Trials@uspto.gov
`571-272-7822
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`
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`Paper 39
`Entered: September 13, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAPSCH TRAFFICCOM IVHS INC., and
`KAPSCH TRAFFICCOM HOLDING CORP.,
`Petitioner,
`
`v.
`
`NEOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00814
`Patent 6,690,264 B2
`
`
`
`Before JUSTIN T. ARBES, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
`Paper 39
`Entered: September 13, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAPSCH TRAFFICCOM IVHS INC., and
`KAPSCH TRAFFICCOM HOLDING CORP.,
`Petitioner,
`
`v.
`
`NEOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00814
`Patent 6,690,264 B2
`
`
`
`Before JUSTIN T. ARBES, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2015-00814
`Patent 6,690,264 B2
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`I. INTRODUCTION
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`This is a Final Written Decision entered in an inter partes review
`
`instituted pursuant to 35 U.S.C. § 314. For reasons discussed below, we
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`determine that Petitioner has shown by a preponderance of the evidence that
`
`claims 1–24 of U.S. Patent No. 6,690,264 B2 (Ex. 1001, “the ’264 patent”)
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`are unpatentable.
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`
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`A. Procedural History
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`Kapsch TrafficCom IVHS Inc. and Kapsch TrafficCom Holding Corp.
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`(collectively, “Petitioner”)1 filed a Petition (Paper 1, “Pet.”) seeking inter
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`partes review of claims 1–24 of the ’264 patent pursuant to 35 U.S.C.
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`§§ 311–319. On September 14, 2015, we instituted an inter partes review of
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`claims 1–24 (Paper 11, “Dec. on Inst.”). Patent Owner Neology, Inc. filed a
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`Patent Owner Response (Paper 20, “Resp.”), and Petitioner filed a Reply
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`(Paper 30, “Reply”).2 We heard oral argument on May 10, 2016, and a
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`transcript of that argument is included in the record (Paper 38, “Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6. This final written decision
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`is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`
`1 The original Petitioners were Kapsch TrafficCom IVHS Inc., Kapsch
`TrafficCom IVHS Holding Corp., Kapsch TrafficCom IVHS Technologies
`Holding Corp., Kapsch TrafficCom U.S. Corp., and Kapsch TrafficCom
`Holding Corp. During trial, Kapsch TrafficCom IVHS Holding Corp.,
`Kapsch TrafficCom IVHS Technologies Holding Corp., and Kapsch
`TrafficCom U.S. Corp. merged with Kapsch TrafficCom Holding Corp.
`See Papers 31, 32.
`
`2 Petitioner filed redacted (Paper 30) and unredacted (Paper 28) versions of
`its Reply and other materials, along with two motions to seal, which were
`conditionally granted. See Papers 26, 31. We do not rely on any sealed
`material in this Decision.
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`Patent 6,690,264 B2
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`B. Related Proceedings
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`According to Petitioner, Patent Owner asserted the ’264 patent in
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`Neology, Inc. v. Kapsch TrafficCom IVHS Inc., et al., D. Del. Case No. 1:13-
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`cv-02052-LPS. Further, according to Petitioner, Patent Owner originally
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`filed this action against Confidex, Inc. on December 19, 2013; and filed an
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`amended complaint against various Kapsch entities on February 27, 2014,
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`first serving them with the complaint on February 28, 2014. Pet. 1.
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`Patent Owner previously asserted the ’264 patent in Neology, Inc. v.
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`Federal Signal Corp., et al., Case No. 11-CV-00672-LPS-MPT (D. Del.
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`2011). In that case, all pending claims were dismissed with prejudice on
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`June 25, 2013. Pet. 1−2.
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`
`
`C. The ’264 Patent (Ex. 1004)
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`1. Background of the ’264 Patent
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`Radio-frequency identification (RFID) technology provides remote
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`identification of objects by using an RFID tag (“tag”) associated with those
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`objects. The tag wirelessly responds to an RFID reader’s interrogating
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`signal, thereby identifying items associated with the tag. Ex. 1001 ¶¶ 23−24.
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`According to Patent Owner, the ’264 patent describes improvements over a
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`prior art RFID tag disclosed by Kruest (Ex. 1009), incorporated by reference
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`into the ’264 patent Specification. Resp. 2−3; see Ex. 1004, 1:13−14.
