UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`KAPSCH TRAFFICCOM IVHS INC.,
`
`Petitioner,
`v.
`NEOLOGY, INC.
`Patent Owner.
`____________________
`U.S. Patent No. 8,944,337
`IPR Case No.: IPR2016-01763
`_____________________
`
`PATENT OWNER NEOLOGY INC.’S, PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`

`
`
`TABLE OF AUTHORITIES .................................................................................... ii 
`I. 
`INTRODUCTION AND SUMMARY OF ARGUMENT ................................ 1 
`II. 
`OVERVIEW OF THE ‘337 PATENT .............................................................. 3 
`III.  CLAIM CONSTRUCTION ............................................................................. 5 
`IV.  TRIAL SHOULD NOT BE INSTITUTED BECAUSE PETITIONERS HAVE
`NOT ESTABLISHED THAT THEY ARE ENTITLED TO RELIEF ............ 13 
`A. 
`Legal Standard ..................................................................................... 13 
`B. 
`Atherton Does Not Anticipate Any of Claims 1-6 and 8 of the
`‘337 Patent. .......................................................................................... 16 
`Kubo Does Not Anticipate Any of Claims 1-4 and 6-8 of the
`‘337 Patent. .......................................................................................... 20 
`Janke Does Not Anticipate Any of Claims 1-4, 7, and 8 of the
`‘337 Patent. .......................................................................................... 28 
`The Proposed Combination of Atherton and Kubo and Roesner
`Does Not Render Any of Claims 1-9 of the ‘337 Patent
`Obvious. .............................................................................................. 33 
`1. 
`The Proposed Combination Does Not Disclose A
`Switching Mechanism That changes the Position of a
`Booster Antenna. ....................................................................... 33 
`No Motivation to Combine References or Predictable
`Results Stemming From The Combination Have been
`Shown. ....................................................................................... 36 
`The Proposed Combination of Kubo and Roesner Does Not
`Render Any of Claims 8 and 9 of the ‘337 Patent Obvious. ............... 55 
`CONCLUSION .............................................................................................. 57 
`
`
`C. 
`
`D. 
`
`E. 
`
`F. 
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`2. 
`
`V. 
`
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`ActiveVideo Networks v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 15
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 6
`
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001) .......................................................................... 13
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 14, 15
`
`Net MoneyIN v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 13
`
`PPC Broadband, Inc. v. Corning Optical Comm’ns,
`Appeal No. 2015-1364, Slip Op. at 6 (Fed. Cir. Feb. 22, 2016) .......................... 6
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...................................................................... 6, 10
`
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`Appeal No. 2014-1447, Slip Op. at 7 (Fed. Cir. Jan. 27, 2015) ..................passim
`
`PTAB Decisions
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., Case IPR2013-
`00220, Paper 8 (P.T.A.B. Aug. 15, 2013) .................................................... 13, 14
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., Case IPR2013-
`00223 (JL), Paper 9 (P.T.A.B. Aug. 15, 2013) ............................................passim
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529,
`Paper 8, at 15 (P.T.A.B. Sept. 29, 2014) .....................................................passim
`
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`TRW Automotive US LLC v. Magna Elecs. Inc., Case IPR2014-00259,
`Paper 19 (P.T.A.B. June 26, 2014) ......................................................... 14, 15, 43
`
`Federal Statutes
`
`35 U.S.C.
`§ 103(a) ............................................................................................................... 14
`§ 312(a)(3) .............................................................................................. 41, 55, 56
`§ 313 ...................................................................................................................... 1
`
`Patent Rules
`
`37 C.F.R.
`§ 42.22(b) .............................................................................................................. 2
`§ 42.107 ................................................................................................................. 1
`
`
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner Neology
`
`Inc. (“Neology”) provides the following Preliminary Response to the Petition for Inter
`
`Partes Review of U.S. Patent No. 8,944,337 (“the ‘337 Patent”) (Ex. 1004) filed by
`
`Petitioners 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. (collectively, “Petitioners”).
`
`For at least the reasons discussed below, Patent Owner respectfully requests
`
`that the Board decline to institute Inter Partes Review of the ‘337 Patent.
