Trials@uspto.gov
`571-272-7822
`
`Paper 42
`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 IPR2015-00819
`Patent 8,325,044 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
`
`

`
`IPR2015-00819
`Patent 8,325,044 B2
`
`
`I. BACKGROUND
`
`Petitioners Kapsch TrafficCom IVHS Inc. and Kapsch TrafficCom
`
`Holding Corp. (collectively, “Petitioner”)1 filed a Petition (Paper 1, “Pet.”)
`
`seeking inter partes review of claims 1–26 of U.S. Patent No. 8,325,044 B2
`
`(Ex. 1004, “the ’044 patent”) pursuant to 35 U.S.C. §§ 311–319. On
`
`September 14, 2015, we instituted an inter partes review of claims 1–3,
`
`7–12, 16–20, 23, and 24 on three grounds of unpatentability (Paper 13,
`
`“Dec. on Inst.”). Patent Owner Neology, Inc. filed a Patent Owner Response
`
`(Paper 23, “PO Resp.”), and Petitioner filed a Reply (Paper 31, “Reply”).2
`
`A combined oral hearing with Case IPR2015-008183 was held on May 10,
`
`2016, and a transcript of the hearing is included in the record (Paper 41,
`
`“Tr.”). We have jurisdiction under 35 U.S.C. § 6. This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`
`the reasons that follow, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1–3, 7–12, 16–20, 23, and 24 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, 34, 35.
`
`2 Petitioner filed redacted (Paper 33) and unredacted (Paper 31) versions of
`its Reply and other materials, along with two motions to seal, which were
`conditionally granted. See Papers 29, 34. We do not rely on any sealed
`material in this Decision.
`
`3 The ’044 patent and U.S. Patent No. 8,587,436 B2, which was challenged
`in Case IPR2015-00815, are continuations of U.S. Patent No. 8,237,568 B2
`(“the ’568 patent”), which is being challenged in Case IPR2015-00818.
`
`
`
`
`2
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`

`
`IPR2015-00819
`Patent 8,325,044 B2
`
`
`A. The ’044 Patent
`
`The ’044 patent describes a system for “verifying and tracking
`
`identification information” using “a radio frequency (RF) identification
`
`device, an identification mechanism (e.g., a card, sticker), and an RF
`
`reader/writer.” Ex. 1004, col. 1, ll. 32–46. The system facilitates electronic
`
`identification by reading data stored on the RF device (without having to
`
`contact the device) and verifying the data against known identification
`
`information. Id. at col. 2, ll. 30–57. The system also provides security by
`
`checking and validating security keys stored on the RF device before reading
`
`the data. Id. The ’044 patent explains that the system can be used in a
`
`number of different applications, such as for “vehicle identification,”
`
`“border crossing solutions,” or “toll booths.” Id. at col. 10, ll. 20–62, Fig. 4.
`
`Figure 2 of the ’044 patent is reproduced below.
`
`
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`
`3
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`IPR2015-00819
`Patent 8,325,044 B2
`
`As shown in Figure 2, dual frequency RF device 110 comprises modulator
`
`215 that receives baseband signals from an antenna, security management
`
`unit 255, cryptographic block 210, and electrically erasable programmable
`
`read-only memory (EEPROM) memory 205 that stores data. Id. at col. 2,
`
`ll. 30–57, col. 20, ll. 42–51. RF device 110 receives security keys from an
`
`RF reader, and security management unit 255 “checks and validates” the
`
`keys to “grant or deny access to the memory chip.” Id. at col. 2, ll. 51–55.
`
`
`
`B. Illustrative Claim
`
`Challenged claims 1, 10, 19, and 23 are independent. Claims 1 and 10
`
`recite limitations from the perspective of a radio-frequency identification
`
`(RFID) reader, whereas claims 19 and 23 recite limitations from the
`
`perspective of an RFID transponder. Claims 1 and 19 of the ’044 patent
`
`recite:
`
`1. A method for granting access to memory contents of
`an RFID transponder, the memory contents including an
`identifier, comprising:
`
`sending a first communication to the RFID transponder;
`
`the RFID
`to
`second communication
`sending a
`transponder that includes a security key for validation by the
`RFID transponder;
`
`receiving at least the identifier included in the memory
`contents in response to the second communication and as a
`result of validation of the security key; and
`
`comparing the identifier to an identifier stored in a
`database to determine if the two identifiers are related.
`
`19. A method for granting access to memory contents of
`an RFID transponder, the memory contents including an
`identifier, comprising:
`
`receiving a first communication from a RFID reader;
`
`
`
`
`4
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`

