Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 10
`Entered: April 29, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`RF CONTROLS, LLC,
`Petitioner,
`
`v.
`
`A-1 PACKAGING SOLUTIONS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00119
`Patent 8,690,057 B2
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BRYAN F. MOORE, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`

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`Case IPR2015-00119
`Patent 8,690,057 B2
`
`I. INTRODUCTION
`RF Controls, LLC (“Petitioner”) filed a Petition (Paper 1, Petition
`(“Pet.”)) to institute an inter partes review of claims 17–30 (the “challenged
`claims”) of U.S. Patent No. 8,001,057 B1 (Ex. 1001, “the ’057 patent”). See
`35 U.S.C. §§ 311–319. A-1 Packaging Solutions, Inc. (“Patent Owner”)
`filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314, which provides that an inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Upon consideration of the Petition and
`Patent Owner’s Preliminary Response, we determine Petitioner has
`established a reasonable likelihood that it would prevail in showing the
`unpatentability of at least one of the challenged claims. We therefore
`institute an inter partes review as to claims 17 and 27. We decline to
`institute an inter partes review as to claims 18–26 and 28–30.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far (prior to Patent
`Owner’s Response). This is not a final decision as to patentability of claims
`for which inter partes review is instituted. Our final decision will be based
`on the record as developed fully during trial.
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`Patent 8,690,057 B2
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`II. BACKGROUND
`A. Related Matters
`Prior to the instant Petition, Petitioner also filed a first petition for
`inter partes review of the ’057 patent: RF Controls, LLC v. A-1 Packaging
`Solutions, Inc., Case IPR2014-01536 (PTAB).1
`B. The ’057 Patent (Ex. 1001)
`The ’057 patent relates to a process management system that uses a
`radio frequency identification (RFID) detection system in the form of, for
`example, a phased array antenna based RFID detection system to track and
`manage material storage and flow in a manufacturing process or plant.
`Ex. 1001, Abstract. A block diagram of an exemplary process management
`system is shown in Figure 3 of the ’057 patent, reproduced below.
`
`
`1 Case IPR2014-01536 has been consolidated with the instant proceeding.
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`Case IPR2015-00119
`Patent 8,690,057 B2
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`As illustrated in Figure 3, above:
`[I]nventory and process management or tracking system 10
`include[s] a command system 12 connected to an RFID
`detection and tracking system that includes a network of
`antenna systems 14 (which may be for example, one or more
`electronically steerable phased array antenna systems each
`having multiple antenna elements 24) connected to a processor
`(not shown) that directs or operates the antennas or elements 24
`. . . and performs RFID detection and tracking.
`
`Id. at 13:66–14:7. “During operation, material inputs and material outputs at
`each stage or region of the manufacturing process 19 are tagged with RFID
`tags 22 for identification and tracking.” Id. at 14:25–28. “The antenna
`systems 14 . . . are used to detect and track the location and movement of the
`RFID tagged material inputs and material outputs and use this tracking
`
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`information to manage the manufacturing process 19 using, for example, the
`controllers 16.” Id. at 14:28–36.
`C. Illustrative Claim
`Of the challenged claims, claims 17 and 27 are independent. Claim
`17, reproduced below, is illustrative of the claimed subject matter:
`17. A method of tracking inventory within an inventory
`region, comprising:
`periodically scanning the inventory region with one or more
`radio frequency antennas using a beam steering scanning
`technique, wherein one of the one or more radio
`frequency antennas scans a portion of the inventory
`region to detect one or more radio frequency tags
`disposed in a scanned portion of the inventory region,
`each of the one or more radio frequency tags being
`associated with an inventory item;
`determining a current physical location for the one or more
`detected radio frequency tags in the scanned portion
`within the inventory region based on the detection of the
`one or more radio frequency tags within a scan, wherein
`the current physical location corresponds to a position
`defined by two coordinate units in a multi-dimensional
`coordinate system and the value of each of the two
`coordinate units is determined by the one of the one or
`more radio frequency antennas, and wherein the current
`physical location for the one or more detected radio
`frequency tags is resolved to a region less than the
`coverage area of any of the radio frequency antennas;
`storing, in a computer readable memory, for each of the one or
`more detected radio frequency tags, inventory item
`information, wherein the inventory item information for a
`radio frequency tag includes an inventory item radio
`frequency tag identifier, inventory item identification
`information defining the identity of the inventory item,
`and current physical location information for the
`inventory item;
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`updating the current physical location information of at least
`one inventory item within the inventory region as stored
`in the computer readable memory based on the
`determined current physical location of the one or more
`detected radio frequency tags for the at the least one
`inventory item as determined during one or more scans;
`and
`accessing the stored inventory item information to determine
`the current physical location of the one or more of the set
`of inventory items within the inventory region.
