Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 1 of 42
`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 1 of 42
`
`EXHIBIT C
`EXHIBIT C
`
`

`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 2 of 42
`Trials@uspto.gov
`Paper 11
`571-272-7822
`Date: January 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`
`IPR2022-01136
`Patent 8,174,360 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, BRIAN J. McNAMARA, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`McNAMARA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`

`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 3 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`
`INTRODUCTION
`I.
`Apple, Inc. (“Petitioner”) filed a petition, Paper 2 (“Petition” or
`“Pet.”), to institute an inter partes review (“IPR”) of claims 1–3, 8–11, and
`15 (the “challenged claims”) of U.S. Patent No. 8,174,360 B2 (“the ’360
`patent”). 35 U.S.C. § 311; see Pet. 16. Aire Technology Limited (“Patent
`Owner”) filed a Preliminary Response, Paper 6 (“Prelim. Resp.”),
`contending that the Petition should be denied. As we authorized, Petitioner
`filed a Reply (Paper 9, “Reply”) and Patent Owner filed a Sur-reply (Paper
`10, “Sur-reply”). We have jurisdiction under 35 U.S.C. § 314, which
`provides that an inter partes review may not be instituted unless the
`information presented in the Petition “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`A decision to institute under § 314 may not institute on fewer than all
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1359–60 (2018). In addition, per Board practice, if the Board institutes trial,
`it will institute “on all of the challenged claims and on all grounds of
`unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).
`Having considered the arguments and the associated evidence in the
`record before us, for the reasons described below, we institute inter partes
`review.
`
`II. REAL PARTIES-IN-INTEREST
`Petitioner identifies itself (Apple, Inc.) as its sole real party-in-
`interest. Pet. 86. Patent Owner identifies itself (Aire Technology Ltd.) as its
`sole real party-in-interest. Paper 4, 2.
`
`
`2
`
`

`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 4 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`III. RELATED MATTERS
`The Petition states that the ’360 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;
`
`Aire Technology Ltd. v. Apple, Inc., No. 6-21-01101, W.D. Tex., filed
`Oct. 22, 2021 (“the Apple litigation”);
`
`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-cv-01027 C.D. Cal., filed May 20, 2022
`
`
`Pet. 86. Patent Owner identifies the following additional proceedings as
`“related current and/or former proceedings involving the patent at issue.” Id.
`at 2–3.
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00874 (PTAB Apr. 22, 2022)
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00875 (PTAB Apr. 22, 2022;
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00877 (PTAB May 2, 2022);
`
`Apple Inc. v. Aire Technology Ltd., IPR2022-01135 (PTAB June 15,
`2022);
`
`Apple Inc. v. Aire Technology Ltd., IPR2022-01137 (PTAB June 15,
`2022)
`
`
`
`3
`
`

