Trials@uspto.gov
`571-272-7822
` 
`
`Paper 21
`Date: July 18, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`____________
`
`IPR2022-01137
`Patent 8,581,706 B2
`____________
`
`Before JEFFREY S. SMITH, BRIAN J. McNAMARA, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`PRELIMINARY GUIDANCE
`PATENT OWNER’S MOTION TO AMEND
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`I. INTRODUCTION
`On January 4, 2023, we instituted trial as to claims 1–3, 11, 12, 16, 18, and
`
`20 of U.S. Patent No. 8,581,706 B2 (Ex. 1001, “the ’706 patent”). Paper 11 (“Inst.
`Dec.”). After institution, Patent Owner filed a contingent Motion to Amend (Paper
`16, “Motion,” “Mot.”), stating that “should the Board find that claims 11, 12, 18,
`and 20 of the ’706 Patent are unpatentable, Patent Owner requests that the Board
`grant this Motion and herewith substitute original claims 11, 12, 18, and 20 with
`corresponding proposed substitute claims 23 – 26.” Mot. 1. Petitioner filed an
`opposition on June 21, 2023 (Paper 19, “Opp.”).
`In the Motion, Patent Owner requested that we provide preliminary guidance
`concerning the Motion in accordance with the Board’s pilot program concerning
`motion to amend practice and procedures. Mot. 1; see also Notice Regarding a
`New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial
`Proceedings under the America Invents Act before the Patent Trial and Appeal
`Board, 84 Fed. Reg. 9,497 (Mar. 15, 2019) (providing a patent owner with the
`option to receive preliminary guidance from the Board on its motion to amend)
`(“Notice”). We have considered Patent Owner’s Motion and Petitioner’s
`Opposition.
`In this Preliminary Guidance, we provide information indicating our initial,
`preliminary, non-binding views on whether Patent Owner has shown a reasonable
`likelihood that it has satisfied the statutory and regulatory requirements associated
`with filing a motion to amend in an inter partes review and whether Petitioner (or
`the record) establishes a reasonable likelihood that the substitute claims are
`unpatentable. See Notice, 84 Fed. Reg. at 9,497 (“The preliminary
`guidance . . . provides preliminary, non-binding guidance from the Board to the
`parties about the [motion to amend]”); see also 35 U.S.C. § 316(d) (statutory
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`requirements for a motion to amend); 37 C.F.R. § 42.121 (regulatory requirements
`and burdens for a motion to amend); Lectrosonics, Inc. v Zaxcom, Inc., IPR2018-
`01129, Paper 15 (PTAB Feb. 25, 2019) (precedential) (providing information and
`guidance regarding motions to amend).
`For purposes of this Preliminary Guidance, we focus on the proposed
`substitute claims, and specifically on the amendments proposed in the Motion. See
`Notice, 84 Fed. Reg. at 9,497. We do not address the patentability of the
`originally challenged claims. Id. Moreover, in formulating our preliminary views
`on the Motion and Opposition, we have not considered the parties’ other
`substantive papers on the underlying merits of Petitioner’s challenges. We
`emphasize that the views expressed in this Preliminary Guidance are subject to
`change upon consideration of the complete record, including any revision to the
`Motion filed by Patent Owner.  Thus, this Preliminary Guidance is not binding on
`the Board when rendering a final written decision. See id. at 9,500.
`II. PRELIMINARY GUIDANCE
`A. Statutory and Regulatory Requirements
`For the reasons discussed below, at this stage of the proceeding, and based
`on the current record, it appears that Patent Owner has shown a reasonable
`likelihood that it has satisfied all the statutory and regulatory requirements
`associated with filing a motion to amend as to proposed substitute independent
`claims 23, 25, and 26. However, it appears Patent Owner has not shown a
`reasonable likelihood that it has satisfied all the statutory and regulatory
`requirements associated with filing a motion to amend as to proposed substitute
`dependent claim 24.
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`1. Reasonable Number of Substitute Claims
`
`Does Patent Owner propose a reasonable number of substitute claims?
`(35 U.S.C. § 316(d)(1)(B))
`Yes.
