Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`Date: September 1, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`INFINEON TECHNOLOGIES AG,
`Petitioner,
`
`v.
`
`FEINICS AMATECH TEORANTA,1
`Patent Owner.
`_____________
`
`IPR2022-00650
`Patent 9,633,304 B2
`____________
`
`
`Before STACEY G. WHITE, BRIAN D. RANGE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`RANGE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 Patent Owner is AmaTech Group Limited. Patent Owner’s Mandatory
`Notice, Paper 5, 1.
`
`
`571-272-7822
`
`
`
`
`Paper 31
`Date: September 1, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`INFINEON TECHNOLOGIES AG,
`Petitioner,
`
`v.
`
`FEINICS AMATECH TEORANTA,1
`Patent Owner.
`_____________
`
`IPR2022-00650
`Patent 9,633,304 B2
`____________
`
`
`Before STACEY G. WHITE, BRIAN D. RANGE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`RANGE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 Patent Owner is AmaTech Group Limited. Patent Owner’s Mandatory
`Notice, Paper 5, 1.
`
`
`
`IPR2022-00650
`Patent 9,633,304 B2
`
`
`INTRODUCTION
`I.
`Infineon Technologies AG (“Petitioner”) filed a Petition requesting
`inter partes review of claims 1–3, 5–8, 11–14, and 16 (“the challenged
`claims”) of U.S. Patent No. 9,633,304 B2 (Ex. 1001, “the ’304 patent”).
`Paper 2 (“Pet.”). We instituted inter partes review of the challenged claims
`on all asserted grounds. Paper 12 (“Dec.”). After institution, Patent Owner
`filed a Patent Owner Response (Paper 15, “PO Resp.”), Petitioner filed a
`Reply (Paper 16, “Pet. Reply”), and Patent Owner filed a Sur-Reply (Paper
`19, “Sur-Reply”). An oral hearing was held on June 22, 2023, and a
`transcript of the hearing is included in the record (Paper 30, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is issued
`pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine
`that Petitioner has shown, by a preponderance of the evidence, that claims
`1–3, 5–8, 11–14, and 16 of the ’304 patent are unpatentable.
`
`BACKGROUND
`II.
`Related Matters
`A.
`The parties indicate that the ’304 patent is the subject of the following
`district court proceedings: Smart Packaging Solutions SA v. CPI Card
`Group Inc., No. 1:21-cv-00556 (D. Del. 2021), and Smart Packaging
`Solutions SA v. Perfect Plastic Printing Corp., No. 1:21-cv-00557 (D. Del.
`2021). Pet. xvi; Paper 5, 2. Patent Owner further indicates that patents
`related to the ’304 patent are at issue in IPR proceedings in IPR2022-00235,
`Infineon Technologies AG v. Feinics AmaTech Teoranta (filed November
`24, 2021) (U.S. Pat. No. 9,195,932 B2) and IPR2022-00417, Infineon
`Technologies AG v. AmaTech Group Ltd. (filed January 10, 2022) (U.S. Pat.
`No. 9,033,250 B2). Paper 5, 3. We also note that in IPR2022-00951, petition
`
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`Patent 9,633,304 B2
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`filed April 29, 2022, Petitioner challenges claims of related U.S. Patent
`No. 9,165,240 B2.
`
`The ’304 patent
`B.
`The ’304 patent is titled “Booster Antenna Configurations and
`Methods.” Ex. 1001, code (54). Generally, the ’304 patent describes a
`booster antenna for a smart card. Id. at code (57). We reproduce Figures 1
`and 1A of the ’304 patent below.
`
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`Figure 1 is a cross-section of a dual-interface smart card and reader and
`Figure 1A is the top view of a smart card’s card body (CB). Id. at 7:35–38.
`A smart card may comprise card body (CB) (120) that has coupling area
`(144) in the location of antenna module (AM), and booster antenna (BA)
`(130). Id. at 1:63–2:1, 10:10–28. Antenna module (AM) may comprise a
`module tape (MT) or an RFID (radio frequency identification) chip or chip
`module. Id. at 1:65–2:4, 10:12–18. Booster antenna (BA) (130) may
`comprise various antenna components, such as card antenna (CA) (132) for
`coupling with an external contactless reader, and coupling coil (CC) (134)
`for coupling with module antenna (MA) (114) of antenna module (AM). Id.
`at 2:4–8, 10:23–27.
