Trials@uspto.gov
`571-272-7822
`
`Paper 40
`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 IPR2015-00818
`Patent 8,237,568 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`

`
`IPR2015-00818
`Patent 8,237,568 B2
`
`
`I. BACKGROUND
`
`Petitioners Kapsch TrafficCom IVHS Inc. and Kapsch TrafficCom
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`Holding Corp. (collectively, “Petitioner”)1 filed a Petition (Paper 1, “Pet.”)
`
`seeking inter partes review of claims 1–11 of U.S. Patent No. 8,237,568 B2
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`(Ex. 1004, “the ’568 patent”) pursuant to 35 U.S.C. §§ 311–319. On
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`September 14, 2015, we instituted an inter partes review of claims 1–3 and
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`6–8 on one ground of unpatentability (Paper 11, “Dec. on Inst.”). Patent
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`Owner Neology, Inc. filed a Patent Owner Response (Paper 21,
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`“PO Resp.”), and Petitioner filed a Reply (Paper 31, “Reply”).2 A combined
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`oral hearing with Case IPR2015-008193 was held on May 10, 2016, and a
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`transcript of the hearing is included in the record (Paper 39, “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. For the
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`reasons that follow, we determine that Petitioner has shown by a
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`preponderance of the evidence that claims 1–3 and 6–8 are unpatentable.
`
`
`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 1, 32, 33.
`
`2 Petitioner filed redacted (Paper 31) and unredacted (Paper 29) versions of
`its Reply and other materials, along with two motions to seal, which were
`conditionally granted. See Papers 27, 32. We do not rely on any sealed
`material in this Decision.
`
`3 U.S. Patent No. 8,587,436 B2, which was challenged in Case
`IPR2015-00815, and U.S. Patent No. 8,325,044 B2 (“the ’044 patent”),
`which is being challenged in Case IPR2015-00819, are continuations of
`the ’568 patent.
`
`
`
`
`2
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`

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`IPR2015-00818
`Patent 8,237,568 B2
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`
`A. The ’568 Patent
`
`The ’568 patent describes a system for “verifying and tracking
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`identification information” using “a radio frequency (RF) identification
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`device, an identification mechanism (e.g., a card, sticker), and an RF
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`reader/writer.” Ex. 1004, col. 1, ll. 27–40. The system facilitates electronic
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`identification by reading data stored on the RF device (without having to
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`contact the device) and verifying the data against known identification
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`information. Id. at col. 2, ll. 25–53. The system also provides security by
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`checking and validating security keys stored on the RF device before reading
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`the data. Id. The ’568 patent explains that the system can be used in a
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`number of different applications, such as for “vehicle identification,”
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`“border crossing solutions,” or “toll booths.” Id. at col. 10, ll. 11–53, Fig. 4.
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`Figure 2 of the ’568 patent is reproduced below.
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`3
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`IPR2015-00818
`Patent 8,237,568 B2
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`As shown in Figure 2, dual frequency RF device 110 comprises modulator
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`215 that receives baseband signals from an antenna, security management
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`unit 255, cryptographic block 210, and electrically erasable programmable
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`read-only memory (EEPROM) memory 205 that stores data. Id. at col. 2,
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`ll. 26–53, col. 20, ll. 32–41. RF device 110 receives security keys from an
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`RF reader, and security management unit 255 “checks and validates” the
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`keys to “grant or deny access to the memory chip.” Id. at col. 2, ll. 47–51.