`Patent Owner proposes no more than 1 substitute claim for each of the
`challenged claims. Mot. 10–11, Claims App. A (proposing substitute
`claims 23, 24, 25, and 26 for original claims 11, 12, 18, and 20).
`Petitioner does not argue otherwise. See generally Opp.
`
`
`
`2. Respond to Ground of Unpatentability
`
`Does the Motion respond to a ground of unpatentability involved in the
`trial? (37 C.F.R. § 42.121(a)(2)(i))
`Yes.
`Patent Owner’s Motion responds to grounds of unpatentability on which
`we instituted trial: that the combination of Guthery (Ex. 1005) and
`Nozawa (Ex. 1006) would have rendered challenged claims 11 and 12
`obvious; that the combination of Guthery, Nozawa, and Smart Card
`Handbook would have rendered challenged claim 18 obvious; and that the
`combination of Guthery and RFID Handbook would have rendered
`challenged claim 20 obvious. Mot. 11–13. Upon review of Patent
`Owner’s Motion, we agree that proposed substitute claims 23, 25, and 26
`recite additional elements and combinations of elements, constituting a
`bona fide response to the instituted ground. See id.
`For example, proposed substitute independent claims 23, 25, and 26 each
`newly recite “wherein after selection of one of the plurality of
`applications, subsequent communication between the reading device and
`the selected application takes place without requiring any further steps.”
`Mot., Claims App. A 1, 2, 3.
`Proposed substitute claim 24 includes this newly recited limitation as well,
`in view of its dependency on proposed substitute independent claim 23,
`and also newly recites “wherein the communication device is set up to
`uniquely address the one or more of the least two applications with a
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`receiving device, and wherein communication between the reading device
`and the uniquely addressed application takes place subsequently without
`requiring any further steps after the communication-readiness signals are
`generated.” Id., Claims App. A 2.
`The Motion’s amendments appear to be a bona fide response to an
`instituted ground. Petitioner does not argue otherwise.
`3. Scope of Amended Claims
`
`Does the amendment seek to enlarge the scope of the claims? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No.
`As Patent Owner explains, “proposed substitute claims 23 – 26 do not
`expand the scope of original claims 11, 12, 18 and 20, respectively,”
`because they “retain essentially all limitations of their corresponding
`original claims and” “further limit original claims 11, 12, 18 and 20,
`respectively, by adding thereto the requirement that “wherein after
`selection of one of the plurality of applications, subsequent
`communication between the reading device and the selected application
`takes place without requiring any further steps.” Mot. 10; see id., App. A
`1, 2, 3. Petitioner does not argue otherwise.
`For at least these reasons, on this record, proposed substitute claims 23–26
`do not appear to enlarge the scope of the claims of the challenged patent.
`4. New Matter
`
`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No, as to Claims 23, 25, and 26.
`Yes, as to Claim 24.
`Patent Owner asserts that the amendments of proposed substitute claims
`23–26 do not seek to introduce new subject matter because they have
`support in the original disclosure of the ’706 patent.1 See, e.g., Mot. 4
`                                                            
`1 The ’706 patent issued from U.S. Patent Application No. 12/304,653 (“the ’653
`application”), whose prosecution history, including the original disclosure, has
`been reproduced in Exhibit 1002.
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`(citing Ex. 1002, 290 (Spec. ¶ 21)), 5–6 (citing Ex. 1002, 289 (Spec. ¶ 16),
`290 (Spec. ¶ 21)), 7, 9.
`Based on the current record, and for the reasons below, it appears that the
`amendments of proposed substitute independent claims 23, 25, and 26 do
`not seek to introduce new subject matter, but it appears that the
`amendments of proposed substitute dependent claim 24 do seek to
`introduce new subject matter.