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`
` Petitioners assert five grounds for its request that the Board cancel claims 1-
`
`9 of the ‘337 Patent:
`
`Ground 1, PCT International Publication No. WO 2008/074050 A1 to
`
`Atherton et al. (Ex. 1006) (“Atherton”) anticipates claims 1-6, and 8 under section
`
`102;
`
`Ground 2, U.S. Patent No. 7,460,018 to Kubo (Ex. 1007) (“Kubo”)
`
`anticipates claims 1-4, and 6-8 under section 102;
`
`Ground 3, U.S. Published Application No. 2007/0290858 to Janke, et al.
`
`(Ex. 1008) (“Janke”) anticipates claims 1-4, 7, and 8 under section 102;
`
`Ground 4, Atherton in view of Kubo and in further view of U.S. Published
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`Application No. 2010/0302012 to Roesner (Ex. 1009) (“Roesner”) renders claims
`
`1-9 obvious under section 103; and
`
`Ground 5, Kubo in view of Roesner renders claims 1-9 obvious under
`
`section 103.
`
`For at least the reasons explained below, Patent Owner submits that each of
`
`the Grounds asserted by the Petitioners individually fail to demonstrate a
`
`reasonable likelihood of success on the merits. As to each ground, instead of
`
`providing a “detailed explanation of the significance of the evidence,” 37 C.F.R.
`
`42.22(b), Petitioners merely provide bare-bones characterizations of the cited art
`
`without offering any explanation as to why those characterizations allegedly
`
`demonstrate that the cited art anticipates the challenged claims or renders the
`
`challenged claims obvious. Petitioners simply fail to explain how the excerpted
`
`sections of the prior art references teach several claim elements and/or failed to
`
`articulate reasons underpinned by a rational basis that support their assertion of
`
`obviousness. With respect to the broadest reasonable interpretation (“BRI”) of the
`
`claim features, Patent Owner respectfully submits that the Petitioners have failed to
`
`provide a sufficient explanation of the claim features for Patent Owner to
`
`understand and respond to the Grounds.
`
`Additionally, as can best be understood by the Patent Owner, it is submitted
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`that the Petitioners’ proposed grounds of challenge do not establish a prima facie
`
`case of anticipation and/or obviousness because each and every feature of the
`
`challenged claims is not disclosed, taught, or suggested in the Petitioner’s proposed
`
`combinations of references. Moreover, Patent Owner submits that the proposed
`
`combinations of references cannot be properly combined, and thus, any prima facie
`
`case of obviousness is rebutted. Accordingly, the Board should decline to institute
`
`a trial regarding this Petition.
`
`II. OVERVIEW OF THE ‘337 PATENT
`
`The ‘337 Patent issued on February 3, 2015, based on U.S. Patent
`
`Application No. 14/060,407, filed on October 22, 2013.
`
`The inventions claimed in the ‘337 Patent generally relate to radio frequency
`
`identification (RFID) switch tags that enable manual activation/deactivation of the
`
`RF module. The ‘337 Patent describes a switchable RFID tag having an RF
`
`module (220) including an RFID chip and conductive traces that provide antenna
`
`action, and a booster antenna (210) that selectively extends the range of the
`
`antenna formed by the conductive traces based on the position of a switching
`
`mechanism. See e.g., Ex. 1004, Abstract, 1:51-58, 6:37-67. FIGS. 2A and 2B of
`
`the ‘337 Patent illustrate the RF module (220) and booster antenna (210) in the
`
`coupled (FIG. 2A) and uncoupled (FIG. 2B) positions.
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`The ‘337 Patent explains that the RF module 220 comprises “an RFID
`
`integrated circuit in an ohmic connection to an impedance matched conductive
`
`trace pattern in the same plane as the integrated circuit.” Ex. 1004, 6:39-42.
`
`“Even though the RF module 220 is fully functional and testable, it may have a
`
`limited range of operation due to the small surface area of the conductive trace
`
`pattern.” Ex. 1004, 6:39-45. “The trace patterns can be either inductively or
`
`capacitively coupled with a booster antenna 210.” Ex. 1004, 6:63-65.