`
`We reproduce ’304 patent Figure 4B below.
`
`
`Figure 4B illustrates an embodiment of a booster antenna (BA) with card
`antenna (CA), a coupler antenna (CC), and an extension antenna (EA). Id. at
`7:52–54. The booster antenna BA may be formed from “one, continuous”
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`wire laid in a pattern to form several coils that the ’304 patent characterizes
`as the card antenna CA, coupler antenna CC, and extension antenna EA. Id.
`at 18:9–14. The coupler antenna CC may encircle or nearly encircle the
`antenna module AM for inductively coupling. Id. at 16:66–17:5. The
`extension antenna may serve to “increase the inductivity of the booster
`antenna BA while reducing its resonance frequency.” Id. at 17:52–60.
`
`The ’304 patent describes a prior art reference, “U.S. Patent
`No. 8,130,166 (Assa Abloy, 2012)” as disclosing a “coupling device for
`transponder and smart card with such device.” Id. at 3:38–40. Petitioner
`explains that the “Assa Abloy” reference is the patent that issued from the
`application that Petitioner refers to as Ayala-362. Pet. 6; see also Ex. 1012
`(the “Assa Abloy” patent); Ex. 1006 (the Ayala-362 patent application). The
`’304 patent explains that this prior art device had a small spiral and large
`spiral where “the small spiral shows a larger pitch than the ones of the large
`spirals.” Ex. 1001, 3:40–49. The ’304 patent explains that Assa Abloy
`teaches choosing the pitches of spirals as follows:
`The pitches of the large spirals are chosen such as that the interturn
`stray capacitances is important and that the large spirals have mainly a
`capacitive behavior. And the pitch of the small spiral is chosen such
`as that the interturn stray capacitances are negligible, and that the
`small spiral has mainly an inductive behavior.
`
`Id. at 3:49–54; see also id. at 26:7–22 (distinguishing Assa Abloy);
`Ex. 1006, code (57) (Ayala-362 abstract providing a similar explanation).
`
`The ’304 patent teaches that at least one of its components “may have
`a pitch which is different than one or more of the other components.”
`Ex. 1001, code (57). Figure 6A (not reproduced here) states that “pitch
`increases across width of card body (CB).” Id. at Fig. 6A. The ’304 patent
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`also explains that its device’s features may include “windings (turns) of CA,
`CC or EA having different pitches/spacings.” Id. at 5:27–28. In the
`paragraph we reproduce below, the ’304 patent explains how it uses the
`word “pitch” and explains that pitch may vary during manufacturing:
`As used herein, “pitch” may refer to the average distance, center-to-
`center (c-c), between adjacent turns of a wire for a winding (OW, IW)
`or the coupler coil (CC), as it is being laid. (Or, by analogy, to the
`center-to-center distance between adjacent conductive tracks made by
`additive or subtractive processes). It should be understood that during
`manufacturing (including as a result of subsequent manufacturing
`steps such as laminating), the pitch of the wire may vary or change
`somewhat, such as +/-5%, or more. And, when going around a corner,
`such as in a rectangular spiral, the pitch may be somewhat
`indeterminate. It should also be understood that the pitch of the
`windings (OW, IW) or coupler coil (CC) may be advertently altered
`(typically increased) locally, such as at the free ends “a” and “f”, to
`accommodate manufacturing processes (such as starting and ending
`embedding the wire) and the like. “Pitch” may refer to the initial
`(during laying) or final (after laminating) distance (c-c) between
`adjacent turns of a winding.
`
`Id. at 13:1–18. The ’304 patent explains that “pitch can be selected in order
`to vary the capacitance of the extension antenna (EA) and hence tune the
`resonance frequency of the booster antenna (BA).” Id. at 20:40–46.
`Illustrative Claim
`C.
`
`Petitioner challenges claims 1–3, 5–8, 11–14, and 16. Pet. 1. Claim 1
`is the only independent claim, and we reproduce claim 1 below.
`
`Booster [A]ntenna (BA) comprising the following
`1.
`components:
`a card antenna (CA) component;
`a coupler coil (CC) component; and
`an extension antenna (EA) component;
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`characterized in that:
`at least one of the components has a pitch which is
`different than one or more of the other components.
`Ex. 1001, 48:39–46.
`
`
`Asserted Grounds of Unpatentability
`D.
