and turn to Petitioner’s request for joinder.
`C. Whether the Motion Should Be Granted
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`Petitioner filed the Motion on November 10, 2002, before institution of the
`Apple IPR. See 37 C.F.R. § 42.122(b). Petitioner asserts that the Motion
`should be granted because the Apple IPR will not be impacted if Petitioner
`were to join that proceeding. Mot. 1, 5–6. Petitioner also agrees to take an
`“understudy” role in the Apple IPR. Id. at 6–8. Specifically, Petitioner
`agrees that, as long as Apple remains an active party, (1) Petitioner’s filings
`“will be consolidated with the filings of the current petitioner”; (2) Petitioner
`“shall not be permitted to raise any new grounds . . . or introduce any
`argument or discovery not already introduced”; (3) Petitioner “shall be
`bound by any agreement between Patent Owner and the current petitioner
`concerning discovery and/or depositions”; and (4) Petitioner “shall not
`receive any direct, cross examination, or redirect time” at deposition beyond
`that permitted by rule or agreement. Id.
`Patent Owner does not oppose the Motion.
`Because Petitioner will take an understudy role that will not impact
`the Apple IPR previously instituted on substantially identical grounds—and
`in the absence of opposition by Patent Owner—we determine that it is
`appropriate under these circumstances to join Petitioner as a party to the
`Apple IPR.
`
`
`
`
`
`
`8
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`
`VIII. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`an inter partes review is hereby instituted on the challenges raised in the
`Petition; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2022-01137 is granted, and Petitioner is hereby joined as a petitioner in
`IPR2022-01137;
`FURTHER ORDERED that the grounds on which trial in IPR2022-
`01137 were instituted are unchanged, and no other grounds are added in
`IPR2022-01137;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2022-01137 (Paper 12) and schedule changes agreed to by the parties in
`IPR2022-01137 (Paper 15) shall govern the trial schedule in IPR2022-
`01137;
`FURTHER ORDERED that Petitioner’s role in IPR2022-01137 shall
`be limited as stated by Petitioner in the Motion for Joinder (Paper 3, 6–8)
`unless and until Apple is terminated from that proceeding;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2022-01137; and
`FURTHER ORDERED that all further filings shall be made in Case
`IPR2022-01137.
`
`9
`
`
`
`IPR2023-00188
`Patent 8,581,706 B2
`FOR PETITIONER:
`
`Ryan J. Schletzbaum
`Jason R. Mudd
`Shook, Hardy & Bacon, LLP
`rschletzbaum@shb.com
`jmudd@shb.com
`
`
`FOR PATENT OWNER:
`
`Brett Cooper
`BC Law Group, P.C.
`bcooper@bc-lawgroup.com
`
`Robert A. Auchter
`Auchter PLLC
`robert@auchterlaw.com
`
`10
`
`
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