`D. Evidence Relied Upon
`Petitioner’s patentability challenges are based on the following
`references:
`
`Reference
`Subramanian
`
`Patent/Printed Publication
`US 2013/0049925 A1
`
`Hofer
`
`Bloy
`
`Husak
`
`Takaku
`
`
`
`US 8,493,182 B2
`
`WO 2009/035723 A1
`
`US 7,667,575 B2
`
`US 2007/0046439 A1
`
`Exhibit
`1021
`
`1007
`
`1008
`
`1009
`
`1010
`
`Patent Owner asserts “[t]he Petition is fatally flawed because it
`provides no declaratory evidence of any kind.” Prelim. Resp. 5. Patent
`Owner is correct that “[t]he Board expects that most petitions and motions
`will rely upon affidavits of experts.” Prelim. Resp. 4 (quoting Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012)).
`Especially in complex cases where obviousness is asserted as a ground of
`unpatentability, “expert testimony may be critical, for example, to establish
`the existence of certain features in the prior art or the existence (or lack
`
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`thereof) of a motivation to combine references.” Wyers v. Master Lock Co.,
`616 F.3d 1231, 1240 n.5 (Fed. Cir. 2010) (citations omitted). But expert
`testimony is not a per se requirement—where the technology is simple,
`where the references are easily understandable without the need for expert
`explanatory testimony, or where the factual inquiries underlying the
`obviousness determination are not in material dispute, expert testimony,
`though it might be helpful, may not be indispensable. Allergan, Inc. v. Barr
`Labs., Inc., 501 F. App’x 965, 972 (Fed. Cir. 2013) (nonprecedential).
`Therefore, we reject a bright-line rule requiring expert testimony analyzing
`unpatentability for all petitions for inter partes review.
`At this stage of the proceedings, Petitioner has provided sufficient
`evidence and we understand the prior art disclosures without guidance of an
`expert.
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the ’057 patent claims based
`on the following grounds:
`
`Claim(s) Challenged
`17–21, 23–30
`
`17 and 27
`
`17, 25, and 27
`
`17–21 and 23–30
`
`22
`
`Basis
`§ 102
`
`§ 102
`
`§ 102
`
`§ 103
`
`§ 103
`
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`
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`Reference(s)
`Subramanian
`
`Hofer
`
`Husak
`
`Any combination of
`Subramanian, Hofer, and
`Husak
`Subramanian and Takaku
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`Patent 8,690,057 B2
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`III. CLAIM CONSTRUCTION
`Claims of an unexpired patent are interpreted using the broadest
`reasonable construction in light of the specification of the patent. See 37
`C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d
`1271, 1279–83 (Fed. Cir. 2015). Petitioner and Patent Owner offer
`respective constructions for several claim terms. See Pet. 6–13; Prelim.
`Resp. 6–11. For purposes of this decision, we determine the only claim
`language requiring express construction is the term “antenna,” recited in
`independent claims 17 and 27.
`Petitioner contends the term “antenna” should be interpreted as
`meaning “a phased array antenna comprising a plurality of antenna
`elements.” Pet. 6–11. Petitioner admits that “the usage within the [’]057
`patent at times indicates that an antenna means both an antenna system
`comprising a plurality of antenna elements, and an individual antenna element
`in such a system.” Id. at 6–7 (citing Ex. 1001, 15:27-33, 15:55-56, 16:9-12,
`16:22-26). In support of its proposed interpretation of “antenna,” Petitioner
`argues the written description in the ’057 patent does not disclose
`sufficiently or enable “an individual antenna element within an array
`detecting the physical location of an RFID tag and determining the value of
`two coordinate units.” Id. at 7. Petitioner argues that under 35 U.S.C.
