Trials@uspto.gov Paper No. 60
`Tel: 571-272-7822
`
`Entered: March 20, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KAPSCH TRAFFICCOM IVHS INC.,
`Petitioner,
`
`v.
`
`NEOLOGY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01763
`Patent 8,944,337 B2
`_______________
`
`
`Before JUSTIN T. ARBES, TREVOR M. JEFFERSON, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`37 C.F.R. § 42.73
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Entered: March 20, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KAPSCH TRAFFICCOM IVHS INC.,
`Petitioner,
`
`v.
`
`NEOLOGY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01763
`Patent 8,944,337 B2
`_______________
`
`
`Before JUSTIN T. ARBES, TREVOR M. JEFFERSON, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2016-01763
`Patent 8,944,337 B2
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`I. INTRODUCTION
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision (“Final Written Decision”) is issued
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`discussed herein, we determine that Kapsch TrafficCom IVHS Inc.
`(“Petitioner”)1 has shown, by a preponderance of the evidence, that
`claims 1–9 of U.S. Patent No. 8,944,337 B2 (Ex. 1004, “the ’337 patent”)
`are unpatentable. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`A. Procedural History
`Petitioner filed a Petition for inter partes review of claims 1–9 of the
`’337 patent (Paper 1, “Petition” or “Pet.”) and Neology, Inc. (“Patent
`Owner”)2 subsequently filed a Preliminary Response (Paper 7, “Prelim.
`Resp.”). On March 21, 2017, we instituted an inter partes review to
`determine whether claims 1–6 of the ’337 patent are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Atherton,3 whether claim 7 of the ’337
`patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the
`combination of Atherton and Kubo,4 and whether claims 7–9 of the ’337
`patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the
`
`
`1 Petitioner identifies as real parties in interest, pursuant to 37 C.F.R. § 42.8,
`Kapsch TrafficCom Holding Corp., Kapsch TrafficCom Holding II US
`Corp., Kapsch TrafficCom B.V., and Kapsch TrafficCom AG. Paper 1, 1.
`2 Patent Owner identifies as real parties in interest, pursuant to 37 C.F.R.
`§ 42.8, Neology, Inc. and SMARTRAC N.V. Paper 5, 1.
`3 PCT Int’l Application Publication No. WO 2008/074050 A1 (Ex. 1006)
`(“Atherton”).
`4 U.S. Patent No. 7,460,018 B2 (Ex. 1007) (“Kubo”).
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`combination of Atherton and Roesner.5 Paper 8, 34 (“Institution Decision”
`or “Inst. Dec.”).
`After institution, Patent Owner filed a Response. Paper 12
`(“Response” or “PO Resp.”). Petitioner thereafter filed a Reply to Patent
`Owner’s Response. Paper 16 (“Reply”).
`Patent Owner also filed a Contingent Motion to Amend [Claims]
`Pursuant to 37 C.F.R. § 42.121(a), which proposes substitute claims 10–18
`as substitutes for claims 1–9, respectively, should we determine claims 1–9
`are unpatentable. Paper 13 (“Motion to Amend” or “Mot.”). Petitioner
`thereafter filed an Opposition to Patent Owner’s Motion to Amend.
`Paper 58 (“Opposition” or “Opp.”).6 Patent Owner subsequently filed a
`Reply to Petitioner’s Opposition. Paper 20 (“Reply to Petitioner’s
`Opposition” or “Reply to Opp.”). In view of Aqua Products, Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017), we authorized Petitioner to file a sur-reply
`to Patent Owner’s Reply to Petitioner’s Opposition. Paper 31 (“Sur-
`Reply”); see also Paper 23 (authorizing Sur-Reply). Thereafter, Patent
`Owner filed an authorized sur-sur-reply to Petitioner’s Sur-Reply. Paper 50
`(“Sur-Sur-Reply”); see also Paper 49 (authorizing Sur-Sur-Reply).
`An oral hearing was held on January 12, 2018. A transcript of the
`hearing is included in the record. Paper 59 (“Tr.”).
`
`
`5 U.S. Pat. Publication No. 2010/0302012 A1 (Ex. 1009) (“Roesner”).
