Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 7
`Entered: June 11, 2019
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEALTH CARE LOGISTICS, INC.,
`Petitioner,
`
`v.
`
`KIT CHECK, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00394
`Patent 9,367,665 B2
`____________
`
`
`Before JAMES A. TARTAL, GEORGE R. HOSKINS, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 7
`Entered: June 11, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEALTH CARE LOGISTICS, INC.,
`Petitioner,
`
`v.
`
`KIT CHECK, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00394
`Patent 9,367,665 B2
`____________
`
`
`Before JAMES A. TARTAL, GEORGE R. HOSKINS, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00394
`Patent 9,367,665 B2
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`INTRODUCTION
`I.
`Health Care Logistics, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 1–3, 5, 7, 8, 24–28,
`and 30 of U.S. Patent No. 9,367,665 B2 (Ex. 1001, “the ’665 patent”).
`Pet. 1. Kit Check, Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). We have authority to determine whether to
`institute an inter partes review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a).
`An inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a).
`Applying that standard, and upon consideration of the Petition, the
`Preliminary Response, and the evidence of record, we conclude the
`information presented does not show a reasonable likelihood that Petitioner
`would prevail in showing the unpatentability of any of claims 1–3, 5, 7, 8,
`24–28, and 30 of the ’665 patent challenged by Petitioner. In particular, for
`the reasons provided below, we find Petitioner did not provide sufficient
`reasoning with some rational underpinning to support the legal conclusion
`that any of the challenged claims of the ’665 patent would have been
`obvious over the asserted prior art. Accordingly, we deny the Petition and
`do not authorize institution of an inter partes review of the ’665 patent.
`II. BACKGROUND
`A. The ʼ665 Patent
`The ʼ665 patent, titled “Management of Pharmacy Kits,” issued
`June 14, 2016, from U.S. Application No. 14/818,113, filed August 4, 2015.
`Ex. 1001, [21], [22], [45], [54]. The ’665 patent generally relates to a
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`“system for managing pharmacy kits” using radio frequency identification
`(“RFID”) tags associated with a pharmacy kit, a reading station configured
`to read tag information, and an information processing system to determine a
`status of the pharmacy kit. Id. at [57].
`According to the ’665 patent, hospital pharmacies use pharmacy kits
`to manage groups of medical items, such as a group of items specified by a
`template for a specific medical procedure. Id. at 1:19–31. The template
`may also specify “ways in which individual items [in the pharmacy kit] may
`be satisfied.” Id. at 1:31–32. The ’665 patent explains that a kit is typically
`created by receiving specified items in a pharmacy, manually recording
`product identifiers and information, and then loading the items into a
`container, which may later be updated periodically by manually inspecting
`the kit, modifying the contents, and recording any changes. Id. at 1:49–59.
`The ’665 patent describes the typical procedure for creating a kit as time
`consuming, error prone, and inefficient. Id. at 1:60–2:2.
`As a purported improvement of the techniques and technologies for
`managing pharmacy kits, the ’665 patent describes the following “system for
`managing pharmacy kits”:
`a reading station configured to read tag information from a
`plurality of radio frequency identification (RFID) tags associated
`with a pharmacy kit, and an information processing system
`operatively connected to the reading station and configured to
`receive the tag information from the reading station and
`determine a status of the pharmacy kit based on the tag
`information, a plurality of stored templates defining contents to
`be included in each of a plurality of pharmacy kits, and a plurality
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`of kit records indicating the current contents of a plurality of
`pharmacy kits.
`Id. at 2:9–20. The ’665 patent states that “RFID technology can allow a
`pharmacy to accurately and efficiently determine whether items in the kit are
`consumed, missing, expired, or near expiration.” Id. at 3:39–42.