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`IPR2015-00819
`Patent 8,325,044 B2
`
`
`receiving a second communication from the RFID reader
`that includes a security key;
`
`granting access to the memory contents based on the
`security key; and
`
`sending at least the identifier included in the memory
`contents in response to the second communication.
`
`
`
`C. Prior Art
`
`The pending grounds of unpatentability in the instant inter partes
`
`review are based on the following prior art:
`
`U.S. Patent No. 5,627,544,
`(Ex. 1006, “Snodgrass”);
`
`issued May 6, 1997
`
`U.S. Patent No. 5,819,234, issued Oct. 6, 1998 (Ex. 1007,
`“Slavin”); and
`
`Publication
`Application
`Patent
`European
`No. EP 0762332 A2, published Mar. 12, 1997 (Ex. 1009,
`“Hurta”).
`
`
`
`D. Pending Grounds of Unpatentability
`
`The instant inter partes review involves the following grounds of
`
`unpatentability:
`
`Reference(s)
`
`Snodgrass
`
`Slavin and Snodgrass
`
`Hurta
`
`Basis
`
`Claims
`
`35 U.S.C. § 102(b) 19, 20, 23, and 24
`
`35 U.S.C. § 103(a) 1–3, 7–12, 16–20,
`23, and 24
`
`35 U.S.C. § 102(b) 1–3, 7, 10–12, 16,
`19, 20, 23, and 24
`
`
`
`5
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`

`
`IPR2015-00819
`Patent 8,325,044 B2
`
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`The Board interprets claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard as the claim interpretation standard to be
`
`applied in inter partes reviews). Under this standard, we interpret claim
`
`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
`
`into account whatever enlightenment by way of definitions or otherwise that
`
`may be afforded by the written description contained in the applicant’s
`
`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`
`We presume that claim terms have their ordinary and customary meaning.
`
`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.,
`
`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 rebut this presumption by acting as his or her own
`
`lexicographer, providing a definition of the term in the specification with
`
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`
`
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`
`6
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`

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`IPR2015-00819
`Patent 8,325,044 B2
`
`
`1. “Security Key”
`
`In the Decision on Institution, we interpreted “security key” in claims
`
`1, 10, 19, and 23 of the ’044 patent to mean a key that is checked and
`
`validated to grant or deny access to a memory, and encouraged the parties to
`
`address the term further during trial if necessary. Dec. on Inst. 6–7. The
`
`parties do not dispute this interpretation in their Patent Owner Response and
`
`Reply. See PO Resp. 12; Reply 7–8. We do not perceive any reason or
`
`evidence that compels any deviation from this interpretation. Accordingly,
`
`we adopt our previous analysis of “security key” for purposes of this
`
`Decision.
`
`
`
`2. Other Limitations
`
`In its Response, Patent Owner argues that various limitations
`
`pertaining to the “security key” should be interpreted as follows:
`
`Claim Term
`
`Proposed Interpretation
`
`1
`
`10
`
`19
`
`“receiving . . . memory
`contents . . . as a result of
`validation of the security
`key”
`
`“receive . . . memory
`contents . . . as a result of
`validation of the security
`key”
`
`“granting access to the
`memory contents based on
`the security key”
`
`being provided with protected
`information based on a key that
`is checked and validated to grant
`or deny access to the memory
`
`be provided with protected
`information based on a key that
`is checked and validated to grant
`or deny access to the memory
`
`providing 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
`
`
`
`
`7
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`

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`IPR2015-00819
`Patent 8,325,044 B2
`
`
`Claim Term
`
`23
`
`“grant access to the memory
`contents based on the
`security key”
`
`Proposed Interpretation
`
`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
`
`PO Resp. 14–16.4 According to Patent Owner, granting access “based on”
`
`the security key means 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.” Id. at 19 (citing Ex. 2032 ¶ 146). Patent Owner argues that
`
`a [person of ordinary skill in the art] would understand that the
`security key is similar to a key that unlocks a door. Without the
`key the door is closed; and in the context of the ’044 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, an 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 the
`Challenged Claims of the ’044 Patent.
`
`Id. at 15. Petitioner disagrees with various aspects of Patent Owner’s
`
`proposed interpretations, and argues that the phrases instead mean that
`
`“access to memory depends, in part, on the security key.” Reply 7–14,
`
`18–19 (emphasis omitted).
`
`
`4 With respect to the individual words of the phrases, Patent Owner argues
`that “grant access” (misquoted as “provide access”) 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. 12–13. We address the
`individual words in our discussion of the full phrases herein.
`
`
`
`
`8
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`