`§ 318(a) the board can “issue a final written decision with respect to the
`patentability of any patent claim challenged by the petitioner” including
`under § 112. We disagree. We cannot consider a challenge to the claims as
`indefinite under 35 U.S.C. § 112 because it exceeds the scope of inter partes
`review. See 35 U.S.C. § 311(b). Petitioner asserts, without citation, that,
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`nonetheless, we “may and should construe the claim language to avoid
`interpretations which would invalidate the claims under § 112.” Id. at 7 n.1.
`In an inter partes proceeding there is no presumption of validity,
`therefore, we will not be applying a rule of construction with an aim to
`preserve the validity of claims. SAP America v. Versata Dev. Group, Inc.,
`Case CBM2012-00001, slip. op. at 17 (PTAB June 11, 2013) (Paper 70,
`Final Written Decision). Thus, we decline to consider Petitioner’s
`arguments regarding enablement or written description as they relate to
`claim construction at pages 7–8 of the Petition.
`Patent Owner contends Petitioner’s proposed definition of “antenna”
`is based on an erroneous contention that the specification is limited to phase
`array antenna systems. See Prelim. Resp. 7–8. Patent Owner argues
`because the specification teaches that the antenna system may include one
`antenna element or multiple antenna elements, applying the narrow
`interpretation of the term antenna of only the specific type of phased array
`antennas sold by the Petitioner, as suggested in the Petition, would be
`improper. Id. at 8. Patent Owner suggests the term “antenna” be interpreted
`in accordance with its plain and ordinary meaning. Id. In support of its
`proposed interpretation of “antenna,” Patent Owner relies on portions of the
`specification that describe many options for the antenna and phased array
`systems as only one example of an antenna according to the invention. Id.
`(citing Ex. 1008, 14:8–14, 28–30, 18:19-24). Patent Owner also relies on
`Merriam-Webster’s Unabridged Dictionary, 2002 but does not include an
`excerpt from the dictionary as an exhibit. Id. At issue here is whether
`“antenna” includes a phase array antenna system. Both parties appear to
`concede at least this point. See Pet. 6–11; Prelim. Resp. 7–8.
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`We do not find that a specific definition of antenna is necessary for
`the purpose of this decision. Nonetheless, we agree with Patent Owner that
`the intrinsic evidence supports an interpretation of the claim term “antenna”
`as meaning, inter alia, a single antenna. On the record before us, and for
`purposes of this decision, however, we are persuaded that one of ordinary
`skill in the art would understand the term “antenna,” when used in the claims
`as singular, refers to a single antenna. Thus, for the purpose of this decision,
`we find one of ordinary skill in the art would understand that “one of the
`plurality of radio frequency antennas” may refer to a single antenna such as
`a phase array antenna.
`
`IV. ANALYSIS
`A. Anticipation of Claims 17 and 27 by Hofer
`1. Hofer (Ex. 1007)
`Hofer discloses that each steerable phased array antenna module
`comprises an “RFID reader module 16 [which] directs an interrogation
`signal to and receives corresponding signals from the steerable phased array
`antenna 18” as well as a “beam steering unit 12 under the control of a
`location processor 14.” Ex. 1007, 2:46–50, 2:50–57. Hofer further discloses
`that “[a]n output 36 of the location processor comprises the tag identifier,
`time stamp and three dimensional location of the associated RFID tag.”