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`2. The ’264 Patent Improvement
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`The ’264 patent criticizes Kruest because in Kruest’s disclosed
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`system, “while the chip is in the C[LOAK] state, it is impossible for the
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`reader to communicate with the tag.” Ex. 1004, 1:41−42. Kruest places an
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`RFID tag in a cloaked state by disconnecting the tag’s antenna from the
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`chip’s circuitry in response to a command to initiate cloaking. Resp. 3
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`(citing Ex. 1004, 1:12−26). The antenna remains disconnected for a
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`predetermined, finite period of time (a “cloaking period”), controlled by an
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`RC circuit. Id. During this cloaking period, the tag is unable to
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`communicate with a reader, and is thus unable to respond to any commands,
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`until the cloaking period expires. Id. (citing Ex. 1004, 1:20−26). The ’264
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`patent describes its improvement as providing a receiving connection so that
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`command signals are continuously receivable notwithstanding cloaking of
`
`the RFID tag. Ex. 1004, 1:59−62.
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`Figure 1 of the ’264 patent is reproduced below.
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`IPR2015-00814
`Patent 6,690,264 B2
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`Figure 1 is a circuit diagram of the illustrated embodiment in which
`the RFID tag remains in a condition in which command signals can
`be received during the cloaking period and in response to which the
`tag may be awakened on command. Ex. 1004, 2:18−22.
`
`Cloaking circuit 10 for an RFID tag allows it to receive command
`
`signals via diode 24 while cloaked, even though the tag is prevented from
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`responding (typically by backscattering from its antenna) to an interrogating
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`signal while cloaked.
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`During normal operation (not cloaked), “cloak” node 12, coupled to
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`the input of AND gate 16, is high. Whenever “Output” node 14 also goes
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`high (typically for 1 to 2 μsec), transistor 20, acting as a switch, connects
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`antenna 42 to ground pad 22 (via input pad 18 and diode 23). When antenna
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`42 is grounded, its impedance is such that it backscatters an interrogating
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`signal from the reader, thereby responding to it. With both output node 14
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`and cloak node 12 high (not cloaked), the output of AND gate 16 is high, the
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`antenna is grounded, and the RFID tag backscatters an interrogating signal.
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`Ex. 1004, 3:21−34.
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`Otherwise (when cloaked), antenna 42 does not backscatter an
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`interrogating signal and therefore is not “seen” by an interrogator. Id.
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`Figure 2 of the ’264 patent is reproduced below.
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`Patent 6,690,264 B2
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`Figure 2 is a timing diagram explaining operation of the
`circuit shown in Figure 1. Ex. 1004, 2:18−24.
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`
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`The envelope of the input signal is shown on line 32, the output (input to
`
`AND gate 16) at node 14 on line 34, and Cloak bar on line 36. During
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`normal operation 28 (not cloaked), when Output goes high at node 14 as
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`shown by pulse 38, backscattered pulse 40 will be presented on pad 18, i.e.,
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`a momentary grounding of antenna 42. However, during cloaked period 30,
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`Output pulse 38 is cut off from antenna 42. During cloaked operation, cloak
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`node 12 is low. Therefore, the output of AND gate 16 remains low at all
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`times, the antenna is not grounded, and no interrogating signal is
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`backscattered from RFID tag 10. Id. at 3:34−45.
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`3. Illustrative Claim
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`Claim 1 of the ’264 patent is exemplary of the claims at issue:
`
`1. An improvement in a cloaked RFID tag having an
`antenna comprising:
`
`a switch;
`
`a logic circuit coupled to said switch to selectively allow
`communication of signals through said antenna during normal
`operation to allow output of a signal from said RFID tag
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`through said antenna and to disable the output from said RFID
`tag during a cloaking period; and
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`a receiving connection to said RFID tag so that command
`signals are continuously receivable notwithstanding cloaking of
`said RFID tag.
`
`D. Pending Grounds of Unpatentability
`
`We instituted trial regarding the patentability of claims 1−24 of the
`
`’264 patent on the following grounds. Dec. on Inst. 20.
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`Reference(s)
`
`Basis
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`Claims challenged
`
`Atkins3
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`35 U.S.C. § 102(b)
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`1–24
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`Marsh4
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`35 U.S.C. § 102(b)
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`Turner5
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`35 U.S.C. § 102(b)
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`1–3, 8, 19–21, and
`24
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`1–3, 8, 19–21, and
`24
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`Kruest6 and Turner
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`35 U.S.C. § 103
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`1−24
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`II. DISCUSSION
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`A. Claim Interpretation
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`The Board interprets unexpired claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`
`3 PCT International Application Publication No. WO 98/52142, published
`November 19, 1998 (“Atkins,” Exhibit 1006).