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`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 5 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`IV. EXERCISE OF DISCRETION
`In the Preliminary Response, Patent Owner contends that we should
`exercise our discretion to deny the Petition in favor of the parallel Apple
`litigation identified above taking place in the U.S District Court for the
`Western District of Texas (“the Texas court”). Prelim. Resp. 1–10. The
`Board has held that the advanced state of a parallel district court action is a
`factor that may weigh in favor of denying a petition under § 314(a). See
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20
`(PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We
`consider the following factors to assess “whether efficiency, fairness, and
`the merits support the exercise of authority to deny institution in view of an
`earlier trial date in the parallel proceeding”:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. at 6. We consider each of
`these factors below.
`
`4
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`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 6 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`On June 21, 2022, the Director of the USPTO issued several
`clarifications concerning the application of the Fintiv Factors. See Interim
`Procedure For Discretionary Denials In AIA Post-Grant Proceedings With
`Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo)1.
`The Director’s memo states that “the precedential import of Fintiv is limited
`to facts of that case.” Guidance Memo 2. Under the Guidance Memo “the
`PTAB will not rely on the Fintiv factors to discretionarily deny institution in
`view of parallel district court litigation where a petition presents compelling
`evidence of unpatentability.” Guidance Memo 2.
`Compelling, meritorious challenges will be allowed to proceed
`at the PTAB even where district court litigation is proceeding in
`parallel. Compelling, meritorious challenges are those in which
`the evidence, if unrebutted in trial, would plainly lead to a
`conclusion that one or more claims are unpatentable by a
`preponderance of the evidence.
`Guidance Memo 4.
`The Guidance memo further states,
`[c]onsistent with Sotera Wireless, Inc., the PTAB will not
`discretionarily deny institution in view of parallel district court
`litigation where a petitioner presents a stipulation not to pursue
`in a parallel proceeding the same grounds or any grounds that
`could have reasonably been raised before the PTAB.
`Guidance Memo, 3. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-
`01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to§ II.A).
`The Guidance memo also states,
`when considering the proximity of the district court's trial date to
`the date when the PTAB final written decision will be due, the
`PTAB will consider the median time from filing to disposition of
`
`1 Available at
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf.
`
`5
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`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 7 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`the civil trial for the district in which the parallel litigation
`resides.
`Guidance Memo 32. With these factors and guidance in mind, we consider
`the parties’ contentions.
`As to factors 1 and 2, Patent Owner contends that it is unlikely the
`case will be stayed, that a trial in the Apple litigation is scheduled to occur
`before a final decision will issue in this proceeding, and that the Texas court
`does not move a trial date, except in extreme situations. Prelim. Resp. 3–6,
`Sur-reply 1–2. Petitioner contends that generalized evidence that the Texas
`court denies stays is a neutral factor as to this particular case, and that,
`although the scheduled trial date is November 6, 2023, statistics indicate that
`trial is more likely to occur late in February 2024, i.e., after a final decision
`in this proceeding. Reply 1–2. Petitioner further notes that, even if a trial
`occurs on the scheduled date, the due date for a final decision in this
`proceeding is sufficiently close in time as to disfavor denial of institution.
`Id. at 2. Under these circumstances, we find that factors 1 and 2 do not
`support exercising discretion to deny institution.
`As to factors 3 and 4, Patent Owner argues that there is a significant
`overlap in the substance of the proceedings and that before a decision on
`institution, the parties will have invested resources to complete claim
`construction briefing, exchange infringement and invalidity contentions, and
`that discovery will be underway. Prelim. Resp. 6–9, Sur-reply 3–5. Noting
`(i) that the Texas court has already delayed a Markman claim construction
`hearing until May 16, 2023, i.e., more than four months after the due date of
`a decision on institution in this proceeding, and (ii) that fact discovery and
`
`
`2 See https://www.uscourts.gov/statistics-reports/analysis-reports/federal-
`court-management-statistics.
`
`6
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`

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`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 8 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`expert discovery in the Apple litigation continue for two months and seven
`months, respectively, after the due date an institution decision, Petitioner
`contends that the lack of substantial investment in the Texas litigation
`weighs against denial of institution. Reply 2–3. As to overlapping issues,
`Petitioner stipulates that “it will not pursue in the parallel district court
`proceeding the prior art obviousness combinations on which trial is
`instituted for the claims on which trial is instituted. In Sand, a nearly
`identical stipulation was found to effectively address the risk of duplicative
`efforts.” Reply 3–4 (citing Sand Revolution II, LLC v. Continental
`Intermodal Group Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (June
`16, 2020) (informative) (“Sand”)). Patent Owner asserts that Petitioner’s
`“limited stipulation is not ‘nearly identical’ to the stipulation in Sand,”
`because it fails to stipulate that Petitioner “would not pursue any ground
`raised or that could have been reasonably raised in an IPR, i.e., any ground
`that could be raised under §§ 102 or 103 on the basis of prior art patents or
`printed publications.” Sur-reply 4 (citing Sand at 12 n.5). In Sand,
`however, although the panel’s footnote stated that a broader stipulation
`would better address concerns, the panel found Petitioner’s stipulation that it
`would not pursue in district court litigation the same grounds as those
`asserted in the IPR “mitigates to some degree the concerns of duplicative
`efforts” and “weighs marginally in favor of not exercising discretion to deny
`institution.” Sand at 12. In these circumstances, we find that the investment
`in invalidity issues in the Apple litigation and Petitioner’s stipulation do not
`support exercising discretion to deny institution. See Sand at 10–12.
`As to factor 5 it is undisputed that Petitioner is a defendant in the
`Apple litigation. But this factor alone does not outweigh the other factors
`that thus far do not support exercising discretion to deny institution. Further
`
`7
`
`