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`IPR2015-00819
`Patent 8,325,044 B2
`
`
`Based on our review of the full record and the parties’ arguments, we
`
`are persuaded that Patent Owner’s proposed interpretations are too narrow,
`
`and incorrectly limit the claims 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. 12–16. The claims, however, only recite information
`
`being provided from the memory contents of the RFID transponder to the
`
`RFID reader, not the RFID reader writing information to the memory. Thus,
`
`we do not include in our interpretations the concept of writing information to
`
`the memory.
`
`Second, Patent Owner appears to contend that access to the memory
`
`must be based only on checking and validating the security key (i.e., the
`
`system cannot check any other information). See id. at 15, 31–32 (arguing
`
`that Snodgrass does not teach the “granting access” limitations in claims 19
`
`and 23 because there are “several other parameters in addition to the
`
`arbitration number that must be checked”). We agree with Petitioner that the
`
`claim language is not limited in that respect. See Reply 18–19. Claim 19
`
`specifies that access to the memory contents (which include the identifier) is
`
`granted based on the security key. Claim 1 similarly recites receiving the
`
`identifier as a result of validation of the security key. Claims 10 and 23
`
`recite similar limitations. Thus, access to the memory contents is contingent
`
`on, or “based on,” the security key, which is a key that is checked and
`
`validated to grant or deny access to a memory. The claims do not include
`
`any language precluding other security checks from being performed as
`
`well. Based on Patent Owner’s locked door analogy quoted above, the
`
`parties discussed at the hearing that a door may have both a key lock and a
`
`deadbolt lock, but access to the house is still “based on” the physical key
`
`
`
`
`9
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`

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`IPR2015-00819
`Patent 8,325,044 B2
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`matching the pins in the key lock. See PO Resp. 15; Tr. 9:8–18,
`
`45:12–46:13. We agree that the “based on” and “as a result of” language in
`
`the independent claims should be read the same way.
`
`Third, Patent Owner appears to argue that the claims require all data
`
`stored in memory to be “protected” by the security key (i.e., nothing in
`
`memory may be accessible without checking and validating the security
`
`key). See PO Resp. 15, 19–28 (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
`
`“granting access” limitations in claims 19 and 23 because the REVISION
`
`data field “is accessible to the reader without the reader providing an
`
`arbitration number” (emphasis omitted)). Interpreting the limitations cited
`
`above in the manner Patent Owner suggests would be inconsistent with the
`
`language of the claims. Dependent claim 4, for example, recites sending a
`
`third communication to the RFID transponder with a second security key
`
`and “receiving further memory contents . . . as a result of validation of the
`
`second security key.” See Reply 14; Tr. 13:21–14:4. Similarly, claim 21
`
`recites receiving a third communication with a second security key,
`
`“granting access to the memory based on the second security key,” and
`
`“sending further memory contents in response to the third communication.”
`
`Access to the portion of memory storing the “further memory contents” is
`
`granted based on the “second security key,” not based on the “security key”
`
`recited in the corresponding independent claims. Thus, the claims
`
`contemplate that there are certain portions of memory for which access is
`
`granted based on the security key, and certain portions of memory that may
`
`be accessed without checking and validating the security key. Patent Owner
`
`
`
`
`10
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`