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`
`
`B. Illustrative Claim
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`Claim 1 of the ’568 patent recites:
`
`1. A system of verifying registration information of a
`vehicle, the system including:
`
`a database configured to store vehicle identification
`information;
`
`a radio frequency device, the radio frequency device
`including a radio frequency antenna and a chip, the chip
`comprising:
`
`a memory, the memory configured to store a security key
`and vehicle identification information, and
`
`a processor coupled with the memory the processor
`configured to provide access to the memory based on a security
`key, the processor further configured to:
`
`receive a signal via the radio frequency antenna,
`the signal comprising a request to access the memory and
`a security key,
`
`compare the security key included in the received
`message with the security key stored in the memory,
`
`provide the vehicle information in response to the
`access request when the security keys match; and
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`a reader coupled with the database, the reader configured
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`to:
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`
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`4
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`IPR2015-00818
`Patent 8,237,568 B2
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`generate the access request, insert the security key
`into the generated request, and transmit the access
`request to the radio frequency device,
`
`receive the vehicle information from the radio
`frequency device,
`
`cause the vehicle information to be compared to
`the vehicle information stored in the database, and
`
`verify the information related to the vehicle based
`on the comparison.
`
`
`
`C. Prior Art
`
`The pending ground of unpatentability in the instant inter partes
`
`review is based on the following prior art:
`
`U.S. Patent No. 5,627,544,
`(Ex. 1009, “Snodgrass”); and
`
`issued May 6, 1997
`
`U.S. Patent No. 5,819,234, issued Oct. 6, 1998 (Ex. 1008,
`“Slavin”).
`
`
`
`D. Pending Ground of Unpatentability
`
`The instant inter partes review involves the following ground of
`
`unpatentability:
`
`References
`
`Basis
`
`Claims
`
`Slavin and Snodgrass
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`35 U.S.C. § 103(a) 1–3 and 6–8
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`
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`5
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`IPR2015-00818
`Patent 8,237,568 B2
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`II. ANALYSIS
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`A. Claim Interpretation
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`The Board interprets claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
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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
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`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
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`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).
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`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)
`
`(“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.,
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`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,
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`however, may rebut this presumption by acting as his or her own
`
`lexicographer, providing a definition of the term in the specification with
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`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994).
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`6
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`IPR2015-00818
`Patent 8,237,568 B2
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`1. Previously Interpreted Terms
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`In the Decision on Institution, we interpreted “security key” in claim 1
`
`of the ’568 patent to mean a key that is checked and validated to grant or
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`deny access to a memory, and encouraged the parties to address the term
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`further during trial if necessary. Dec. on Inst. 5–8. We also interpreted
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`“second signal” in claims 2 and 6 as referring to the “signal” of claim 1. Id.
`
`at 8–9. The parties do not dispute these interpretations in their Patent Owner
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`Response and Reply. See PO Resp. 12; Reply 7–8. We do not perceive any
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`reason or evidence that compels any deviation from these interpretations.
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`Accordingly, we adopt our previous analysis of “security key” and “second
`
`signal” for purposes of this Decision.
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`
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`2. “Provide Access to the Memory Based on a Security Key”
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`In its Response, Patent Owner argues that the phrase “provide access
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`to the memory based on a security key” in claim 1 should be interpreted to
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`mean “provide the capability to read or write protected information based on
`
`a key that is checked and validated to grant or deny access to the memory.”4
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`PO Resp. 14–15. According to Patent Owner, the phrase means that
`
`the decision to grant or deny access to the chip’s memory is
`made by the processor only after the processor has actually
`received the security key. A [person of ordinary skill in the art]
`would understand that the security key is similar to a key that
`
`
`4 With respect to the individual words of the phrase, Patent Owner argues
`that “provide access” has the same meaning as “grant access” and means
`“provide the capability to read or write information,” and “memory” means
`an “area for storing computer instructions and data for either short-term or
`long-term purposes,” where “data” is “any information, represented in
`binary, that a computer receives, processes, or outputs.” PO Resp. 13–14.
`We address the individual words in our discussion of the full phrase herein.
`
`
`
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`7
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`IPR2015-00818
`Patent 8,237,568 B2
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`unlocks a door. Without the key the door is closed; and in the
`context of the ’568 Patent, without the security key, there is no
`access to any of the information in the memory which is
`protected by the security key. Thus, [a radio-frequency
`identification (RFID)] system in which a reader has the
`capability to read or write protected information to the chip’s
`memory prior to the chip’s processor having received, checked
`and validated the security key, would not meet the limitations
`of claim 1 of the ’568 Patent.
