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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`FedEx Corporation,
`Petitioner
`v.
`
`Intellectual Ventures II LLC,
`Patent Owner
`_________________________
`
`U.S. Patent No. 6,909,356
`_________________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,909,356
`
`
`
`Exhibit 2119 Page 1
`
`IV Exhibit 2119
`FedEx v. IV
`Case IPR2017-02043
`
`

`

`United States Patent No. 6,909,356
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS .......................................................................................... ii
`
`LIST OF EXHIBITS ................................................................................................ iv
`
`TABLE OF AUTHORITIES ..................................................................................... v
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Statement of Precise Relief Requested for Each Claim Challenged ............... 3
`
`A.
`
`B.
`
`Claims for Which Review Is Requested ............................................... 3
`
`Statutory Grounds.................................................................................. 3
`
`III. The Board Should Exercise Its Discretion to Institute .................................... 4
`
`IV.
`
`’356 Patent Overview ...................................................................................... 5
`
`V.
`
`The Level of Ordinary Skill in the Art ............................................................ 8
`
`VI. Claim Construction .......................................................................................... 8
`
`A.
`
`B.
`
`C.
`
`“controlled space” ...............................................................................10
`
`“defective status” .................................................................................10
`
`“automatically returned or picked up” ................................................11
`
`VII. Ground 1: Bowers and Muhme Renders Obvious Claims 1, 3-5, 7, 11-
`14, and 17 under 35 U.S.C. § 103..................................................................12
`
`A. Overview of Bowers ............................................................................12
`
`B. Overview of Muhme ............................................................................16
`
`C.
`
`D.
`
`It Would Have Been Obvious to Combine Bowers and Muhme ........20
`
`Bowers and Muhme Render Obvious Each Element of
`Claims 1, 3-5, 7, 10-14, and 17 ...........................................................22
`
`VIII. Mandatory Notices Under 37 C.F.R. § 42.8 ..................................................49
`
`A.
`
`Real Party-in-Interest ..........................................................................49
`
`–ii–
`
`Exhibit 2119 Page 2
`
`

`

`United States Patent No. 6,909,356
`
`Related Matters ....................................................................................49
`
`Lead and Backup Counsel ...................................................................49
`
`Service Information .............................................................................50
`
`B.
`
`C.
`
`D.
`
`IX. Grounds for Standing .....................................................................................50
`
`X.
`
`Fee Payments .................................................................................................50
`
`XI. Conclusion .....................................................................................................51
`
`
`
`
`
`–iii–
`
`Exhibit 2119 Page 3
`
`

`

`United States Patent No. 6,909,356
`
`
`LIST OF EXHIBITS
`
`Exhibit 1001.
`
`U.S. Patent No. 6,909,356 to Brown et al. (“the ’356 patent”).
`
`Exhibit 1002.
`
`U.S. Patent No. 5,963,134 to Bowers et al. (“Bowers”).
`
`Exhibit 1003.
`
`U.S. Patent No. 5,886,634 to Muhme (“Muhme”)
`
`Exhibit 1004.
`
`Declaration of Jason Hill, Ph.D.
`
`Exhibit 1005.
`
`Prosecution History of U.S. Patent Application No. 10/053,540.
`
`Exhibit 1006.
`
`Exhibit 1007.
`
`Exhibit 1008.
`
`Exhibit 1009.
`
`Exhibit 1010.
`
`Exhibit 1011.
`
`Complaint for Patent Infringement, Intellectual Ventures II LLC
`v. FedEx Corp. et al., No. 2:16-cv-00980 (Aug. 31, 2016),
`ECF No. 1.
`
`Intellectual Ventures II Claim Chart Alleging FedEx
`Infringement of the ’356 patent.
`
`Exhibit B to Intellectual Ventures II Infringement Contentions
`served January 17, 2017 in Intellectual Ventures II LLC v.
`FedEx Corp. et al., No. 2:16-cv-00980 (Aug. 31, 2016).
`
`Institution Decision (Paper No. 7), FedEx Corp. v. Intellectual
`Ventures II LLC, Case IPR2017-00750 (PTAB).
`
`The Oxford English Dictionary (2d ed. 1989, reprinted 2000)
`(definition of “automation”).
`
`Intellectual Ventures II’s Opening Claim Construction Brief of
`August 16, 2017 in Intellectual Ventures II LLC v. FedEx Corp.
`et al., No. 2:16-cv-00980 (Aug. 31, 2016), ECF No. 91.
`
`
`
`
`
`–iv–
`
`Exhibit 2119 Page 4
`
`