`6 Petitioner filed an errata (Paper 25) to its original Opposition (Paper 17).
`We later directed Petitioner to instead file a corrected version of the
`Opposition. See Paper 58; Paper 59, 61:8–21.
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`B. Additional Proceedings
`The parties indicate they are not aware of any related matters, under
`37 C.F.R § 42.8(b)(2), to this proceeding. Pet. 1; Paper 5.
`
`C. The ’337 Patent
`The patent application leading to the ’337 patent, U.S. Patent
`Application No. 14/060,407 (“the ’407 application”),7 was filed on
`October 22, 2013. Ex. 1004, [21], [22]. The ’337 patent is a continuation of
`U.S. Patent Application No. 13/465,834 (“the ’834 application”),8 filed on
`May 7, 2012, now U.S. Patent No. 8,561,911 (“the ’911 patent”). Id. at [63].
`The ’337 patent also identifies the following related provisional patent
`applications: U.S. Provisional Patent Application No. 61/487,372
`(Ex. 2024, “the ’372 provisional application”), filed on May 18, 2011; and
`U.S. Provisional Patent Application No. 61/483,586 (Ex. 2023, “the ’586
`provisional application”), filed on May 6, 2011. Id. at [60]. Accordingly,
`the earliest possible priority date of the ’337 patent is May 6, 2011.
` The ’337 patent generally relates to a radio frequency identification
`(RFID) tag that may be manually activated and deactivated using a switch
`device. Ex. 1004, Abstract. The ’337 patent specification discloses that
`RFID tags may often contain sensitive information, such as a person’s name,
`
`
`7 Patent Owner filed U.S. Patent Application Publication No. 2014/0175177
`A1, the publication of the ’407 application, as Exhibit 2026. The parties do
`not appear to have filed a copy of the ’407 application as filed (on October
`22, 2013). As such, we include a copy in the record as Exhibit 3001, and
`observe that it appears to have the same written description as Exhibit 2026.
`We also cite to Exhibit 2026 herein, as the parties do in their papers.
`8 Patent Owner filed U.S. Patent Application Publication No. 2012/0280045
`A1, the publication of the ’834 application, as Exhibit 2025.
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`birthdate, and place of birth, for example in the context of an e-Passport or
`visa. Id. at 1:13–19. In this example, the sensitive information contained on
`the RFID tag is intended to be read by only authorized personnel, such as
`customs officials. Id. at 1:19–21. Because RFID tags transmit signals up to
`30 feet away, however, and need not be in the line of sight of an RFID tag
`reader in order for the signal it transmits to be read, unauthorized individuals
`may be able to access the sensitive information stored on an RFID tag. Id. at
`1:21–26. According to the ’337 patent specification, a need therefore
`existed for an RFID tag that could be easily activated when a user desired
`that it be read, and easily deactivated otherwise. Id. at 1:44–45. The ’337
`patent specification further discloses that a clear sensory indication of the
`operational status of the RFID tag (i.e., activated or deactivated) ideally
`should be provided. Id. at 1:45–47. Figures 2A–2C of the ’337 patent,
`reproduced below, depict block diagrams of exemplary embodiments of a
`system including an RFID tag that may be activated and deactivated:
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`Ex. 1004, Figs. 2A–2C. Figure 2A depicts RF module 220, which may
`include an RFID integrated circuit connected to a conductive trace pattern in
`the same plane as the integrated circuit. Id. at 6:39–42. RF module 220 is
`fully functional, but its operational range is limited due to the small surface
`area of the conductive trace pattern. Id. at 6:42–45. Figure 2A also depicts
`booster antenna 210, which when coupled with RF module 220, may
`increase the module’s operational range. Id. 6:46–50. RF module 220 and
`booster antenna 210 are housed in RFID tag 110, as depicted in Figure 2C.