`Ex. 1007, 3:15–17. “Hofer generally describes that the steerable phased
`array antenna system scans a volume, detects RFID tags, and gathers data
`sets associated with each detected RFID which are processed by a location
`processor to derive the three-dimensional position of each detected RFID
`tag.” Pet. 27 (emphasis deleted) (citing Ex. 1007, 3:8–12, 30–33, 44–49,
`56–58.) “Hofer further discloses that the data sets include the values of the
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`two angular dimensions of a polar coordinate system (phi and theta), which
`are provided by the beam steering unit, and the value of the third coordinate
`(distance or range of the tag from the antenna) is derived from other data in
`the data set using a phase ranging algorithm.” Id. at 29 (emphases deleted)
`(citing Ex. 1007, 3:8–17, 30-33, 4:1–5:44). Hofer further discloses that
`"[a]n output 36 of the location processor comprises the tag identifier, time
`stamp and three dimensional location of the associated RPID tag.”
`Id. (citing Ex. 1007, 3:15–17).
`Hofer purports to incorporate by reference the tracking system
`described in Bloy (Ex. 1008). Ex. 1007, 1:11–29. “To incorporate material
`by reference, the host document must identify with detailed particularity
`what specific material it incorporates and clearly indicate where that
`material is found in the various documents.” Advanced Display Sys., Inc. v.
`Kent State Univ., 212 F.3d 1272, 1282–83 (Fed. Cir. 2000). Whether a
`patent describes material to be incorporated by reference with sufficient
`particularity is assessed from the perspective of a person of ordinary skill in
`the art. Id. at 1283. Hofer recites:
`Commonly owned PCT Patent Application Publication
`WO 2009/035723, titled "Radio Frequency Signal Acquisition
`and Source Location System" by Bloy et al published Mar. 19,
`2009, hereby incorporated by reference in its entirety, discloses
`a real-time RFID location system that utilizes an Intelligent
`Tracking and Control System (ITCS) coupled to one or more
`intelligent scanning antenna Signal Acquisition and Source
`Location (SASL) modules (an ITCS installation) to enable the
`accurate 3-dimensionallocation of RFID tags arbitrarily placed
`and/or moving through a defined target area (volume). Touch
`free Identification, location and/or tracking systems such as the
`ITCS object identification systems disclosed in WO
`2009/035723 enable the identification and location of tags
`and/or tagged items, attributing significance to the appearance,
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`disappearance, location or co-location of tags or tagged items
`and thereby facilitating better business process decisions.
`
`Ex. 1007, 1:11–29. Given this text from Hofer, we find the citations to Bloy
`relied on by Petitioner properly are incorporated by reference.
`2. Analysis
`Petitioner provides citations, as detailed above, to Hofer that
`correspond to the radio frequency antennas and detection controller recited
`in claims 17 and 27. Pet. 27–29. Specifically, Petitioner asserts that Hofer’s
`phased array antenna is a single antenna that meets the limitation to a
`location “one of the one or more radio frequency antennas,” recited in claims
`17 and 27. Patent Owner appears to agree that Hofer discloses a single
`antenna. Patent Owner discusses “the Hofer/Bloy single phased array
`antenna” and refers to the Hofer reference as a “single antenna reference.”
`Prelim Resp. at 36.
`Nonetheless, Patent Owner argues “[n]either Hofer nor Bloy is
`directed towards inventory management using RFID tags, or even inventory
`management of any kind, but instead deal with general methods of locating
`RFID tags.” Id. at 22. To anticipate, a prior art reference need not come
`from the same field or have the same intended function as the patent-in-suit.
`In re Schreiber, 128 F.3d 1473, 1477 (Fed.Cir.1997) (“Schreiber”). In
`Schreiber, for example, the Federal Circuit held that prior art disclosing a
`container with a conical top for dispensing liquids anticipated a patent for a
`container with a conical top for dispensing popcorn. Id. (“It is well settled
`that the recitation of a new intended use for an old product does not make a
`claim to that old product patentable.”). We note that, with respect to
`inventory tracking, the body of the claim refers only to an “inventory
`
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`region” (an area where tag detection occurs) and an “inventory item” with
`associated “inventory item information” (data to be stored and displayed).
`Additionally, Bloy does state that the invention provides tracking that may
`be useful to identify movement related to inventory tracking. Ex. 1008, 23–
`24 (Bloy at 21–22). Thus, we are persuaded, on this record, that Hofer (with
`Bloy) is directed at least in part to inventory management.