`Proposed Substitute Independent Claims 23, 25, and 26
`Proposed substitute independent claims 23, 25, and 26 each recite
`“wherein after selection of one of the plurality of applications, subsequent
`communication between the reading device and the selected application
`takes place without requiring any further steps.” Mot., Claims App. A 1,
`2, 3. For support, Patent Owner cites paragraph 21 of the original
`disclosure of the ’706 patent, which states, among other things, that
`“[w]hen an application has been selected for further communication by the
`reading device, said communication takes place subsequently without
`requiring any further steps.” Mot. 4 (citing Ex. 1002, 290 (Spec. ¶ 21)).
`Petitioner argues that “[a]lthough the new claim language and the cited
`support both describe (i) an application “selection” and (ii)
`“communication” that takes place “without requiring any further steps,”
`the relationship between these requirements is fundamentally different in
`the claim.” Opp. 3. Petitioner then makes several assertions in support of
`its position:
`(1) “there is no previous recitation of a ‘selection’ in
`claim 23, even though the claim is directed to functionality
`that happens ‘after selection’” (id.);
`(2) the claim language is divorced from the
`functionality described in the Specification because “[t]he
`claim . . . offers no guidance as to when the time period of
`‘after selection’ begins” and “doesn’t tell us when the
`selection takes place or which element performs the selection
`or for what the application is being selected,” whereas “the
`cited portion of the specification describes a different time
`period related to the application selection that begins ‘when
`an application has been selected for further communication by
`the reading device’” (id. at 3–4); and
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`(3) “[t]here is no indication in the specification that the
`inventor possessed the idea that all subsequent
`communication after any selection of an application would
`take place without requiring any further steps” (id. at 4).
`We are not persuaded by Petitioner’s argument. First, although the claim
`does not expressly recite a “selection” step, it recites a function performed
`“after selection,” which implies that “selection” has occurred and is part of
`the claimed invention. In our view, this would be readily apparent to a
`person of ordinary skill in the art (“POSITA”) when reading the claim
`language in view of the Specification, which describes the “selection”
`process in greater detail, for example, in paragraph 21. See Mot., A 1; Ex.
`1002, 290 (Spec. ¶ 21). Second, contrary to Petitioner’s assertion that the
`claim language is “divorced” from the Specification, it is well-settled that
`“[c]laims are not interpreted in a vacuum, but are part of and are read in
`light of the specification.” Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810
`F.2d 1113, 1116 (Fed.Cir.1987). And, here, paragraph 21 of the
`Specification makes it clear that the time period “after selection” begins
`“[w]hen an application has been selected,” that “[t]he reading device” is
`the element that “selects an application,” and that “an application [is]
`selected for further communication by the reading device.” Ex. 1002, 290
`(Spec. ¶ 21 (emphasis added)). Third, we are not persuaded that Petitioner
`needs to show possession of “all subsequent communication after any
`selection of an application would take place without requiring any further
`steps” because that would be inconsistent with a plain reading of the claim
`language in light of the Specification. We understand that subsequent
`communication between the reading device and the selected application
`(1) takes place when the application has been selected, and (2) does not
`require any further steps between selection and the subsequent
`communication. See, e.g., Mot., App. A 1; Ex. 1002, 290 (Spec. ¶ 21). In
`other words, the Specification does not describe that “all subsequent
`communication after any selection of an application would take place
`without requiring any further steps.” So, as is the case here, “[w]here the
`specification makes clear that the invention does not include a particular
`feature, that feature is deemed to be outside the reach of the claims of the
`patent, even though the language of the claims, read without reference to
`the specification, might be considered broad enough to encompass the
`feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular
`Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see also Trustees of
`Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359,
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`1364 (Fed. Cir. 2016) (quoting Phillips v. AWH Corp., 415 F.3d 1303,
`1321 (Fed. Cir. 2005)) (“[E]ven when guidance is not provided in explicit
`definitional format, the specification may define claim terms by
`implication such that the meaning may be found in or ascertained by a
`reading of the patent documents.”).
`For similar reasons, we are not persuaded by Petitioner’s arguments that
`(1) “the new claim language untethers the ‘selection’ of the application
`from the ‘subsequent communication’—whereas in the specification they
`are inextricably linked,” and (2) “that the claim language prohibits
`communication steps that the specification explicitly describes as
`required.” Opp. 4–5. According to Petitioner, the Specification’s
`description that “[a]n application selected for further communication is
`then assigned a session number dynamically by the reading device”
`contradicts the claim language (id. at 5, citing Ex. 1002, 290 (Spec. ¶ 21)).