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`United States Patent No. 6,909,356
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Conopco, Inc. dba Unilever v. The Proctor & Gamble Co.,
`IPR2014-00506, Paper 25 (PTAB Dec. 10, 2014) ............................................... 4
`
`Cuozzo Speed Techs, LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 9
`
`In re GPAC Inc.,
`57 F.3d 1573, 1579 (Fed. Cir. 1995) .................................................................... 8
`
`In re Johnston,
`435 F.3d 1381 (Fed. Cir. 2006) ......................................................................... 21
`
`In re Mettke,
`570 F.3d 1356 (Fed. Cir. 2009) ................................................................... 46, 47
`
`Microsoft v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 9
`
`Paice LLC v. Ford Motor Co.,
`681 F. App'x 885 (Fed. Cir. 2017) ......................................................................21
`
`Statutes
`
`35 U.S.C. § 301(d) ...................................................................................................10
`
`35 U.S.C. § 311(c) ...................................................................................................50
`
`35 U.S.C. § 325(d) ..................................................................................................... 4
`
`Other Authorities
`
`77 Fed. Reg. 48657, 48698 ......................................................................................10
`
`77 Fed. Reg. 48657, 48764 ........................................................................................ 9
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 9
`
`–v–
`
`Exhibit 2119 Page 5
`
`

`

`United States Patent No. 6,909,356
`
`
`I.
`
`
`Introduction
`Petitioner FedEx Corporation (“FedEx”) requests inter partes review of
`
`claims 1, 3-5, 7, 11-14, and 17 of U.S. Patent No. 6,909,356 (“the ’356 patent”)
`
`(Ex. 1001). The Board should institute review and cancel claims 1, 3-5, 7, 11-14,
`
`and 17.
`
`The ’356 patent describes an inventory management system for monitoring
`
`“entities” and “objects” within a “controlled space” using wireless technology,
`
`such as radio frequency identification (RFID). ’356 patent at Abstract and 4:7-22.
`
`In particular, the ’356 patent describes and claims methods for conducting
`
`inventory management
`
`that involve associating the addition, removal, or
`
`movement of tracked objects with the “person or robot” in possession of those
`
`objects, notifying a user of whether such events were authorized, and returning
`
`objects in response to the notification. ’356 patent at 3:7-28, claims 1, 3-5, 7,
`
`11-14, and 17. These
`
`inventory management
`
`techniques, however, were
`
`well-known when the patentee filed the application underlying the ’356 patent.
`
`Bowers and Muhme, for example, disclosed associating the status of items
`
`with persons in a secured area before the earliest claimed priority date of the
`
`’356 patent. Bowers at 8:12-26, 11:5-28, Fig. 1; Muhme at 2:50-53, 3:12-4:12.
`
`Bowers disclosed wirelessly obtaining article and patron identification information
`
`from RFID tags associated with each article and patron, respectively, in a library
`
`–1–
`
`Exhibit 2119 Page 6
`
`

