UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GARMIN INTERNATIONAL, INC., GARMIN USA, INC.,
`AND GARMIN LTD.,
`Petitioner,
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`v.
`
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2023-00188
`U.S. Patent No. 8,581,706
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`TABLE OF CONTENTS
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`PETITIONER’S EXHIBIT LIST ................................................................................................... 5
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................................. 7
`
`GROUNDS FOR STANDING ............................................................................... 8
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`III.
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`NOTE ...................................................................................................................... 8
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`IV.
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`SUMMARY OF THE ‘706 PATENT .................................................................... 8
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`V.
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`PROSECUTION HISTORY ................................................................................. 11
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`VI.
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`LEVEL OF ORDINARY SKILL IN THE ART .................................................. 12
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`VII. CLAIM CONSTRUCTION .................................................................................. 13
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`VIII. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF ................................................................................................................. 14
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`IX.
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`DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE ........................ 14
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`A.
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`Discretionary denial under the Fintiv factors is not appropriate............... 14
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`The district court case is stayed .................................................... 14
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`Parallel proceeding trial date ........................................................ 15
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`Investment in the parallel proceeding ........................................... 15
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`Overlapping issues with the parallel proceeding .......................... 15
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`Petitioner is a defendant ................................................................ 15
`
`Other circumstances ...................................................................... 16
`
`The FintivFramework Should Be Overturned .......................................... 16
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`Discretionary denial under General Plastic is not appropriate ................. 16
`
`1.
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`2.
`
`3.
`
`4.
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`Garmin is a different, unrelated petitioner. ................................... 18
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`Factor 2 is of little probative value. .............................................. 19
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`Patent owner preliminary responses. ............................................ 19
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`Fourth and fifth factors are inapplicable. ...................................... 20
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`B.
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`C.
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`2
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`5.
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`The resources of the Board and the requirement under 35 U.S.C.
`§ 316(a)(11). ................................................................................. 20
`
`D.
`
`Discretionary denial under 35 U.S.C. § 325(d) is not appropriate ........... 20
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ........... 21
`
`A.
`
`B.
`
`C.
`
`Challenged Claims .................................................................................... 21
`
`Statutory Grounds for Challenges ............................................................. 21
`
`Ground 1: Claims 1-3 and 11-12 are obvious under 35 U.S.C. § 103
`over Guthery and Nozawa. ....................................................................... 23
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`1.
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`2.
`
`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`Summary of Guthery..................................................................... 23
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`Summary of Nozawa..................................................................... 28
`
`Reasons to Combine Guthery and Nozawa .................................. 29
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`Claim 1 .......................................................................................... 34
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`Claim 2 .......................................................................................... 49
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`Claim 3 .......................................................................................... 51
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`Claim 11 ........................................................................................ 53
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`Claim 12 ........................................................................................ 62
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`D.
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`Ground 2: Claim 16 is obvious over Guthery, Nozawa, and the RFID
`Handbook. ................................................................................................. 63
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`1.
`
`2.
`
`Summary of the RFID Handbook ................................................. 63
`
`Reasons to Combine the RFID Handbook with Guthery and
`Nozawa ......................................................................................... 65
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`3.
`
`Claim 16 ........................................................................................ 68
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`E.
`
`Ground 3: Claim 18 is obvious over Guthery and the Smart Card
`Handbook. ................................................................................................. 71
`
`1.
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`2.
`
`3.
`
`Summary of the Smart Card Handbook ........................................ 71
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`Reasons to Combine the Smart Card Handbook with Guthery .... 73
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`Claim 18 ........................................................................................ 76
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`3
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`F.
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`Ground 4: Claim 20 is obvious over Guthery and the RFID Handbook.
`................................................................................................................... 82
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`4.
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`Claim 20 ........................................................................................ 82
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`XI.
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`CONCLUSION ..................................................................................................... 87
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`XII. MANDATORY NOTICES ................................................................................... 88
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`A.
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`B.
`
`C.
