NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`NEOLOGY, INC.,
`Appellant
`
`v.
`
`INTERNATIONAL TRADE COMMISSION,
`Appellee
`
`KAPSCH TRAFFICCOM USA, INC., KAPSCH
`TRAFFICCOM HOLDING CORP., KAPSCH
`TRAFFICCOM CANADA INC., STAR SYSTEMS
`INTERNATIONAL LTD., STAR RFID CO., LTD.,
`Intervenors
`______________________
`
`2018-1338
`______________________
`
`Appeal from the United States International Trade
`Commission in Investigation No. 337-TA-979.
`______________________
`
`Decided: April 19, 2019
`______________________
`
`VINAY VIJAY JOSHI, Amin Turocy & Watson LLP, San
`Jose, CA, argued for appellant. Also represented by
`DANIEL W. BEDELL, ANTHONY KIM, ANDREW TIMOTHY
`OLIVER.
`
`
`

`

`2
`
`NEOLOGY, INC. v. ITC
`
` CATHY CHEN, Office of the General Counsel, United
`States International Trade Commission, Washington, DC,
`argued for appellee. Also represented by DOMINIC L.
`BIANCHI, WAYNE W. HERRINGTON, SIDNEY A. ROSENZWEIG.
`
` NATHAN S. MAMMEN, Kirkland & Ellis LLP, Washing-
`ton, DC, argued for intervenors. Also represented by
`GREGG F. LOCASCIO, BRIAN H. GOLD.
` ______________________
`
`Before TARANTO, SCHALL, and CHEN, Circuit Judges.
`TARANTO, Circuit Judge.
`Neology filed a complaint with the International Trade
`Commission in 2015, alleging, as now relevant, infringe-
`ment of claims 13, 14, and 25 of its U.S. Patent No.
`8,325,044 and claims 1, 2, and 4 of its U.S. Patent No.
`8,587,436. The patents, which share a specification, de-
`scribe and claim systems and methods for tracking identi-
`fying information, particularly those relying on radio
`frequency identification (RFID). The Commission held the
`claims now at issue invalid because (1) they lack adequate
`written description support and (2) they are invalid for an-
`ticipation by U.S. Patent No. 5,627,544 (Snodgrass) or for
`obviousness based on the combination of Snodgrass and
`two other pieces of prior art. Neology appeals. We affirm
`on the written-description ground and do not reach antici-
`pation or obviousness.
`
`I
`A
`Neology filed applications for both the ’044 and ’436 pa-
`tents in 2012, both applications tracing by the same chain
`of continuation applications to an application filed in 2003
`and a provisional application filed in 2002. The claims that
`appeared in the 2012 applications as filed (the 2012 claims)
`issued with very few changes as the claims in the ’044 and
`
`

`

`NEOLOGY, INC. v. ITC
`
`3
`
`’436 patents. Compare J.A. 3549–54, with ’044 patent, col.
`23, line 5, through col. 24, line 63; compare J.A. 3755–59,
`with ’436 patent, col. 23, line 13, through col. 25, line 17.
`The patents share a title, “System and Method for Provid-
`ing Secure Identification Solutions,” as well as a specifica-
`tion. They describe and claim methods and systems “for
`verifying and tracking identification information” in a se-
`cure system that, for one embodiment, “includes at least
`one of the following: a radio frequency (RF) identification
`device, an identification mechanism (e.g., a card, sticker),
`and an RF reader/writer.” See, e.g., ’044 patent, col. 1, lines
`39–45. An example is an RF device (corresponding to the
`claims “RFID transponder”) on an automobile, with identi-
`fying information embedded in the RFID device readable
`by an RFID reader. The important claim limitation for the
`asserted claims here involves exchanges of a “security key”
`between the RFID reader and transponder.
`The claims of the ’044 patent now at issue are claims
`13, 14, and 25. Claims 13 and 14 depend on claim 10, which
`reads:
`10. A toll system, comprising:
`a central database configured to:
`store toll accounts,
`receive identifiers related to toll accounts, and
`compare the received identifiers to identifiers
`associated with the toll accounts to determine
`if a match exists;
`an RFID reader comprising a radio and an an-
`tenna, the RFID reader configured to:
`send a first communication to a RFID tran-
`sponder that includes a memory the contents of
`which include an identifier,
`
`