`

`United States Patent No. 6,909,356
`
`inventory and circulation control system. Bowers at 8:12-26, 11:5-28, Fig. 1.
`
`Bowers also disclosed that items kept within the library—such as items retrieved
`
`following an unauthorized exit or attempt to exit the library—were automatically
`
`picked up and returned to their proper location according to automatically
`
`generated reshelving reports. Bowers at 5:30-46, 7:49-67, 12:3-39, 14:24-39,
`
`17:24-39, 21:25-61, 22:1-3, 23:7-24:11.
`
`Muhme disclosed a security system integrated with an inventory control
`
`system that similarly used RFID to monitor the location and status of items and
`
`persons before the earliest claimed priority date of the ’356 patent. Muhme
`
`at 2:50-53, 3:12-4:12. When
`
`the security system of Muhme detected an
`
`unauthorized exit or attempt to exit by a person with moving items, Muhme further
`
`disclosed transmitting status information to a server automatically configured to
`
`notify users of the event so they can “respond and investigate the unauthorized
`
`exit.” Muhme at 3:37-43, 5:49-65.
`
`FedEx thus requests that the Board institute review of the ’356 patent and
`
`cancel claims 1, 3-5, 7, 11-14, and 17.
`
`–2–
`
`Exhibit 2119 Page 7
`
`

`

`United States Patent No. 6,909,356
`
`
`II.
`
`
`Statement of Precise Relief Requested for Each Claim Challenged
`
` Claims for Which Review Is Requested A.
`FedEx respectfully requests review under 35 U.S.C. § 311 of claims 1, 3-5,
`
`7, 11-14, and 17 of the ’356 patent and cancellation of those claims as
`
`unpatentable.
`
`Statutory Grounds
`
`B.
`
`Claims 1, 3-5, 7, 11-14, and 17 of the ’356 patent are unpatentable and
`
`should be cancelled because U.S. Patent No. 5,963,134 to Bowers et al. (“Bowers,”
`
`Exhibit 1002) and U.S. Patent No. 5,886,634 to Muhme (“Muhme,” Exhibit 1003)
`
`render the claims obvious under 35 U.S.C. § 103.
`
`Bowers was filed on July 24, 1997, and issued on October 5, 1999, and thus
`
`qualifies as prior art under at least 35 U.S.C. § 102(a) and (b). Muhme was filed on
`
`May 5, 1997, and issued on March 23, 1999, and thus qualifies as prior art under at
`
`least 35 U.S.C. § 102(a) and (b).
`
`
`
`
`
`–3–
`
`Exhibit 2119 Page 8
`
`

`

`United States Patent No. 6,909,356
`
`
` The Board Should Exercise Its Discretion to Institute III.
`
`
`Although Petitioner filed a prior IPR petition regarding the ’356 patent for
`
`which review was not instituted (Ex. 1009), the Board should institute here.
`
`Whether the Board should exercise its discretionary power under 35 U.S.C.
`
`§ 325(d) depends on the circumstances of the case. 35 U.S.C. § 325(d); see also
`
`Conopco, Inc. dba Unilever v. The Proctor & Gamble Co., IPR2014-00506, Paper
`
`25 at 3-4 (PTAB Dec. 10, 2014). As explained below, many reasons justify
`
`institution of this petition.
`
`First, this petition presents only one focused ground based on two new prior
`
`art references that convincingly disclose and/or render obvious claim 1’s automatic
`
`pickup and return feature made the focus of the Board’s Decision Not to Institute
`
`in IPR2017-00750. Ex. 1009 at 14-18. Moreover, this petition challenges only
`
`10 claims, whereas the prior petition challenged 21 claims.
`
`Second, as shown below, the disclosures and arguments in this Petition are
`
`substantially different from the first petition. The Board found that Petitioner did
`
`not sufficiently demonstrate how the prior art disclosed “wherein at least one of the
`
`objects is automatically returned or picked up as a result of such notification” in
`
`the first petition. Ex. 1009 at 14-18. In the prior IPR petition, Petitioner presented a
`
`single reference disclosing, among other things, human actions taken as a fixed
`
`response to certain events. While fully consistent with the Patent Owner’s
`
`–4–
`
`Exhibit 2119 Page 9
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`