`
`“The placement of the RF module 220 with respect to the booster antenna
`
`210 may alter the operational range and performance of the RFID tag 110.” Ex.
`
`
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`4
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`1004, 7:3-5. A mechanism is provided for “selectively altering the relative
`
`position of RF module 220 and the booster antenna 210.” Ex. 1004, 7:24-26. This
`
`allows a user “to selectively displace the RF module 220 from an optimized
`
`position over the booster antenna 210 rendering it unresponsive or detuned such
`
`that it will not respond at a sufficient measurement or perform adequately.” Ex.
`
`1004, 7:26-30.
`
`Claim 1, which is the only independent claim of the ‘337 Patent, recites:
`
`1. An RFID device comprising:
`
`a booster antenna adapted to extend the operational range of the RFID
`device;
`
`an RF 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.
`III. CLAIM CONSTRUCTION
`
`During inter partes review claims must be given their broadest reasonable
`
`interpretation (“BRI”) consistent with the specification as it would be interpreted
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`by one of ordinary skill in the art. MPEP § 2111; In re Am. Acad. of Sci. Tech.
`
`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Dictionaries and treatises can be
`
`useful as extrinsic evidence in claim construction, but conclusory, unsupported
`
`assertions by experts are not useful. Phillips v. AWH Corp., 415 F.3d 1303, 1318
`
`(Fed. Cir. 2005). For inter partes review it is important to distinguish between
`
`applying the broadest possible interpretation, which may be overly broad, and the
`
`broadest reasonable interpretation in light of the claims and specification. The
`
`PTAB cannot simply rely on dictionary definitions to reach a construction without
`
`explaining what is taught in the claims and the specification. PPC Broadband, Inc.
`
`v. Corning Optical Comm’ns, Appeal No. 2015-1364, Slip Op. at 6 (Fed. Cir. Feb.
`
`22, 2016). “The fact that [the term] has multiple dictionary meanings does not
`
`mean that all of these meanings are reasonable interpretations in light of the
`
`specification.” Id., at 7. Thus, the broadest reasonable interpretation of a term
`
`must not be divorced from the meaning imparted by the claims and specification of
`
`the patent.
`
`Petitioners have proposed the following constructions of claim terms.
`
`1.
`
`Booster Antenna
`
`“Booster antenna” – an “antenna used to gather RF energy.” Pet., 4:13-15.
`
`Neology disputes Petitioners’ proposed construction of “booster antenna” for the
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`reasons set forth below. Petitioners improperly conflate the term “booster antenna”
`
`with the word “antenna.” Ex. 2002, ¶¶ 41, 69. A “booster antenna” is not the
`
`same as an “antenna.” Id. Based on certain passages in the ‘337 Patent that
`
`describe an unclaimed embodiment and that Petitioners misconstrue, Petitioners
`
`point to the antenna 126 depicted in Figure 1 of the ‘337 Patent and incorrectly
`
`equate the claimed “booster antenna” with an “antenna.” Pet., 4:13-18, 9:5-10:1;
`
`Ex. 1001, ¶ 68. However, Figure 1 of the ‘337 Patent illustrates a typical
`
`arrangement of a reader 102 in communication with a tag 110, where the tag 110
`
`comprises an antenna 126 and an integrated circuit 122, and the antenna 126 can be
`
`interfaced with the integrated circuit 122 via conductive traces 124. Ex. 2002, ¶¶
`
`36-39. The conductive traces 124 and integrated circuit 122 comprise an RF
`
`module. Id. 37.
`
`The embodiments the follow Figure 1 (starting with Figure 2) describe the
`
`improvements to the basic tag 110 shown in Figure 1. These improvements are
`
`shown starting in Figure 2 of the ‘337 Patent. One improvement is that the RF
`
`module in Figure 2 can actually have antenna action, although possibly over a
`
`limited range. Ex. 1004, 6:39-45; Ex. 2002, ¶ 37. The embodiment of Figure 2
`
`comprises an operational RF module (220) interfaced with a booster antenna (210).