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`Real Party-in-Interest ................................................................................ 88
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`Related Matters ......................................................................................... 88
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`Lead and Back-up Counsel and Service Information ............................... 88
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`CERTIFICATE OF WORD COUNT ........................................................................................... 90
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`CERTIFICATE OF SERVICE ..................................................................................................... 91
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`PETITIONER’S EXHIBIT LIST
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`Ex.1001
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`U.S. Patent No. 8,581,706
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`Ex.1002
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`Prosecution History of U.S. Patent No. 8,581,706
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`Ex.1003
`
`Declaration of Dr. Joshua Phinney under 37 C.F.R. § 1.68
`
`Ex.1004
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`Curriculum Vitae of Dr. Joshua Phinney
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`Ex.1005
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`U.S. Patent No. 6,824,064 to Guthery et al. (“Guthery”)
`
`Ex.1006
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`Ex.1007
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`Ex.1008
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`JP2000163539 to Nozawa et al. (“Nozawa”) – Certified
`English Translation
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`RFID Handbook: Radio-Frequency Identification
`Fundamentals and Applications, Klause Finkenzeller (1999)
`
`Smart Card Handbook: Third Edition, Wolfgang Rankl (3rd
`ed. 2003)
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`Ex.1009
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`Reserved.
`
`Ex.1010
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`Reserved.
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`Ex.1011
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`Ex.1012
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`Ex.1013
`
`Complaint, Aire Technology Ltd. v. Apple Inc. 6-21-cv-
`01101 (W.D. Tex. Oct. 22, 2021)
`
`Infringement Contentions, Aire Technology Ltd. v. Apple Inc. 6-21-
`cv-01101 (W.D. Tex. Oct. 22, 2021)
`
`Scheduling Order, Aire Technology Ltd. v. Apple Inc. 6-21-
`cv-01101 (W.D. Tex. Oct. 22, 2021)
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`Ex.1014
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`Standing Order Governing Proceedings (OGP) 4.1
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`Ex.1015
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`Complaint, Aire Technology Ltd v. Samsung Electronics Co.,
`Ltd., 6:21-cv-00955 (W.D. Tex. Sep. 15, 2021)
`
`Ex.1016
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`JP2000163539 to Nozawa et al. (original)
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`Ex.1017
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`Internet Archive capture of “Wiley:Smart Card Handbook, 3rd
`Edition,”
`https://web.archive.org/web/20041026102425/http://www.wiley.co
`m:80/WileyCDA/WileyTitle/productCd-0470856688.html (archived
`October 26, 2004)
`
`Ex.1018
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`Declaration of Franchesca Ruiz
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`6
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`I.
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`INTRODUCTION
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`U.S. Patent No. 8,581,706 (the “‘706 patent,” Ex.1001) describes and claims
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`concepts related to contactlessly communicating data carriers (e.g., proximity chip
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`cards/smart cards). According to the background of the ‘706 patent, these chip cards
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`were already standardized and “frequently” used in commercial applications.
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`Ex.1001, 1:22-2:29. The ‘706 background similarly makes clear that many of the
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`chip card concepts recited in the claims were already known. For example, it was
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`already “known” for a smart card to host multiple applications, and it was already
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`“possible” for a reading device to address the multiple applications. Ex.1001, 2:521.
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`It was additionally made clear during prosecution that generating communication-
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`readiness signals was already “taught in the prior art.” Ex.1002, 20.
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`The ‘706 patent is instead directed at an incremental improvement—
`
`selectively addressing chip card applications by their application identifier. This
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`alleged improvement, however, was already known in the art. For example, U.S.
`
`Patent No. 6,824,064 to Guthery teaches selectively addressing an application on a
`
`smart card using a Request-to-Send packet containing the application’s unique
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`identifier.
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`Accordingly, pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100,
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`Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd. (collectively
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`“Petitioner”) respectfully request that the Board review and cancel as unpatentable
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`under (pre-AIA) 35 U.S.C. §103(a) claims 1-3, 11-12, 16, 18 and 20. (hereinafter,
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`
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`the “Challenged Claims”) of the ‘706 patent. Petitioner notes that this Petition is
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`substantively identical to the petition filed by Apple Inc. in IPR2022-01137.