`

`United States Patent No. 6,909,356
`
`infringement allegations, the Board remained unconvinced that such “fixed
`
`response” actions disclosed automatic action. Ex. 1009 at 17 (“Petitioner does not
`
`explain why a user leaving with purchased items ‘as a result of the notification’
`
`shows that objects are ‘automatically . . . picked up.’”) (emphasis in original). The
`
`combination of Bowers and Muhme, on the other hand, clearly discloses
`
`established procedures and automated actions taken to automatically return and
`
`pick up objects.
`
`Finally, this Petition is brought so that the unpatentability of the
`
`’356 patent’s claims may be properly considered, as the claimed inventory
`
`management techniques were well-known when the application underlying the
`
`’356 patent was filed. Petitioner, therefore, respectfully requests that the Board
`
`consider the Petition on the merits and exercise its discretion to institute review.
`
`IV.
`
`
`’356 Patent Overview
`
`The ’356 patent was filed on November 2, 2001, as U.S. Patent Application
`
`No. 10/053,540. ’356 patent; Ex. 1005 at 254. Its earliest claimed priority date is
`
`November 3, 2000. ’356 patent at 1; Ex. 1005 at 255. The ’356 patent describes an
`
`inventory management system for monitoring individuals and objects within a
`
`controlled space using wireless
`
`technology, particularly radio frequency
`
`identification (RFID). ’356 patent at Abstract and 4:7-22. The ’356 patent notes in
`
`its Background section that existing systems “provide some secure means of access
`
`–5–
`
`Exhibit 2119 Page 10
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`

`

`United States Patent No. 6,909,356
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`such as a locked door or cabinet using physical keys and/or a method for tracking
`
`and viewing inventory,” but purports that “none couple both of these methods….”
`
`’356 patent at 1:49-53.
`
`As disclosed with regard to Figure 2 of the ’356 patent (below), the
`
`inventory management system tracks the location and movement of entities and
`
`objects within the controlled space. Id. at 5:38-62; see also id. at 3:7-28. In
`
`particular, a tracking system 220 tracks an entity, described as “a person or robot,”
`
`upon entry into a controlled space, and correlates the addition, removal, or
`
`movement of tracked objects with that of the entity. Id. at 3:7-28.
`
`’356 Patent Fig. 2 Depicting a Remote
`Inventory Management System
`
`
`
`–6–
`
`Exhibit 2119 Page 11
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`

`

`United States Patent No. 6,909,356
`
`Tracking system 220 reports this tracking information to a server 230, which
`
`stores the information in inventory records. Id. at 5:37-6:44. Server 230 can also
`
`notify a user regarding an event in inventory (i.e., the removal or addition of an
`
`object in inventory associated with a particular entity identity). Id. at 6:45-55. The
`
`notification may also indicate whether or not the event was authorized. Id.
`
`at 3:30-35 and 5:56-62. Moreover, when objects are moved, the ’356 patent
`
`describes automatically picking up or returning the objects to the controlled space.
`
`’356 patent at 7:6-19.
`
`The claims of the ’356 patent recite performing these well-known functions
`
`of inventory management of secure areas. Independent claim 1 recites:
`
`1. A method, comprising:
`obtaining identity information regarding an entity which enters a
`controlled space;
`monitoring, using a wireless tracking system communicatively
`coupled to a computer system, locations and movements of the
`entity and objects within the controlled space;
`automatically associating, using the computer system, the identity
`information regarding the entity with status information
`regarding additions, removals, returns, defective status, or
`movements of the objects to/from/within the controlled space;
`and
`transmitting the status information and the associated identity
`information to a server communicatively coupled to the
`computer system and configured to automatically notify a user
`of the status information, wherein at least one of the objects is
`automatically returned or picked up as a result of such
`notification.
`
`
`
`
`
`–7–
`
`Exhibit 2119 Page 12
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`