`
`Id. at 14. Petitioner disagrees with various aspects of Patent Owner’s
`
`proposed interpretation, and argues that the phrase instead means that
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`“access to memory depends, in part, on the security key.” Reply 7–15,
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`18–20 (emphasis omitted).
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`Based on our review of the full record and the parties’ arguments, we
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`are persuaded that Patent Owner’s proposed interpretation is too narrow, and
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`incorrectly limits the claim in five respects. First, according to Patent
`
`Owner, access to the memory includes the ability to read from or write to the
`
`memory. PO Resp. 13–15. Claim 1, however, only recites information
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`being provided from the memory to the reader, not the reader writing
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`information to the memory. Thus, we do not include in our interpretation
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`the concept of writing information to the memory.
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`Second, Patent Owner appears to contend that access to the memory
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`must be based only on checking and validating the security key (i.e., the
`
`system cannot check any other information). See id. at 14, 38–39 (arguing
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`that Snodgrass does not teach the “provide access” limitation because there
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`are “several other parameters in addition to the arbitration number that must
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`be checked”). We agree with Petitioner that the claim language is not
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`limited in that respect. See Reply 18–20. Claim 1 specifies that the
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`processor is configured to compare the received security key to the one
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`
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`8
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`IPR2015-00818
`Patent 8,237,568 B2
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`stored in memory and provide the vehicle identification information from
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`memory if there is a match. Thus, access to the vehicle identification
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`information in memory is contingent on, or “based on,” the security keys
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`matching. The claim does not include any language precluding other
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`security checks from being performed as well. Based on Patent Owner’s
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`locked door analogy quoted above, the parties discussed at the hearing that a
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`door may have both a key lock and a deadbolt lock, but access to the house
`
`is still “based on” the physical key matching the pins in the key lock. See
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`PO Resp. 14; Tr. 9:8–18, 45:12–46:13. We agree that the “based on”
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`language in claim 1 should be read the same way.
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`Third, Patent Owner appears to argue that claim 1 requires all data
`
`stored in memory to be “protected” by the security key (i.e., nothing in
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`memory may be accessible without checking and validating the security
`
`key). See PO Resp. 14, 26–35 (arguing that “the tag’s decision to grant or
`
`deny access to the tag’s memory is made only after the processor has
`
`actually received the security key,” and Snodgrass does not teach the
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`“provide access” limitation because the REVISION data field “is accessible
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`to the reader without the reader providing an arbitration number” (emphasis
`
`omitted)). Interpreting claim 1 in the manner Patent Owner suggests would
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`be inconsistent with the language of the claims. Claim 1 recites that the
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`“memory [is] configured to store a security key and vehicle identification
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`information.” Thus, because the security key is in memory itself, it must be
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`accessed first so that it can be checked and validated to grant or deny access
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`to the memory. See Tr. 13:21–14:4, 19:3–9. In addition, dependent claim 4
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`recites granting access to the memory based on a received “second security
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`key,” and sending “further memory contents.” See Reply 15; Tr. 13:21–
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`
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`9
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`IPR2015-00818
`Patent 8,237,568 B2
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`14:4. Access to the portion of memory storing the “further memory
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`contents” is granted based on the “second security key,” not based on the
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`“security key” of claim 1. Thus, the claims contemplate that there are
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`certain portions of memory (i.e., at least the portion storing the vehicle
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`identification information) for which access is granted based on the security
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`key, and certain portions of memory that may be accessed without checking
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`and validating the security key (e.g., the portion storing the security key
`
`itself). Patent Owner agreed with this principle at the hearing. Tr. 52:9–20.
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`Patent Owner’s declarant, Jack Goldberg, agreed as well. Ex. 1049, 56:12–
`
`57:22 (agreeing that “there may be some information [in memory] that’s
`
`protected by a security key and some information that’s not,” such as the
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`security key itself). Accordingly, in the context of claim 1, providing access
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`to the “memory” means providing the capability to read certain data stored
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`in the memory.