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`The placement of RF module 220 with respect to booster antenna 210 affects
`the operational range and performance of RFID tag 110. Id. at 7:3–5. This
`is illustrated in Figures 2A and 2B. When arranged as depicted in
`Figure 2A, the energy collected by booster antenna 210 is transferred into
`RF module 220. Id. at 6:55–61. When arranged as depicted in Figure 2B, a
`smaller portion or none of the energy collected by booster antenna 210 is
`transferred to RF module 220, thus diminishing the operational range of
`RFID tag 110. Id. at 7:8–13. In addition, because in the arrangement shown
`in Figure 2B RF module 220 is shielded partly or completely by booster
`antenna 210, RFID communications between RFID tag 110 and the RFID
`reader may be completely halted, rendering the tag non-operational. Id. at
`7:13–18.
`Slider mechanism 240, depicted in Figure 2C, may be mechanically
`coupled to RF module 240 so that the placement of the module with respect
`to booster antenna 210 can be manipulated between an operational state and
`non-operational state by sliding the position of the slider. Id. at 7:37–42. In
`addition, RFID tag 110 may also include indicator area 250 to provide a
`visual indication of the status (i.e., operational/activated or non-
`operational/deactivated) of RFID tag 110. Id. at 7:42–43. For example, the
`visual indication could be a color, such as green when the status is active and
`red when the status is inactive. Id. at 7:44–51.
`
`D. Challenged Claims
`Of the challenged claims noted above, claim 1 is independent, and
`claims 2–9 depend therefrom.
`Claim 1 is reproduced below:
`1. An RFID device comprising:
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`a booster antenna adapted to extend the operational range of the
`RFID device;
`an RFID module comprising an integrated circuit and a set of one
`or more conductive traces, wherein at least one conductive trace
`of said set of one or more conductive traces is adapted to
`electrically couple to a coupling region of the booster antenna
`when the coupling region of the booster antenna is located in a
`first position relative to said set of one or more conductive traces;
`and
`a switching mechanism adapted to change the position of the
`coupling region of the booster antenna relative to the position of
`said at least one conductive trace.
`Ex. 1004, 10:65–11:10.
`
`II. DISCUSSION
`
`A. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious under
`35 U.S.C. § 103 at the time it was made, we must first resolve the level of
`ordinary skill in the pertinent art at the time of invention. Graham v. John
`Deere Co., 383 U.S. 1, 17 (1966). Factors that may be considered in
`determining the level or ordinary skill in the art include, but are not limited
`to, the types of problems encountered in the art, the sophistication of the
`technology, and educational level of active workers in the field. In re
`GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`Petitioner’s declarant, Bruce Roesner, Ph.D., opines that a person of
`ordinary skill in the art in the field of the ’337 patent would have had the
`following level of experience:
`either (1) a graduate degree in electrical engineering,
`physics, computer science, or the equivalent, and at least two
`years of industry or academic experience in RFID systems or
`radio frequency data communications, or (2) a bachelor’s
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`degree in electrical engineering, physics, computer science,
`or the equivalent, and at least four years of industry or
`academic experience in RFID systems or radio frequency
`data communications.
`Ex. 1001 ¶ 63.
`Patent Owner’s declarant, Jeffrey Fischer, opines that a person of
`ordinary skill in the art in the field of the ’337 patent
`would have had a university degree in electrical engineering
`and at least 2 years of industrial or academic experience in
`wireless communications technology, RF circuit design,
`antenna design, and/or RFID systems, or an advanced degree
`in electrical engineering and at least 1 year[] of industrial or
`academic experience in RF circuit design.
`Ex. 2028 ¶ 28.
`We determine that the differences between the declarants’ assertions
`are immaterial to our analysis and that both assessments are consistent with
`the ’337 patent and the referenced prior art. For purposes of our
`determination below, we determine that a person of ordinary skill in the art
`with respect to the ’337 patent would have had a bachelor’s degree or
`graduate degree in electrical engineering, physics, computer science, or the
`equivalent, and would have had between one to four years of industrial or
`academic experience in wireless communications technology, RF circuit
`design, antenna design, RFID systems, and/or radio frequency data
`communications. However, we note our factual findings and legal
`conclusions set forth below would not have differed had we adopted either
`Dr. Roesner’s or Mr. Fischer’s assessment.
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`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their “broadest reasonable construction in light of
`the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b);
`see also Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2141–46
`(2016). 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). “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.” Trivascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). Below we discuss
`our interpretations of the terms “booster antenna” and “switching
`mechanism.”