`Petitioner states that “the remaining elements of independent claims
`17 and 27 [i.e., the “storing,” “updating,” and “accessing” limitations] recite
`little more than generic computer hardware performing generic computer
`operations and add no patentable weight to independent claims 17 and 27,”
`citing to Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
`(2014) (“Alice”). Pet. 30. Petitioner’s citation to Alice appears to conflate
`subject matter eligibility issues with issues related to anticipation such as
`affording patentable weight to a limitation. In any event, we will give
`patentable weight to the allegedly generic computer operations recited in the
`tracking system and access system limitations. Nonetheless, we also find
`that the inventory tracking aspect of those limitations is an intended use in
`the claims. Schreiber, 128 F.3d at 1477.
`We also find that the specific recitation of “inventory item
`identification information defining the identity of the inventory item, and
`current physical location information for the inventory item”—upon which
`the generic computer operations are performed—is non-functional
`descriptive material related to the RFID tag which lacks patentable weight.
`Whether the recited “inventory item information” is related to an item of
`inventory does not affect the operations of the “storing,” “updating,” and
`“accessing” limitations, rather the information is simply stored and provided
`
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`to a user. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack,
`703 F.2d 1381, 1385 (Fed. Cir. 1983) (holding when descriptive material is
`not functionally related to the substrate, the descriptive material will not
`distinguish the invention from the prior art in terms of patentability). It is
`the RFID tag that has a functional relationship to the limitations of the claim,
`i.e. a fair reading of the claim reveals that the location of the inventory item
`is commensurate with the location of the RFID tag such that it is the RFID
`tag’s location which is detected and updated in claims 17 and 27.
`Given the discussion above, we examine Bloy with an understanding
`of the patentable weight to be afforded the inventory tracking aspects of the
`claim. As noted above, Bloy is directed at least in part to inventory
`management. In addition, we look to Petitioner’s citations to Bloy that
`allegedly disclose the tracking system and access system limitations recited
`in claims 17 and 27. Pet., App. C, 7–10. We are persuaded, on this record,
`by those citations. Thus, upon review of Petitioner’s analysis and supporting
`evidence, we determine that Petitioner has demonstrated that there is a
`reasonable likelihood it would prevail with respect to claims 17 and 27, on
`the ground that these claims are anticipated by Hofer (with Bloy).
`
`
`B. Anticipation of Claims 18–21, 23-26, and 28-30 by
`Subramanian
`1. Subramanian (Ex. 1006)
`Subramanian discloses an adjustable-orientation RFID tag reader
`system and method wherein one or more RFID antennas are disposed within
`a controlled interior area and operated using a computer, and the antennas
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`scan and detect RFID tags in the controlled area and maintain and update
`data about the tags in an external computer system. Ex. 1006 ¶ 12.
`2. Analysis
`Below we discuss independent claims 17 and 27, from which all other
`dependent claims challenged in this ground depend. Claim 17 and 27 recite:
`determining a current physical location for the one or more
`detected radio frequency tags in the scanned portion within the
`inventory region based on the detection of the one or more
`radio frequency tags within a scan, wherein the current physical
`location corresponds to a position defined by two coordinate
`units in a multi-dimensional coordinate system and the value of
`each of the two coordinate units is determined by the one of the
`one or more radio frequency antennas.
`
`Petitioner asserts that Subramanian’s disclosure that a “geometric
`analysis . . . using the angular orientation data for the RFID tag and the
`known physical location of the RFID tag reader system 300 to determine, at
`least, a direction in which antenna 314 was pointing at the time when RFID
`tag was detected by the RFID tag reader system 300” meets the above
`limitation. Pet. 20–21 (quoting Ex. 1006 ¶ 51). We are not persuaded by
`Petitioner’s argument or cited disclosure.
`Patent Owner argues “the starting point of an angle (the location of
`Subramanian’s system), and the value of an angle (e.g. 30 degrees) . . .
`provides nothing more than an infinite range of possible locations of the
`RFID tag.” Prelim. Resp. 15. We agree. Petitioner does not explain
`sufficiently how Subramanian provides a physical location of a tag using one
`antenna rather than a general area based on an angle at which the RFID
`reader was directed. See id.