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`Fourth, Patent Owner contends that the “primary purpose” of the
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`’568 patent (which allegedly distinguishes the claims from prior art
`
`references like Snodgrass) is to “provide security to the contents of a tag’s
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`memory.” PO Resp. 7–8. Regardless of how the “primary purpose” of
`
`claim 1 is characterized, its scope is defined by the language of the claim.
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`Claim 1 does not recite any encryption, and the “security” provided by virtue
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`of the “security key” is based on what is recited expressly in the claim—
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`determining whether the received security key matches the security key
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`stored in memory and providing protected information only when there is a
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`match. See Dec. on Inst. 7–8. This reading is supported by Patent Owner’s
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`statements in a previous district court case involving related patents:
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`10
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`IPR2015-00818
`Patent 8,237,568 B2
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`THE COURT: What you are saying is that the communication
`isn’t encrypted, but isn’t the information in the reader and the
`tag encrypted?
`
`[PATENT OWNER’S COUNSEL]: I don’t believe so.
`
`THE COURT: Okay. So anybody who could figure out what’s
`going on between the reader and the tag could do this?
`
`[PATENT OWNER’S COUNSEL]: Yes.
`
`THE COURT: So how is it a security key?
`
`[PATENT OWNER’S COUNSEL]: Well, it’s making sure that
`– that’s right. So it’s a low level of security potentially, if that’s
`the point. But it is making sure that I am talking to a reader
`that got my random number before I send it back. . . .
`
`Ex. 1031, 108:3–16 (emphasis added);5 see Reply 10. We do not read any
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`additional “security” requirements into the claim.
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`Fifth, Patent Owner contends that “[t]he claim language of the
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`’568 Patent . . . clearly shows that singulation is not part of the inventions.”
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`PO Resp. 8–11. Singulation is “a method utilized in an RFID system that
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`allows an RFID reader to identify a specific tag within a group of tags in its
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`RF field” and avoid collisions when multiple tags are “sending and receiving
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`signals in the same shared frequency band . . . at the same time.” Id. at 8
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`(citing Ex. 2032 ¶ 24); see also Ex. 1016 ¶ 45 (“The process of identifying a
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`single tag is called ‘singulation.’”). Patent Owner argues that the
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`embodiments described in the Specification of the ’568 patent involve a
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`single tag within the field of a reader, and claim 1 “includes one and only
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`one radio frequency device (tag).” PO Resp. 9–11. Thus, the claimed
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`system “assumes” that “singulation has already occurred prior to any
`
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`5 When citing Exhibits 1031 and 2022, we refer to the page numbers of the
`original transcript, rather than the page numbers in the lower-right corner
`added by the parties.
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`11
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`Patent 8,237,568 B2
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`exchange of protected information and prior to the transmission of any
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`security key.” Id. (emphasis omitted). According to Patent Owner, prior art
`
`like Snodgrass, which is directed to “singulation” rather than “security,”
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`does not disclose “provid[ing] access to the memory based on a security
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`key,” as recited in claim 1. Id. at 11.
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`We do not read into claim 1 any limitation with respect to singulation.
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`Neither the claim nor the Specification mention the concept. Again, claim 1
`
`recites a particular set of components that are configured to do certain
`
`things; if those components are present in the prior art, the prior art may
`
`render the claim obvious, regardless of the ultimate purpose behind why the
`
`components are so configured (e.g., for singulation or any other function).6
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`We also disagree with Patent Owner that claim 1 is limited to “one and only
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`one” radio frequency device. See id. at 10. Because claim 1 uses the
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`open-ended term “including,” the fact that it recites a single “radio
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`frequency device” does not preclude the system from having additional
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`RF devices. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
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`1313, 1344–45 (Fed. Cir. 2003) (“comprising” and “including” mean that
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`“the named elements are essential, but other elements may be added and still
`
`form a construct within the scope of the claim” (citation and internal
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`quotation marks omitted)). Likewise, exemplary embodiments are described
`
`in the Specification with respect to one RF device communicating with one
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`RF reader, but Patent Owner does not point to any language indicating that
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`the invention is limited to communication with a single RF device. See, e.g.,
`
`
`6 The testimony of Petitioner’s declarant, Roger Stewart, is consistent with
`this reading, as he testified that although the ’568 patent “wasn’t an
`anticollision patent, . . . the claims are broad enough to cover anticollision
`situations.” Ex. 2022, 204:19–205:8.
