PTAB

IPR2014-01536

RF Controls LLC v. A 1 Packaging Solutions Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Radio Frequency Identification System for Tracking and Managing Materials in a Manufacturing Process
  • Brief Description: The ’057 patent discloses a radio frequency identification (RFID) system used to track and manage the physical location of tagged items within a defined area, such as a manufacturing facility or warehouse. The system uses steerable antennas and a controller to determine the coordinates of RFID tags.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-7, 10-11, 13, 15-16 under 35 U.S.C. § 102 over Subramanian

  • Prior Art Relied Upon: Subramanian (Application # US 2013/0049925).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Subramanian, which discloses an adjustable-orientation RFID tag reader system, taught every limitation of independent claim 1. Subramanian described an RFID reader system with a directional antenna that pans to scan a controlled area. The system determines an RFID tag’s location using geometric analysis based on the antenna's known physical location and its angular orientation at the time of detection. Petitioner asserted that this disclosure of determining location based on angular orientation inherently taught a position defined by at least two coordinate units (e.g., two angular components in a spherical coordinate system), directly mapping to the key limitation of claim 1. Petitioner contended that the Patent Owner had misrepresented Subramanian's capabilities during prosecution to overcome a rejection.
    • Key Aspects: The core of this ground was that Subramanian’s disclosure of determining a tag's "direction" from a single antenna inherently involved at least two angular coordinates, thus anticipating the claim limitation that the Patent Owner had added to distinguish the prior art. Petitioner also mapped the dependent claims to disclosures in Subramanian for displaying inventory information on a graphical user interface (GUI) or planogram and for comparing an item's current location to a desired location.

Ground 2: Anticipation of Claim 1 under 35 U.S.C. § 102 over Hofer

  • Prior Art Relied Upon: Hofer (Patent 8,493,182).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Hofer anticipated all elements of claim 1. Hofer disclosed a steerable phased array antenna system that scans a volume to detect RFID tags. A location processor in Hofer’s system gathered data sets, including two angular dimensions of a polar coordinate system (phi and theta) provided by a beam steering unit, to derive the three-dimensional position of each tag. Petitioner argued this explicit disclosure of determining location using two angular coordinates (phi and theta) directly satisfied the claim limitation requiring a position to be defined by "two coordinate units" that are determined by the antenna. Hofer’s system also included a detection controller (comprising an RFID reader module, beam steering unit, and location processor) that controlled the antennas and generated location outputs.

Ground 3: Obviousness of Claims 8, 9, 12, and 14 under 35 U.S.C. § 103 over Subramanian in view of Takaku

  • Prior Art Relied Upon: Subramanian (Application # US 2013/0049925) and Takaku (Application # 11/218,251).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the base system of Subramanian, which addressed the problem of locating misplaced items, could be combined with the teachings of Takaku. Takaku disclosed a method for issuing warnings—including visible alarms like a flashing light and audible alarms like a siren—in the event of an attempted theft of RFID-tagged items.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to incorporate the known audio and visual alarm systems of Takaku into the inventory tracking system of Subramanian. This combination would serve the predictable purpose of alerting users to potential theft or misplacement of tagged inventory, which were known problems in the field that Subramanian sought to address.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these systems, as integrating conventional alarm functionalities into an RFID tracking system was a straightforward application of known technologies to achieve a predictable result.

  • Additional Grounds: Petitioner asserted additional anticipation challenges against claim 1 based on Husak (Patent 7,667,575), which disclosed steerable beam antennae for determining tag locations. Petitioner also argued in the alternative that claim 1 would be obvious over any combination of Subramanian, Hofer, or Husak, contending that a POSITA would have found it a simple matter of substitution to use one system's antenna technology to overcome any perceived deficiency in another.

4. Key Claim Construction Positions

  • "antenna" / "antenna system" / "antenna element": Petitioner dedicated significant argument to construing the term "antenna." It argued that, based on the specification, the term "antenna" must be interpreted as a phased array antenna comprising a plurality of individual antenna elements. Petitioner asserted this construction was necessary to preserve the validity of the claims under 35 U.S.C. § 112. The ’057 patent’s disclosure, particularly its reliance on triangulation techniques, only described or enabled determining a tag’s physical location using signals received at "multiple spaced apart antenna elements." Therefore, construing "antenna" to mean a single antenna element would render the claims unsupported by the written description and non-enabled.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-16 of the ’057 patent as unpatentable.