`For purposes of this Final Written Decision, we determine no other
`claim terms require express construction. See Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only
`be construed ‘to the extent necessary to resolve the controversy.’”) (quoting
`Vivid Techs. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`1. “booster antenna”
`In the Petition, Petitioner proposed we construe “booster antenna” as
`an “antenna used to gather RF energy.” Pet. 4. Patent Owner proposed in
`its Preliminary Response that we construe this term to mean “an antenna that
`couples with a primary antenna to boost the signal for the primary antenna.”
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`Prelim. Resp. 11. In the Institution Decision, we determined that “[b]ecause
`claim 1 already recites that the ‘booster antenna’ is ‘adapted to extend the
`operational range of the RFID device,’ no further construction is necessary
`at this time.” Inst. Dec. 8. Subsequent to our Institution Decision, neither
`party further argued construction of this claim term, and neither party raised
`any issues that would necessitate further construction. Accordingly, we do
`not further construe this claim term.
`2. “switching mechanism”
`Claim 1 recites “a switching mechanism adapted to change the
`position of the coupling region of the booster antenna relative to the position
`of said at least one conductive trace.” Ex. 1004, 11:8–10 (emphasis added).
`In our Institution Decision, we construed the term “switching mechanism” as
`“any device or construction which serves the purpose of selectively altering
`or switching the position of the claimed coupling region of the booster
`antenna relative to the position of the claimed at least one conductive trace.”
`Inst. Dec. 9. Petitioner does not dispute our construction. Reply 2. For
`reasons that follow, our construction of this term remains unchanged for
`purposes of this Final Written Decision.
`The claim language expressly sets forth the functionality of the
`claimed “switching mechanism,” namely that it is “adapted to change the
`position” of one thing relative to another. Ex. 1004, 11:8–10. Based on this
`claim language, one reasonable interpretation is that the word “switching”
`means “changing.” This interpretation is consistent with at least one
`dictionary definition of the word “switching,” indicating the term’s plain
`meaning. See Ex. 2027, 1439 (defining the verb form of “switch” as “14. to
`turn, shift, or divert”). This is also consistent with the ’337 patent
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`specification, which describes a “mechanism” for selectively “altering” the
`relative positions of the booster antenna and RF module, and refers to a
`“switching mechanism” adapted to “switch” or “change” relative positions.
`Ex. 1004, 7:24–26; id. at 2:25–27 (disclosing “a switching mechanism
`adapted to switch the position of the first substrate between a first position
`and at least a second position”); id. at 2:10–13 (disclosing “a switching
`mechanism adapted to change the position of the coupling region of the
`booster antenna relative to the position of said at least one conductive
`trace”).
`The ’337 patent specification also sheds light on what is meant by the
`term “mechanism,” namely that it “may include a switch, lever, knob slider,
`rotatable member, or any other device or construction which serves [the]
`purpose” of selectively altering the position of one thing relative to another:
`In some embodiments, a mechanism is provided for selectively
`altering the relative positions of the RF module 220 and the
`booster antenna 210. . . . In various embodiments, the mechanism
`may include a switch, lever, knob slider, rotatable member, or
`any other device or construction which serves this purpose.
`Ex. 1004, 7:24–36 (emphasis added); see also id. at 6:31–36 (describing
`“activation of a lever, switch, knob, slider, rotating member, or other similar
`structure”), 7:65–8:1 (describing a “mechanism (e.g., switch, slider, knob,
`lever, rotatable member, etc.) such as the slider 240 depicted in FIG. 2C”).
`Therefore, consistent with the plain and ordinary meaning of the word
`“switching,” the claim language, and the ’337 patent specification, the
`claimed “switching mechanism” may be any device or construction that
`serves the purpose of changing the position of the coupling region of the
`claimed booster antenna relative to the position of the claimed at least one
`conductive trace.
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`In the Preliminary Response, Patent Owner urged us to construe the
`term more narrowly as “a mechanism comprising a lever, switch, knob,
`slider, rotatable member, or similar mechanical structure with discrete
`positions” (Prelim. Resp. 11), but we determined Patent Owner’s
`construction was too narrow in light of the claim language and the ’337
`patent specification (Inst. Dec. 8–9).