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`II. GROUNDS FOR STANDING
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`Petitioner certifies that the ‘706 patent is eligible for IPR and that Petitioner
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`is not barred or estopped from requesting IPR challenging the patent claims. 37
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`C.F.R. § 42.104(a).
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`III. NOTE
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`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
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`material has been added. Claim terms are presented in italics.
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`IV. SUMMARY OF THE ‘706 PATENT
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`The ‘706 patent relates to smart cards, and in particular, “a method for
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`contactless communication of at least two applications stored on a common portable
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`data carrier.” Ex.1001, 1:8-11. The background of the ‘706 patent explains that, by
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`the time the ‘706 patent application was filed, smart cards were already well known
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`and used in commercial applications such as “public transport.” Ex.1001, 1:22-29. It
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`was further already “known that a plurality of applications can be located on a
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`portable data carrier at the same time.” Ex.1001, 2:5-9. And, reading devices could
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`already “address [the] plurality of different concurrent applications” on a smart card
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`through the use of “logical channels.” Ex.1001, 2:1921. Moreover, ISO/IEC 14443
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`provided a solution for environments with multiple data carriers seeking to
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`
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`communicate with a terminal—”an anti-collision method on the basis of a unique
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`identification number of the data carrier, for example a UID (unique identifier), a
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`PUPI (pseudo-unique PICC identifier).” Ex.1001, 1:5256. The ‘706 patent alleges,
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`however, that the use of logical channels for multiple applications within a single
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`data carrier causes various problems, and thus proposes a method whereby a reading
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`device selectively communicates with the smart card using the application identifier,
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`similar to the anti-collision protocol’s use of the UID/PUPI in the ISO/IEC 14443
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`standard. Ex.1001, 2:28-60, 3:23-30 (“The reading device can thus address one
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`application of a plurality of applications located on a data carrier selectively and
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`independently of the data carrier via the identification number.”). As shown in this
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`petition, however, this alleged “improvement” in the well-developed field of smart
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`cards was already described in the prior art. Ex.1003, ¶28.
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`The claims of the ‘706 patent generally recite the alleged improvement plus
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`other known smart card concepts, including: (i) the use of a communication-
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`readiness signal, and (ii) storing information that indicates which of the plurality of
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`applications on the smart card was selected by a reader most recently. Ex.1003, ¶29.
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`In more detail, ‘706 patent describes that the portable data carrier (i.e., smart
`
`card) transmits communication-readiness signals for each of its applications to the
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`reading device. For example, “a first communication-readiness signal to the reading
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`device is generated for a first of the at least two applications ... indicating to the
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`
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`reading device the communication readiness of said first application.” Ex.1001, 3:8-
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`13. Additionally, “a second communication-readiness signal to the reading device is
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`generated for a second of the at least two applications ... and indicates to the reading
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`device the communication readiness of said second application.” Ex.1001, 3:13-20.
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`The communication-readiness signals include an application identification number
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`assigned to the corresponding application. See Ex.1001, 3:5-20; Ex.1003, ¶30.
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`The smart card of the ‘706 patent also keeps a record of which applications
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`have been recently used: “According to the invention, the communication device 70
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`of the data carrier 100 can be set up to store in a nonvolatile memory of the data
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`carrier 100 information about which of the applications 10, 20, 30 last communicated
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`
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`with the reading device 200.” Ex.1001, 9:5-9. This record may then be used to select
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`the application that was most recently used: “It is also possible, however, to first
`
`generate a communication-readiness signal for that application 10, 20, 30 with which
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`the reading device 200 actively communicated last, in order for example to bring to
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`an end a data communication that was commenced but not completed.” Ex.1001,
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`9:18-23. In some cases, however, the application that was not the most recently used
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`is selected: “[I]t is then possible e.g. to generate a communication-readiness signal
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`first for an application 10, 20, 30 that did not communicate with the reading device
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`200 last, in order e.g. to prevent the same application 10, 20, 30 from always being
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`served first and other applications 10, 20, 30 from possibly having to put up with
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`long waiting periods or not being executed at all.” Ex.1001, 9:12-18; Ex.1003, ¶31.
