Neology Inc v. Star Systems Intl Ltd

1. Case Identification

• Case #: IPR2019-00367
• Patent #: 9,842,233
• Filed: December 3, 2018
• Petitioner(s): Neology, Inc.
• Patent Owner(s): Star Systems International Ltd.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Switchable Radio-Frequency Identification Tag Device
• Brief Description: The ’233 patent discloses a switchable radio-frequency identification (RFID) tag device. The device includes a movable RFID module and a separate un-tuned antenna structure, which can be selectively coupled to switch the RFID tag between a functional "ON State" (forming a tuned antenna) and a non-functional "OFF State."

3. Grounds for Unpatentability

Ground 1: Obviousness over Atherton, Roesner '2012, Roesner '405, and Youbok - Claims 1-15 are obvious over the combination of these references.

• Prior Art Relied Upon: Atherton (WO 2008/074050), Roesner '2012 (Application # 2010/0302012), Roesner ‘405 (Application # 2013/0238405), and Youbok (Application # 2002/0097153).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination discloses all limitations of the challenged claims. Atherton was asserted to teach a switchable RFID tag with a movable module that couples to an un-tuned antenna section (a common split dipole antenna) to switch between ON and OFF states. Roesner '2012 and Roesner '405 were cited for teaching the use of a sliding mechanism (as opposed to Atherton's folding mechanism) and a shorting bar to deactivate the tag when in the OFF position, key limitations of independent claim 1. For dependent claims, Roesner '405 was argued to teach the use of multiple RFID modules selectable via a multi-position slider, a tag housing, polyester (Mylar) substrates, and visual indicators for tag status. Youbok was cited for teaching the inclusion of a tuning inductor in an RFID module, as required by claim 3. Petitioner contended this combination meets every limitation of claims 1-15.
  • Motivation to Combine: A POSITA would combine these references to improve upon existing designs for preventing unauthorized RFID tag access, a common goal of both Atherton and the Roesner references. Petitioner argued it would have been a simple and predictable substitution to replace Atherton's folding switch with the well-known sliding mechanism from Roesner '2012 to achieve the same function. Further motivation existed to incorporate the multi-module and multi-position features from Roesner '405 to provide additional functionality, such as indicating different rate structures in a tolling environment.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involves substituting known mechanical equivalents (a slider for a hinge) and adding predictable features (shorting bars, multiple modules) from analogous art to achieve their known functions. The result would be a predictable and functional multi-state switchable RFID tag.
  • Key Aspects: A central contention was that the Patent Owner overcame an office action rejection by arguing that the prior art (Mullis) did not teach an "un-tuned antenna section." Petitioner asserted this was an obfuscation, pointing to a declaration from the '233 patent's inventor (Dr. Roesner) in a separate IPR proceeding where he argued that the very same type of structure (a split dipole antenna) was common and inherently constituted un-tuned antenna sections. This alleged contradiction was presented as evidence that the claims were improperly allowed.

4. Key Claim Construction Positions

• "Tuned RFID Tag": Petitioner proposed this term be construed as an "RFID tag comprising a combination of the RFID module and the constituent parts of the antenna, such that it is capable of transmitting and receiving radio signals at a predetermined frequency." This construction emphasizes the tag's operational state.
• "Un-Tuned Antenna Structure": Petitioner proposed this term be construed as "a constituent part of the full antenna that is not coupled with an RFID module such that its electrical length is too short to be resonant at the designed frequency of the antenna operation." This construction was central to arguing that references like Atherton, which use standard split dipole antennas, inherently disclose this element.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. Although some references (Roesner '405, Youbok) were previously before the examiner, the petition presented them in new combinations with references not previously considered (Atherton, Roesner '2012). More importantly, Petitioner asserted it was providing new evidence and arguments, including the Declaration of Jeffrey Fischer and, critically, a prior declaration from the inventor himself (the "Roesner Dec.") from a separate IPR that allegedly contradicted arguments made during prosecution to secure the '233 patent. This new context, Petitioner argued, presents the prior art in a new light that the examiner never considered.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-15 of the ’233 patent as unpatentable.