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`Anticipation requires the disclosure in a single prior art reference of
`each and every element of the claimed invention, arranged as in the claim.
`Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730
`F.2d 1452, 1458 (Fed. Cir. 1984). We are not persuaded Petitioner has
`shown sufficiently that Subramanian discloses the above limitation of
`independent claims 17 and 27.
`Thus, upon review of Petitioner’s analysis and supporting evidence,
`we determine that Petitioner has not demonstrated that there is a reasonable
`likelihood it would prevail with respect to claims 17 or 27, or claims 18–21,
`23-26, and 28-30 that depend ultimately from claim 1, on the ground that
`these claims are anticipated by Subramanian.
`C. Anticipation of Claims 17, 25, and 27 by Husak2
`1. Husak (Ex. 1009)
`Husak discloses a “system and method of determining locations of
`one or more RFID tags within an RFID environment. The system includes a
`plurality of RFID readers, each operative to transmit and receive RF signals
`for scanning a tag disposed within an RF coverage region.” Ex. 1009,
`Abstract.
`
`2. Analysis
`Claim 17 and 27 recite:
`determining a current physical location for the one or more
`detected radio frequency tags in the scanned portion within the
`inventory region based on the detection of the one or more
`radio frequency tags within a scan, wherein the current physical
`location corresponds to a position defined by two coordinate
`units in a multi-dimensional coordinate system and the value of
`
`2 Petitioner states that claims 18–21, 23-26, and 28-30 are anticipated by
`Husak (Pet. 35), however, analysis is only given as to claim 25 (Pet. 38).
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`each of the two coordinate units is determined by the one of the
`one or more radio frequency antennas.
`
`Petitioner asserts that Husak’s disclosure of “tag location virtualization”
`discloses this limitation. Pet. 33. Specifically, Petitioner argues that in
`Husak “location of each tag within the RFID environment is [determined]
`using a detected tag identifier, the mapping of the tag data to a plurality of
`segments, and the mapping of the segments to the predefined locations
`within the environment.” Id. (quoting Ex. 1009, 33:9–13). Petitioner asserts
`“the ‘segments’ are portions of RFID interrogation zones, and thus
`correspond to a 2- or 3-dimensional volume or area.” Id. (citing Ex. 1009,
`50, 34–46. Petitioner argues “[t]he ‘mapping of the tag data’ thus comprises
`determining a location in a 2- or 3-dimensional coordinate system.” Id.
`(citing, Ex. 1009, 52:63–67). We are not persuaded by Petitioner’s
`argument or cited disclosure.
`Patent Owner argues Husak describes the overall process as matching
`a tag to the reader that detected it. Prelim. Resp. 26. (citing Ex. 1009,
`35:50–36:4 (“The tag data collected by each reader from each tag within its
`interrogation zone includes a first identifier identifying the tag and a second
`identifier identifying the reader.”). Petitioner does not explain sufficiently
`how Husak provides a current physical location of a tag rather than an
`identification of the area in which the tag is found based on predefined
`“zones” or “segments.” See Prelim. Resp. 28–29.
`Anticipation requires the disclosure in a single prior art reference of
`each and every element of the claimed invention, arranged as in the claim.
`Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730
`
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`F.2d at 1458. We are not persuaded Petitioner has shown sufficiently that
`Husak discloses the above limitation of claims 17 and 27.
`Thus, upon review of Petitioner’s analysis and supporting evidence,
`we determine that Petitioner has not demonstrated that there is a reasonable
`likelihood it would prevail with respect to claim 17 or 27, or claim 25 which
`depends ultimately from claim17 on the ground that the claim is anticipated
`by Husak.
`D. Obviousness of Claims 17–21 and 23–30 over any combination
`of Subramanian, Hofer, Husak, and/or common knowledge in
`the art
`
`
`Petitioner contends claims 17–21 and 23–30 would have been obvious
`over any combination of Subramanian, Hofer, Husak, and/or common
`knowledge in the art. Pet. 39–41.