`4 U.S. Patent No. 5,966,083–Marsh et al., issued October 12, 1999 (“Marsh,”
`Exhibit 1007).
`5 European Patent Application Publication No. EP 0 924 635 A2, published
`June 23, 1999 (“Turner,” Exhibit 1008).
`6 U.S. Patent No. 5,963,144–Kruest, issued October 5, 1999 (“Kruest,”
`Exhibit 1009).
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`7
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`Patent 6,690,264 B2
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`appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard as the claim interpretation standard to be
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`applied in inter partes reviews). Under this standard, we interpret claim
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`terms using “the broadest reasonable meaning of the words in their ordinary
`
`usage as they would be understood by one of ordinary skill in the art, taking
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`into account whatever enlightenment by way of definitions or otherwise that
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`may be afforded by the written description contained in the applicant’s
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`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`
`We presume that claim terms have their ordinary and customary meaning.
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`See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016)
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`(“Under a broadest reasonable interpretation, words of the claim must be
`
`given their plain meaning, unless such meaning is inconsistent with the
`
`specification and prosecution history.”); In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is
`
`the meaning that the term would have to a person of ordinary skill in the art
`
`in question.” (internal quotation marks omitted)). A patentee, however, may
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`rebut this presumption by acting as his or her own lexicographer, providing a
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`definition of the term in the specification with “reasonable clarity,
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`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
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`1. Previously Construed Terms
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`a. “cloak/ed/ing”
`
`In our Decision on Institution, we preliminarily construed
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`“cloak/ed/ing” as “the RFID tag’s output is disabled for a period of time
`
`during which it cannot respond to commands from a reader even though
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`8
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`command signals are continuously receivable.” Dec. on Inst. 7−8.
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`Petitioner agrees with this construction. Tr. 8.
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`Patent Owner indicates that it “adopts the Board’s construction of this
`
`term.” Resp. 8−9. However, Patent Owner comments on our construction
`
`as follows:
`
`In acknowledging this language from the SUMMARY, the
`PTAB confirmed three things in relation to the claim terms: 1)
`the term “respond” as used in the PTAB’s adopted construction
`of “cloak/ed/ing” means to “backscatter from antenna;” 2) a
`“cloaking period” is a period of time during which a tag does
`not backscatter from its antenna and; 3) a cloaked tag can
`receive a command that “lifts the tag out of its cloaked state.”
`Ex. 2030, ¶ 90. This acknowledgement is important to
`understanding other terms used in the ‘264 patent.
`
`Id. at 9.
`
`We disagree with Patent Owner’s comments. It was not and is not our
`
`intention to construe “respond” to require “backscatter from antenna,”7
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`although backscatter from antenna is one possible, and often-used, manner
`
`of responding. Nor does our construction require that a command lift the tag
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`out of its cloaked state, although that is certainly one command that can be
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`received while the tag is cloaked. Based on Patent Owner’s comments and
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`the fully developed record, we now clarify our construction of
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`“cloak/ed/ing.” Id.
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`Arguments of the parties on both sides demonstrate that construction
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`of “cloak/ed/ing” was at issue during trial and could be outcome–
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`determinative as to the asserted grounds. Patent Owner confirmed during
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`7 Our original interpretation of “cloaking period” as “a period of time during
`which a tag does not respond (backscatter from antenna) to an interrogation”
`did require backscatter. As explained below, however, we do not now
`interpret the term in that manner. See infra Section II.A.1.b.
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`9
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`oral argument that the term “cloaked” was first introduced in the Kruest
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`reference (incorporated by reference into the challenged patent). Ex. 1004,
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`1:13−14; Tr. 33. Nothing in the record contradicts this assertion. Kruest
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`used the term “cloaked” to describe a state in which an RFID tag was
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`rendered incapable of responding to an interrogator (reader) by
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`disconnecting its antenna. Ex. 1009, 2:60−3:13, 3:65–4:4, 4:51–63.
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`We take strong guidance in construing this term from Kruest, which
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`appears to be the first time the term “cloak” was used in the context of an
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`RFID tag. We are not persuaded that the term “cloak” itself evolved to
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`embrace a requirement of being able to receive commands while in a
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`cloaked state, even though that is the improvement described by the
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`’264 patent.