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`As shown below, all of these smart card concepts claimed by the ‘706 patent
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`were previously known in the art. Ex.1003, ¶32.
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`V.
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`PROSECUTION HISTORY
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`The ‘706 patent is a national stage application of PCT Application
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`PCT/EP2007/005185 filed June 12, 2007, which claims priority to German patent
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`application DE 10 2006 027 200 filed June 12, 2006. It is unnecessary to determine
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`whether the ‘706 patent is entitled to its earliest alleged priority date because the
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`prior art relied upon herein pre-dates the earliest alleged priority date.
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`After receiving a final office action, the Applicant amended the claims to
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`
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`recite the alleged improvement described in the ‘706 patent: “wherein the reading
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`device selects for further communication one or more of the at least two applications
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`via the identification numbers assigned to the applications.” Ex.1002, 37. The
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`Examiner allowed the claims after this amendment. Ex.1002, 20. In the Reasons for
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`Allowance, the Examiner confirmed that the other claimed limitations—for
`
`example, multiple applications on a portable data carrier and using communication-
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`readiness signals—were already “taught in the art”:
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`Although the limitations directed to the at least two
`applications on a portable data carrier and the generating
`of communication-readiness signals for each application,
`as presented in the independent claims is taught in the
`prior art (see rejections dated 9/05/2012 and 1/18/2013);
`these limitations in combination with the additional
`limitations of each independent claim, as presented in each
`independent claim, are not taught by the prior art.
`
`Ex.1002, 20. The ‘706 patent then issued on November 12, 2013. Ex.1002, 4.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
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`A Person of Ordinary Skill in The Art (“POSITA”) in June of 2006 (the
`
`alleged priority date) would have been someone knowledgeable and familiar with the
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`smart card and Radio Frequency Identifier (RFID) arts that are pertinent to the ‘706
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`patent. That person would have a bachelor’s degree in electrical engineering,
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`computer engineering, computer science, or equivalent training, and approximately
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`two years of experience working in the electrical engineering field. Lack of work
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`
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`experience can be remedied by additional education, and vice versa. Ex.1003, ¶¶18-
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`20.
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`VII. CLAIM CONSTRUCTION
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`In an inter partes review, claims “shall be construed using the same claim
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`construction standard that would be used to construe the claim in a civil action under
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`35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and
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`customary meaning of such claim as understood by one of ordinary skill in the art and
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`the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). The Board
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`only construes the claims to the extent necessary to resolve the underlying
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`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
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`1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes of this
`
`proceeding, the terms of the challenged claims should be given their plain and
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`ordinary meaning, and no terms require specific construction.1 Ex.1003, ¶33.
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`1 Petitioner does not concede that any term in the challenged claims meets the
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`statutory requirements of 35 U.S.C. § 112, or that the challenged claims recite
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`patentable subject matter under 35 U.S.C. § 101.
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
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`Petitioner asks that the Board institute a trial for inter partes review and cancel
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`the Challenged Claims in view of the analysis below.
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`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
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`A. Discretionary denial under the Fintiv factors is not appropriate
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`The six factors considered for § 314 denial strongly favor institution. See
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential).
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`The district court case is at an early stage—the district court stayed the case before
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`an initial case management conference was held, and the claims have not yet been
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`construed nor has fact discovery opened. Petitioner has diligently filed this petition
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`within approximately five months of being served with a complaint asserting the
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`’706 patent. The petition is, thus, well within the one-year timeframe allowed by
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`Congress.
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`1.
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`The district court case is stayed
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`Petitioner filed a motion to stay the parties’ district court case after the filing
`
`of IPR2022-01137 by Apple, Inc., and the district court has granted that stay. Fintiv,
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`Paper 11, at 6 (“A district court stay of the litigation pending resolution of the PTAB
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`trial allays concerns about inefficiency and duplication of efforts. This fact has
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`strongly weighed against exercising the authority to deny institution….”). Thus, this
`
`factor weighs strongly against discretionary denial.