`
`Ex. 2002, ¶ 37. The module (220) and booster antenna (210) can then be coupled
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`together via capacitive or inductive coupling. Id. The booster antenna (210) thus
`
`acts to boosts the range of the RF module so that it can function in a given
`
`application. Id.
`
`The ‘337 Patent thus clearly distinguishes between the “booster antenna”
`
`and the “antenna.” Ex. 2002, ¶ 69. The RFID switch device of the ‘337 Patent
`
`includes an RF module with an integrated circuit ohmically connected to a
`
`conductive trace pattern and “a booster antenna [that] overlaps a region of the
`
`conductive trace pattern.” Ex. 1004, 1:59-61. In addition to describing a “booster
`
`antenna” that overlaps the conductive trace pattern, the ‘337 Patent also describes
`
`the booster antenna’s function:  
`
`The RF module 220 may comprise an RFID integrated circuit
`in an ohmic connection to impedance matched conductive trace
`pattern in the same plane as the integrated circuit. Even though
`the RF module 220 is fully functional and testable, it may have
`a limited range of operation due to the small surface area of the
`conductive trace pattern.
`
`Ex. 1004, 6:39-45 [emphasis added]. This distinction is important because a
`
`significant and innovative aspect of the ‘337 Patent is a novel way of switching a
`
`booster antenna couple it to the main antenna of the chip in a repeatable way – an
`
`aspect that the prior art references do not disclose. Ex. 2002, ¶ 76. This novel
`
`coupling enables use of a switching mechanism in a repeatable fashion to cause the
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`booster antenna to couple (or not couple) with the main antenna thereby extending
`
`(or not extending) the range of the main antenna of the chip. Id.
`
`As explained in the specification, the “conductive traces” recited in the
`
`claims provide antenna action. Ex. 1004, 6:39-45, Ex. 2002, ¶ 76. The RF module
`
`is ohmically connected to the conductive trace pattern to such that “the RF module
`
`220 is fully functional and testable” although it may have “a limited range of
`
`operation due to the small surface area of the conductive pattern. Ex. 1004, 6:39-
`
`45. Thus, the booster antenna couples to the conductive trace pattern that acts as
`
`the main antenna. As a result, in order to completely reduce the range of the main
`
`antenna (i.e., the conductive traces) when the booster antenna is not engaged
`
`shielding of the conductive traces by the booster antenna is effected:
`
`In the arrangement of FIG. 2B, a smaller portion, or none, of
`the RF energy collected by the booster antenna 210 is
`transferred to the RF module 220. In this manner, the effective
`operational range of the RFID tag 110 may be reduced as
`compared to the arrangement of FIG. 2A. In fact, because RF
`module 220 is completely or at least partially shielded by a
`portion of antenna 210, RFID communications between the
`RFID tag 110 and the RFID reader interrogator 102 may be
`completely halted. This non-operational state may be useful,
`for instance, in situations where it is desirable to render the
`RFID tag 110 unresponsive to an RFID interrogation signal.
`
`Ex. 1004, 7:8-19.
`
`While Petitioners rely on an unclaimed embodiment to allege that there is no
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`difference between an antenna and a booster antenna, the intrinsic record makes
`
`sufficiently clear to a POSITA the difference between an antenna and a booster
`
`antenna after considering the limitation “not only in the context of the particular
`
`claim in which the disputed term appears, but in the context of the entire patent,
`
`including the specification.” Phillips, 415 F.3d at 1313.
`
`Petitioners conflate the role of a “booster antenna” with that of a primary
`
`antenna. Ex. 2002, ¶ 69. The “booster antenna adapted to extend the operational
`
`range” is clearly the highly efficient radiating element 210 in FIGS. 2A and 2B of
`
`the ‘337 Patent, which also appears Figures 3, 4, and 5 in various forms. Id. In
`
`describing Figure 1, the ‘337 Patent refers to the tag as having “its own antenna
`
`126” which is attached to the “conductive trace pattern.” Ex. 1004, 5:61-64.
`
`Antenna 126 illustrated in Figure 1 of the ‘337 Patent is not a booster antenna.