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`There is no description in the ’264 patent Specification that rises to
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`the level of a definition of the term “cloak/ed/ing.” Patent Owner argues
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`that we should appreciate that a cloaked tag can receive a command that lifts
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`the tag out of its cloaked state. Resp. 9.
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`We appreciate that the ’264 patent describes a circuit arrangement that
`
`permits commands to be received even when backscatter is prohibited by the
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`tag being cloaked. Commands can be received that lift the tag out of its
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`cloaked state and allow it to operate in another state, e.g., a normal state in
`
`which it is able to backscatter and thus be interrogated by a reader. Clearly
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`that is the improvement offered by the ’264 patent. However, these
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`capabilities are not required by the term “cloak/ed/ing” itself. “Cloaked”
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`merely describes a condition in which the tag is incapable of responding
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`(backscattering in an embodiment) to an interrogator signal and therefore is
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`not “seen” by the interrogator. Other words of the claims describe the
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`Patent 6,690,264 B2
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`’264patent improvement.
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`The SUMMARY portion of the ’264 patent Specification describes
`
`the improvement provided by the ’264 patent as follows:
`
`The invention is defined as an improvement in a cloaked
`RFID tag having an antenna comprising a switch and a logic
`circuit coupled to the switch. The logic circuit or gate
`selectively allows communication of signals through the
`antenna during normal operation to thereby allow output of a
`signal from the RFID tag through the antenna and to disable the
`RFID output during a cloaking period. A receiving connection
`is provided to the RFID tag so that command signals are
`continuously receivable notwithstanding cloaking of the RFID
`tag.
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`Ex. 1004, 1:53−62. We glean from this description that a cloaking period is
`
`a period of time during which a tag does not respond (e.g., backscatter from
`
`antenna) to an interrogation. We further glean that this invention
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`distinguishes itself from other tags in that during cloaked operation, signals
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`can be received even though the tag does not respond to an interrogation by
`
`a reader.
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`Patent Owner contends that the cloaking concept evolved from what
`
`was understood at the time of Kruest to what was understood at the time of
`
`the challenged patent. Tr. 38. Nevertheless, Patent Owner acknowledges
`
`that there is no clear definition of “cloaked” in the Specification of the
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`challenged patent. Id. at 37.
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`Petitioner argues that the term “cloaking” was known in the prior art
`
`before the ’264 patent. Id. at 4. The record evidence suggests that the term
`
`was known at least from Kruest, which was incorporated by reference into
`
`the challenged patent.
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`In light of the now fully developed record, we construe “cloak/ed/ing”
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`Patent 6,690,264 B2
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`as “the RFID tag does not respond to an interrogating signal.” We find that
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`this is the understanding that one of ordinary skill would have had at the
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`time of the ’264 patent invention.
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`b. “cloaking period”
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`Our preliminary construction of “cloaking period” was “a period of
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`time during which a tag does not respond (backscatter from antenna) to an
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`interrogation.” Dec. on Inst. 8.
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`Patent Owner argues that our preliminary construction is unreasonably
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`broad in that it does not take into account the fundamental novel aspect of
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`the ’264 patent. Resp. 9. According to Patent Owner and its declarant, Jack
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`Goldberg, that fundamental aspect is that the tag is able to be lifted out of its
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`cloaked state upon receipt of a command from the reader. Id. (citing Ex.
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`2030 ¶ 94). Patent Owner proposes the following construction: “the
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`predetermined and finite period of time, which may be shortened by receipt
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`of a command, during which a tag is cloaked and does not backscatter from
`
`its antenna.” Id. at 9−10 (citing Ex. 2030 ¶ 96).
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`Patent Owner has identified the improvement provided by the ’264
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`patent. However, we are not persuaded that the term “cloaking period,” as
`
`used in the claims, is so limited. The term “cloaking period” is not defined
`
`in the ’264 patent Specification and had meaning in the art (see the prior art
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`patents cited above) before the ’264 patent. The claims say nothing about
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`shortening the cloaking period by receipt of a particular command. See
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`Reply 6–7. Certainly a cloaked tag could receive a command to lift it out of
`
`its cloaked state, but we see nothing in the claim language or otherwise that
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`requires that functionality. Indeed, Patent Owner could have easily added
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`this feature to the claims. For example, claim 1 could have been drafted to
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`require that during a cloaking period, the tag can be lifted out of its cloaked
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`state upon receipt of a command from the reader. But Patent Owner did not
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`do so.8
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`Consistent with our construction of “cloak/ed/ing,” we construe
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`“cloaking period” as a “period of time during which the tag does not provide
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`a response to an interrogating signal.”