`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 9 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`as to factor 6, and as discussed in detail below, at this stage of the
`proceeding, we find that Petitioner has shown that at least some of the
`’360 patent claims at issue recite well-known and obvious methods for
`setting up data connections between devices. Patent Owner acknowledges
`that its Preliminary Response does not address the merits of Petitioner’s
`challenges. Prelim. Resp. 9–10.
`Having weighed the factors above, including the relative timing of the
`proceedings, the amount of effort that has been and is yet to be expended in
`the Apple litigation and in this proceeding, Petitioner’s stipulation, and the
`relative merits of Petitioner’s unrebutted challenges, we find that, taken as a
`whole, the factors do not favor exercising discretion to deny institution. In
`consideration of the above, we decline to exercise discretion to deny
`institution.
`
`THE ’360 PATENT
`V.
`The ’360 patent concerns setting up data connections between
`intelligent devices, using near field communication (“NFC”) protocols when
`they approach each other. Ex. 1001, 1:7–20. Such intelligent devices may
`include a portable computer, mobile telephone, a radio frequency
`identification (“RFID”) transponder in a contactless chip card, a wrist watch,
`a garment, an electronic ticket, and a reading device. Id. at 3:32–43. Figure
`1 of the ’360 patent, shown below, illustrates the structure of intelligent
`devices designed for automatic data connection set-up. Id. at 3:1–2.
`
`
`8
`
`

`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 10 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`
`
`
`Id. at Fig. 1. In Figure 1, device 10 has communication apparatus 1 that
`includes portable computer 11; device 20 has communication apparatus 2
`that includes mobile phone 21; and contactless card device 30 has
`communication apparatus 3 that includes chip 31. Devices 10, 20, and 30
`include coils 13, 23, 33, respectively. Communication elements 12 and 22
`in devices 10 and 20 ascertain the presence of another device within the
`response range of their respective coils. Id. at 3:55–57. Upon detection of a
`nearby device, communication elements 12, 22 execute software to set up
`communication, e.g., by executing an NFC protocol. Id. at 3:56–4:2. Coils
`13, 23, 33 carry out contactless data exchange in a conventional manner as
`part of a transmission oscillator with a defined resonant frequency. Id. at
`4:3–13.
`The ’360 patent describes a conventional approach to detecting the
`presence of an intelligent device within the response range of the NFC
`protocol as using a search mode in which an initiator cyclically emits search
`queries that can be answered by targets. Id. at 1:20–30. Relatively high
`
`9
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`

`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 11 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`constant power consumption associated with such cyclical search queries
`limits the service life of battery operated devices. Id. at 1:30–38. To
`provide automatic detection without cyclical searching, the ’360 patent
`incorporates a communications element with a coil that commences search
`mode only when a measuring device determines that a property in the
`transmission oscillator set up by the same coil, e.g., the resonant frequency,
`changes. See, id. at 2:10–30, 6:54–62.
`Figure 2 of the ’360 patent, shown below, illustrates a simplified
`equivalent circuit diagram of device 10, 20, 30. Id. at 3:3–4, 4:26–27.
`
`
`Id. at Fig. 2. Data processing components 11, 21 of Figure 1 are shown in
`Figure 2 as including on-off switch 40 and energy supply 41. Id. at 4:27–38.
`Switching apparatus 15, 25 of Figure 1 are shown in Figure 2 as including
`switches 42, 44, driven by actuator 43, and optional time controller 45,
`which are both connected to power supply 41. Id. at 4:39–42. Switch 42
`placed between main power supply 41 and communication element 12, 22
`switches communications element 12, 22 (as well as other devices through
`connection 146) on and off. Id. at 4:42–44. Measuring device 14, 24
`
`10
`
`