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`2.
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`Parallel proceeding trial date
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`The co-pending litigation was stayed before any initial case management
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`conference was held and remains stayed pending the outcome of the Apple IPR.
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`Thus, no scheduling order has been issued and there is no trial date. This factor
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`weighs strongly against discretionary denial.
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`3.
`
`Investment in the parallel proceeding
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`The investment in the co-pending litigation has been minimal. As mentioned
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`above, the litigation was stayed before an initial case management conference
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`occurred, claim construction has not been scheduled, and fact discovery has not yet
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`commenced. This lack of investment favors institution.
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`4. Overlapping issues with the parallel proceeding
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`Because the co-pending litigation was stayed before a case management
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`conference was held, Petitioner has not presently advanced invalidity contentions in
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`that case. Thus, there is no overlap in issues at this time.
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`5.
`
`Petitioner is a defendant
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`Petitioner is a defendant in the co-pending litigation. That is true of most
`
`Petitioners in IPR proceedings, making this factor neutral. See HP Inc. v. Slingshot
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`Printing LLC, IPR2020-01084, Paper 13 at 9 (Jan. 14, 2021) (having the “same
`
`parties as parallel proceeding” makes factor 5 “neutral”).
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`6. Other circumstances
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`The prior art presented in this Petition renders the Challenged Claims
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`unpatentable as obvious. The merits of Petitioner’s arguments are strong. Moreover,
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`Patent Owner has engaged in a campaign of asserting the ‘706 patent against multiple
`
`defendants across the industry. There is thus a strong public interest in the Office
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`adjudicating the validity of the claims here. This factor weighs against discretionary
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`denial.
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`As such, because the Fintiv factors weigh strongly against discretionary denial
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`(including an early stay of the District Court litigation), and because this Petition
`
`was filed well before the statutory bar date, institution should not be denied on
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`discretionary factors.
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`B.
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`The FintivFramework Should Be Overturned
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`Apart from Petitioner’s showing that the Fintiv factors favor institution, the
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`Fintiv framework should be overturned because it (1) exceeds the Director’s
`
`authority, (2) is arbitrary and capricious, and (3) was adopted without notice-and-
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`comment rulemaking.
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`C. Discretionary denial under General Plastic is not appropriate
`
`On September 15, 2021, Patent Owner filed suit against Samsung Electronics
`
`Co., Ltd. et al (“Samsung”). On October 22, 2021, Patent Owner filed suit against
`
`Apple Inc. (“Apple”). On May 2, 2022, Samsung filed inter partes review
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`IPR2023-00188 Petition
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`proceeding IPR2022-00876 against the ‘706 patent (the “Samsung IPR”). On May
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`
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`20, 2022, Patent Owner filed suit against Petitioner Garmin. On June 15, 2022,
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`Apple filed inter partes review proceeding IPR2022-01137 against the ‘706 patent
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`(the “Apple IPR”). Garmin was not involved in the preparation or filing of the
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`Samsung IPR or the Apple IPR. With the filing of this “copycat” Petition and
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`accompanying Motion for Joinder, Garmin merely seeks to join the Apple IPR in an
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`understudy role. This Petition does not present any new grounds or new evidence
`
`and is substantively identical to the Apple IPR petition.
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`In General Plastic, the Board set forth a series of factors that may be analyzed
`
`for follow-on petitions to help conserve the finite resources of the Board. But,
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`importantly, the Board has previously stated that a joinder petition, such as this one,
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`“effectively neutralizes” any concerns under the General Plastic factors. See Apple
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`Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper 13 at 10 (PTAB Aug. 21, 2018)
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`(instituting a joinder petition, stating joinder petitioner’s joinder motion agreeing to
`
`a passive understudy role “effectively neutraliz[es] the General Plastic factors”); see
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`also Celltrion, Inc. v. Genetech, Inc., IPR2019-01019, Paper 11 at 10 (PTAB Oct.
`
`30, 2018) (same and noting the joinder motion “effectively obviates any concerns of
`
`serial harassment and unnecessary expenditures of resources”). Thus, General
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`Plastic does not apply to this joinder petition.