`

`4
`
`NEOLOGY, INC. v. ITC
`
`send a second communication to the RFID
`transponder that includes a security key for
`validation by the RFID transponder,
`receive at least the identifier included in the
`memory contents in response to the second
`communication and as a result of validation of
`the security key, and transmit the identifier to
`the central database.
`Id., col. 23, lines 39–56. Claim 13 adds the limitation of an
`RFID reader sending a “third communication . . . that in-
`cludes a second security key for validation by the RFID
`transponder and receive further memory contents in re-
`sponse to the third communication and as a result of vali-
`dation of the second security key.” Id., col. 23, line 64,
`through col. 24, line 4. Claim 14, which depends on claim
`13, further requires that “the second security key is based
`on information received from the RFID transponder.” Id.,
`col. 24, lines 5–7. Claim 25 depends on claim 23, which
`recites the same series of communications and transfers of
`security keys but for an RFID transponder, not the “toll
`system” of claim 10. Id., col. 24, lines 37–50, 54–60.
`
`The ’436 patent claims also include the same series of
`communications between the RFID reader and tran-
`sponder. ’436 patent, col. 23, lines 13–43. Independent
`claim 1 recites:
`1. A RFID reader, comprising:
`a radio and an antenna;
`a processor coupled with the radio, the processor
`configured to:
`send a first communication to a RFID transponder
`via the radio and the antenna that includes a
`memory the contents of which includes an identi-
`fier,
`
`

`

`NEOLOGY, INC. v. ITC
`
`5
`
`send a second communication to the RFID tran-
`sponder via the radio and the antenna that in-
`cludes a security key for validation by the RFID
`transponder,
`receive at least the identifier included in the
`memory contents via the radio and the antenna in
`response to the second communication and as a re-
`sult of validation of the security key, and
`transmit the identifier to a central database;
`wherein the processor is further configured to send
`a third communication to the RFID transponder
`via the radio and the antenna that includes a sec-
`ond security key for validation by the RFID tran-
`sponder and receive via the radio and the antenna
`further memory contents in response to the third
`communication and as a result of validation of the
`second security key.
`Id., col. 23, lines 13–34. Claims 2 and 4 depend directly on
`claim 1. Claim 2 adds the limitation that “the security key
`is based on information received from the RFID tran-
`sponder.” Id., col. 23, lines 35–36. Claim 4 adds the limi-
`tation that “the second security key is based on information
`received from the RFID transponder.” Id., col. 23, lines 41–
`43.
`
`B
`Neology filed a complaint with the Commission on De-
`cember 4, 2015. The complaint alleged infringement of var-
`ious claims of the ’044 and ’436 patents, as well as claims
`of another patent not at issue here. Neology accused Kap-
`sch TrafficCom U.S. Corp., Kapsch TrafficCom IVHS Tech-
`nologies Holding Corp., Kapsch TrafficCom IVHS Holding
`Corp., Kapsch TrafficCom IVHS, Inc., Kapsch TrafficCom
`Canada Inc., Kapsch TrafficCom Holding Corp., Star Sys-
`tems International, Ltd., and STAR RFID Co., Ltd. (collec-
`tively, Kapsch) of importing infringing products. The
`
`

`

`6
`
`NEOLOGY, INC. v. ITC
`
`Commission instituted an investigation on January 11,
`2016. After Neology terminated the investigation with re-
`spect to claims 3, 6–12, and 14–18 of the ’436 patent, what
`remained were claims 13, 14, and 25 of the ’044 patent and
`claims 1, 2, and 4 of the ’436 patent.
`The administrative law judge concluded on June 22,
`2017, that the ’044 and ’436 patents are not entitled to the
`priority date of U.S. Patent Application No. 10/615,026,
`filed in 2003, because that application “does not provide
`written description support” for some of the key limitations
`of the at-issue claims of the ’044 and ’436 patents. The ALJ
`also found invalidity of the claims on several grounds, in-
`cluding the following: (a) claims 13, 14, and 25 of the ’044
`patent and claims 1, 2, and 4 of the ’446 patent are invalid
`for lack of written description; (b) claim 25 of the ’044 pa-
`tent and claims 1, 2, and 4 of the ’436 patent are antici-
`pated by Snodgrass; and (c) claims 13 and 14 of the ’044
`patent are invalid for obviousness over a combination of
`Snodgrass, U.S. Patent No. 5,819,234 (Slavin), and an ar-
`ticle, “RFID for Road Tolling, Road-Use Pricing and Vehicle
`Access Control,” by Phil Blythe (Blythe).
`Neology appealed to the full Commission, which issued
`its final decision on October 30, 2017. The Commission de-
`termined that the ALJ was correct that the two patents are
`not entitled to an earlier priority date, that the claims are
`invalid for lack of written description, and that the claims
`are invalid for anticipation by Snodgrass or obviousness
`based on a combination of Snodgrass, Slavin, and Blythe.
`The Commission reversed certain other invalidity determi-
`nations made by the ALJ.
`Neology filed a timely notice of appeal on December 22,
`2017. We have jurisdiction under 28 U.S.C. § 1295(a)(6).
`II
`We review the Commission’s factual findings for sub-
`stantial evidence. Rivera v. Int’l Trade Comm’n, 857 F.3d
`
`