`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 12 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`includes measuring unit 46. Measuring unit 46 can be switched on and off
`by switch 44, which is activated by optional time controller 45 in switching
`apparatus 15, 25. Id. at 4:46–48, 4:57–59. Actuator 43 controls switch 47 to
`connect coil 13, 23 of transmission oscillator 50 (formed by coils 13, 23 in
`parallel with capacitor 48) to either communication element 12, 22 or
`measuring unit 46. Id. at 4:60–64, 5:9–13. When actuator 43 sets switch 47
`to connect transmission oscillator 50 to communication element 12, 22,
`resistor 52 and capacitor 51 are engaged in parallel with transmission
`oscillator 50—this reduces the resonant frequency of transmission oscillator
`50 to a frequency suitable for data transmission and increases the bandwidth
`available for data transmission, while reducing the quality factor. Id. at
`5:13–21, 5:44–57.
`The ’360 patent describes three operational modes: the search mode,
`the data transmission mode, and the detection mode. Id. at 5:31–6:1, Fig. 3.
`In the first mode, i.e., the search mode, apparatus 10, 20, 30 is switched on
`using switch 42 to energy supply 41. Id. at 5:35–37. Actuator 43 sets
`switch 47, so that coil 13, 23 is connected to communication element 12, 22,
`thereby engaging capacitor 51 and resistor 52 to set the transmission
`oscillator resonant frequency and bandwidth for transmission. Id. at 5:35–
`57. Communications element 12, 22 then cyclically emits a search signal.
`See, id. at 5:58–63. Upon observing the presence of another device within
`its response range, communication element 12, 22 puts the apparatus in the
`second mode, i.e., the data transmission mode, by setting up and executing a
`data exchange according to a known protocol. Id. at 5:64–6:18. When the
`data exchange is finished, the apparatus enters the third mode, i.e., the
`detection mode. Id. at 6:19–20. In the detection mode actuator 43 reduces
`power consumption by disconnecting communication element 12, 22 from
`
`11
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`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 13 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`power supply 41 via switch 42, and sets switch 47 to connect passive
`transmission oscillator 50 to measuring unit 46. Id. at 6:19–25. As a result,
`resistor 52 and capacitor 51 are switched out of transmission oscillator 50,
`increasing the resonant frequency, improving the quality factor, and
`increasing the range for detection of other devices, while preventing
`interference with communications of other nearby devices already in the
`data transmission mode. Id. at 6:36–49. Actuator 43 also turns on
`measuring unit 46, which is equipped with software to monitor a property of
`transmission oscillator 50. Id. at 5:1–3, 6:54–55. For example, measuring
`unit 46 monitors the resonant frequency or the impedance of its apparatus’s
`transmission oscillator 50, because the resonant frequency or impedance will
`be changed when the coil of another apparatus is brought within the
`detection range. Id. at 6:53–63. Measuring unit 46 reports changes in
`monitored properties to actuator 43, which responds by initiating a search
`mode. Id. at 6:64–67.
`The ’360 patent also discloses an embodiment in which the measuring
`unit stores and averages measurements of the monitored property, identifies
`the presence of another device by determining whether a measured value
`exceeds the average value, and a time controller executes a waiting loop
`during which the measuring unit is switched off for a predetermined time
`period after no other device is detected. Id. at 7:12–8:10, Fig. 4. The
`predetermined off period may be set to exceed the in time in which the
`measuring unit performs a measurement. Id. at 7:53–55.
`
`
`ILLUSTRATIVE CLAIM
`VI.
`Claim 1, reproduced below with paragraph designations used in the
`Petition is illustrative of the subject matter of the ’360 patent.
`
`12
`
`