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`In the event the Board, does analyze the General Plastic factors, those factors
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`
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`weigh heavily in favor of institution this Petition and joining it with the Apple IPR.
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`1. Garmin is a different, unrelated petitioner.
`
`This factor weighs against denial because Garmin is a different petitioner than
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`the petitioner in the Samsung IPR and the Apple IPR. Moreover, there is not a
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`significant relationship between Samsung and Garmin or between Apple and
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`Garmin. Although the Board held in Valve Corp. v. Elec. Scripting Prods., Inc.,
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`IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential) that the application of the
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`first Generic Plastic factor is not limited to instances where multiple petitions are
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`filed by the same petitioner, the facts here are distinguishable from Valve. First, in
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`Valve, both the petitioner (Valve) and HTC (who filed the earlier IPR) were co-
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`defendants in the same district court case and were accused of infringing the patent-
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`at-issue based on the same product. See Valve, Paper 11, at 9. However, in the
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`present case, petitioners were sued separately and accused of infringement based on
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`different products. Additionally, Patent Owner elected to file suit against Garmin
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`more than seven months after Samsung and six months after Apple.
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`The Board routinely finds that “General Plastic and Valve do not apply” to
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`the circumstances here, where the petitioners were sued independently, were sued
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`on different products, and have no significant relationship. See, e.g., NetNut Ltd. v.
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`Bright Data Ltd., IPR2021-00465, Paper 11 at 8-11 (Aug. 12, 2021) (“NetNut”);
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`Sony Mobile Commc’ns AB. v. Ancora Techs., Inc., IPR2021-00663, Paper 17, 711
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`
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`(Jun. 10, 2021) (“Sony Mobile”); Shenzhen AOTO Elecs. Co., Ltd. v. Ultravision
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`Techs., LLC, IPR2021-00190, Paper 7, 14-16 (Jun. 9, 2021).Accordingly, with no
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`significant relationship between Garmin and Samsung or between Garmin and
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`Apple, this factor heavily weighs against discretionary denial.
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`2.
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`Factor 2 is of little probative value.
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`Because Garmin is not a petitioner in the Samsung IPR or Apple IPR, factor
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`2 “is of little probative value.” NetNut, 9; Western Digital Corp. v. Spex
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`Technologies, Inc., IPR2018-00084, Paper 14 at 17 (April 25, 2018) (“Because
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`Petitioner has not previously filed a petition against the same patent, factors 2-5 bear
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`little relevance in this case.”). In any event, the prior art combinations asserted in the
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`instant Petition are different than the combinations asserted in the Samsung IPR and
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`are a mere “copycat” of the Apple IPR, which Petitioner seeks to join in an
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`understudy role. This factor thus weighs against discretionary denial.
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`3.
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` Patent owner preliminary responses.
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`As of the filing of this petition, patent owner preliminary responses have been
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`filed in the Samsung IPR and Apple IPR, but, again, Garmin’s Petition is a mere
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`“copycat” of the Apple IPR, which was filed before any preliminary responses were
`
`filed. Garmin has thus not gained any unfair tactical advantage. Accordingly, this
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`factor weighs against discretionary denial.
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`4.
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`Fourth and fifth factors are inapplicable.
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`Because this is Garmin’s first petition challenging the ‘706 patent,
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`the fourth and fifth factors are inapplicable. See, e.g, Sony Mobile, 13-15.
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`Accordingly, these factors weigh “strongly” against discretionary denial. Id. at 14,
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`15.
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`5.
`
`The resources of the Board and the requirement under 35
`U.S.C. § 316(a)(11).
`
`This petition requires only modest resources from the Board that are
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`reasonable under the circumstances. This is Petitioner’s first petition and Petitioner
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`is filing a mere “copycat” petition of the Apple IPR, and Petitioner is seeking to join
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`the Apple IPR in an understudy role. This Petition, therefore, adds minimal, if any,
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`additional burden on the Board beyond the Apple IPR. Further. there is no indication
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`that the Board would be unduly burdened or unable to render a final written decision
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`within the statutory deadline.