`B. Illustrative Claims
`Challenged claims 1 and 24 are independent. Challenged claims 2, 3,
`5, 7, and 8 depend from claim 1, and claims 25–28 and 30 depend from
`claim 24. Claim 1 is illustrative of the claimed subject matter and is
`reproduced below:
`1. A system, comprising:
`a pharmacy kit container that includes an enclosed space for
`receiving a pharmacy kit and at least one door, wherein the
`enclosed space is accessible through the at least one door, and
`wherein the pharmacy kit container provides electromagnetic
`shielding; and
`an information processing system communicatively coupled to a
`radio frequency identification (RFID) reader, the information
`processing
`system
`comprising
`computer-executable
`instructions that when executed by one or more processors
`cause the one or more processors to:
`cause an antenna coupled to the pharmacy kit container to
`emit a radio signal at least within the enclosed space of the
`pharmacy kit container when the at least one door is
`closed;
`receive tag information associated with a plurality of RFID
`tags located within the enclosed space based at least in part
`on the antenna emitting the radio signal at least within the
`enclosed space of the pharmacy kit container, the plurality
`of RFID tags being coupled to a plurality of pharmacy
`item containers,
`wherein the plurality of pharmacy item containers are
`configured to store a plurality of pharmacy items,
`wherein a particular RFID tag of the plurality of RFID tags
`is coupled to a particular pharmacy item container of
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`the plurality of pharmacy item containers and the
`particular pharmacy item container is configured to
`store a particular pharmacy item of the plurality of
`pharmacy items, and
`wherein the particular RFID tag is associated with
`particular pharmacy item data comprising at least an
`identifier of the particular pharmacy item;
`verify the pharmacy kit based at least in part on the received
`tag information and a pharmacy kit template stored in a
`non-transitory computer-readable medium, wherein the
`pharmacy kit template identifies a group of pharmacy
`items that form at least a portion of the pharmacy kit, and
`wherein to verify the pharmacy kit, the computer-
`executable instructions cause the one or more processors
`to compare pharmacy item data associated with the tag
`information with the pharmacy kit template, wherein the
`pharmacy item data associated with the tag information
`comprises at least the particular pharmacy item data; and
`cause a display to display results of the verification of the
`pharmacy kit.
`Ex. 1001, 17:38–18:18.
`
`Related Proceedings
`C.
`The parties indicate that the ’665 patent is a subject of Kit Check, Inc.
`v. Health Care Logistics, Inc., Case No. 2:17-cv-01041 (S.D. Ohio, filed
`Dec. 1, 2017). Pet. 1; Paper 3, 1. Petitioner also states that it has requested
`inter partes review of U.S. Patent Nos. 8,990,099 B2 (IPR2019-00376);
`9,058,412 B2 (IPR2019-00385); 9,058,413 B2 (IPR2019-00387);
`and 9,805,169 B2 (IPR2019-00388). Pet. 1–2.
`Real Parties in Interest
`D.
`Petitioner identifies only itself as a real party in interest. Pet. 1.
`Patent Owner identifies only itself as a real party in interest. Paper 3, 1.
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`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–3, 5, 7, 8, 24–28,
`
`and 30 of the ʼ665 patent on the following grounds:
`Alleged Grounds of Unpatentability
`Basis Claims Challenged
`References
`Andreasson,1 Sriharto,2 and Tethrake3 § 103 1–3, 5, 7, 8, 24–28, and 30
`Andreasson, Sriharto, Tethrake, and
`§ 103 24–28 and 30
`Lowenstein4
`Danilewitz,5 Children’s,6 and Vishik7
`Danilewitz, Children’s, Vishik, and
`Higham8
`
`§ 103 1–3, 5, 7, 8, 24–28, and 30
`§ 103 1–3, 5, 7, 8, 24–28, and 30
`
`Pet. 3–4. Petitioner supports its challenge with a Declaration of Behbood
`Ben Zoghi, dated November 30, 2018. Ex. 1003.
`III. ANALYSIS
`Each of Petitioner’s grounds of alleged unpatentability asserts that
`challenged claims of the ’665 patent would have been obvious over various
`combinations of Andreasson, Sriharto, Tethrake, Lowenstein, Danilewitz,
`Children’s, Vishik, and Higham. Pet. 15–63. In our analysis below, first we
`provide a short summary of the applicable principles of law. For each
`ground, we briefly discuss the scope and content of the asserted prior art and
`
`
`1 US 7,175,081 B2, iss. Feb. 13, 2007 (Ex. 1005, “Andreasson”).