`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 14 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`[1.0] A communication apparatus for setting up a data connection
`between intelligent devices, comprising:
`[1.1] a transmission oscillator for carrying out a contactless
`data exchange, said oscillator including a coil;
`[1.2a] a communication element which is connected to the
`coil and to a data processing component of an
`intelligent device and
`[1.2b] which emits search signals via the coil to receive a
`response from another intelligent device,
`[1.3] a measuring device for monitoring a property of the
`transmission oscillator which outputs a control signal
`when ascertaining a change of the monitored property,
`[1.3b] the monitored property of the transmission oscillator
`includes
`the
`frequency or
`impedance of
`the
`transmission oscillator in resonance,
` [1.4] and a switching apparatus which is connected to the
`measuring device and the communication element and
`which switches on the communication element when it
`has received the control signal from the measuring
`device by connecting the communication element to an
`energy source.
`
`
`
`VII. ASSERTED GROUNDS
`Petitioner asserts that claims 1–3, 8–11, and 15 would have been
`unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`1, 15
`1033
`2, 3
`103
`8, 9
`103
`10, 11
`103
`
`Reference(s)
`Tobergte4, Cole5
`Tobergte, Cole, Schuermann6
`Tobergte, Cole, O’Toole7
`Tobergte, Cole, O’Toole,
`
`
`3 As the application for the ’360 patent was filed prior to March 16, 2013,
`we apply the pre-AIA provisions of the statute.
`4 U.S. Patent No. 5,519,386 (Ex. 1005)
`5 U.S. Patent No. 6,144,299 (Ex. 1006)
`6 U.S. Patent No. 5,287,112 (Ex. 1007)
`7 U.S. Patent No. 6,384,648 (Ex. 1008)
`
`13
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`