`Petitioner, supported by the declaration of Dr. Daniel van der Weide
`(Ex. 1003), asserts the following four2 grounds of unpatentability (Pet. 2):3
`References/Basis
`Claims Challenged
`35 U.S.C. §
`Takeda-322,4 Ayala-3625
`1–3, 5–8, 12–14, 16
`103
`1–3, 5–8, 11–14, 16
`103
`Murayama6, Ayala-362
`1–3, 5–8, 11–14, 16
`102
`Ayala-362
`6–8, 11, 16
`103
`Ayala-362
`
`
`2 Petitioner lists three grounds in its Petition. Pet. 2. Petitioner, however,
`argues under its third ground, that “Ayala-362 anticipates claims 1-3, 5, and
`12-14, and anticipates and/or renders obvious claims 6-8, 11, and 16.” Pet.
`77. We, therefore, interpret Petitioner’s third ground as including two
`separate grounds, one in which Petitioner contends that claims 1-3, 5-8, 11-
`14, and 16 are anticipated by Ayala-362 and another, in which Petitioner
`contends that claims 6-8, 11, and 16 are obvious over Ayala-362.
`3 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. The application that
`issued as the ’304 patent was filed after this date, but claims priority to
`applications filed before March 16, 2013. See Ex. 1001, codes (22), (60),
`(63). For the purposes of this Decision, we need not determine whether pre-
`or post-AIA statutes apply. Moreover, our analysis would be the same under
`either version of these statutes. See Pet. 52–54 (arguing that Murayama is
`prior art whether or not pre-AIA law applies).
`4 JP 4016322 B2, published November 21, 2003, Ex. 1005 (“Takeda-322”).
`5 US 2009/0152362 A1, published June 18, 2009, Ex. 1006 (“Ayala-362”).
`6 WO 2011/122162, published October 6, 2011, Ex. 1007 (“Murayama”).
`
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`Patent Owner’s Response is supported by the declaration of Dr. William
`Eisenstadt. Ex. 2003; see also Ex. 2022 (Dr. Eisenstadt declaration from
`prior IPR2022-00235); Ex. 2023 (same).
`III. ANALYSIS
`Patent Owner’s Motion to Submit Supplemental Information
`A.
`Patent Owner’s Sur-Reply cites two proposed exhibits that would be
`new to the record. The proposed exhibits are Petitioner’s expert declaration
`from IPR2022-00417 (Proposed Exhibit 20287) and the transcript from
`consolidated oral arguments in IPR2022-00235 and -00417 (Proposed
`Exhibit 2029). Sur-Reply 13, 23. The Board authorized Patent Owner to file
`a motion to submit these exhibits as supplemental information pursuant to
`37 C.F.R. § 42.123(b). Ex. 2030. The Board instructed Patent Owner that,
`“[i]f the Board denies the motion, it will disregard any quotes from or
`citations to the proposed supplemental information that may be found in
`Patent Owner’s Sur-reply.” Id. at 1. Patent Owner filed a timely motion
`(“Mot. to Supp.”), and Petitioner filed a timely opposition (Paper 23, “Opp.
`to Mot. to Supp.”).
`Patent Owner argues that Petitioner stated in the Petition that an “EA”
`(extension antenna) is “disposed in available card space” and that, in reply,
`“Petitioner stressed that ‘available card space’ is the ‘remaining (or residual
`area.’” Mot. to Supp. 1 (citing Pet. 4–5; Reply 3; Ex. 1055 ¶ 13 (Dr. van der
`Weide declaration in support of Reply). Patent Owner quotes the following
`from the Reply: “Petitioner explained that an ‘additional coil, disposed in
`
`
`7 Patent Owner requests, in particular, consideration of paragraphs 38, 40,
`123, and 124 of Proposed Exhibit 2028. Paper 20, Motion to Supplement
`(“Mot. to Supp.”), 3.
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`available card space… ’ … is an EA…. Petition, 4–5; ’304 patent,… 11:4–
`13 (‘… may be disposed in remaining (or residual) area…’).” Mot. to
`Supp. 1 (quoting Reply 3) (emphasis original to Reply; ellipses original to
`the Motion to Supplement). For further context we reproduce the relevant
`portion of the Reply verbatim:
`Petitioner did not propose an outer-boundary construction because
`none was required. Petition, 9. Instead, Petitioner explained that an
`additional coil, disposed in available card space, that contributes to the
`booster antenna’s inductance”—as in all the grounds—is an EA
`pursuant to the ’304 patent’s description. Petition, 4-5; ’304 patent,
`5:60-62 (the “(EA) contributes to the inductance of the booster
`antenna (BA), and may be in the form of a coil…”), 11:4-13 (“…may
`be disposed in remaining (or residual) area…”). AmaTech
`characterizes this as “Petitioner’s construction.” POR, 23-34, 29-30.