`With respect to the motivation to combine the references, Petitioner
`contends:
`The reason to combine with respect to Petitioner’s patent
`portfolio is manifest, as [’]057 itself explains that the antennas
`which are the subject of its claims are the antennas sold by
`Petitioner, and [’]057 goes so far as to incorporate by reference
`a carefully selected patent belonging to Petitioner. As to
`Subramanian, Patent Owner provided the rationale in the
`prosecution of [’]057, in that Patent Owner claimed in its Office
`Action response that Subramanian is incapable of pinpointing
`location unless a plurality of antennas are used. While this is a
`clear mischaracterization of Subramanian, it is also a rationale
`to combine. One of ordinary skill in the art would simply use
`Hofer/Bloy’s phased array antennas, which are capable of
`pinpointing location without a plurality of antennas for the
`purpose of overcoming the asserted shortcoming of
`Subramanian or Husak. In other words, the [’]057 patent
`amounts to little more than substituting the antennas of
`Subramanian with the phase ranging antenna of Hofer. The
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`Case IPR2015-00119
`Patent 8,690,057 B2
`simple substitution of one known element for another to obtain
`predictable results is a sufficient rationale to combine. See,
`e.g., MPEP § 2143.
`Id. at 40 (emphases deleted).
`Petitioner does not assert that Subramanian provides any motivation
`for modifying its teachings with those of the secondary references, and
`Petitioner provides no explanation as to why one of ordinary skill in the art
`would look to any other reference for missing elements. Instead, Petitioner
`points to the following: (1) citations from the specification in which the
`applicant describes the invention; and (2) arguments made by the applicant
`during prosecution. Id. “The inventor's own path itself never leads to a
`conclusion of obviousness; that is hindsight. What matters is the path that
`the person of ordinary skill in the art would have followed, as evidenced by
`the pertinent prior art.” Otsuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d
`1280, 1296 (Fed. Cir. 2012).
`As to whether the combination would be a “simple substitution,” the
`Federal Circuit explains, “[a]lthough predictability is a touchstone of
`obviousness, the ‘predictable result’ discussed in KSR refers not only to the
`expectation that prior art elements are capable of being physically combined,
`but also that the combination would have worked for its intended purpose.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326
`(Fed. Cir. 2009) (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
`Petitioner has not explained sufficiently why, or identified evidence that
`shows, the invention described in the ’057 patent falls into a very predictable
`field, or that one of ordinary skill in the art would have possessed the
`requisite skills to make the proposed combination, or that one of ordinary
`skill in the art would have anticipated reasonably the combination to
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`Case IPR2015-00119
`Patent 8,690,057 B2
`function in an ordinary and expected way. See Rothman v. Target Corp.,
`556 F.3d 1310, 1319–20 (Fed. Cir. 2009).
`Finally, notably absent from Petitioner’s argument is an explanation
`of how the teachings of Subramanian, Hofer, and Husak might be combined
`to arrive at the claimed invention, e.g., by combining and applying specific
`teachings of Subramanian, Hofer, and Husak to account for all the features
`of the challenged claims. See ActiveVideo Networks, Inc. v. Verizon
`Commc'ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012).
`We acknowledge that we instituted on Hofer on the ground of
`anticipation but the ground based on obviousness requires making a
`combination we decline to make. Accordingly, we are not persuaded that
`Petitioner has shown sufficiently a motivation to combine Subramanian,
`Hofer, and/or Husak, and for the above-stated reasons, on this record, we
`determine Petitioner has not demonstrated a reasonable likelihood it would
`prevail on the ground that claims 17–21 and 23–30 would have been obvious
`over any combination of Subramanian, Hofer, and/or Husak.
`E. Claim 22—Obviousness over Subramanian and Takaku
`(Ex.1010)
`Petitioner argues that claim 22 would have been obvious over
`Subramanian and Takaku under 35 U.S.C. § 103(a). Pet. 41–42. Claim 22
`depends from independent claim 17. As discussed above, Subramanian fails
`to teach or suggest all of the elements of independent claim 17. Petitioner
`does not assert that Takaku overcomes the aforementioned deficiency in
`Subraman