`
`Contrary to Petitioner’s assertion (Ex. 1001, ¶ 69), the description of Figure 1 does
`
`not indicate one way or the other that antenna 126 is a booster antenna. Ex. 2002,
`
`¶ 74. Furthermore, the description of Figure 1 does not indicate whether RF
`
`module 120 has, or does not have, a limited range of operation. Id. Therefore, to
`
`the extent Figure 1 of the ‘337 Patent depicts an embodiment that does not disclose
`
`a booster antenna that can be coupled to an RF module having a limited
`
`operational range this embodiment is not claimed and is therefore irrelevant for
`
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`purposes of the petition. Id.
`
`Thus, Patent Owner proposes that the term “booster antenna” be construed
`
`as “an antenna that couples with a primary antenna to boost the signal for the
`
`primary antenna” in accordance with the BRI of the term. This interpretation is
`
`consistent with the intrinsic evidence of the ‘337 Patent as explained above.
`
`2.
`
`Conductive Trace
`
`“Conductive trace” – refers to “electrically conductive material.” Pet., 4:19-
`
`21. Patent Owner does not dispute Petitioner’s proposed construction of the term
`
`“conductive trace” at this time. However, Patent Owner reserves the right to object
`
`to Petitioners’ construction or propose alternative construction in the future.
`
`3.
`
`Switching Mechanism
`
`The Board is respectfully requested to construe an additional term not
`
`identified by Petitioners: switching mechanism. Patent Owner’s proposed BRI for
`
`this
`
`term
`
`is “a mechanism comprising a
`
`lever, switch, knob, slider,
`
`rotatable member, or similar mechanical structure with discrete positions.” This
`
`interpretation is consistent with the intrinsic evidence of the ‘337 Patent.
`
`In the context of the ‘337 Patent, the claim feature “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” is directed to a
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`mechanism having a structure similar to a lever, switch, knob, slider, rotating
`
`member as shown, for example, by reference numeral 240 of the drawings of the
`
`‘337 Patent.
`
`In the specification and drawings of the ‘337 Patent, the “switching
`
`mechanism” as claimed refers to structural element 240 of FIG. 2C. More
`
`specifically, the switching mechanism allows a user to “manually change the
`
`operational state of the RFID device by activation of a lever, switch, knob, slider,
`
`rotating member, or other similar structure.” Ex. 1004, 6:33-36. By manipulating
`
`the slider, a user modifies the relative positions of the RF module 220 and the
`
`booster antenna 210.” Ex. 1004, 7:40-42.
`
`Further, the ‘337 patent describes “a switching mechanism adapted to switch
`
`the position of the first substrate between a first position and at least a second
`
`position.” Ex. 1004, 2:25-27 (emphasis added); Ex. 2002 ¶ 80. Figure 8A of the
`
`‘337 Patent, for example, shows “a perspective view of the back side of a
`
`triangular-shaped and rotatable RFID switch” depicting three discreet positions.
`
`Ex. 1004, 10:7; Ex. 2002, ¶¶ 80-82.
`
`A person of ordinary skill in the art (POSITA) would have understood that a
`
`“switching mechanism” in this context is a mechanism comprising a lever, switch,
`
`knob, slider, rotatable member, or similar mechanical structure with discrete
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`positions. Ex. 2002, ¶¶ 77, 80-82.
`
`IV. TRIAL SHOULD NOT BE INSTITUTED BECAUSE PETITIONERS
`HAVE NOT ESTABLISHED THAT THEY ARE ENTITLED TO
`RELIEF
`A. Legal Standard
`
`1.
`
`Anticipation
`
`“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.” M.P.E.P. § 2131 (quoting Verdegaal Bros. v. Union Oil Co. of Cal.,
`
`814 F.2d 628, 631 (Fed. Cir. 1987)). “Anticipation requires that a reference
`
`disclose ‘not only all of the limitations claimed but also all of the limitations
`
`arranged or combined in the same way as recited in the claim.’” Dominion Dealer
`
`Solutions, LLC v. AutoAlert, Inc., Case IPR2013-00220, Paper 8, at 13 (P.T.A.B.