`But, paragraph 21 of the specification discloses that an “application
`selected for further communication by the reading device is thus then
`engaged in communication with the reading device.” Ex. 1002, 290 (Spec.
`¶ 21)). On this preliminary record, it appears that the specification
`discloses that assigning a session number, which allows “the application
`[to] be addressed uniquely during communication with the reading device”
`occurs when the “application . . . is thus then engaged in communication
`with the reading device.” Id. That is, assigning a session number appears
`to be part of the subsequent communication. Accordingly, we do not
`understand this to be a “further step[]” precluded by the claim.
`For at least these reasons, on this record, it does not appear that the
`amendments in proposed substitute independent claims 23, 25, and 26 seek
`to add new subject matter.
`Proposed Substitute Dependent Claim 24
`Proposed substitute dependent claim 24 additionally recites
`wherein the communication device is set up to
`uniquely address the one or more of the least two
`applications with a receiving device, and
`wherein communication between the reading device
`and the uniquely addressed application takes place
`subsequently without requiring any further steps after the
`communication-readiness signals are generated.
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`Mot., App. A 2. Patent Owner asserts that the original disclosure of
`the ’706 patent provides support for claim 24, including the newly
`recited limitations. Mot. 5–6 (citing, e.g., Ex. 1002, 289 (Spec.
`¶ 16), 290 (Spec. ¶ 21), 292 (Spec. ¶ 27), 295 (Spec. ¶ 35)).
`Petitioner argues that “[t]he proposed amendments to substitute
`claim 24 . . . add new matter because they require a different process
`than the process described in the specification.” Opp. 7–9.
`Petitioner contends, among other arguments, that the limitation
`“wherein communication between the reading device and the
`uniquely addressed application takes place subsequently without
`requiring any further steps after the communication-readiness
`signals are generated” adds new matter because “the specification
`requires at least two further steps—application selection and session
`number assignment—for communication after the communication
`readiness signals have been generated.” Opp. 8–9 (citing Ex. 1002,
`285 (Spec. ¶ 3); Ex. 1026 ¶¶ 16–21).
`This argument is persuasive because the Specification describes the
`application selection step as a separate step occurring after the
`communication readiness signals are generated, but before
`communication. See, e.g., Ex. 1002, 285 (Spec. ¶ 3), 295–296
`(Spec. ¶¶ 35–37, 40), 313–314 (Figs. 2–3, show application
`selection process 400 occurring after each communication readiness
`signal is generated at step 1010, 1020, and 1030). For example,
`paragraph 35 of the Specification states that “[t]he communication
`device 70 of the data carrier 100 generates for a first application 10
`a communication-readiness signal which comprises the
`identification number UID1 assigned to the application 10, 1010”
`and “is emitted by the data carrier, and the application 10 is selected
`for further communication by the reading device 20 in the course of
`the selection process 400 by means of an anti-collision method.”
`Ex. 1002, 295 (Spec. ¶ 35).
`Proposed substitute claim 23, from which proposed substitute claim
`24 depends, recites that “after selection . . . subsequent
`communication . . . takes place.” That is, the “communication”
`recited in proposed substitute claim 24 occurs after “selection” as
`required by proposed substitute claim 23. Similarly, paragraph 35
`of the specification discloses that the data carrier generates and
`emits a communication-readiness signal for an application to a
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`reading device, which then selects the application for further
`communication. Ex. 1002, 295 (Spec. ¶ 35). The specification
`discloses that the communication-readiness signals are generated
`before selection, and therefore before communication. On this
`preliminary record, Patent Owner has not shown that the
`“communication . . . takes place subsequently without requiring any
`further steps after the communication-readiness signals are
`generated” as recited in proposed substitute claim 24, because the
`step of selection takes place after generating the communication-
`readiness signals, but before communication takes place as disclosed
`in paragraph 35 of the specification.