`

`NEOLOGY, INC. v. ITC
`
`7
`
`1315, 1319 (Fed. Cir. 2017). Whether a claim is adequately
`supported by the written description is an issue of fact.
`GlaxoSmithKline LLC v. Banner Pharmacaps, Inc., 744
`F.3d 725, 729 (Fed. Cir. 2014). We review “procedural and
`evidentiary determinations made by the Commission,” in-
`cluding “waiver” determinations, for abuse of discretion.
`Windbond Elecs. Corp. v. Int’l Trade Comm’n, 262 F.3d
`1363, 1370 (Fed. Cir. 2001).
`
`A
`1
`Contrary to Neology’s initial contention, Kapsch did
`not waive the argument that the claims are invalid for lack
`of written description. Both the ALJ and the Commission
`decided whether the claims at issue have adequate written-
`description support both in determining priority and in de-
`termining validity. See J.A. 38–45; J.A. 147–74. The Com-
`mission specifically held that Kapsch had not waived the
`direct invalidity challenge based on inadequate support in
`the written description. See J.A. 39–40. We see no error
`in that determination. In pre- and post-hearing briefs,
`Kapsch and the Commission’s Office of Unfair Import In-
`vestigations timely raised, and they and Neology all dis-
`cussed, the issue of invalidity due to inadequate written
`description. J.A. 764; J.A. 937; J.A. 977; J.A. 1187; J.A.
`1188; J.A. 4770–71; J.A. 5135. There was no waiver.
`2
`When the investigation went to the Commission, on re-
`view of the ALJ decision, Neology argued that the specifi-
`cation and the 2012 claims themselves each provided
`adequate written description, but the Commission con-
`cluded that Neology had waived reliance on the 2012
`claims by not relying on those claims before the ALJ as a
`basis for written-description support. J.A. 42−43. We see
`no error in that conclusion. Neology’s briefing, even after
`the hearing, relied on the argument that the specification
`
`

`

`8
`
`NEOLOGY, INC. v. ITC
`
`of the ’026 application (the 2003 application), which did not
`include the 2012 claims, provided the written-description
`support of the claims in the ’044 and ’436 patents, and it
`did not make an argument that the 2012 claims furnished
`the required written-description support. J.A. 4775 (“How
`a [person of ordinary skill in the art] would specifically un-
`derstand that each challenged claim limitation is disclosed
`in the specification of the ’026 Application is described in
`even more detail below.”) (emphasis added); id. (“As fur-
`ther evidence that the specification of the ’026 Application
`provides adequate written description for the asserted
`claims . . . .”) (emphasis added). It was not until after the
`Commission requested additional briefing that Neology
`raised the argument that the 2012 claims contained ade-
`quate disclosure to provide written-description support for
`the issued claims. J.A. 5570 (“For validity, the written-de-
`scription analysis properly relies on the cumulative disclo-
`sure of the applications that became the ’044 and ’436
`patents—including the originally-filed claims [(the 2012
`claims)] in the asserted patents along with all prior appli-
`cations incorporated by reference—to determine whether
`the asserted claims have adequate support.”) (second em-
`phasis added); J.A. 5573 (“Therefore, unlike priority, the
`written-description analysis for invalidity in this case
`. . . also relies on the originally-filed claims of the applica-
`tions [(the 2012 claims)] that led to the ’044 and ’436 pa-
`tents . . . .”) (emphasis added).
`In response to the Commission’s determination that
`Neology waived the argument that the 2012 claims provide
`written-description support, Neology points to one passage
`in the pre-hearing brief it submitted to the ALJ. There,
`previewing its evidence for written description, Neology
`stated that “[e]xcept for the claims, the as-filed specifica-
`tion of the ’026 Application is nearly identical to the respec-
`tive applications that issued as the later member patents
`in the same family . . . .” J.A. 765. Neology argues that the
`
`