`2 US Publ. 2008/0316045 A1, pub. Dec. 25, 2008 (Ex. 1006, “Sriharto”).
`3 US 7,268,684 B2, iss. Sept. 11, 2007 (Ex. 1007, “Tethrake”).
`4 US Publ. 2008/0184719 A1, pub. Aug. 7, 2008 (Ex. 1008, “Lowenstein”).
`5 US Publ. 2007/0150382 A1, pub. June 28, 2007 (Ex. 1009, “Danilewitz”).
`6 “Children’s Hospital Boston Joins Others Using RFID To Track
`Implantables,” RFID Journal, pub. Mar. 5, 2008 (Ex. 1010, “Children’s”).
`7 US Publ. 2009/0224891 A1, pub. Sept. 10, 2009 (Ex. 1011, “Vishik”).
`8 US 7,348,884 B2, iss. Mar. 25, 2008 (Ex. 1012, “Higham”).
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`then turn to whether Petitioner has explained sufficiently how the prior art
`teaches the limitations of the challenged claims and why a person of
`ordinary skill would have combined the asserted prior art as proposed by
`Petitioner.
`
`Principles of Law
`A.
`A claim is unpatentable as obvious 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.”
`35 U.S.C. § 103(a). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
`17–18 (1966).9
`Even if prior art references disclose all claim limitations when
`combined, there must be evidence to explain why a person of ordinary skill
`in the art would have combined the references to arrive at the claimed
`invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`1366–67 (Fed. Cir. 2012) (citing Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008) (holding that “some kind of motivation
`must be shown from some source, so that the [trier of fact] can understand
`
`
`9 Because we determine that Petitioner has not shown a reasonable
`likelihood of prevailing for other reasons, we do not reach the arguments of
`the parties with regard to claim construction and the level of ordinary skill in
`the art. See Pet. 11–14; Prelim. Resp. 7–8.
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`why a person of ordinary skill would have thought of either combining two
`or more references or modifying one to achieve the patented [invention]”)).
`An invention “composed of several elements is not proved obvious merely
`by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather,
`“it can be important to identify a reason that would have prompted a person
`of ordinary skill in the relevant field to combine the elements in the way the
`claimed new invention does.” Id. An obviousness determination “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. (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)); see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`1380 (Fed. Cir. 2016).
`Alleged Obviousness over Andreasson, Sriharto, and Tethrake
`B.
`Petitioner contends that the subject matter of claims 1–3, 5, 7, 8, 24–
`28, and 30 of the ’665 patent would have been obvious over the combination
`of Andreasson, Sriharto, and Tethrake. Pet. 15–39. Petitioner provides a
`claim chart showing how the three references allegedly teach the limitations
`of the challenged claims. Id. at 18–39. Below we briefly summarize
`Andreasson, Sriharto, and Tethrake, and then evaluate Petitioner’s
`application of the asserted prior art to the challenged claims.
` Summary of Andreasson
`Andreasson, titled “Pharmaceutical Tracking,” describes “systems and
`methods for tracking, monitoring and inventorying medical products within
`a healthcare facility, such as a hospital.” Ex. 1005, [54], 2:41–43. Each
`medical product has an RFID tag uniquely associated with it. Id. at 2:50–51.
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`Each tag includes data to be tracked within the facility. Id. at 2:54. The
`products are tracked and monitored through the healthcare facility by
`monitoring the RFID tags by readers within apparatus such as medicine
`cabinets. Id. at 3:2–4. The medical products are tracked using the RFID tag
`as they are removed and administered to patients. Id. at 5:6–7.
`Figure 4A of Andreasson is reproduced below:
`
`
`Figure 4A illustrates a medical dispensing unit, including one or more
`compartments 440 with individual sections 442 that have the capability of
`storing medicines. One utility drawer space houses single board PC 460,
`RFID scanner 145, and the associated power circuitry. Id. at 11:23–28. The
`dispensing unit includes one or more antennas 464 that enable reading RFID
`tagged product. Id. at 11:35–38.
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`Figure 5 of Andreasson is reproduced below:
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`Figure 5 illustrates a flowchart “showing a method for verifying that a
`medication-dispensing unit receives medical products in accordance with”
`Andreasson. Id. at 5:31–33.
