PTAB

IPR2018-00139

The Heil Co. v. Advanced Custom Engineered Systems & Equipment Co.

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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 controlling and monitoring waste receptacles. The system uses permits in the form of passive radio frequency identification (RFID) tags that are affixed to waste containers to identify owners, track usage, and facilitate issuing citations for municipal code violations using a handheld device.

3. Grounds for Unpatentability

Ground 1: 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 taught a waste collection system that dynamically routes vehicles based on customer payment status, thus disclosing the core elements of claim 1. This included using RFID tags on containers, associating tag IDs with customer data (biographical information) in a central database, and determining compliance based on payment. Petitioner asserted McAdams supplied the teaching of using passive RFID tags and a handheld computer/reader, which were logical and cost-effective choices for Scherer's system. McAllister was cited for its explicit disclosure of conventional methods for attaching RFID tags to containers (e.g., adhesives, protective pouches), fulfilling the "means for attachment" limitation.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Scherer with McAdams to implement the system with more practical and economical components (passive tags, handhelds) for use on unpowered waste bins. A POSITA would have looked to a reference like McAllister to implement the known requirement of attaching a tag to a container, applying a conventional solution (adhesives) to achieve a durable attachment capable of withstanding multiple collection cycles, as required by Scherer's system.
    • Expectation of Success (for §103 grounds): The combination was presented as a predictable integration of known, conventional elements, where applying passive tags and standard attachment methods to a waste management system would predictably result in a functional, cost-effective system.

Ground 2: 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 in WASTE AGE), McAllister (Application # 2006/0080819), and Mitschele (Application # 2008/0308631).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Mitschele to teach the claimed functionality of issuing a citation. Mitschele disclosed a handheld RFID device for vehicle parking enforcement that scans a tag, communicates with a central computer to retrieve vehicle information, and prints a ticket. Petitioner argued this directly maps to the limitations in claims 4-7 related to transmitting biographical information from a central station to the handheld device and issuing a citation.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Mitschele's ticket-issuing functionality with the waste management system of Scherer/McAdams/McAllister to address violations, such as the disposal of banned waste. Petitioner argued that the analogy between ticketing illegally parked cars and ticketing improper waste disposal is strong, and that adding this feature would provide a desirable revenue stream for a municipality, a motivation explicitly mentioned by Mitschele.
    • Expectation of Success (for §103 grounds): Integrating a known handheld ticketing system (Mitschele) into a known handheld-based waste management system (Scherer/McAdams) was argued to be a straightforward application of existing technology that would predictably result in a system capable of both managing collections and enforcing ordinances.

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

  • Prior Art Relied Upon: Scherer (Application # 2008/0077541), McAdams (a 1993 article in WASTE AGE), McAllister (Application # 2006/0080819), and Casella (Application # 2007/0260466).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented as an alternative to Ground 1, asserting that even if claim 1 is narrowly construed to require multiple permit types and content-based compliance, the combination including Casella renders it obvious. Casella taught a recycling management program using separate RFID-tagged containers for trash and recyclables. It disclosed calculating a user's "diversion rate" to determine compliance with recycling standards. This, Petitioner argued, supplied the teachings of establishing different permit types (trash vs. recycling) and making a compliance determination based on the container's contents.
    • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to integrate Casella's recycling incentive methods into Scherer's waste management framework to meet societal and economic demands for improved recycling. Petitioner contended that combining Scherer's payment-based system with Casella's diversion-rate-based system would create a comprehensive waste management solution, which was a natural and desirable extension.
    • Expectation of Success (for §103 grounds): Given the similarity of the underlying RFID-based systems in Scherer and Casella, integrating Casella's logic for handling different container types into Scherer's database and billing software was argued to be a predictable software modification.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 4-7 based on the combination of Scherer, McAdams, McAllister, Casella, and Mitschele, which relied on combining the rationales of the grounds above.

4. Key Claim Construction Positions

  • "means for attachment" (Claim 1): Petitioner argued this means-plus-function term, whose function is to attach the RFID tag, should be construed to include the structures disclosed in the specification: a protective pocket with an adhesive backing or an adhesive applied directly to the tag. This construction was important to show the limitation was met by the conventional adhesive attachment methods taught in the prior art (McAllister).
  • "means for wireless communication with the database" (Claim 1): Petitioner asserted this term's function is facilitating wireless communication, with the corresponding structure being a "communications module." This broad construction allowed Petitioner to argue that the "industry standard components" and modems described in the prior art (Scherer) met the limitation.
  • "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 interpretation, supported by dictionary definitions, was broad enough to encompass customer name and address (from Scherer) as well as a vehicle license plate number (from Mitschele), linking the various prior art disclosures to the claims.

5. Relief Requested

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