`
`Reply 3 (emphases and alterations original).
`
`Patent Owner further argues that Petitioner’s witness, Dr. van der
`Weide, introduced a new theory during reply deposition by responding to the
`question “Assuming there were no conductors disposed on the card shown in
`Figure 3B, where is the available card space?” with the answer “It would
`comprise the entirety of the card.” Mot. 2 (quoting Ex. 2027, 137:1–10).
`Patent Owner thus seeks to introduce Exhibit 2028 which Patent Owner
`characterizes as Dr. van der Weide testifying that “the EA cannot be
`disposed in the coupling area.” Id. Patent Owner also seeks to introduce
`Exhibit 2029 which Patent Owner characterizes as Petitioner’s counsel also
`endorsing the “new theory” that “each of Takeda-322’s coils L1 are both a
`CC [coupler coil] and an EA [extension antenna].” Id. at 5; see also Sur-
`Reply 23 n. 10 (referencing argument of Petitioner’s counsel during oral
`arguments for IPR2022-00235 and -00417). The purpose of these exhibits is
`to support a Patent Owner argument that, at least according to Petitioner,
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`L1-top is a CC (coupler coil) and therefore, is in a “coupling area” which is
`not “available card space” such that L1-top cannot also be an extension
`antenna (because Petitioner argued that an extension antenna must reside in
`“available card space”). Sur-Reply 23–24.
`
`To succeed, a motion to submit supplemental information pursuant to
`37 C.F.R. § 42.123(b) must meet two requirements. First, the motion must
`show why the supplemental information reasonably could not have been
`obtained earlier. 37 C.F.R. § 42.123(b). Second, the motion must show that
`consideration of the supplemental information would be in the interest of
`justice. Id. As we explain below, Patent Owner’s motion fails to meet either
`requirement.
`
`We first address Exhibit 2028 and the first requirement of 37 C.F.R.
`§ 42.123(b). Patent Owner “obtained” Exhibit 2028 as of at least January 10,
`2022 when IPR2022-00417 was filed. See IPR2022-00417, Ex. 1003 (van
`der Weide declaration). If something about that declaration is important,
`Patent Owner must adequately explain why it did not address Exhibit 2028
`as part of its December 6, 2022, Response to Petition (filed nearly eleven
`months after obtaining the exhibit in question). See Opp. to Mot. to Supp. 2;
`see also Paper 12, 1 (institution decision cautioning that “[a]ny arguments
`not raised by Patent Owner in a timely-filed response may be deemed
`waived”); Paper 13, 9 (scheduling order stating “Patent Owner is cautioned
`that any arguments not raised in the response may be deemed waived”).
`
`Patent Owner’s timeliness argument appears to be that Exhibit 2028
`was not relevant until the Sur-Reply due to a chain of causal connections
`arising from Petioner’s Reply. Patent Owner’s chain necessitates that
`(1) Petitioner first stressed that “available card space” is the “remaining (or
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`residual area)” on Reply thus (2) causing Patent Owner to question Dr. van
`der Weide about “remaining card space” in a reply deposition thus
`(3) causing Dr. van der Weide to testify as, according to Patent Owner, a
`“new theory” that available card space is “anywhere on the card body” thus
`(4) necessitating Patent Owner to introduce Exhibit 2028 as rebuttal
`evidence wherein Dr. van der Weide supposedly said the EA cannot be
`disposed in the coupling area. Mot. 1–3.
`But Patent Owner’s causal chain fails at every link. As to the first
`link, Patent Owner relies on Petitioner quoting the ’304 patent at 11:4–13.
`The Petition, however, cited precisely the same portion of the ’304 patent for
`precisely the same premise—that the EA must be disposed in available card
`space. Pet. 4–5 (“The EA component is an additional coil, disposed in
`available card space, that contributes to the BA’s inductance. [Ex. 1001],
`11:4–13, 27:63–28:5.”). Dr. van der Weide did the same in his first
`declaration for this matter. Ex. 1003 ¶ 34 (citing Ex. 1001, 11:4–13 to
`support that “the extension antenna component is an additional coil,
`disposed in available card space, which contributes to the booster antenna’s
`inductance”). Thus, Patent Owner’s explanation fails to identify anything
`new in the Reply.