`

`NEOLOGY, INC. v. ITC
`
`9
`
`quoted sentence differentiates between the claims in the
`’026 application and the 2012 claims and thereby preserves
`the argument that the 2012 claims alone provide written
`description support for the issued claims.
`We disagree. We have recognized that claims can be
`self-describing. See, e.g., Mentor Graphics Corp. v. EVE-
`USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017); Ariad
`Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349–51
`(Fed. Cir. 2010). On the other hand, genus claims, espe-
`cially those that “use functional language to define the
`boundaries of a claimed genus,” are unlikely to provide an
`adequate written description so as to be self-describing.
`Ariad Pharm., 598 F.3d at 1349. Determining whether a
`particular claim is self-describing is not a cut-and-dried,
`simple matter, but would require more development—fac-
`tual and legal—than the passing reference on which Neol-
`ogy now relies. We conclude that the Commission did not
`abuse its discretion in finding that Neology waived its ar-
`gument that the asserted claims are supported by the 2012
`claims. We therefore affirm the Board’s conclusion that
`Neology waived this argument. The written-description
`contention preserved before the ALJ and Commission,
`therefore, was simply whether support for the claims at is-
`sue can be found in the body of the written description
`without the 2012 claims—which is substantively the same
`as the 2003 written description.
`B
`A patent must “contain a written description of the in-
`vention . . . in such full, clear, concise, and exact terms as
`to enable any person skilled in the art . . . to make and use
`the same.” 35 U.S.C. § 112 ¶ 1.1 We have long held that,
`
`1 Although the relevant wording has not changed, we
`cite the version of § 112 that pre-dated the amendments to
`
`
`

`

`10
`
`NEOLOGY, INC. v. ITC
`
`for any given claim, “the description must ‘clearly allow
`persons of ordinary skill in the art to recognize that [the
`inventor] invented what is claimed.’” Ariad Pharm., 598
`F.3d at 1351 (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d
`1555, 1562–63 (Fed. Cir. 1991)). As we have noted, the ad-
`equacy of support in the written description is a question
`of fact, and we review the Commission’s answer to that
`question for substantial evidence. Rivera, 857 F.3d at
`1319; GlaxoSmithKline, 744 F.3d at 729.
`The ALJ identified five limitations of the asserted
`claims that lacked adequate written description, a finding
`affirmed by the Commission. The five limitations are: “a
`second communication . . . that includes a security key”;
`transmission of an “identifier” from transponder memory
`“in response to the second communication” as a result of
`“validation” of the “security key”; a central database and
`toll system; a “third communication . . . that includes a sec-
`ond security key”; and a “security key is based on infor-
`mation received from the RFID transponder.” J.A. 24–25;
`J.A. 70. We find it unnecessary to discuss the third limita-
`tion. It suffices to discuss the other four limitations, for
`which the Commission’s findings of inadequate support
`largely rest on a shared basis.
`The first limitation claims the transmission of a second
`communication containing a security key and is part of
`claims 13, 14, and 25 of the ’044 patent and claims 1, 2, and
`4 of the ’436 patent. It requires both the existence of a “se-
`curity key” and the transmission of that same key. The
`specification mentions five types of keys: cryptographic,
`
`
`that section made by the Leahy-Smith America Invents
`Act, Pub. L. No. 112-29, § 4(c), 125 Stat. 284, 296 (2011).
`Those amendments do not apply to patents, like the ’044
`and ’436 patents, that issued from applications filed before
`September 16, 2012. Id., § 4(e), 125 Stat. 297.
`
`