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`IPR2015-00819
`Patent 8,325,044 B2
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`agreed with this principle at the hearing. Tr. 52:9–20. Patent Owner’s
`
`declarant, Jack Goldberg, agreed as well. Ex. 1049, 56:12–57:4 (agreeing
`
`that “there may be some information [in memory] that’s protected by a
`
`security key and some information that’s not”). Accordingly, in the context
`
`of independent claims 1, 10, 19, and 23, granting access to the “memory
`
`contents” means providing the capability to read certain data stored in the
`
`memory.
`
`Fourth, Patent Owner contends that the “primary purpose” of the
`
`’044 patent (which allegedly distinguishes the claims from prior art
`
`references like Snodgrass) is to “provide security to the contents of a tag’s
`
`memory.” PO Resp. 7–8. Regardless of how the “primary purpose” of the
`
`challenged independent claims is characterized, their scope is defined by the
`
`language of the claims. The claims do not recite any encryption, and the
`
`“security” provided by virtue of the “security key” is based on what is
`
`recited expressly in the claims—validating the security key (claims 1 and
`
`10), and granting access to the memory contents based on the security key
`
`(claims 19 and 23). See Dec. on Inst. 6–7. This reading is supported by
`
`Patent Owner’s statements in a previous district court case involving related
`
`patents:
`
`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?
`
`
`
`
`11
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`IPR2015-00819
`Patent 8,325,044 B2
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`[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 9–10. We do not read any
`
`additional “security” requirements into the claims.
`
`Fifth, Patent Owner contends that “[t]he claim language of the
`
`’044 Patent . . . clearly shows that singulation is not part of the inventions.”
`
`PO Resp. 8–11. Singulation is “a method utilized in an RFID system that
`
`allows an RFID reader to identify a specific tag within a group of tags in its
`
`RF field” and avoid collisions when multiple tags are “sending and receiving
`
`signals in the same shared frequency band . . . at the same time.” Id. at 8
`
`(citing Ex. 2032 ¶ 24); see also Ex. 1014 ¶ 45 (“The process of identifying a
`
`single tag is called ‘singulation.’”). Patent Owner argues that the
`
`embodiments described in the Specification of the ’044 patent involve a
`
`single tag within the field of a reader, claims 1 and 19 “grant access to one
`
`and only one RFID transponder,” claim 10 recites “communication with one
`
`and only one RFID transponder,” and claim 23 recites “a single RFID
`
`transponder.” PO Resp. 9–11. Thus, the claims “assume[]” that
`
`“singulation has already occurred prior to any exchange of protected
`
`information and prior to the transmission of any security key.” Id.
`
`(emphasis omitted). According to Patent Owner, prior art like Snodgrass,
`
`which is directed to “singulation” rather than “security,” does not disclose
`
`granting access to memory contents “as a result of validation of the security
`
`key” or “based on the security key,” as recited in the claims. Id. at 10–11.
`
`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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`12
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`IPR2015-00819
`Patent 8,325,044 B2
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`We do not read into the challenged independent claims any limitation
`
`with respect to singulation. Neither the claims nor the Specification mention
`
`the concept. The claims recite particular sets of steps or components that are
`
`configured to perform certain steps; if those limitations are present in the
`
`prior art, the prior art may render the claims anticipated or obvious,
`
`regardless of the ultimate purpose behind why the components are so
`
`configured (e.g., for singulation or any other function).6 We also disagree
`
`with Patent Owner that the claims are limited to “one and only one” RFID
`
`transponder. See id. at 9–10. Because the claims use the open-ended term
`
`“comprising,” the fact that they recite a single “RFID transponder” does not
`
`preclude the presence of additional RFID transponders. See Amgen Inc. v.
`
`Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1344–45 (Fed. Cir. 2003)
`
`(“comprising” means that “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 quotation marks omitted)). Likewise,
`
`exemplary embodiments are described in the Specification with respect to
`
`one RF device communicating with one RF reader, but Patent Owner does
`
`not point to any language indicating that the invention is limited to
`
`communication with a single RF device. See, e.g., Ex. 1004, col. 2,
`
`ll. 22–57 (“This embodiment comprises an RF device 110 . . . and an RF
`
`reader/writer 125.”), col. 10, ll. 24–33. Thus, we do not interpret the claims
`
`
`6 Patent Owner cites the testimony of Petitioner’s declarant, Roger Stewart,
`as allegedly inconsistent with this reading, but the cited testimony pertains to
`the related ’568 patent, not the ’044 patent. See PO Resp. 10 n.2; Ex. 2022,
`204:19–205:8. Regardless, Mr. Stewart 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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`IPR2015-00819
`Patent 8,325,044 B2
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`to exclude any use of the recited components for singulation, or any
`
`requirement that singulation already have occurred; the claims mean just
`
`what they say.
`
`Accordingly, applying the broadest reasonable interpretation of the
`
`claims in light of the Specification, we interpret the disputed limitations as
`
`follows:
`
`Claim Term
`
`Interpretation
`
`“receiving at least the
`identifier included in the
`memory contents . . . as a
`result of validation of the
`security key”
`
`“receive at least the
`identifier included in the
`memory contents . . . as a
`result of validation of the
`security key”
`
`“granting access to the
`memory contents based on
`the security key”
`
`“grant access to the memory
`contents based on the
`security key”
`
`being provided with the
`identifier included in the
`memory contents based on a key
`that is checked and validated to
`grant or deny access to the
`memory contents
`
`be provided with the identifier
`included in the memory contents
`based on a key that is checked
`and validated to grant or deny
`access to the memory contents
`
`providing the capability to read
`certain contents of the memory
`(i.e., at least the identifier) based
`on checking and validating the
`security key
`
`provide the capability to read
`certain contents of the memory
`(i.e., at least the identifier) based
`on checking and validating the
`security key
`
`1
`
`10
`
`19
`
`23
`
`
`
`B. Anticipation Ground Based on Snodgrass
`
`Petitioner argues that claims 19, 20, 23, and 24 are anticipated by
`
`Snodgrass under 35 U.S.C. § 102(b), relying on the supporting testimony of
`
`
`
`
`14
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`IPR2015-00819
`Patent 8,325,044 B2
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`Mr. Stewart. Pet. 10–14 (citing Ex. 1001). We have 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 19, 20, 23, and 24 are anticipated by Snodgrass.
`
`
`
`1. Snodgrass
`
`Snodgrass describes a messaging protocol for establishing RF
`
`communication between an interrogator and a particular responder from
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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. 1006, col. 1, ll. 29–35. Figure 1 of Snodgrass is