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`2. Terms Not Preliminarily Construed in Decision on Institution
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`a. “cloaked/cloakable RFID tag”
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`The term “cloaked/cloakable RFID tag” was not preliminarily
`
`construed by the Board in the Decision on Institution. Patent Owner asks
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`that we construe this term to avoid conflict or confusion with the construed
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`term “cloak/ed/ing.” Resp. 11.
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`According to Patent Owner, the term “cloaked/cloakable RFID tag” as
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`used in the context of the challenged claims should be construed to mean “an
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`RFID tag whose output is disabled for a period of time during which it
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`cannot respond to commands from a reader even though command signals
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`are continuously receivable.” Id.; Ex. 2030 ¶ 97.
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`Consistent with our construction of “cloak/ed/ing,” we construe
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`“cloaked/cloakable RFID tag” as “an RFID tag that does not provide a
`
`response to an interrogating signal.” Claim 1, for example, states
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`specifically that “command signals are continuously receivable
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`notwithstanding cloaking of said RFID tag.” It would be superfluous to
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`8 Indeed, claim 1 of U.S. Patent No. 7,064,653 B2 (Ex. 1038), which is a
`continuation of the ’264 patent, recites “disabling an output of an RFID tag
`during a cloaking operation,” “receiving input transmissions regardless of
`the cloaking operation,” and “enabling the output of the RFID tag responsive
`to an input transmission received during the cloaking operation.” See
`Tr. 59:9–18.
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`include a similar limitation in the construction of “cloaked RFID tag” in the
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`preamble of claim 1.
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`b. “cloaking operation”
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`We did not preliminarily construe “cloaking operation” in our
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`Decision on Institution. This term appears in independent claim 19 as well
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`as dependent claims 20, 23, and 24.
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`Patent Owner asks that we construe this term “to avoid conflict or
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`confusion with the construed term “cloak/ed/ing.” Resp. 11. In particular,
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`Patent Owner asks that we construe this term to mean “cloaking period.” Id.
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`We agree with Patent Owner that in all instances in the ‘264 patent, this term
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`is expressed as a period of time. In claim 19, for example, it appears in the
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`limitation “receiving command signals by said RFID tag through said
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`antenna during said cloaking operation.” In claim 23, the term appears in
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`the limitation “by selectively isolating said data signals from said switch
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`coupled between said antenna and ground during cloaking operation.” In the
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`written description of the ’264 patent, the phrase “during the cloaking
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`operation” also appears. Ex. 1004, 2:5–9. In fact, nowhere in the ’264
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`patent does the term “cloaking operation” appear without being preceded by
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`“during” or “during the/said.” Accordingly, construing “cloaking operation”
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`to mean “cloaking period” is supported by the Specification and reflects the
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`broadest reasonable construction of that term.
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`c. “switch”
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`We did not preliminarily construe “switch” in our Decision on
`
`Institution.
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`Patent Owner proposes that we construe “switch” to be “an electrical
`
`or mechanical device used for opening, closing, or changing a connection of
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`an antenna circuit.” Resp. 12 (citing Ex. 2030 ¶¶ 100, 108, 114−15,
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`99−115). According to Patent Owner, its proposed construction would be
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`“consistent with the ‘264 Patent being involved with the backscattering of
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`data from the tag.” Id. At oral argument, Patent Owner stressed that
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`“switch” should be construed as requiring more than a flip-flop or flag in
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`memory. Tr. 46.
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`Petitioner argues that Patent Owner’s proposed construction of
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`“switch” is too narrow in that it attempts to limit “switch” to item 20 of
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`Figure 1 of the ’264 patent. Reply 15−17.
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`We find Patent Owner’s construction to be unreasonably narrow.
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`The context in which the word “switch” is used conveys the configuration of
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`the switch and its function. We adopt a more reasonable construction of
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`“switch” as “an electrical or mechanical device used for opening, closing, or
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`changing a circuit connection.”