`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 15 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)
`Plonsky8
`
`
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner identifies a person of ordinary skill as someone
`knowledgeable and familiar with short-range, wireless communication arts
`e.g. radio frequency identification (RFID) and near filed communications
`(NFC). Pet. 12–13. Petitioner states that such a person “would have a
`bachelor’s degree in electrical engineering, computer engineering, computer
`science, or equivalent training, and approximately two years of experience
`working in the electrical engineering field. Lack of work experience can be
`remedied by additional education, and vice versa.” Id. at 13. Patent Owner
`does not address the level of ordinary skill. See generally, Prelim. Resp,
`The level of ordinary skill in the art usually is evidenced by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`As Petitioner’s description of a person of ordinary skill appears
`commensurate with the subject matter before us, we apply Petitioner’s
`definition for purposes of this Decision.
`IX. CLAIM CONSTRUCTION
`We interpret claim terms using “the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are
`generally given their ordinary and customary meaning” as understood by a
`
`
`8 U.S. Patent No. 5,049,857 (Ex. 1009)
`
`14
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`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 16 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`person of ordinary skill in the art in question at the time of the invention.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations
`omitted) (en banc). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17). Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips,
`415 F.3d at 1317 (citations omitted).
`We construe only those claim terms that require analysis to determine
`whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”). Any special definition for a claim
`term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner acknowledges that in parallel district court litigation, it has
`proposed the term “measuring device” be construed as a “means plus
`function” limitation under pre-AIA provisions 35 U.S.C. § 112 ¶ 6. Pet. 14.
`In the district court proceeding, Petitioner set forth a proposed function and
`asserted that the corresponding structure is indefinite. Id. Noting that in the
`district court, Patent Owner asserted no construction is necessary, Petitioner
`adopts Patent Owner’s district court proposed construction for purposes of
`this proceeding. Id.
`
`15
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`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 17 of 42
`IPR2022-01136
`Patent No. 8,174,360 B2
`For purposes of this Decision, we agree that no construction is
`necessary, as the plain and ordinary meaning of “a measuring device for
`monitoring a property of the transmission oscillator” is ascertainable in the
`context of the claims as a device that is capable of monitoring a property to
`detect changes in that property. See Section X supra.
`X. ANALYSIS
`
`Introduction
`A.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (requiring “articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness”)); see In re Warsaw
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`IPR2022-01136
`Patent No. 8,174,360 B2
`Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar
`Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d
`1356, 1360 (Fed. Cir. 2006)).
`An obviousness analysis “need not seek out precise teachings directed
`to the specific subject matter of the challenged claim, for a court can take
`account of the inferences and creative steps that a person of ordinary skill in
`the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic
`Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy
`its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016). Instead, Petitioner must articulate a reason why a person of
`ordinary skill in the art would have combined the prior art references. In re
`NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`A reason to combine or modify the prior art may be found explicitly
`or implicitly in market forces; design incentives; the “‘interrelated teachings
`of multiple patents’”; “‘any need or problem known in the field of endeavor
`at the time of invention and addressed by the patent’”; and the background
`knowledge, creativity, and common sense of the person of ordinary skill.
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
`2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)).
`In determining whether a claim is obvious in light of the prior art,
`when in evidence, we consider any relevant objective evidence of non-
`obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the
`teachings of the prior art would have suggested to one of ordinary skill in the
`art at the time of the invention, the totality of the evidence submitted,
`including objective evidence of non-obviousness, may lead to a conclusion
`that the challenged claims would not have been obvious to one of ordinary
`
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`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 19 of 42
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`Patent No. 8,174,360 B2
`skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). At this stage
`of the proceeding Patent Owner does not present evidence of such objective
`considerations.
`The Patent Owner Preliminary Response argues only that we should
`deny institution as a matter of discretion and does not respond to Petitioner’s
`substantive arguments. See generally, Prelim. Resp. We analyze the
`asserted grounds of unpatentability in accordance with the above principles
`to determine whether Petitioner has met its burden to establish a reasonable
`likelihood of success at trial.
`Claims 1 and 15 As Obvious Over Tobergte and Cole
`B.
`1.
`Tobergte – Exhibit 1005
`Tobergte discloses a data exchange system having a fixed station and
`a portable data carrier. Ex. 1001 (code 57). Although both the fixed station
`and the data carrier operate in an active and passive mode, the data carrier
`operates in the active mode only when energy transfer is required. Id.
`A block diagram of Tobergte’s data exchange system is shown n
`Figure 1, reproduced below. Id. at 3:8–10.
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`
`
`
`Figure 1 of Toberget
`Id. Fig. 1. In Figure 1, coil 20 and capacitor 22 of data carrier 1 constitute a
`resonant circuit that connects via leads 21, 23 to rectifier circuit 12 and data
`processing circuit 16. Id. at 3:16–20. In data carrier 1’s passive mode, when
`coil 20 receives a high frequency magnetic field, e.g., as transmitted from a
`resonant circuit connected to oscillator 34 in fixed station 2, rectifier circuit
`12 in data carrier 1 generates a direct voltage on lead 13, causing data
`processing circuit 16 to retrieve and transfer binary data stored in a memory
`for transmission by the data carrier’s resonant circuit. Id. at 3:21–31, 3:46–
`52. This data transfer configuration requires that an interrogation device,
`i.e., fixed station 2, continually operate in an active mode by transmitting an
`electromagnetic field. See, id. 1:15–41.
`Figure 1 also shows energy source 10, switch 28, and oscillator 18 in
`data carrier 1. These components allow Tobergte’s system to maintain fixed
`
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`Case 6:21-cv-01101-ADA Document 73-5 Filed 01/19/23 Page 21 of 42
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`Patent No. 8,174,360 B2
`station 2 in a passive mode that does not continually transmit a high-
`frequency magnetic field, but instead, transmits the high frequency magnetic
`field only when the user wants to transfer information from data carrier 1.
`Id. at 3:52–58. A user wishing to commence data exchange places the data
`carrier in an active mode by closing switch 28, so that power is delivered to
`oscillator 18—this triggers the data carrier’s resonant circuit and rectifier to
`deliver a voltage to circuit 16 that in turn supplies data to be transmitted by
`the resonant circuit, in the same mann