`As to the second link, Patent Owner could have deposed Dr. van der
`Weide about available card space and his citation of 11:4–13 of the ’304
`patent prior to filing the Reply. If Patent Owner would have done so, there
`would have been no need to introduce new evidence in Sur-Reply.
`As to the third link, Dr. van der Weide did not introduce a “new
`theory” that available card space is “anywhere on the card body.” Rather,
`Dr. van der Weide testified that the “available card space” would be “the
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`entirety of the card” if we assume “there were no conductors disposed on the
`card shown in Figure 3B.” Ex. 2027, 137:1–10. Rather than being a “new
`theory,” this testimony is unremarkable. If a card has nothing on it, the
`entirety of the card is “available card space.” Neither party seems to dispute
`this proposition, and we are not persuaded that this proposition is somehow a
`“new theory” of Petitioner’s case.
`As to the fourth link, if Patent Owner wanted to argue that an
`extension antenna cannot be in a coupling area or, alternatively, that
`Petitioner was taking the position that an extension antenna cannot be in a
`coupling area, Patent Owner could have made such an argument in the
`Patent Owner Response. The import of such an argument, if any, is to
`address the merits of Petitioner’s argument made in the Petition. Because
`Patent Owner fails to adequately explain why Patent Owner could not have
`introduced and addressed Exhibit 2028 in the Patent Owner Response,
`Patent Owner does not meet the first requirement of 37 C.F.R. § 42.123(b).
`Moreover, the fourth link also fails because we do not agree that
`Exhibit 2028 evidences that Dr. van der Weide took the position that there
`was some general “area” where the extension antenna cannot be located.
`Rather, in Exhibit 2028, Dr. van der Weide states that the extension antenna
`is located in a “‘remaining’ area” which is “separate from” “the ‘coupling
`area (where the coupler coil is formed).” Ex. 2028 ¶ 124 (emphasis added).
`This testimony is best understood as Dr. van der Weide merely stating that
`the extension antenna cannot be in the precise same location as the coupler
`coil. This is an unremarkable proposition considering that the extension
`antenna and coupler coil are not the same and considering that two physical
`objects cannot occupy one location in space. The proposition is consistent
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`with Dr. van der Weide’s testimony indicating that available card space is
`space where another structure is not present. Because Patent Owner’s causal
`links to justify a late filing fail, Patent Owner’s timeliness argument is
`unpersuasive.
`As to the interest of justice requirement of 37 C.F.R. § 42.123(b), it
`would not be in the interest of justice to permit Patent Owner to use Exhibit
`2028 to change positions for the first time in Sur-Reply. See Opp. to Mot. to
`Supp. 1–2. In the Patent Owner Response, Patent Owner and its witness,
`Dr. Eisenstadt, took the position that Petitioner’s requirement that the EA be
`located in “available card space” was “meaningless” because “any coil could
`only be located in available card space.” PO Resp. 32; Ex. 2003 ¶ 84.
`Indeed, this appears to still be Patent Owner’s position. Tr. 50:10–18 (Patent
`Owner’s counsel confirming that Patent Owner’s witness testimony is
`consistent with “available card space” being meaningless). But in Sur-Reply,
`Patent Owner argues for the first time that the Petition fails because the
`Takeda-322 EA is not in “available card space” according to Petitioner’s
`“construction” of “available card space.” Sur-Reply 23–24. Because Patent
`Owner could have raised such an argument earlier (as explained above) and
`because Petitioner would have no meaningful opportunity to rebut a new
`argument raised in Sur-Reply, it is not in the interest of justice to permit
`Exhibit 2028 as supplemental information pursuant to 37 C.F.R.
`§ 42.123(b).
`Patent Owner also argues that “it is in interests of justice to consider
`an expert’s contradictory testimony from a related, co-pending [inter partes
`review] when evaluating the scope of an identical claim term (EA) as
`applied to identical prior art (Takeda-322).” Mot. to Supp. 5. Although we
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`agree that contradictory testimony from a different proceeding could be very
`relevant, this reasoning does not justify entry of Exhibit 2028. As we explain
`above, Exhibit 2028 does not contradict Dr. van der Weide’s testimony
`(Ex. 2027, 137:1–10) in this proceeding.