`
`Aug. 15, 2013); Net MoneyIN v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
`
`2008) (“[I]t was error for the district court to find anticipation by combining
`
`different parts of the … reference simply because they were found within the four
`
`corners of the document[.]”); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d
`
`1376, 1383 (Fed. Cir. 2001)).
`
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`2.
`
`Obviousness
`
`A patent claim is obvious under 35 U.S.C. § 103(a) only “if the differences
`
`between the claimed subject matter 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.”
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., Case IPR2013-00220, Paper 8,
`
`at 20 (P.T.A.B. Aug. 15, 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`406 (2007)). “The analysis under 35 U.S.C. § 103(a) is objective and includes a
`
`determination of ‘the scope and content of the prior art,’ the ‘differences between
`
`the prior art and the claims at issue,’ and ‘the level of ordinary skill in the pertinent
`
`art.’” TRW Automotive US LLC v. Magna Elecs. Inc., Case IPR2014-00259, Paper
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`19, at 10 (P.T.A.B. June 26, 2014) (quoting KSR Int’l Co., 550 U.S. at 406).
`
`“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.” Id. at 10-11
`
`(quoting KSR Int’l Co., 550 U.S. at 418).
`
`A showing of obviousness requires “an articulated reason with a rational
`
`underpinning to combine specific teachings in the references in a particular manner
`
`to arrive at the claimed invention[.]” Dominion Dealer Solutions, LLC v.
`
`
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`14
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`AutoAlert, Inc., Case IPR2013-00223 (JL), Paper 9, at 19 (P.T.A.B. Aug. 15, 2013)
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`(citing KSR Int’l Co., 550 U.S. at 418). “Arguing that references are analogous to
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`the invention of the patent at issue or to each other is insufficient.” Id. Petitioners
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`must offer “a sufficient explanation of how the references may be combined, from
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`the perspective of one with ordinary skill in the art, to arrive at the claimed
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`invention, and why the proffered combination accounts for all the features of each
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`claim.” Id. Merely restating claim language as an alleged rationale to combine
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`presents a circular rationale that “fails to provide a sufficient reason as to why one
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`of ordinary skill in the art would have been prompted to combine the teachings of
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`the references[.]” TRW Automotive US LLC, Case IPR2014-00259, Paper 19, at 14.
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`“The existence of common elements found in both the challenged claims and
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`the [relied upon references] does not establish that the challenged claims would
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`have been obvious.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case
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`IPR2014-00529, Paper 8, at 15 (P.T.A.B. Sept. 29, 2014). Petitioners must
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`“explain why a person of ordinary skill in the art would have combined elements
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`from specific references in the way the claimed invention does.” Id. (citing
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`ActiveVideo Networks v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir.
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`2012)).
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`B. Atherton Does Not Anticipate Any of Claims 1-6 and 8 of the ‘337
`Patent.
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`Independent claim 1 of the ‘337 Patent recites, inter alia, “a switching
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`mechanism adapted to change the position of the coupling region of the booster
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`antenna relative to the position of said at least one conductive trace.” Ex. 1004,
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`11:8-10. For at least the reasons identified below, Atherton does not disclose such
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`an element.
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` Petitioners assert that the action of folding the flexible tag of Atherton
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`provides the claimed switching mechanism. “Atherton discloses a ‘switching
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`mechanism,’ as recited in Claim 1, by virtue of folding the RFID tag along the
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`‘fold line 101.’” Pet., 23:10-11. Figure 1A of Atherton illustrates the fold line 101
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`for the flexible RFID tag 100:
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`The proper construction of the term “switching mechanism” (see section III
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`above) denotes a mechanical structure similar to a lever, knob, slider, rotatable
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`member, or switch, rather than the act of folding a tag and/or a fold line. The
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`specification discloses “the RFID tag 110 may comprise a slider mechanism 240
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`…, where the RF module 220 is mechanically coupled to the slider 240.” Ex.