`Accordingly, Patent Owner has not shown, nor do we find, support
`for “wherein communication between the reading device and the
`uniquely addressed application takes place subsequently without
`requiring any further steps after the communication-readiness signals
`are generated,” as recited in proposed substitute dependent claim 24.
`Due to the lack of support in the original disclosure of the ’706 patent
`for this limitation, it appears that proposed substitute dependent claim
`24 seeks to introduce new subject matter.
`We note that Patent Owner will have the opportunity to respond to
`the evidence cited in this Preliminary Guidance in a reply in support
`of its motion to amend or in a revised motion to amend.
`
`
`B. Patentability
`For the reasons discussed below, at this stage of the proceeding, and based
`on the current record,2 it appears that Petitioner (or the record) has shown a
`reasonable likelihood that proposed substitute claims 23–26 are unpatentable.
`
`
`                                                            
`2 We express no view on the patentability of original claims 1–20 in this
`Preliminary Guidance. Instead, we focus on limitations added to those claims in
`the Patent Owner’s Motion to Amend.
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`Obviousness
`
`Does the record establish a reasonable likelihood that the proposed
`substitute claims are unpatentable?
`I.
`Yes.
`Petitioner states that “substitute claims 23–26 are obvious in view of
`Guthery and Nozawa, the prior art combination presented in the petition.”
`Opp. 13 (citing Ex. 1026 ¶¶ 25–26). Petitioner explains that “[t]he
`limitations of substitute claims 23-26 that are unchanged from claims 11,
`12, 18, and 20 are rendered obvious by the same portions presented in the
`petition,” and that “Guthery and Nozawa render obvious the newly added
`limitations in substitute claims 23-26.” Id. at 13–20.
`For the reasons below, it appears that Petitioner (or the present record) has
`shown that Guthery discloses or renders obvious each of the newly recited
`limitations of proposed substitute claims 23–26.
`Proposed Substitute Independent Claims 23, 25, and 26
`Proposed substitute independent claims 23, 25, and 26 each recite
`wherein after selection of one of the plurality of
`applications, subsequent communication between the
`reading device and the selected application takes place
`without requiring any further steps.
`Mot., App. A 1–3. Petitioner contends that Guthery’s application-
`selection and communication process renders this newly recited limitation
`obvious. Opp. 14–16. Petitioner asserts that “Guthery describes an
`application selection process in which the host (reading device) sends a
`request to an application on the smart card and receives a permission-to-
`send (PTS) packet confirming its selection,” after which “(‘after selection
`of one of the plurality of applications’), the host then begins to
`communicate with the application (‘subsequent communication’).” Id. at
`14 (citing Ex.1005, 12:20–52; Ex. 1026 ¶ 27)). Petitioner presents a
`modified version of Guthery’s Figures 15B and 15C for showing the
`newly recited “wherein” element:
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`Petitioner’s modified version of Guthery’s Figures 15B and 15C depicts a
`portion of a timeline illustrating the operation of an embodiment in the
`case of simultaneous communication between a host and two applications
`on a smart card. Opp. 15 (citing Ex. 1005, Figs. 15B, 15C; Ex. 1026 ¶
`27); Ex. 1005, 5:51–54. Petitioner asserts that, “[a]s can be seen from the
`annotated figure above, after the selection process (shown in blue), there
`are no steps before subsequent communication (shown in green).” Id.
`(citing Ex.1026 ¶ 28). Petitioner therefore argues that, “because in
`Guthery’s system communication between the host and the smart card
`begins immediately after the selection process, Guthery renders obvious
`‘after selection of one of the plurality of applications, subsequent
`communication between the reading device and the selected application
`takes place without requiring any further steps [before communication
`begins].’” Id. at 15–16 (citing Ex. 1026 ¶ 29).
`We agree with Petitioner that, at this juncture, Guthery appears to teach or
`suggest the newly amended “wherein” limitation because the host sends a
`message to Application N at step 350 (“subsequent communication
`between the reading device and the selected application takes place”) right
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`after the host receives a permission-to-send message from Application N
`at step 348 (“after selection of one of the plurality of applications”),
`without any intermediate steps (“without requiring any further steps”).