`With respect to Exhibit 2029, Patent Owner seeks to introduce the
`argument of Petitioner’s counsel in a different IPR wherein Petitioner
`asserted that Takeda-322’s L1 may function as both a CC and an EA. Patent
`Owner’s argument for needing this exhibit is unpersuasive. Patent Owner
`explicitly argued in the Patent Owner Response that Takeda-322’s L1 coil
`cannot be an extension antenna because it serves as a coupler coil. PO Resp.
`55–56. So, prior to the Reply, Patent Owner already understood that
`Petitioner was taking the position that one coil could be the claimed
`extension antenna and could also serve as an unclaimed coupler coil (while
`nonetheless being a physically distinct component than the claimed coupler
`coil). See also Pet. 28 (taking the position that the upper L1 (in pink) is an
`extension antenna for chip CP1 despite L1 also coupling chip CP2 to booster
`coil L2 (thus also acting as a coupler coil)). The interests of justice do not
`support the inclusion of Exhibit 2029 as a new exhibit because Petitioner’s
`counsel’s position at oral argument is the same as that in the Petition.
`We, thus, deny Patent Owner’s motion with respect to Exhibit 2028
`pursuant to both requirements of 37 C.F.R. § 42.123(b) and deny Patent
`Owner’s motion with respect to Exhibit 2029 pursuant to the 37 C.F.R.
`§ 42.123(b) interests of justice requirement.
`We further note that, even if we were to allow Exhibit 2028 and
`Exhibit 2029 as evidence, doing so would not change the outcome of our
`decision. In particular, neither exhibit adds persuasive evidentiary support to
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`the notion that a coil cannot serve as an extension antenna as to one chip
`while also serving as a coupler coil as to a different chip or that Takeda’s top
`L1 is not an extension antenna because it is not in “available card space.” We
`discuss these issues further at Section III.H.4.b, infra.
`Patent Owner’s Objections to Petitioner’s Demonstrative Slides
`B.
`Patent Owner objects to a number of Petitioner’s demonstratives for
`oral argument because, for example, the demonstratives constitute evidence
`that Petitioner did not reference or discuss in a prior paper. See, e.g., Paper
`29 passim.
`We have considered the objections. Demonstratives for oral argument,
`however, are not evidence. Paper 24, 2 (Order Setting Oral Argument); see
`also Consolidated Trial Practice Guide 84, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“Demonstrative
`exhibits used at the final hearing are aids to oral argument and not
`evidence.”). We do not rely on demonstratives as evidence in our decision
`making; instead, we rely solely on the arguments properly presented in the
`parties’ briefs and the evidence of record. Because demonstratives do not
`affect our decision making, Patent Owner’s objections to the demonstratives
`likewise do not affect our decision making. We dismiss Patent Owner’s
`objections as moot.
`
`Anticipation: Legal Standard
`C.
`“[A] claim is anticipated ‘if each and every limitation is found
`expressly or inherently in a single prior art reference.’” King Pharm., Inc. v.
`Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas
`Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)).
`Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35
`
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`(Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the
`art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368
`(Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s
`whether one skilled in the art would reasonably understand or infer from the
`[prior art reference’s] teaching that every claim element was disclosed in
`that single reference” (alteration in original) (quotation omitted)).
`D. Obviousness: Legal Standard
`A patent claim is unpatentable under 35 U.S.C. § 103(a) 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). 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 ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).8
`
`Level of Ordinary Skill in the Art
`E.
`In order to determine whether an invention would have been obvious
`at the time the application was filed, we consider the level of ordinary skill
`in the pertinent art at critical time. Graham, 383 U.S. at 17. The resolution of
`this question can be important because it allows us to “maintain[] objectivity
`in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714,
`
`
`8 Here, the parties do not direct us to objective evidence of nonobviousness.
`
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`718 (Fed. Cir. 1991). The Federal Circuit has identified a non-exhaustive list
`of factors to be considered in defining the level of skill in the art including:
`“(1) the educational level of the inventor; (2) type of problems encountered
`in the art; (3) prior art solutions to those problems; (4) rapidity with which
`innovations are made; (5) sophistication of the technology; and
`(6) educational level of active workers in the field.” Best Med. Int’l, Inc. v.
`Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted).
`Generally, it is easier to establish obviousness under a higher level of
`ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637
`F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill
`generally favors a determination of nonobviousness . . . while a higher level
`of skill favors the reverse.”).
