PTAB

IPR2018-00139

Heil Co v. Advanced Custom Engineered Systems & Equipment Co

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Monitoring Waste Removal and Administration
  • Brief Description: The ’798 patent discloses a method for municipalities to control, track, and monitor waste receptacles using Radio Frequency Identification (RFID) technology. The system involves issuing permits in the form of passive RFID tags attached to containers, which are then scanned by handheld devices to identify the container owner and issue citations for municipal code violations.

3. Grounds for Unpatentability

Ground 1: Obviousness over Scherer, McAdams, and McAllister - Claims 1-3 and 8 are obvious over Scherer in view of McAdams and McAllister.

  • Prior Art Relied Upon: Scherer (Application # 2008/0077541), McAdams (a 1993 article in "WASTE AGE"), and McAllister (Application # 2006/0080819).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Scherer, the primary reference, discloses a waste management system that uses RFID tags on containers to dynamically route collection vehicles based on customer payment status. Petitioner asserted this pay-for-service model inherently teaches the claimed concept of "requiring a permit." To address claim limitations not explicitly in Scherer, Petitioner contended McAdams teaches the use of passive RFID tags for billing in an analogous waste collection system. Finally, Petitioner cited McAllister for its disclosure of conventional methods for attaching RFID tags to containers using adhesives or protective pouches, alleging this satisfied the "means for attachment" limitation of claim 1.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Scherer with McAdams to gain the predictable benefits of using lower-cost, unpowered passive RFID tags, which were well-known and ideal for widespread deployment on waste bins. A POSITA would have naturally looked to a reference like McAllister to implement a known, reliable solution for the simple and common problem of physically affixing the RFID tag to a container.
    • Expectation of Success: The proposed combination involved applying conventional and well-understood technologies (passive tags, adhesives) to an existing system (Scherer) for their known purposes, leading to a high and predictable expectation of success.

Ground 2: Obviousness over Scherer, McAdams, McAllister, and Mitschele - Claims 4-7 are obvious over Scherer in view of McAdams, McAllister, and Mitschele.

  • Prior Art Relied Upon: Scherer (Application # 2008/0077541), McAdams (a 1993 article), McAllister (Application # 2006/0080819), and Mitschele (Application # 2008/0308631).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground adds Mitschele to the base combination of Ground 1 to address the limitations of dependent claims 4-7, which relate to issuing citations. Petitioner argued Mitschele, which describes handheld devices for vehicle parking enforcement, teaches the claimed functionality: scanning an RFID tag, transmitting its identifier to a central computer, and receiving back biographical information (e.g., a license plate number) to print on a ticket. Petitioner contended this directly maps to the claim limitations requiring transmission of information from a central station to a handheld device for issuing a citation.
    • Motivation to Combine: A POSITA would be motivated to incorporate Mitschele's ticket-issuing functionality into the waste management system to enable enforcement of municipal ordinances, such as improper disposal of banned waste. Petitioner argued that issuing tickets for code violations was a widespread practice used by municipalities to collect revenue, providing a strong economic incentive for the combination.
    • Expectation of Success: Integrating a known ticket-issuing function from the analogous field of parking enforcement into a waste management system was presented as a routine application of existing technology that would yield predictable results.

  • Additional Grounds: Petitioner asserted further obviousness challenges for claims 1-3 and 8 (Ground 3) and claims 4-7 (Ground 4) by adding Casella (Application # 2007/0260466) to the primary combinations. Casella was cited for its teachings on managing recycling programs by using RFID tags to distinguish between different waste types (e.g., trash vs. recyclables) to calculate and enforce user diversion rates.

4. Key Claim Construction Positions

  • "means for attachment" (Claim 1): Petitioner argued this is a means-plus-function term where the claimed function is "attaching the passive RFID tag to the multi-use waste receptacle." The corresponding structure disclosed in the ’798 patent was identified as an adhesive applied either directly to the tag or to a protective pouch holding the tag, and equivalents thereof.
  • "means for wireless communication with the database" (Claim 1): Petitioner asserted this is a means-plus-function term with the function of "facilitating wireless communication with the database." The corresponding structure was identified as a "communications module" disclosed in the patent, which Petitioner argued should be construed as an assembly of components capable of wireless communication, such as a modem, and its functional equivalents.
  • "biographical information" (Claims 1, 3-5, 7): Petitioner proposed this term be construed as "information relating to the life of something that can be stored on an RFID tag or in a database." This construction was based on dictionary definitions from the relevant time and supported by examples in the patent’s specification, such as a license plate number, home address, or business address.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of Patent 8,146,798 as unpatentable.