` Summary of Sriharto
`Sriharto, titled “Intelligent Medical Material Cart,” describes systems
`and methods for monitoring, control, and containment of a medical product,
`such as a drug, in a hospital environment. Ex. 1006 ¶ 1. Sriharto describes a
`medical container/cart, called an intelligent medical material cart (IMMC),
`that transports medical supplies, and performs intelligence functions such as
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`monitoring its contents, controlling access to its contents, monitoring the
`drug administrations, determining patient-drug interactions, determining
`drug-drug interactions, and identifying adverse drug interactions. Id. ¶ 17.
`Sriharto uses RFID tags to monitor the contents of the IMMC, and
`track the items and inventory in the IMMC. Id. ¶ 21. Sriharto states that the
`IMMC may include a shielding element to ensure that the magnetic field and
`the signals emanating from RFID scanning of a medical container of medical
`products inside the cart do not pass through the medical container. Id. ¶¶ 25,
`32. Sriharto also teaches that, when a drug is depleted in the IMMC, the
`IMMC may be used to recommend the use of alternative or substitute drugs
`available in the medical container that are related closely to the type of the
`depleted drug, and that are safe and effective alternatives to the depleted
`drug. Id. ¶ 39.
` Summary of Tethrake
`Tethrake, titled “Workstation RFID Reader for Surgical Instruments
`and Surgical Instrument Trays and Methods of Using Same,” describes an
`apparatus and method for wirelessly inventorying surgical instruments and
`surgical instrument trays, using RFID technology, in order to facilitate
`tracking and inventory management of surgical instruments and surgical
`instrument trays over their useful life cycle. Ex. 1007, [54], 1:10–15,
`4:45–53.
` Application of Asserted Prior Art to Challenged Claims
`With regard to Petitioner’s contention that the subject matter of the
`challenged claims of the ’665 patent would have been obvious over
`Andreasson, Sriharto, and Tethrake, Petitioner first provides a general
`overview of the teachings of each reference being relied upon, followed by
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`claim charts purportedly showing how each limitation of each challenged
`claim is taught. Pet. 15–39. In its general overview, Petitioner explains that
`it relies on Andreasson as follows:
`it is obvious that the dispensing unit 410 of Andreasson, with its
`RFID
`reading components and
`the
`removable storage
`compartment(s) 440 containing a number of RFID tagged
`containers of pharmaceuticals, teaches the “reading station”
`having a “pharmacy kit container” within which a “pharmacy
`kit” as recited in the [challenged] claims . . . [and that] the
`embodiments of Andreasson are configured to consider, among
`many other possible conditions or characteristics, the expiration
`dates of the medical products to which the RFID tags are attached
`. . . , and to display the results of the pharmacy kit verification
`process.
`Pet. 16 (citations omitted). Petitioner next explains, with regard to its
`reliance on Sriharto, the following:
`Sriharto is offered for its more express teaching that [it] was also
`known to look for and verify substitute items within an analyzed
`kit of items – whether a pharmacy kit or otherwise – and for its
`teaching that a “pharmacy kit container” of a “reading station”
`may be provided with electromagnetic shielding.
`Id. at 17. Petitioner further states, “[w]hile Tethrake teaches some of the
`same elements of Andreasson and/or Sriharto, Tethrake is offered primarily
`for its more overt description of a kit and the containing tray, etc.” Id. at 17–
`18. These general statements are insufficient to show how Petitioner
`contends the limitations of each challenged claim are taught by the prior art.
`Petitioner provides claim charts purportedly to show how it contends the
`combination of Andreasson, Sriharto, and Tethrake teaches each limitation
`of each challenged claim.
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`a) Claim 1
`Petitioner contends that the subject matter of claim 1 would have been
`obvious in view of Andreasson, Sriharto, and Tethrake, and provides a claim
`chart that purports to show how the asserted references teach each limitation
`of the claim. Id. at 18–25. Patent Owner argues that by “mapping multiple
`portions of different references to the same claim element,” Petitioner makes
`it “virtually impossible” to determine either “which reference . . . is being
`relied on to meet that claim element” or “what portion of which reference.”