`Subsequent to our Institution Decision, Patent Owner proposes we
`construe the term “switching mechanism” as “an assembly of moving parts
`performing the functional motion of making or breaking a circuit.” PO
`Resp. 13. For reasons we discuss below, this construction is too narrow, and
`the methodology used to arrive at it is flawed.
`In support of its construction, Patent Owner separately construes the
`terms “switch” and “mechanism,” relying on extrinsic evidence for the
`definitions of each term. Id. at 9–10.
`With respect to the term “switch,” Patent Owner relies on a definition
`in the context of a circuit, defining “switch” as “[a] device for turning on or
`off or directing an electric current, or making or breaking a circuit.” Id. at 9
`(citing Ex. 2027, 1439). Patent Owner relies further on dictionary
`definitions of the word “device” as “[a] thing that is made for a particular
`working purpose; an invention or contrivance, esp. a mechanical or electrical
`one,” and the word “mechanism” as “an assembly of moving parts
`performing a complete functional motion.” Id. at 10 (citing Ex. 1027, 395;
`Ex. 2027, 889). According to Patent Owner’s declarant, Mr. Fischer, the
`term “switching” is the gerund form of the term “switch,” and thus it would
`be “logical that the term ‘switching’ be construed as ‘turning a device on or
`off or directing an electric current, or making or breaking a circuit.’” Id.
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`(citing Ex. 2028 ¶ 49). In treating the term “switch” as a noun, Patent
`Owner essentially limits the term “switching mechanism” to a specific
`device called a “switch,” that is further limited by constraints imposed by
`Patent Owner’s proffered definition of the word “mechanism.” Id.
`We disagree with Mr. Fischer that the term “switching” is the gerund
`form of the term “switch” in the context of claim 1. The term “mechanism”
`in claim 1 is a noun, and the term “switching” is a participle, i.e., a verb (“to
`switch”) that acts as an adjective to modify the word “mechanism.” Claim 7
`of the ’337 patent also necessitates our determination that the term
`“switching mechanism” is not limited to a “switch.” Claim 7 recites the
`RFID device of claim 1, “wherein the switching mechanism comprises a
`slider.” Ex. 1004, 12:11–12 (emphasis added). Accordingly, “switching
`mechanism” is not limited to a switch, and because it can comprise a slider,
`it is reasonably interpreted to also encompass a knob, lever, rotatable
`member, and any other device or construction that serves the purpose of
`selectively altering relative position of the coupling region and the at least
`one conductive trace. Id. at 7:24–36, 7:65–8:1.
`Also, Patent Owner’s reliance on the definition of the term “switch” in
`the context of a circuit is too narrow. The claims do not mention using a
`“switching mechanism” to break a circuit. The claims instead describe a
`“switching mechanism” that is adapted “to change the position of the
`coupling region of the booster antenna relative to the position of [a]
`conductive trace.” Id. at 11:8–10. Nor does the portion of the specification
`discussing the mechanism for selectively altering the relative position of the
`RF module and booster antenna describe making or breaking a circuit. See,
`e.g., id. at 7:24–36. Thus, for reasons we discussed above, the definition of
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`the verb “to switch” that describes shifting is more consistent with the claim
`language and ’337 patent specification than the definition offered by Patent
`Owner.
`With regard to the term “mechanism,” Patent Owner does not explain
`sufficiently why its submitted extrinsic evidence indicates how the term
`would be understood by a person of ordinary skill in the art. Patent Owner
`agrees the ’337 patent specification’s disclosure (id. at 7:24–36) provides
`express guidance concerning the meaning of this term. PO Resp. 10
`(explaining that this disclosure in the ’337 patent describes the term
`“mechanism” in the generic sense of “altering a position of another
`element”). Patent Owner relies on the following extrinsic dictionary
`definition: “an assembly of moving parts performing a complete functional
`motion.” Id. (citing Ex. 2027, 889). Patent Owner argues this definition is
`consistent with the ’337 patent specification’s use of the term “mechanism,”
`but Patent Owner does not explain why. Id. The dictionary definition is too
`narrow because it reads out embodiments described in the ’337 specification.