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`United States Patent No. 6,909,356
`
`
` The Level of Ordinary Skill in the Art V.
`
`
`Factors defining the level of ordinary skill in the art include: (1) the types of
`
`problems encountered in the art; (2) the prior art solutions to those problems;
`
`(3) the rapidity with which innovations are made; (4) the sophistication of
`
`technology; and (5) the educational level of active workers in the field. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`
`Based on these factors, a person of ordinary skill at the time of the alleged
`
`invention of the ’356 patent would have held at least a Bachelor’s Degree in
`
`Electrical Engineering, Computer Engineering, or the equivalent, and two or more
`
`years of industry experience in the field of information management, or the
`
`academic equivalent thereof. Ex. 1004 at ¶¶ [033]-[034]. Such a person would have
`
`been familiar with the standard components, methods, and protocols used at the
`
`time of the alleged invention of the ’356 patent to conduct inventory management
`
`using wireless tracking systems. Id.
`
` Claim Construction VI.
`
`
`A claim in an unexpired patent “shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.”
`
`37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary
`
`and customary meaning as would be understood by one of ordinary skill in the art
`
`in
`
`the context of
`
`the specification. Cuozzo Speed Techs, LLC v. Lee,
`
`–8–
`
`Exhibit 2119 Page 13
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`

`

`United States Patent No. 6,909,356
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`136 S. Ct. 2131, 2142 (2016). “The PTO should also consult the patent’s
`
`prosecution history
`
`in [IPR] proceedings.” Microsoft v. Proxyconn, Inc.,
`
`789 F.3d 1292, 1298 (Fed. Cir. 2015).
`
`In this proceeding, FedEx submits that the claim terms of the ’356 patent
`
`should be given their broadest reasonable interpretation as understood by one of
`
`ordinary skill in the art and consistent with the disclosure.1 37 C.F.R.
`
`§ 42.104(b)(3); 77 Fed. Reg. 48657, 48764. FedEx offers the following comments,
`
`however, understanding that the Board finds written statements of the Patent
`
`Owner regarding claim scope helpful in understanding and construing claims under
`
`the broadest reasonable interpretation. 77 Fed. Reg. 48657, 48698 (explaining that
`
`the Office may take into consideration inconsistent statements made by a patent
`
`owner regarding claim scope submitted under 35 U.S.C. 301(d)).2
`
`
`1 While FedEx believes that additional claim terms may warrant
`
`construction, any such terms do not affect the analysis in this Petition. Additional
`
`terms may be construed in the related district court litigation.
`
`2 Because IPR procedures do not permit challenges under 35 U.S.C. § 112,
`
`Petitioner has not included any such arguments herein. Petitioner may, however,
`
`raise such arguments in other proceedings.
`
`–9–
`
`Exhibit 2119 Page 14
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`

`

`United States Patent No. 6,909,356
`
`
`“controlled space”
`
`A.
`
`Independent claim 1 and dependent claim 12 recite “controlled space.”
`
`While the ’356 patent consistently describes “controlled space” as a physically
`
`confined space with limitations on ingress and/or egress (see, e.g., ’356 patent at
`
`3:30-35; see also ’356 patent at 1:49-55, Figs. 1B, 2, and 3, and associated
`
`discussion), Intellectual Ventures II’s (“IV2”) allegations of infringement against
`
`FedEx construe the term more broadly. For example, in IV2’s infringement
`
`contentions in Intellectual Ventures II LLC v. FedEx Corp. et al., No. 2:16-cv-
`
`00980 (Aug. 31, 2016), IV2 alleges that a geo-fence that identifies a logical
`
`representation corresponding to a physical area constitutes a “controlled space.”
`
`Ex. 1008 at 3, 5, 6, 13, 14, 19, 27, and 31; see also Ex. 1007 at 1-3, 8, 10, 11;
`
`Ex. 1011 at 6-7.
`
`“defective status”
`
`B.
`
`Independent claim 1 and dependent claims 3, 4, and 12 recite “defective
`
`status.” The ’356 patent includes only one reference outside of the abstract and
`
`claims to monitoring the status of objects. ’356 patent at 5:60-62. That reference,
`
`however, delineates between the status of objects and the movement of objects:
`
`Note that these accesses and/or movements of goods may be
`authorized or not. The action is recorded/reported in either case.
`Further, the wireless link 235 may be replaced and/or augmented by a
`wired communication link. In addition to the movement of goods,
`status (e.g., defective, return, etc.) may also be monitored.
`
`Id.
`
`–10–
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`Exhibit 2119 Page 15
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`