`Prelim. Resp. 18–19.
`We see no issue with Petitioner identifying in a claim chart how more
`than one reference teaches a particular limitation, so long as Petitioner’s
`contentions are made clear. For example, Petitioner unambiguously explains
`how it contends both Andreasson and Sriharto each teach certain limitations
`of claim 1, such as the recited “pharmacy kit container that includes an
`enclosed space for receiving a pharmacy kit.” Id. at 18–19. In such
`instances, Petitioner also provides in the claim chart express citations
`making it easily understood what “portion of which reference” allegedly
`teaches the limitation at issue.
`In other instances, however, Petitioner identifies teachings from two
`references as corresponding to a limitation of the claim in a manner that does
`not clearly explain whether Petitioner contends that each reference teaches
`the limitation, independently, or that only the combination of the two
`references teaches the limitation. For example, regarding the “verify the
`pharmacy kit based at least in part on the received tag information and a
`pharmacy kit template” limitations, Petitioner cites teachings from
`Andreasson, Tethrake, and Sriharto, but neither adequately shows how each
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`reference teaches all of the limitations nor explains how the references, in
`combination, teach all of the limitations. See Pet. 22–25. In such instances,
`stating in the claim chart what each reference discloses, with no explanation
`of what is missing from each reference, or how the references would have
`been combined, is insufficient to satisfy the obligation on Petitioner to
`“specify where each element of the claim is found” in the references relied
`upon. 37 C.F.R. § 42.104(b)(4).
`Also missing from Petitioner’s analysis is any persuasive evidence to
`explain why a person skilled in the art would have modified Andreasson
`based on the teachings of Sriharto and Tethrake to arrive at the system
`recited by claim 1 of the ’665 patent. In this regard, Patent Owner argues
`that Petitioner “fails to even allege” that a person of ordinary skill would
`have had a motivation to combine any of the references, and that the failure
`of Petitioner to address why a person of ordinary skill would have combined
`the asserted references is a sufficient reason to deny the Petition. Prelim.
`Resp. 13. Indeed, Petitioner does not sufficiently address why a person
`skilled in the art would have modified Andreasson based on the teachings of
`Tethrake to arrive at a system that, for example, would “verify the pharmacy
`kit” as required by claim 1. Ex. 1001, 18:4–15. Absent such evidence,
`Petitioner fails to show a reasonable likelihood of prevailing in showing that
`claim 1 would have been obvious over Andreasson, Sriharto, and Tethrake.
`See Kinetic Concepts, 688 F.3d at 1366 (even if prior art references disclose
`all claim limitations when combined, there must be evidence to explain why
`a person of ordinary skill in the art would have combined the references to
`arrive at the claimed invention); see also ActiveVideo Networks, Inc. v.
`Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (challenger
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`must “explain how specific references could be combined” and “which
`combination(s) of elements in specific references would yield a predictable
`result”).
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`b) Claim 24
`Petitioner contends that the subject matter of claim 24 would have
`been obvious in view of Andreasson, Sriharto, and Tethrake. Pet. 15–18,
`29–35. Petitioner’s contentions with respect to claim 24 are insufficient for
`substantially the same reasons discussed above with regard to claim 1.
`For example, claim 24 recites a “non-transitory, computer-readable
`medium” that causes one or more processors to perform certain actions,
`including:
`verify a pharmacy kit based at least in part on the received tag
`information, wherein to verify the pharmacy kit, the
`computer-executable instructions when executed cause the
`one or more processors to at least one of:
`determine that a first RFID tag associated with a first
`pharmacy item is not located within the pharmacy kit
`container, and that a third RFID tag associated with a
`substitute pharmacy item for the first pharmacy item is
`located within the pharmacy kit container,
`determine that a second pharmacy item associated with a
`second RFID tag of the plurality of RFID tags is subject to
`a recall, or
`identify the second pharmacy item as an expired pharmacy
`item based at least in part on a determination that an
`expiration of the second pharmacy item does not satisfy an
`expiration threshold.