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`12
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`Ex. 1004, col. 2, ll. 19–53 (“This embodiment comprises an RF device 110
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`. . . and an RF reader/writer 125.”), col. 10, ll. 15–24. Thus, we do not
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`interpret claim 1 to exclude any use of the recited components for
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`singulation, or any requirement that singulation already have occurred; the
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`claim means just what it says.
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`Accordingly, applying the broadest reasonable interpretation of the
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`claims in light of the Specification, we interpret “provide access to the
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`memory based on a security key” to mean provide the capability to read
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`certain data stored in the memory (i.e., at least the vehicle identification
`
`information) based on checking and validating the security key.
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`
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`B. Analysis
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`Petitioner argues that claims 1–3 and 6–8 are unpatentable over Slavin
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`and Snodgrass under 35 U.S.C. § 103(a), relying on the supporting
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`testimony of Mr. Stewart. Pet. 42–57, 59 (citing Ex. 1001). We have
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`reviewed the Petition, Patent Owner Response, and Reply, as well as the
`
`evidence discussed in each of those papers, and are persuaded, by a
`
`preponderance of the evidence, that claims 1–3 and 6–8 are unpatentable
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`over Slavin and Snodgrass.
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`
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`1. Slavin
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`Slavin describes an “electronic toll collection system” where a toll
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`collection plaza receives information from RF transponders in vehicles
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`passing through the plaza. Ex. 1008, col. 1, ll. 4–8, col. 5, ll. 40–49.
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`13
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`Figure 1 of Slavin is reproduced below.
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`
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`Figure 1 depicts an automatic toll collection plaza with Roadside Collection
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`Stations (RCS’s) 24, 26, and 28 that communicate wirelessly with RF
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`transponders 30 in vehicles 16, 18, and 20. Id. at col. 5, ll. 40–49. The
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`RCS’s interrogate the transponders, and “each of the transponders 30
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`broadcasts a unique tag number associated therewith which is received and
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`correlated by the RCS’s with a toll account number of the vehicle.” Id. at
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`col. 1, ll. 33–40, col. 5, ll. 49–52. Toll plaza computer 32 uses the tag
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`number to identify the transponder and corresponding account, causes the
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`toll amount to be deducted from the account, and alerts the driver
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`accordingly (e.g., by flashing green light 34). Id. at col. 1, ll. 33–40, col. 9,
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`ll. 49–63.
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`
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`2. Snodgrass
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`Snodgrass describes a messaging protocol for establishing RF
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`communication between an interrogator and a particular responder from
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`
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`14
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`IPR2015-00818
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`among a group of responders, such as in a baggage handling system in an
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`airport terminal. Ex. 1009, col. 1, ll. 29–35. Figure 1 of Snodgrass is
`
`reproduced below.
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`
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`Figure 1 depicts commander station 10, which communicates wirelessly
`
`with a group of responder stations, including responder station 40. Id. at
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`col. 5, ll. 41–53. Responder station 40 includes register array 66, memory
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`64, flag register 84 (storing addressed-bit 86 and locked-bit 88), and random
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`number generator 90. Id. at col. 6, ll. 57–61, col. 7, ll. 40–47. “Memory 64
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`is used to store values for responder station identification and data related to
`
`the communication system application,” such as, in the case of a baggage
`
`handling system, “data describing [the] destination for the item to which the
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`tag is attached.” Id. at col. 7, ll. 12–19. Register array 66 stores additional
`
`data, such as a random number (designated as the ARBITRATION
`
`NUMBER) generated by random number generator 90. Id. at col. 7,
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`ll. 21–30, 50–55. Addressed-bit 86 is set to “indicate whether responder
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`15
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`IPR2015-00818
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`station 40 has been addressed in a received command message,” and
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`locked-bit 88 is set to “indicate whether responder station 40 should ignore
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`messages from a commander station because responder station 40 has
`
`already announced its identification to a commander station.” Id. at col. 7,
`
`ll. 40–47.