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`United States Patent No. 6,909,356
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`Again, however, IV2’s allegations of infringement against FedEx construe
`
`the term more broadly. For example, IV2 alleges that objects have a defective
`
`status “when the objects deviate from a predetermined route.” Ex. 1008 at 21; see
`
`also Ex. 1007, 13. Indeed, IV2 alleges that status information regarding defective
`
`status includes “details regarding the current location in relation to a predetermined
`
`location or route.” Ex. 1008 at 14.
`
`“automatically returned or picked up”
`
`C.
`
`Independent claim 1 recites “wherein at least one of the objects is
`
`automatically returned or picked up as a result of such notification.” The typical
`
`understanding of “automatically” refers to actions that produce results without
`
`human intervention. Ex. 1010 at 3. Consistent with this plain meaning, the
`
`’356 patent consistently describes “automatic” actions as performed by system
`
`components without human intervention. See, e.g., ’356 patent at abstract, 2:2-4,
`
`2:21-35, 2:51-55, 3:20-29, 4:33-40, 5:32-37, 6:45-54, 7:11-21. In its allegations of
`
`infringement against FedEx, however, IV2 contends
`
`that
`
`this automatic
`
`return/pickup claim feature is met if a staff member “retrieves” a product upon
`
`notification that the product “is at the wrong location” in order to deliver the
`
`product to “the correct location.” Ex. 1008 at 19-20; see also Ex. 1011 at 7-8.
`
`Therefore, the broadest reasonable interpretation of the phrase “automatically
`
`–11–
`
`Exhibit 2119 Page 16
`
`

`

`United States Patent No. 6,909,356
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`returned or picked up” should include user actions taken in response to a
`
`notification that an event occurred. Id.
`
` Ground 1: Bowers and Muhme Renders Obvious Claims 1, 3-5, 7, 11-14,
`VII.
`and 17 under 35 U.S.C. § 103
` Overview of Bowers
`A.
`Bowers discloses an inventory control system for tracking articles using
`
`radio frequency identification (RFID) tags attached to the articles. Bowers, passim.
`
`Bowers primarily explains disclosed embodiments in a library environment.
`
`Bowers at 6:29-37. In particular, Bowers describes a library inventory and
`
`circulation control system comprising checkout counters, “smart” pedestals,
`
`“smart” book drops, and other devices that interact with RFID tags associated with
`
`patrons and articles in order to conduct automated checkouts of articles to patrons,
`
`control library ingress and egress, monitor location and movement within the
`
`library, and facilitate reshelving of returned articles. Bowers at 5:30-46, 7:9-8:34,
`
`11:45-62, 12:3-13:23, 14:24-39, 15:13-20, 17:24-39, 21:25-61, 22:1-3, 23:7-24:11.
`
`As depicted below, Bowers discloses checkout stations within the library
`
`(highlighted in red) that wirelessly obtain article and patron identification
`
`information from RFID tags associated with individual articles and patrons,
`
`respectively, when library patrons seek to check out articles for removal from the
`
`library. Bowers at 8:12-26, 11:5-28, Fig. 1.
`
`–12–
`
`Exhibit 2119 Page 17
`
`

`

`United States Patent No. 6,909,356
`
`
`
`
`Annotated Bowers Fig. 1 Depicting Checkout Systems
`Bowers explains that computer 48 (depicted in yellow) associates the
`
`article’s status with the patron by updating the circulation status of the article to
`
`reflect that the article is checked out, who has checked it out, and when it is due
`
`back. Bowers at 10:18-64, 17:24-38. Bowers also discloses using “smart”
`
`pedestals 36 located at various entry/exit areas of the library, employee spaces,
`
`and/or other designated portions of the library (e.g., periodical room, rare book
`
`room, etc.) to monitor the location and movement of the articles and patrons within
`
`the library. Bowers at 7:41-51, 12:3-39, 17:24-49, Fig. 1.
`
`For example, when a patron enters an area monitored by pedestals 36 with
`
`articles, Bowers determines whether the patron is authorized to have the articles
`
`–13–
`
`Exhibit 2119 Page 18
`
`