`Proposed Substitute Dependent Claim 24
`Proposed substitute dependent claim 24 includes the same “wherein after
`selection” limitation discussed above because it depends from proposed
`substitute independent claim 23. Mot., App. A 2. Thus, for the same
`reasons as those discussed above, we agree with Petitioner that Guthery
`appears to disclose or suggest the newly amended “wherein after
`selection” limitation.
`Proposed substitute dependent claim 24 additionally recites
`wherein the communication device is set up to
`uniquely address the one or more of the least two
`applications with a receiving device, and
`wherein communication between the reading device
`and the uniquely addressed application takes place
`subsequently without requiring any further steps after the
`communication-readiness signals are generated.
`Mot., App. A 2. Petitioner contends that Guthery renders obvious each of
`these limitations. Opp. 16–20 (citing Ex. 1005; Ex. 1026). We have
`reviewed Petitioner’s arguments, including the cited portions of Guthery
`and the Supplemental Phinney Declaration, and they appear to support
`Petitioner’s contention that Guthery discloses or suggests these limitations.
`First, we agree with Petitioner that Guthery appears to teach or suggest
`“wherein the communication device is set up to uniquely address the one
`or more of the least two applications with a receiving device” “because
`Guthery’s host (“reading device”) uses application indices”—for example,
`in a request-to-send packet sent to a smart card—“to uniquely identify
`applications on the smart card.” Opp. 16–18 (citing Ex. 1003 ¶ 81; Ex.
`1005, Fig. 8, 8:60–64; Ex. 1026 ¶¶ 31–33). Guthery also describes that its
`host can send a request-to-send packet that is addressed to a particular
`application of the smart card for purposes of selecting that application and
`communicating with it. See, e.g., Ex. 1005, Figs. 15B (step 320, “Send
`RTS to N”), 15C; see also id., Fig. 14 (step 202), 12:23–24 (“At step 202,
`the host sends a Request-to-Send packet 70 (FIG. 8) addressed to
`Application M.”).
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`Second, we agree with Petitioner that at this juncture Guthery appears to
`teach or suggest “‘wherein communication between the reading device and
`the uniquely addressed application takes place subsequently without
`requiring any further steps after the communication-readiness signals is
`generated’” “because Guthery’s system proceeds with communication
`between the host and the smart card immediately after the permission-to-
`send packet is generated” by the application uniquely addressed by the
`host. Opp. 19–20 (citing Ex. 1026 ¶ 36; id. at 18–19 (citing Ex. 1005,
`12:20–52, Figs. 15B, 15C; Ex. 1026 ¶¶ 34–35). For example, at step 350,
`Figure 15C of Guthery shows a host sending a message addressed to
`application N of a smart card (“communication between the reading device
`and the uniquely addressed application”) right after receiving a
`permission-to-send packet (“communication-readiness signals”) output
`from Application N (steps 344, 346, 348). Ex. 1005, Fig. 15C.
`Conclusion for Obviousness
`For the reasons above, it appears that Petitioner (or the record) has shown
`that Guthery teaches or suggests each of the newly recited limitations of
`proposed substitute claims 23–26. Opp. 13–20.
`Accordingly, based on our review of Petitioner’s challenge of the claim as
`a whole, at this stage of the proceeding, and on this record, it appears
`Petitioner has shown a reasonable likelihood of succeeding on the
`following grounds of unpatentability based on obviousness:
`(1) proposed substitute claims 23 and 24 over Guthery and Nozawa;
`(2) proposed substitute claim 25 over Guthery and the Smart Card
`Handbook; and
`(3) proposed substitute claim 26 over Guthery and the RFID
`Handbook.
`See id.; Pet. 30–35, 54–63, 73–89; Inst. Dec. 16–18, 22–23, 26–30.
`II.
`Indefiniteness
`No.