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`We find no reason to limit the term “switch” itself to an antenna
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`circuit. For example, claim 22 uses additional words to describe how the
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`claimed switch functions in circuit. It states “selectively grounding said
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`antenna through a switch coupled between said antenna and ground during
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`normal operation.” Claim 1 requires the switch to be coupled to a logic
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`circuit. It further specifies the function of the switch in that it requires
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`“selectively allow[ing] communication of signals through [an] antenna”
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`based on whether or not cloaking is in effect. Claim 9 specifies that the
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`switch is a “switching transistor.” As another example, claim 4 requires a
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`specific placement of the switch in circuit between an antenna and ground.
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`Clearly, the claim drafter had no difficulty describing various circuit
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`configurations setting forth how a switch is configured in a circuit and how
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`it functions in that circuit. It would be unreasonable to include in the
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`construction of the word “switch” itself any particular circuit configuration
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`or utilization easily provided by other words of a claim.
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`d. “disabling communication of data signals . . . during cloaking”
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`The claim term “disabling communication of data signals . . . during
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`cloaking” appears in independent method claim 19.
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`Patent Owner argues that this claim term should be construed to mean
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`that “data signals which are present during cloaking are not communicated
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`in that communication of those data signals is disabled.” Resp. 12 (citing
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`Ex. 2030 ¶¶ 116−17). Thus, according to Patent Owner, an RFID tag that
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`does not generate data during cloaking could not practice a claimed step of
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`“disabling communication of data signals . . . during cloaking” because there
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`would be no data of which to disable the communication. Id. at 12−13.
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`For clarity, we construe the phrase “disabling communication of data
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`signals . . . during cloaking” to require that it is not possible to communicate
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`data signals during cloaked operation. According to our construction, an
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`RFID tag that does not generate data during cloaking would satisfy the claim
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`limitation of “disabling communication of data signals . . . during cloaking.”
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`Patent Owner has provided no persuasive reason to construe this claim term
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`as requiring that an RFID tag actually generate data that is then blocked
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`from being communicated. We agree with Petitioner that Patent Owner’s
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`proposed interpretation adds to the claim an explicit step of generating data
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`signals that is not present. Reply 12–13.
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`e. “logic circuit . . . isolates signals from said switch
`during said cloaking operation” and “isolating data
`signals from said switch . . . during cloaking operation”
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`Patent Owner asks that we construe “logic circuit . . . isolates signals
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`from said switch during said cloaking operation” and “isolating data signals
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`from said switch . . . during cloaking operation.” Resp. 13. The claim term
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`“logic circuit . . . isolates signals from said switch during said cloaking
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`operation” appears in claims 6 and 7, which depend on claim 1, and also
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`appears in claims 15 and 16, which depend on claim 10. The claim term
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`“isolating said data signals from said switch . . . during cloaking operation”
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`appears in claim 23, which depends on claim 22 which in turn depends on
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`independent method claim 19.
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`According to Patent Owner, these terms should be given their plain
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`and ordinary meaning. Id. Patent Owner points to The American Heritage
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`Dictionary of The English Language, Third Edition, 1992, which defines
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`“isolate” as “to set apart or cut off from others.” Ex. 2030 ¶ 118 (citing Ex.
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`2045, 956). Patent Owner argues that in the context of the ’264 patent, one
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`of ordinary skill would have understood that a logic circuit that isolates
`
`signals from a switch sets apart or cuts off the signals from the switch.
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`Resp. 13 (citing Ex. 2030 ¶ 118). Likewise, a person of ordinary skill would
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`have understood that “isolating data signals” from a switch means to set
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`apart or cut off those data signals from the switch. Id. (citing Ex. 2030
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`¶ 120). According to Patent Owner, one of ordinary skill would have
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`understood that in order to isolate signals, those signals “must be present.”
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`Id.
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`Thus, according to Patent Owner, a tag in which there are no signals
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`to be isolated present at the logic circuit during cloaking does not meet the
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`“isolate” limitation in claims 6, 7, 15 or 16; and such a tag also does not
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`practice the “isolating” step of claim 23. Id.
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`Petitioner argues that, similar to the “disabling” limitations, Patent
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`Owner’s proposed interpretation is illogical because there is no point in
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`generating data if the tag is not going to communicate it. Reply 19–20.
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`We regard Patent Owner’s proposed construction as being too narrow.
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`We construe the claim terms requiring “disabling” or isolating data only to
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`the extent that we hold these terms do not require that signals actually be
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`generated in order to be disabled or isolated from being transmitted.