`

`United States Patent No. 6,909,356
`
`associated with the patron at that location. Bowers at 5:30-46, 7:41-67. For
`
`pedestals 36 monitoring an entry/exit area of the library, as depicted in blue below,
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`Bowers determines whether the patron has checked out the article such that the
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`patron is authorized to exit the library with the article. Bowers at 5:30-46, 7:41-67.
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`In particular, smart pedestals 36 compare the received identification information
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`for the patron and article at the exit to information regarding the circulation status
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`of that article received from computer 48 in order to determine whether the patron
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`has checked out the article. Bowers at 5:30-46, 7:41-67.
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`Annotated Bowers Fig. 1 Depicting Computer 48 and Smart Pedestals 36
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`
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`–14–
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`Exhibit 2119 Page 19
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`United States Patent No. 6,909,356
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`When the patron is not authorized to exit, Bowers discloses triggering an
`
`alarm and/or locking a gate to prevent patrons from exiting of the library with the
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`article(s). Bowers at 5:30-46, 7:49-67, 12:3-39, 17:24-39, 21:25-61, 22:1-3,
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`23:7-24:11. In particular, Bowers discloses smart pedestal 36 triggering the alarm
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`and/or locking the exits when the patron is unauthorized to remove the identified
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`article from the library (e.g., because the article has circulation restrictions, the
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`patron failed to check out the article, etc.). Bowers at 12:3-14, 17:23-61.
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`Bowers also explains that articles used in the library that are not checked out
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`(because of circulation restrictions or otherwise) are returned to interior book drops
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`within the library for reshelving. Bowers, abstract. These book drops include
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`collection bins 112 that automatically read, record, and process tags on the
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`collected articles to identify the articles and their proper location in the library.
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`Bowers at 7:8-40, 14:27-30, 13:15-23, abstract. Bowers then automatically
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`generates reshelving reports, depicted below, identifying the current location of the
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`articles and where they belong in the library. Bowers at 13:61-62, 14:38-39,
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`15:8-13.
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`–15–
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`Exhibit 2119 Page 20
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`United States Patent No. 6,909,356
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`
`
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`Annotated Bowers Fig. 7 Depicted a Reshelving Report
` Overview of Muhme
`B.
`Muhme discloses a security system integrated with an inventory control
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`system used to monitor the location and status of items and persons within a
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`facility. Muhme, passim. Similar to Bowers, Muhme discloses receiving “tag IDs”
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`from
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`tagged
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`identification badges of employees and article
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`tags using
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`RFID readers of base stations placed at ingress and egress locations. Muhme
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`at 3:12-53. Muhme uses this ingress and egress information “for monitoring the
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`movements of items 12 and persons 14 throughout an organization’s facility.”
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`Muhme at 2:50-53.
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`–16–
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`Exhibit 2119 Page 21
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`United States Patent No. 6,909,356
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`
`
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`Annotated Muhme Fig. 1
`Muhme explains that base station 18 utilizes wireless communication
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`techniques to interrogate RFID tags associated with persons 14 and items 12 when
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`they approach ingress and egress points of the facility, as depicted above. Muhme
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`at 3:12-4:12. In disclosed embodiments, upon receiving an “associated tag ID list”
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`from inventory control system (ICS) 36, base station 18 will either allow the
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`–17–
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`Exhibit 2119 Page 22
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`United States Patent No. 6,909,356
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`person to exit the facility or take actions to notify authorized personnel of the
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`unauthorized exit or attempt to exit. Muhme at 4:12-21, 5:33-65.