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
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`Denial under § 325(d) is not warranted because the challenges presented in
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`this petition are neither cumulative nor redundant to the prosecution of the ‘706
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`patent. The Examiner did not consider any of the references relied upon in this
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`petition. Moreover, the challenges in this petition are non-cumulative because the
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`art relied upon here teaches the claim elements that the Examiner deemed allowable.
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`Compare Ex.1002, 20, 37 (allowance after claims were amended to recite “wherein
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`20
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`Inter Partes Review of U.S. 8,581,706
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`the reading device selects for further communication one or more of the at least two
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`
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`applications via the identification numbers assigned to the applications”) with
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`Ex.1005, 3:49-51 (teaching the reading device transmitting a “Request-to-Send
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`packet” that selects a smart card application using its unique “application index
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`number”).
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`X.
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`A. Challenged Claims
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`Petitioner challenges claims 1-3, 11-12, 16, 18, and 20.
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`B.
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`Statutory Grounds for Challenges
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`Grounds
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`Claim(s)
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`Basis
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`#1
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`#2
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`#3
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`#4
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`1-3 and 11-12
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`35 U.S.C. 103 are obvious over Guthery et al. in
`view of Nozawa et al.
`
`16
`
`18
`
`20
`
`35 U.S.C. 103 are obvious over Guthery et al.,
`Nozawa et al. in view of RFID Handbook
`
`35 U.S.C. 103 is obvious over Guthery et al,
`Nozawa et al. in view of Smart Card Handbook
`
`35 U.S.C. 103 is obvious over Guthery et al. in
`view of RFID Handbook
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`U.S. Patent No. 6,824,064 to Guthery et al. (“Guthery,” Ex.1005) was filed
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`December 6, 2000 and issued on November 30, 2004. Guthery is thus prior art under
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`at least 35 U.S.C. § 102(b).
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`JP Patent Application No. 2000-163539 to Nozawa et al. (“Nozawa”) was
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`filed November 25, 1998 and published June 16, 2000. Nozawa is thus prior art
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`Inter Partes Review of U.S. 8,581,706
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`under at least 35 U.S.C. 102(b). Ex.1016 is the original Japanese document. Ex.1006
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`
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`is a certified translation.
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`RFID Handbook: Radio-Frequency Identification Fundamentals and
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`Applications, Klause Finkenzeller (1999), (“RFID Handbook,” Ex.1007) is a
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`textbook that was published by John Wiley & Sons Inc. in 1999. The RFID
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`Handbook was publicly available and routinely cited by POSITAs before the filing
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`date of the ‘706 patent. Ex.1003, ¶¶118-19 (listing patent literature citing to the
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`RFID Handbook as a background resource); Ex.1018. The RFID Handbook is thus
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`prior art under at least 35 U.S.C. 102(b).
`
`Smart Card Handbook: Third Edition, Wolfgang Rankl (3rd ed. 2003)
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`(“Smart Card Handbook,” Ex.1008) is a textbook that was published by John
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`Wiley & Sons Inc. in 2003. The Smart Card Handbook was publicly available and
`
`routinely cited by POSITAs before the filing date of the ‘706 patent. Ex.1003, ¶¶137-
`
`39 (listing patent literature citing to the Smart Card Handbook series as a background
`
`reference); Ex.1018. The Smart Card Handbook is thus prior art under at least 35
`
`U.S.C. 102(b).
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`Petitioner’s analysis also cites additional prior art to demonstrate the
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`background knowledge of a POSITA and to provide contemporaneous context to
`
`support Petitioner’s assertions regarding what a POSITA would have understood
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`IPR2023-00188 Petition
`Inter Partes Review of U.S. 8,581,706
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`from the prior art. See Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-
`
`
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`1042 (Fed. Cir. 2018); 37 C.F.R. § 42.104(b); see also K/S HIMPP v. Hear-Wear
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`Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014).
`
`C. Ground 1: Claims 1-3 and 11-12 are obvious under 35 U.S.C. §
`103 over Guthery and Nozawa.
`
`1.
`
`Summary