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`reproduced below.
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`Figure 1 depicts commander station 10, which communicates wirelessly
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`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
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`the communication system application,” such as, in the case of a baggage
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`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
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`data, such as a random number (designated as the ARBITRATION
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`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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`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
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`already announced its identification to a commander station.” Id. at col. 7,
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`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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`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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`2. Analysis
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`Petitioner has presented evidence showing that Snodgrass discloses
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`every limitation of claims 19, 20, 23, and 24. Pet. 10–14. With respect to
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`claim 19, Petitioner argues that Snodgrass discloses an “RFID transponder”
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`(i.e., responder station) receiving a “first communication” (i.e., IDCG
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`command) and a “second communication” (i.e., RD command) that includes
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`a “security key” (i.e., arbitration number), granting access to memory
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`contents based on the arbitration number, and sending an “identifier”
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`(i.e., TAG or DATA) included in the memory contents. Id. at 10–14. As to
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`the limitation of “granting access to the memory contents based on the
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`security key,” Petitioner argues that the responder station in Snodgrass
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`“determines whether to respond by comparing the arbitration number in the
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`[RD] command to the arbitration number in its register array,” and when
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`there is a match, “the command station receives from the responder station
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`TAG and DATA.” Id. at 13–14. Claim 23 recites limitations similar to
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`those of claim 19, and Petitioner argues that Snodgrass teaches an “RFID
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`transponder” (i.e., responder station) with a “memory” (i.e., memory where
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`TAG and DATA are stored, such as memory 64, register array 66, or flag
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`register 84), “radio front end” (i.e., transmitter 164 and receiver 170),
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`“antenna” (i.e., antenna 168), and “processor” (i.e., arithmetic-logic unit 72
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`and microsequencer 42). Id. at 10–14. Claims 20 and 24 recite sending a
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`“response to the first communication” that includes the security key, and
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`Petitioner cites Snodgrass’s IDR response in format 192, which includes the
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`ARBITRATION NUMBER. Id. at 14. Petitioner’s analysis, supported by
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`the testimony of Mr. Stewart, is persuasive. See id. at 10–14; Ex. 1001
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`¶¶ 84–151.
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`Patent Owner argues that Snodgrass does not disclose a security key
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`that grants access to the contents of a memory, as recited in independent
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`claims 19 and 23, for four reasons. PO Resp. 18–32. First, Patent Owner
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`contends that Snodgrass’s arbitration number is not a “security key” because
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`it is “used to determine if a responder station has been addressed and not to
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`grant or deny access to memory.” Id. at 18. We are not persuaded. In
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`Snodgrass’s communication protocol, the responder station receives an
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`RD command with an arbitration number, compares the received arbitration
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`number with the one stored in memory, and provides TAG and DATA only
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`when there is a match. See Ex. 1006, col. 15, ll. 26–34; Pet. 10, 12–14;
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`Ex. 1001 ¶¶ 129–43. Importantly, the responder station does not provide
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`TAG and DATA if there is not a match, as Mr. Goldberg acknowledged.
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`See Ex. 1006, col. 15, ll. 31–34; Ex. 1049, 87:21–88:22. In other words,
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`access to TAG and DATA is contingent on a matching arbitration number
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`being sent by the commander station in the RD command. See Tr. 44:16–
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`24, 46:14–47:5 (Patent Owner acknowledging that “there’s no question the
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`arbitration number is checked” in Snodgrass, and that a matching arbitration
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`number is a “prerequisite” to sending the response to the RD command).
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`The fact that the arbitration number also serves the purpose of identifying
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`the responder station does not negate the fact that it is used by the responder
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`station to perform a comparison and only provide data from memory in the
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`case of a match. Thus, we agree with Petitioner that the arbitration number
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`in Snodgrass is a key that is checked and validated to grant or deny access to
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`a memory. See Pet. 10, 12–14.
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`Second, Patent Owner argues that “information stored in a tag’s
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`memory [in Snodgrass] can be accessed wi