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`Snodgrass discloses a communication system protocol comprising
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`various actions taken by the commander station, shown in Figure 10, and
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`actions taken by the responder station, shown in Figure 11 reproduced
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`below.
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`
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`Figure 11 is a state diagram of the protocol followed by the responder
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`station. Id. at col. 5, ll. 26–27, col. 12, ll. 30–38.
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`The protocol begins by the commander station first broadcasting an
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`“identify, clear, and generate” (IDCG) command to a group of responder
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`stations. Id. at col. 13, ll. 40–45. The IDCG command causes each
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`responder station to “generate a random number and retain it as its
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`ARBITRATION NUMBER, and broadcast a response.” Id. at col. 13,
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`ll. 45–48, col. 15, ll. 47–52, Fig. 11 (state 318). The IDR response from
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`each responder station includes, inter alia, REVISION, LOCAL ID, and
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`ARBITRATION NUMBER data fields. Id. at col. 12, ll. 5–21, col. 15,
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`ll. 47–52, Figs. 8, 9 (format 192). REVISION is “a one-byte value set by a
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`communication system developer at the time of manufacture or
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`commissioning of a responder station,” and “represents the responder station
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`configuration and connotes its capability.” Id. at col. 12, ll. 17–21. LOCAL
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`ID is a “unique identification number assigned” to the commander station.
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`Id. at col. 11, ll. 11–14.
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`The commander station waits to receive responses and then
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`determines whether a collision between multiple responses occurred. Id. at
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`col. 13, ll. 51–57. If only one response was received, the commander station
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`“determines and validates the responding responder station’s
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`ARBITRATION NUMBER.” Id. at col. 14, ll. 7–13. The commander
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`station then selects a command to communicate with the particular
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`responder station, such as a read (RD) command, and broadcasts it to the
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`responder stations. Id. at col. 14, 13–23. The RD command includes, inter
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`alia, the ARBITRATION NUMBER identifying the responder station as the
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`one that “should act on [the] command and should reply,” and causes the
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`responder station to set its locked-bit 88. Id. at col. 11, ll. 18–22, col. 14,
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`ll. 13–23, Figs. 5, 6 (format 144).
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`In response to receiving the RD command, the responder station
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`determines whether it has been addressed by determining whether the
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`ARBITRATION NUMBER stored in its register array is “bit-wise identical
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`to [the] ARBITRATION NUMBER as received in the command.” Id. at
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`col. 15, ll. 26–32, Fig. 11 (address check state 312). If so, the responder
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`station responds with a message that includes, inter alia, its stored
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`ARBITRATION NUMBER, TAG, and DATA. Id. at col. 12, ll. 5–29,
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`Figs. 8, 9 (response format 194). TAG is a long value identifying the
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`responder station “throughout the life of the communication system
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`application,” whereas the ARBITRATION NUMBER is a short value
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`identifying the responder station only for the period of time when it is in
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`communication with a particular commander station. Id. at col. 11,
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`ll. 22–33. DATA includes data stored in various memory devices in the
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`responder station, and may include “some or all of the contents of any or all
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`devices including memory 64, register array 66, flag register 84, or random
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`number generator 90.” Id. at col. 7, ll. 13–20, col. 12, ll. 26–29. Once the
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`commander station receives a proper response to the RD command, “two
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`party uninterrupted communication between commander station 10 and one
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`responder station 60 has been established.” Id. at col. 14, ll. 23–30.