`

`NEOLOGY, INC. v. ITC
`
`11
`
`security, credit and debit exchange, encryption, and ex-
`change encrypted. The specification describes crypto-
`graphic keys as “check[ed] and validate[d]” by the “security
`management unit” and being “sent to the cryptographic
`block.” ’044 patent, col. 2, lines, 51–53. The “cryptographic
`block” also “stores the security keys.” Id., col. 2, lines 53–
`54. Credit and debit exchange keys are disclosed as part of
`the “Optional Security Features” where identifying infor-
`mation is stored in “[h]ighly secure chips with a hardware
`programmable cryptographic block” that has the credit and
`debit exchange key. Id., col. 12, lines 7, 20–23. Encryption
`keys are disclosed in the same optional security features
`section and are needed to “initialize[]” equipment that in-
`teracts with the device storing identifying information. Id.,
`col. 12, lines 28–31. Finally, the specification discloses a
`“hardware wired cryptographic block 2210 (with 4 ex-
`change encrypted keys . . . ).” Id., col. 22, lines 18–19.
`Based on the disclosures in the specification and testi-
`mony from the experts, the Commission had substantial
`evidence to support its finding of insufficient written de-
`scription. Despite disclosing several types of keys, the
`specification discloses only where they are stored and not
`whether they are exchanged. Experts for both Kapsch and
`Neology agreed that cryptographic and encryption keys, by
`their nature, are not exchanged. J.A. 2908–09; J.A. 3046.
`Dr. Gregory Durgin, Kapsch’s expert, testified that credit
`and debit exchange keys and exchange encrypted keys
`function like cryptographic keys, in that they are stored in
`the same cryptographic block, and are not exchanged, be-
`cause cryptographic keys are not exchanged. J.A. 2433–34.
`He also testified that the credit and debit exchange and ex-
`change encrypted keys are not exchanged because the spec-
`ification “doesn’t involve those keys in any sort of RFID
`protocol.” J.A. 2433 The Commission could reasonably rely
`as well on the inventor’s own testimony that the keys dis-
`closed in the specification are encryption keys, J.A. 1704–
`
`

`

`12
`
`NEOLOGY, INC. v. ITC
`
`07, which, as previously discussed, are not exchanged, even
`though he later clarified his testimony that two of the dis-
`closed keys are the credit and debit exchange keys, id. And
`Jack Goldberg, Neology’s expert, originally testified that he
`simply did not know if the keys were exchanged, J.A. 3060–
`61, which allowed the Commission not to credit—against
`other evidence—Mr. Goldberg’s later testimony that the
`credit and debit and exchange encrypted keys must be ex-
`changed because of their names. We conclude that there is
`substantial evidence in the specification and the testimony
`to support the Commission’s finding that the specification
`does not adequately describe a second communication that
`includes a security key.
`The Commission’s finding that there is no disclosure of
`a transmission of the security key supports the finding that
`three additional claim limitations are likewise inade-
`quately supported. The second limitation requires the
`transmission of an “identifier” “in response to the second
`communication” as a result of “validation of the security
`key.” ’044 patent, col. 23, lines 53–56; ’436 patent, col. 23,
`lines 23–26. If there is no transmission of a security key,
`there cannot be validation of such a key or transmission of
`an identifier in response to the second communication.
`Similarly, the fourth limitation requires a “third communi-
`cation . . . that includes a second security key,” ’044 patent,
`col. 23, line 64 through col. 24, line 4; ’436 patent, col. 23,
`lines 27–29, so the finding that there is no disclosure of a
`second communication including a key means that there
`can be no third communication that includes a “second” one
`of that key. The fifth limitation, which requires the “secu-
`rity key”/“second security key” from the independent claim
`to be “based on information received from the RFID tran-
`sponder,” ’044 patent, col. 24, lines 5–7; ’436 patent, col. 23,
`lines 34–35, 40–43, also is reasonably found unsupported
`in the absence of a disclosure of information exchanged be-
`tween the transponder and the device. Additionally, Dr.
`Durgin testified that “there is no disclosure of an RFID
`
`

`

`NEOLOGY, INC. v. ITC
`
`13
`
`protocol or any specific step that would involve the security
`key, based on information from the RFID transponder.”
`J.A. 2449–53. Thus, the Commission had substantial evi-
`dence to find inadequate written-description support for
`limitations two, four, and five.
`For those reasons, we affirm the Commission’s finding
`that the asserted claims lack sufficient written-description
`support. In view of that conclusion, we need not reach the
`issues of anticipation or obviousness.
`III
`The ruling of the Commission that the claims at issue
`are invalid is affirmed.
`AFFIRMED
`
`
`