`For example, Patent Owner’s definition requires “an assembly of moving
`parts,” which suggests a requirement of more than one moving part. This is
`inconsistent with the ’337 patent specification’s disclosure that a mechanism
`may include a “rotatable member,” which is in singular form, and therefore
`may comprise only one moving part. Ex. 1004, 7:35. Also, Patent Owner’s
`construction could potentially read out other mechanisms that fall within the
`category of “any other device or construction which serves” the purpose of
`altering relative position. See Ex. 1004, 7:33–36. Indeed, the same
`dictionary provided by Patent Owner also provides a broader definition of
`“mechanism” that is more consistent with the specification of the ’337
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`patent: “the agency or means by which an effect is produced or a purpose is
`accomplished.” See Ex. 2027, 889 (emphasis added).
`Patent Owner argues the description of “mechanism” in the ’337
`patent (Ex. 1004, 7:24–36) describes the word “mechanism” generally, but
`does not describe a “switching mechanism.” PO Resp. 12. The disclosure
`describes a “mechanism,” but our claim interpretation does not rely solely
`on the meaning of the word “mechanism.” As we discussed above, the term
`“mechanism” is modified by the word “switching,” and we interpret the
`terms “switching” and “mechanism” together.
`For the foregoing reasons, Patent Owner’s overly narrow definitions
`of “switching” (limited to breaking a circuit) and “mechanism” (limited to
`an assembly of moving parts) fail to capture the full scope of the claim
`language, given its broadest reasonable interpretation in light of the ’337
`patent specification.
`Petitioner further provides a dictionary definition of the term
`“switching mechanism” from the Wiley Electrical and Electronics
`Engineering Dictionary, which defines the term as “[t]he mechanism utilized
`to perform a given switching function.” Reply 3 (citing Ex. 1028, 763)
`(emphasis omitted). This definition is consistent with the claim language
`and the ’337 patent specification because it does not unduly narrow the term
`“switching mechanism” by reading out embodiments contemplated by the
`’337 patent disclosure.
`For the foregoing reasons, we construe the term “switching
`mechanism” as “any device or construction which serves the purpose of
`selectively altering or switching the position of the claimed coupling region
`of the booster antenna relative to the position of the claimed at least one
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`conductive trace.”
`
`C. Principles of Law
`To prevail in its challenges to the patentability of the claims,
`Petitioner must prove its propositions of unpatentability by a preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`Under 35 U.S.C. § 102, “[a] claim is anticipated only if each and
`every element as set forth in the claim is found, either expressly or
`inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
`v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Also,
`Section 103 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.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
`§ 103).
`
`D. Asserted Anticipation of Claims 1–6 by Atherton
`Petitioner asserts that claims 1–6 of the ’337 patent are unpatentable
`as anticipated by Atherton. Pet. 19–29. Petitioner proffers a declaration of
`Dr. Roesner to support its contentions. Ex. 1001. Patent Owner disputes
`Petitioner’s contentions, arguing that Atherton does not disclose a
`“switching mechanism.” PO Resp. 2–3, 21–46. Patent Owner proffers a
`declaration of Mr. Fischer to support its contentions. Ex. 2028. We have
`reviewed the full record from trial, and we determine that Petitioner has
`shown by a preponderance of the evidence that claims 1–6 of the ’337 patent
`are unpatentable as anticipated by Atherton.
`
`17
`
`
`
`IPR2016-01763
`Patent 8,944,337 B2
`
`
`1. Overview of Atherton (Ex. 1006)
`Petitioner asserts Atherton is prior art under 35 U.S.C. § 102(b).
`Pet. 3. Patent Owner does not dispute Petitioner’s assertion that Atherton is
`prior art. Atherton was published on June 26, 2008. Ex. 1006, [43]. Based
`on the earliest possible priority date of the ’337 patent (see supra Section
`I.C), for purposes of this Final Written Decision, we conclude that Atherton
`is prior art to the ’337 patent under 35 U.S.C. § 102(b).