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`3. Level of Ordinary Skill in the Art
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`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
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`§ 103(a)). Petitioner’s declarant, Mr. Stewart, testifies that he believes a
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`person of ordinary skill in the art would have had “a graduate degree in
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`engineering or physics” and “at least 2–4 years of relevant experience in
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`designing and developing RFID tags and readers, including understanding
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`RFID systems and communication protocols.” Ex. 1001 ¶ 63. Patent Owner
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`argues that a person of ordinary skill in the art would have had “a university
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`degree in electrical engineering or a related field and at least two years of
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`industrial or academic experience in radio frequency data communication
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`and/or RFID systems.” PO Resp. 15–16. According to Patent Owner, a
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`person of ordinary skill in the art would have had “experience in RFID
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`communication systems and protocols,” but need not have “actually
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`developed or designed components” for such systems. Id. Petitioner
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`disagrees, arguing that design and development experience is necessary.
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`Reply 2–4.
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`Based on our review of the ’568 patent, the types of problems and
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`solutions described in the ’568 patent and cited prior art, and the testimony
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`of the parties’ declarants, we conclude that a person of ordinary skill in the
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`art would have had a degree in electrical engineering or a similar field and at
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`least two years of industrial or academic experience with radio frequency
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`data communication and/or RFID systems, including an understanding of
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`RFID systems and communication protocols. We do not include a
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`requirement of actually designing and developing RFID tags and readers.
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`The challenged claims are directed mainly to what signals are exchanged,
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`and under what circumstances, between a “radio frequency device” and
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`“reader,” not the mechanics of how the communications work. The
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`Specification of the ’568 patent also describes the physical construction of
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`such devices at a fairly high level of granularity, as does the cited prior art.
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`See, e.g., Ex. 1004, col. 2, ll. 18–59; Ex. 1008, col. 1, l. 4–col. 2, l. 48;
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`Ex. 1009, col. 5, l. 41–col. 10, l. 37. We are satisfied that an individual
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`having general experience with radio frequency data communication and/or
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`RFID systems, as well as an understanding of RFID systems and
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`communication protocols, would have been able to understand the
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`’568 patent and similar art, without having actually designed and developed
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`RFID tags and readers.
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`Applying the level of ordinary skill in the art set forth above for
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`purposes of this Decision, we conclude that both of the parties’ declarants,
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`Mr. Stewart and Mr. Goldberg, are qualified to offer expert testimony in this
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`proceeding, and we do not give Mr. Goldberg’s testimony less weight
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`merely based on his qualifications, as Petitioner advocates. See Ex. 1001
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`¶¶ 8–16; Ex. 1002 (describing the qualifications of Mr. Stewart, who has
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`bachelor’s and master’s degrees in electrical engineering and experience
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`with RF technology); Ex. 2032 ¶¶ 3–16, pp. 92–106 (describing the
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`qualifications of Mr. Goldberg, who has bachelor’s and master’s degrees in
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`electrical engineering and experience with RF technology); Reply 5–7.
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`
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`4. Claim 1
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`a. Slavin and Snodgrass Teach Every Limitation of Claim 1
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`Petitioner has presented evidence showing that Slavin and Snodgrass
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`teach every limitation of claim 1. Pet. 42–52. Specifically, Petitioner argues
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`that Snodgrass teaches a “radio frequency device” (i.e., responder station)
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`with a “memory” and “processor” that receives a signal (i.e., RD command)
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`comprising a “security key” (i.e., arbitration number), compares the received
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`arbitration number with the one stored in memory, and provides
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`identification information (i.e., TAG or DATA) when the arbitration
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`numbers match. Id. at 45–52.
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`To demonstrate how it maps the signals of Snodgrass to the signals of
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`claim 1, Petitioner provides a chart on page 44 of its Petition, the relevant
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`portion of which is reproduced below.
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`
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`Petitioner’s chart illustrates the various signals between the commander
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`station and responder station in Snodgrass. Id. at 44. Petitioner relies on
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`Slavin as teaching other limitations of claim 1, such as a “database
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`configured to store vehicle identification information” and the transmission
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`of “vehicle identification information” (i.e., the unique tag number
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`identifying the vehicle) from a transponder to a reader. Id. at 45–46, 48–49.
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`According to Petitioner, a person of ordinary skill in the art would have had
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`reason to combine Slavin’s teaching of a transponder bein