`Petitioner contends that, “by reciting pure method steps not tied to specific
`structure, apparatus claims 23-26 are improper hybrid claims that are
`indefinite under § 112.” Opp. 11. Petitioner explains that “[c]laim 23 is
`directed to a ‘portable data carrier,’ and is thus an apparatus claim,” which
`“recites structural elements including ‘a communication device configured
`to… ,’ along with several ‘wherein’ clauses.” Opp. 10. Petitioner asserts,
`however, that while “[e]ach of the original ‘wherein’ clauses found in
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`claim 11 tie functional language to a specific structure—e.g., ‘wherein the
`communication device is set up to generate[’] . . . , the new limitation in
`proposed claim 23 is a pure method limitation that is not tied to any
`structure: ‘wherein after selection of one of the plurality of applications,
`subsequent communication between the reading device and the selected
`application takes place without requiring any further steps.’” Id.
`According to Petitioner, “[t]he plain language of this new limitation does
`not link any specific structural element of the claimed portable data carrier
`to either the ‘selection’ of the application or the ‘communication,” and
`“[o]n its face, this pure method step recited in the context of an apparatus
`claim is improper under IPXL and Rembrandt.” Id. at 10–11 (citing IPXL
`Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir.
`2005); Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339
`(Fed. Cir. 2011)).
`We determine that Petitioner’s arguments are not persuasive because the
`proposed substitute claims are distinguishable from the claims held
`indefinite in IPXL and Rembrandt.
`In IPXL, a single claim that “recite[d] both a system and the method for
`using that system” was held to be unclear, ambiguous, and, thus,
`indefinite. IPXL, 430 F.3d at 1384. The Court explained that “it is unclear
`whether infringement of claim 25 occurs when one creates a system that
`allows the user to change the predicted transaction information or accept
`the displayed transaction, or whether infringement occurs when the user
`actually uses the input means to change transaction information or uses the
`input means to accept a displayed transaction.” Id. In Rembrandt, a patent
`claim was held indefinite because “[t]he first four elements . . . recite[d]
`apparatus elements: buffer means, fractional encoding means, second
`buffer means, and trellis encoding means,” whereas “[t]he final element
`[was] a method: ‘transmitting the trellis encoded frames’” that appeared in
`isolation and was not specifically tied to the structure of the apparatus.
`Rembrandt, 641 F.3d at 1339.
`Here, however, the proposed substitute claims tie sufficiently the portable
`data carrier with the recited capability of that structure. The phrase
`“wherein after selection of one of the plurality of applications, subsequent
`communication between the reading device and the selected application
`takes place without requiring any further steps” establishes the
`communication functionality between the reading device and a selected
`application of the portable data carrier, which describe the underlying
`15 
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`

`

`IPR2022-01137
`Patent 8,581,706 B2
` 
`
`network environment in which the portable data carrier operates. See HTC
`Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1277 (Fed. Cir. 2012).
`Id. Although the claim language has an “unconventional format,” it still
`makes clear “that infringement occurs when one makes, uses, offers to
`sell, or sells the claimed apparatus: the [portable data carrier]—which
`must be used in a particular network environment.” Id. For similar
`reasons, in HTC, claims directed to a mobile station for use with a network
`that included steps for achieving a handover were not held to be indefinite.
`Id.
`Accordingly, Petitioner’s arguments do not persuade us that proposed
`substitute claims 23–26 are indefinite.
`III. Enablement
`No.
`Petitioner contends proposed substitute claims 23–26 lack enablement
`under 35 U.S.C. § 112, first paragraph, because “the newly added claim
`limitations require the impossible—communication without any steps:
`“wherein after selection of one of the plurality of applications, subsequent
`communication between the reading device and the selected application
`takes place without requiring any further steps.” Opp. 11–12. Petitioner
`asserts that “the newly added language requires that ‘subsequent
`communication’ must somehow take place ‘without requiring any further
`steps[,] [b]ut communication is itself—or at least involves—‘steps.’
`According to Petitioner, “the negative limitation of ‘without requiring any
`further steps’ is written so broadly that it carves out any step, whether
`performed by man or machine,” which “is impossible because
`communication cannot occur if the devices involved do not take any steps
`to perform the communication (e.g., formatting data, transmitting data).”
`Id.