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`1004, 7:38-40. The switching mechanism allows a user to “manually change the
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`operational state of the RFID device by activation of a lever, switch, knob, slider,
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`rotating member, or other similar structure.” Ex. 1004, 6:33-36. By manipulating
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`the slider, a user “modifies the relative positions of the RF module 220 and the
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`booster antenna 210.” Ex. 1004, 7:40-42.
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`While the switching mechanism is operated by a user, the switching
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`mechanism allows a user to “manually change the operational state of the RFID
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`device by activation of a lever, switch, knob, slider, rotating member, or other
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`similar structure.” Ex. 1004, 6:33-36. Thus, it is the physical structure, not the
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`action of operating the physical structure that comprises the switching mechanism.
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`Petitioners attempt to overcome the lack of a switching mechanism in
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`Atherton by defining an operation of “folding the RFID tag along the ‘fold line
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`101.’” Pet., 23:11. However, the word “switch” in any of its forms, or any
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`description that can be taken for a switch is not disclosed anywhere in Atherton.
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`Ex. 2002, ¶ 87. There is no mention within Atherton of a switching mechanism or
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`description of the folding of the tag as a switching mechanism. Folding a tag is an
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`action, not a physical mechanical structure that has discrete positions. Ex. 2002, ¶
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`87. Atherton provides no suggestion that the use of a switching mechanism would
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`solve the problems of providing a low-cost RFID tag for consumer goods and
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`maintaining consumer privacy with respect to preventing surreptitious reading of
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`an RFID tag on a purchased consumer good. Ex. 2002, ¶ 174.
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`Further, the fold line 101 of Atherton is simply a generally transverse line
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`that divides the tag into two regions. Ex. 1006, Abstract. The fold line of Atherton
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`does not amount to a structure such as a lever, switch, knob, slider, or rotating
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`member, nor is it similar to any of these structures. Ex. 2002, ¶ 171. Atherton
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`discloses no such mechanism. Id. at ¶ 188. Accordingly, Atherton does not
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`describe each and every element of claim 1 arranged or combined in the same way
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`as recited in the claim, and does not anticipate claim 1.
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`Claims 2-6 and 8 of the ‘337 Patent depend from claim 1. Ex. 1004, 11:11-
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`12:15. For the reasons demonstrated with respect to claim 1, Atherton does not
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`disclose all the features of independent claim 1 incorporated into dependent claims
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`2-6 and 8. Therefore, Atherton does not anticipate claims 2-6 and 8. Ex. 2002,
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`¶¶ 91-106.
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`In addition, claim 8 further recites “an indicator adapted to visually indicate
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`the status of the RFID device.” Ex. 1004, 12:13-15. Petitioners assert “Atherton
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`discloses that the RFID tag is enabled by folding Region 1 over Region 2, and
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`disabled by unfolding those regions so the tag is flat,” (Pet., 29:11-12) and further
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`that the folded and unfolded states of the RFID tag are indicators that “visually
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`indicate the status of the RFID device.” Id. at 29:19-20. Atherton, however,
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`discloses that the “tag is arrangeable in a first configuration in which said
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`integrated circuit and said antenna are operatively electrically coupled to provide
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`an RFID function, and a second configuration in which electric coupling of said
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`antenna and circuit is altered to change said function.” Ex. 1006, 2:17-20; Ex.
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`2002, ¶¶ 85, 101. Thus, Atherton discloses “tag configurations” for enabling and
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`disabling the tag, not “an indicator” of the tag state.
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`Further, Atherton discloses that folding of the tag is at best an ambiguous
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`indicator of whether the tag is enabled or disabled. Atherton states that “[g]enerally
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`speaking, the efficiency of non-contact coupling methods diminishes rapidly as the
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`distance between the coupled electrically conducting areas increases, so the RFID
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`tag 100 does not need to be opened far before its RFID function is substantially
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`diminished.” Ex. 1006, 5:28-31; Ex. 2002, ¶ 103. Further, it is not possible to
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`determine if there is a partly folded tag, or if the antenna and the conducting trace
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`are misaligned. Thus, there is no disclosure in Atherton to confirm the degree of
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`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
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`coupling. Ex. 2002, ¶ 85. The folded/unfolded tag does not