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`Annotated Muhme Fig. 1
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`
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`–18–
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`Exhibit 2119 Page 23
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`United States Patent No. 6,909,356
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`In the event of an unauthorized exit or attempt to exit, base station 18 may
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`sound an alarm, lock the exits, and/or communicate the alarm condition, tag IDs,
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`information on item 12 and person 14, and other information regarding the
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`authorization event to a remote site 34. Muhme at 3:38-43.
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`
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`Annotated Muhme Fig. 1
`Muhme explains that remote site 34 includes “a manned security station,
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`police station, or other site that contains authorized personnel to investigate the
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`unauthorized exit….” Muhme at 4:26, 5:62 65.
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`–19–
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`Exhibit 2119 Page 24
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`United States Patent No. 6,909,356
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`
`It Would Have Been Obvious to Combine Bowers and Muhme
`C.
`
`One of skill in the art would have been motivated to combine Bowers and
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`Muhme, both of which relate to inventory control systems. Ex. 1004 at [050]
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`(citing Bowers at abstract, 1:66-2:22, 6:29-37 and Muhme at abstract, 2:12-23). For
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`example, as discussed above, Bowers discloses an inventory control system for
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`tracking articles using radio frequency identification (RFID) tags attached to the
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`articles. Bowers at 8:12-26, 11:5-28, Fig. 1. Bowers also discloses obtaining article
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`and patron identification information from RFID tags, and associating the two with
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`status information when the patron “checks out” the article and/or the system
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`interrogates the RFID tags together at exits to the library. Bowers at 8:12-26,
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`11:5-28, Fig. 1. Bowers further discloses that pedestals 36 trigger an alarm and/or
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`lock a gate based on information received from computer 48 indicating the patron
`
`is not authorized to exit the library with the article(s). Bowers at 5:30-46, 7:65-67,
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`12:3-39, 17:24-39, 21:25-61, 22:1-3, 23:7-24:11.
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`Muhme similarly discloses a security system integrated with an inventory
`
`control system for monitoring the location and status of items and persons within a
`
`facility. Muhme, passim. Like Bowers, Muhme wirelessly observes ingress and
`
`egress locations to “monitor[] the movements of items 12 and persons 14
`
`throughout an organization’s facility.” Muhme at 2:50-53. In particular, like
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`pedestals 36 of Bowers, base station 18 of Muhme utilizes wireless communication
`
`–20–
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`Exhibit 2119 Page 25
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`United States Patent No. 6,909,356
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`techniques to interrogate RFID tags associated with persons 14 and items 12 when
`
`they approach ingress and egress points of the facility. Muhme at 3:12-4:12. Based
`
`on information received from the inventory control system (ICS) 36, base
`
`station 18 will either allow the person to exit the facility with the items or take one
`
`or more actions to notify personnel of the unauthorized exit or attempt to exit. Id.
`
`at 4:12-21, 5:33-65. For example, like Bowers, Muhme may sound an alarm and/or
`
`lock exits. Id. Muhme further discloses that base station 18 may also communicate
`
`the alarm condition, tag IDs, information on item 12 and person 14, and other
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`information regarding the authorization event to a remote site 34 staffed with
`
`personnel to investigate the unauthorized exit. Id. at 3:38-43.
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`One skilled in the art would therefore have found it obvious and would have
`
`been motivated to combine Bowers and Muhme because Bowers is drawn to an
`
`inventory control system, and Muhme is drawn to a security system designed to
`
`integrate with an inventory control system. Ex. 1004 at ¶¶ [053]-[056]. Indeed,
`
`both Bowers and Muhme are in the same technology field and address the
`
`problems. Ex. 1004 at ¶¶ [053]-[056]; In re Johnston, 435 F.3d 1381, 1384–85,
`
`(Fed. Cir. 2006); Paice LLC v. Ford Motor Co., 681 F. App'x 885, 892 (Fed. Cir.
`
`2017). Given both references track articles using RFID tags to control the ingress
`
`and egress of persons and articles, one skilled in the art would have readily
`
`combined these two references to create a library inventory and circulation control
`
`–21–
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`Exhibit 2119 Page 26
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`United States Patent No. 6,909,356
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`system described in Bowers having the robust security features described in
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`Muhme. Ex. 1004 at ¶¶ [053]-[056]; see also In re Johnston, 435 F.3d at 1384–85;
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`Paice, 681 F. App'x at 892. For example, one skilled in the art would have been
`
`motivated to combine the teachings of Bowers and Muhme to