`Ex. 1001, 21:64–22:12. Corresponding to these limitations, Petitioner cites
`teachings from all three asserted references: Andreasson, Sriharto, and
`Tethrake, but neither adequately shows how each reference teaches the
`entire limitation nor explains how the references, in combination, teach the
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`entire limitation. See Pet. 32–35. Once again, stating in the claim chart
`what each reference discloses, with no explanation of what is missing from
`any reference, or how the references would have been combined, is
`insufficient to satisfy the obligation on Petitioner to “specify where each
`element of the claim is found” in the references relied upon. 37 C.F.R.
`§ 42.104(b)(4).
`Moreover, missing again from Petitioner’s analysis is any persuasive
`evidence to explain why a person skilled in the art would have modified
`Andreasson based on the teachings of Sriharto and Tethrake to arrive at the
`medium recited by claim 24 of the ’665 patent. Petitioner does not
`sufficiently address why a person skilled in the art would have modified
`Andreasson based on the teachings of Tethrake to arrive at a system that, for
`example, would “verify a pharmacy kit,” as required by claim 24. Ex. 1001,
`21:64–22:12. Absent such evidence, Petitioner fails to show a reasonable
`likelihood of prevailing in showing that claim 24 would have been obvious
`over Andreasson, Sriharto, and Tethrake.
`c) Claims 2, 3, 5, 7, 8, 25–28, and 30
`Claims 2, 3, 5, 7, and 8 depend from claim 1 and claims 25–28 and 30
`depend from claim 24. Petitioner has not shown a reasonable likelihood of
`prevailing in showing that any of claims 2, 3, 5, 7, 8, 25–28, and 30 would
`have been obvious over Andreasson, Sriharto, and Tethrake for the same
`reasons provided above with respect to claims 1 and 24, from which they
`depend.
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`C.
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`Alleged Obviousness over Andreasson, Sriharto, Tethrake,
`and Lowenstein
`Petitioner contends that the subject matter of claims 24–28 and 30
`also would have been obvious over the combination of Andreasson, Sriharto,
`Tethrake, and Lowenstein. Pet. 40.
` Summary of Lowenstein
`Lowenstein, titled “Intelligent Refrigerator for Storing Pharmaceutical
`Product Containers,” describes a system that uses RFID tags and readers to
`identify containers as they are added to or removed from a cold storage
`compartment and to automatically retrieve information about the containers
`and their contents from a database. Ex. 1008, [54], [57]. Lowenstein
`teaches a system that may produce a warning message when items are
`removed from the cold storage compartment based on details stored in a
`database, such as a warning that “one or more of the pharmaceutical product
`containers in the removed tray should be destroyed or returned because it
`has expired or been recalled by the manufacturer.” Id. ¶ 42.
` Application of Asserted Prior Art to Challenged Claims
`Petitioner explains that its contentions are the same as the ground
`asserting obviousness over Andreasson, Sriharto, and Tethrake, but with
`Lowenstein added to the asserted combination because “the recall
`limitation” of claim 24 “could potentially be perceived as missing from”
`Andreasson, Sriharto, and Tethrake. Pet. 40. Petitioner does not rely on
`Lowenstein to overcome the deficiencies addressed above in regards to the
`combination of Andreasson, Sriharto, and Tethrake. Further, Petitioner
`provides no persuasive evidence to explain how or why a person skilled in
`the art would have modified the combination of Andreasson, Sriharto, and
`Tethrake based on the teachings of Lowenstein to arrive at the “non-
`17
`
`
`
`IPR2019-00394
`Patent 9,367,665 B2
`
`transitory, computer-readable medium” recited by any of challenged
`claims 24–28 and 30 of the ’665 patent. Absent such evidence, Petitioner
`fails to show a reasonable likelihood of prevailing in showing that any
`challenged claim would have been obvious over Andreasson, Sriharto,
`Tethrake, and Lowenstein.10
`Alleged Obviousness Over Danilewitz, Children’s, and Vishik
`D.
`Petitioner contends that the subject matter of claims 1–3, 5, 7, 8, 24–
`28, and 30 would have been obvious over the combination of Danilewitz,
`Children’s, and Vishik. Pet. 41–62. Petitioner provides a claim chart
`showing how the three references allegedly teach the limitations of the
`challenged claims. Id. at 42–62. Below we briefly summarize Danilewitz,
`Children’s, and Vishik, and then evaluate Petitioner’s application of the
`asserted prior art to the challenged claims.