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`B. Challenge Based on Atkins (Ex. 1006)
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`1. Overview of Atkins
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`Figure 2 of Atkins is reproduced below.
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`Atkins Figure 2 is a block diagram showing an interrogator and
`three transponders (RFID tags) according to an embodiment.
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`
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`Atkins describes a method and an identification system for communicating
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`between reader (interrogator) 10 and transponders 1, 2, 3. Reader 10 has
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`transmitter 11 for transmitting a signal. Each transponder 1, 2, 3 includes a
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`receiver for receiving the reader signal and a transmitter for generating a
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`transponder signal. When reader 10 recognizes a transponder signal from
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`one of the transponders 1, it issues a mute instruction, muting all other active
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`transponders 2, 3 and passing control to transponder 1, without the need for
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`a specifically timed acknowledgement to transponder 1. Reader 10 may
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`issue a single disable/wakeup instruction which disables the controlling
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`transponder 1, returning control to the reader 10 and reactivating all muted
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`(but not disabled) transponders 2, 3. Ex. 1006, 1.9 The “mute” instruction is
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`communicated in the form of a “gap,” the length of which is ascertained by a
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`gap length detector in the tag. When a tag’s normal (random) wait to
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`respond period ends, it checks to see if the “mute” flag is still set to prohibit
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`transmission. Id. at 10.
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`Figure 4 of Atkins is reproduced below.
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`
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`Atkins Figure 4 is a block diagram of a transponder
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`9 Exhibit page numbers reflect the actual page of the exhibit and not the
`printed page number of the document internal to the exhibit.
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`19
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`according to an embodiment.
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`Figure 4 is a block and schematic diagram of a tag which may be used
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`with the reader of Atkins Figure 2. The tag includes a dipole antenna having
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`poles 60 and 61. Atkins discloses:
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`A code generator 62, when enabled by a logic circuit 64,
`modulates transistor Q1 with a code, using Manchester coding
`(signal 77). The timing for the code generator is derived from a
`local oscillator 66. Diodes D1 and D2 in combination with a
`capacitor C1 supply the power for [the] tag. The oscillator is
`disconnected from the random wait time generator when either
`FFl or FF2 is in the reset state (signals 70 and 72). FFl is set
`only when the tag is powered up and resets when the tag is
`switched off after being read successfully. FF2 is in the reset
`state when the tag is muted and in the set state on power up and
`when the tag is in its normal operating mode. When the tag
`initially receives the reader signal FFl will be in the set state.
`On power up the logic circuit 64 triggers the random wait timer
`63 to select a random value and begin a countdown.
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`Id. at 10–11.
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`2. Petitioner Contentions
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`Petitioner provides a detailed explanation of how Atkins discloses all
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`of the limitations of claims 1−24 at pages 10−23 of the Petition. The
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`Petition makes frequent reference to the declaration testimony of Roger
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`Stewart (Ex. 1001), which we find generally supports the arguments set forth
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`in the Petition. Petitioner provides on page 11 of the Petition an annotated
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`version of Atkins Figure 4, reproduced below, which summarizes
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`Petitioner’s argued correspondence between Atkins and the main elements
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`of the challenged claims.
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`Petitioner reads the claimed antenna on Atkins antenna elements 60
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`and 61; the claimed receiving connection on Atkins diode D3; the claimed
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`switch on Atkins transistor Q1; the claimed input circuit on Atkins bus 68;
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`the claimed logic circuit on Atkins circuit 67; and the claimed ground on
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`Atkins ground path (no reference numeral) at center bottom of Figure 11.
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`Pet. 10−23.
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`Petitioner argues that RFID tag output is disabled during a cloaking
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`period by the operation of logic circuit 19 disabling generation of the output
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`signal. Pet. 12–13; see Tr. 21. Petitioner’s analysis of claims 1–24,
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`supported by the testimony of Mr. Stewart, is persuasive. See Pet. 10–23;
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`Ex. 1001 ¶¶ 80–135.
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`3. Patent Owner Contentions
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`Patent Owner characterizes Atkins as a “tag-talks-first” system. Resp.
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`16. An interrogator (reader) “‘broadcasts an interrogation signal’ ‘to a
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`number of passive transponders’ which derive power from the interrogation
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`signal ‘to generate a response signal, which is transmitted back to the
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`interrogator.’” Id. at 18 (citing Ex. 1006 ¶ 2; Ex. 2030 ¶ 128). Each tag,
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`upon r
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