`Petitioner asserts that a person having ordinary skill in the art “would
`have had a Bachelor’s degree in electrical engineering or a similar field, and
`1–2 years of experience researching and developing RFID antennas;
`additional educational background could substitute for professional
`experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 22–26).
`Patent Owner argues that Petitioner’s definition of the level of
`ordinary skill in the art is too broad because the field of RFID is “incredibly
`wide,” with important differentiation criteria including the operating
`frequency of the reader, the physical coupling method, and the range of the
`system. PO Resp. 22 (citing Ex. 2003 ¶¶ 20–28; Ex. 2005, 11, 22).
`According to Patent Owner, the smart cards of the ’304 patent operate on
`relatively low frequencies, require antennas that perform inductive coupling,
`and are technologically distinct from antennas for microwave RFID devices.
`Id. at 22–23 (citing Ex. 2003 ¶¶ 24–26). Thus, Patent Owner asserts that a
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`person having ordinary skill in the art “would have had a Bachelor’s degree
`in electrical engineering or a similar field, and 1–2 years of experience
`researching and developing antennas for RFID devices that are used for
`inductive coupling; additional educational background could substitute for
`professional experience and vice versa.” Id. at 23 (citing Ex. 2003 ¶ 26)
`(emphasis original).
`The parties are in general agreement as to the level of education
`(undergraduate degree in electrical engineering or equivalent) and the
`number of years of experience working with RFID devices (1–2 years), but
`differ as to the exact nature of that experience (developing antennas used in
`RFID devices versus developing antennas used in RFID devices for
`inductive coupling). The specification of the ’304 patent describes its
`technical field as relating to a smart card that may comprise an RFID (radio
`frequency identification) chip with antenna components for operating in
`contactless modes. Ex. 1001, 1:37–54. The specification discusses both
`inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner
`submitted into the record a text titled RFID Handbook, which details
`different frequencies and types of coupling that may be used by various
`RFID systems. See Ex. 2005, 22–23. Although this text differentiates
`between “inductively or capacitively coupled system[s] and microwave
`system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its
`description of each of these types of RFID devices indicates that an ordinary
`artisan would have had experience with RFID devices generally. Id. Thus,
`we are not persuaded that the level of ordinary skill should be confined to
`developing antenna for RFID devices that are used for inductive coupling.
`For the purposes of this Decision, we adopt Petitioner’s definition of the
`
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`level of ordinary skill in the art as “a Bachelor’s degree in electrical
`engineering or a similar field, and 1–2 years of experience researching and
`developing antennas used in RFID applications.” Pet. 7.9
`F. Dr. van der Weide’s Testimony
`Patent Owner argues that we should not give substantial weight to the
`testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons.
`PO Resp. 45–51. Patent Owner first argues that Dr. van der Weide lacks
`relevant experience to provide opinions through the lens of a person having
`ordinary skill in the art. Id. at 45–46 (citing Ex. 2003 ¶ 96). According to
`Patent Owner, Dr. van der Weide “has experience with RFID that operates at
`microwave frequencies,” but “identifies no experience with relevant
`inductive RFID systems at lower frequencies (e.g., frequencies such as
`13.56MHz and 8.2MHz).” Id. at 45. This argument is based on Patent
`Owner’s articulation of the level of ordinary skill in the art, which we have
`not adopted. Moreover, Petitioner presents evidence that Dr. van der
`Weide’s experience exceeds even Patent Owner’s articulation of the level of
`ordinary skill in the art. Pet. Reply 25–27 (citations omitted). Dr. van der
`Weide’s education and experience are sufficient to allow us to grant his
`testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der
`Weide curriculum vitae).
`Patent Owner also argues that Dr. van der Weide’s testimony “runs
`counter to fundamental principles of inductive coupling RFID technology.”
`PO Resp. 46–47 (formatting omitted). Patent Owner bases this argument on
`
`
`9 We further note that our final determination, on the merits, would be the
`same even under Patent Owner’s definition of the level of ordinary skill in
`the art.
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`Dr. van der Weide failing to immediately know (and testify) that Takeda-
`322’s L2 inductance is much larger than L1. Id. Patent Owner further argues
`that this alleged failure “is directly relevant to his mistaken opinion that
`Takeda-322 discloses an ‘extension antenna component.’” Id. at 47. Patent
`Owner furt
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