` Summary of Danilewitz
`Danilewitz, titled “System and Method for Pharmaceutical
`Management and Tracking,” describes a product inventory management
`system for “managing pharmaceutical inventories” in cabinets that may be
`located at various locations in a hospital. Ex. 1009, [54], ¶¶ 16, 43. The
`system of Danilewitz includes cabinet 100 housing data processing
`system 150, reader 120, and refrigerated chassis 110 housing product
`
`
`10 Additionally, Petitioner appears to misapprehend the scope of claim 24,
`because the “recall limitation” is but one of three alternatives that, if shown
`to have been taught by the asserted references, would satisfy the “verify a
`pharmacy kit” limitation. See Ex. 1001, 21:64–22:12. If the asserted
`references taught either of the other two alternatives that satisfy the “verify a
`pharmacy kit” limitation, there would be no need for Petitioner to show that
`the asserted references, or additional prior art, taught the “recall limitation.”
`18
`
`
`
`
`
`IPR2019-00394
`Patent 9,367,665 B2
`
`units 200. Id. at Figs. 1, 2. The cabinet contains an inventory of product
`units having RFID tags. Id. at [57]. The cabinet has a reader to “wirelessly
`and automatically detect and identify the contents of the cabinet” through
`RFID technology. Id. ¶ 19. The reader periodically scans and verifies
`contents against an inventory list, and identifies when products are missing.
`Id. ¶ 24. Danilewitz also teaches an inventory management system that may
`be used to control inventory in multiple cabinets. Id. ¶ 52. The information
`management system includes a server system 310 monitoring inventory of
`the cabinet, generating billing invoices, issuing orders to replace consumed
`inventory, and the like. Id.
` Summary of Children’s
`Children’s, an article titled “Children’s Hospital Boston Joins Others
`Using RFID to Track Implantables,” describes a system for managing a
`collection of implant kits requested in surgery orders (such as hip, knee,
`shoulder, elbow, spinal, and trauma implant kits). Ex. 1009, p. 2 ¶¶ 2, 8.
`Multiple implant kits bearing individual RFID tags are placed into totes and
`compared against an order, such as a surgery requirements list. Id. at p. 2
`¶¶ 5, 8. The totes also have RFID tags on them, which are scanned to
`determine if the contents of the tote, as dictated by the order, are present or
`not. Id. at p. 2 ¶ 7.
` Summary of Vishik
`Vishik, titled “Intelligent RFID Information Management System,” is
`directed to a system including a repository configured to store classification
`component information derived from RFID tags attached to various items.
`Ex. 1011, [54], [57]. Vishik states that its system is useful in pharmacies
`and to collect and store data related to drugs. Id. ¶¶ 38, 41. Vishik also
`
`
`
`19
`
`
`
`IPR2019-00394
`Patent 9,367,665 B2
`
`discloses that the stored information from the RFID tag data may “include
`transactional data comprising substitute information.” Id. ¶ 13; p. 6 (claim 9
`stating “the substitute information identifies one or more substitute items
`that can be substituted for the at least one item”).
` Application of Asserted Prior Art to Challenged Claims
`With regard to Petitioner’s contention that challenged claims of
`the ’665 patent would have been obvious over Danilewitz, Children’s, and
`Vishik, Petitioner first provides a general overview of the teachings of each
`reference being relied upon, followed by claim charts purportedly showing
`how each limitation of each challenged claim is taught. Pet. 41–62. In its
`general overview, Petitioner explains that “Danilewitz describes systems for
`‘managing pharmaceutical inventories’ in cabinets,” that the “cabinet
`includes a reader to ‘wirelessly and automatically detect and identify the
`contents of the cabinet’ through RFID technology,” and that “RFID-tagged
`inventory . . . is tracked, and products are uniquely identified,” such that
`missing or expiring products may be identified. Id. at 41 (citations omitted).
`According to Petitioner, Children’s “discloses a system for managing
`a collection of implant kits requested
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