`Atherton relates to an RFID tag having privacy and security
`capabilities. In particular, Atherton describes an RFID tag whose
`operational state can be selectively alternated by a user between providing
`RFID function in a first configuration and having degraded or disabled RFID
`function in a second configuration. Ex. 1006, 2:11–25. Figure 1A of
`Atherton, reproduced below, depicts RFID tag 100:
`
`Ex. 1006, Fig. 1A. Figure 1A depicts RFID tag 100 formed of flat
`rectangular substrate 103 comprising two regions, Regions 1 and 2,
`separated by fold line 101 about which tag 100 may be folded. Id. at 4:1–6,
`4:24–25. Region 1 comprises a portion of substrate 103 having conducting
`
`
`
`18
`
`
`
`IPR2016-01763
`Patent 8,944,337 B2
`
`areas 105 thereon and RFID integrated circuit 104. Id. at 4:17–25. Region 2
`comprises a portion of substrate 103 having conducting areas 107 made of
`conducting material. Id. at 4:29–31. The tag substrate “may be perforated
`or modified in some way along fold line 101 so as to promote folding along
`the fold line 101.” Id. at 4:32–36.
`Atherton discloses that when RFID tag 100 is in a folded
`configuration, depicted in Figure 1B, conducting areas 107 is brought into
`close proximity to conducting areas 105, which results in conducting
`areas 105 and 107 being electrically coupled in a manner that provides an
`efficient RF antenna. Id. at 5:1–8. Accordingly, in this folded
`configuration, RFID tag 100 becomes functional. Id. Atherton discloses
`further that a user may deliberately degrade the function of the tag or disable
`it entirely by unfolding the tag along fold line 101, as depicted in Figures 1A
`and 2. Id. at 5:21–23. The degraded function occurs because when the tag
`is unfolded, conducting areas 107 is moved further away from conducting
`areas 105, thereby forming a less efficient RF antenna. Id. at 5:23–31.
`Accordingly, via the operation of folding and unfolding RFID tag 100, a
`user may selectively alternate between a functional state and a state in which
`RFID function is degraded or disabled.
`2. Discussion
`Petitioner identifies where it contends Atherton discloses the
`recitations of claim 1. Pet. 19–24. With respect to the preamble of claim 1,
`which recites “[a]n RFID device,” Petitioner argues that Atherton’s
`disclosure of an RFID tag amounts to disclosure of an “RFID device.” Id. at
`19. Patent Owner does not argue otherwise in its Response. We are
`persuaded that Atherton’s RFID tag is an RFID device.
`
`19
`
`
`
`IPR2016-01763
`Patent 8,944,337 B2
`
`
`For the claim limitation “a booster antenna adapted to extend the
`operational range of the RFID device,” Petitioner argues Atherton’s
`conducting areas 107 act as a booster antenna that extends the operational
`range of RFID tag 100. Pet. 19–20. Patent Owner does not dispute that
`Atherton discloses this claim limitation. We are persuaded by Petitioner’s
`arguments because Atherton discloses that “conducting areas 105 are
`designed such that on their own they provide a poor antenna for the RFID
`integrated circuit 104” (Ex. 1006, 4:23–25), and RFID tag 100’s
`performance is degraded or disabled unless conducting areas 107 are
`coupled with conducting areas 105 (id. at 5:1–11). Accordingly, coupling
`with conducting areas 107 extends the operational range of the RFID device.
`Petitioner also argues Atherton discloses “an RF module comprising
`an integrated circuit and a set of one or more conductive traces,” and
`identifies RFID tag 100, which includes integrated circuit 104 and
`conductive areas 105. Pet. 20–21 (citing Ex. 1006, Figs. 1–6, Abstract,
`4:17–23, 5:7, 5:18, 5:26, 6:4, 6:36, 7:3, 7:13–14, 8:3, 8:10–12, 9:13–18,
`9:30–34, 11:4–6, 11:16). Patent Owner does not dispute that Atherton
`discloses this claim limitation. We are persuaded by Petitioner’s arguments
`because Atherton’s integrated circuit 104 satisfies the limitation “integrated
`circuit” and Atherton’s conductive areas 105 are “a set of one or more
`conductive traces.”
`Claim 1 further recites that at least one of the conductive traces in the
`set of traces is “adapted to electrically couple to a coupling region of the
`booster antenna” when the booster antenna’s coupling region is in a first
`positi
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