Neology, Inc. v. STAR Systems International, Ltd.

1. Case Identification

• Case #: IPR TBD
• 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, allowing the module to be moved between a first position where it couples with the antenna to form a functional, tuned "ON State" tag, and a second position where it is un-coupled or shorted, resulting in a non-functional "OFF State."

3. Grounds for Unpatentability

Ground 1: Claims 1-15 are obvious over Atherton, Roesner ’2012, Roesner ’405, and Youbok.

• 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 of references teaches every limitation of the challenged claims. Atherton was asserted to teach the foundational concept of a switchable RFID tag with a movable module and a split dipole antenna, which Petitioner contends constitutes the claimed "un-tuned antenna section." Roesner ’2012 and Roesner ’405 were asserted to teach modifying Atherton’s folding mechanism with a more conventional sliding mechanism, a shorting bar to ensure deactivation in the "OFF" state, and the use of multiple RFID modules on a single slider to create a multi-position switch. Youbok was cited for its disclosure of a tuning inductor (claim 3), and Roesner ’405 was further cited for teaching the use of polyester film (Mylar) substrates (claims 4, 8, 11, 15), enclosing the device in a housing (claims 6, 13), and providing visual indicators for the switch position (claims 7, 14).
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine the references to improve upon existing designs. A POSITA would be motivated to replace Atherton's folding switch with the well-known and predictable sliding mechanism taught by the Roesner references to achieve the same goal of preventing unauthorized RFID reads. Similarly, a POSITA would incorporate the shorting bar from Roesner to create a more robust "OFF" state and would look to Roesner ’405’s multi-module design to provide multiple, distinguishable responses, such as for variable tolling rates.
  • Expectation of Success: Petitioner asserted that combining these known elements—a standard RFID tag, a slider, and a shorting bar—was a simple substitution of one known element for another to obtain predictable results, leading to a reasonable expectation of success.
  • Key Aspects: A central pillar of Petitioner's argument was that the patent’s inventor, in a prior IPR declaration (the "Roesner Dec."), had previously characterized a split dipole antenna (like Atherton's) as comprising "un-tuned antenna sections," directly contradicting the position the Patent Owner took during prosecution of the ’233 patent to overcome prior art.

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 operational state of the combined components.
• "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 critical to Petitioner's argument that the split dipole antenna taught in Atherton meets this limitation, contrary to what Patent Owner argued during prosecution.

5. Key Technical Contentions (Beyond Claim Construction)

• Contradictory Prosecution Arguments: Petitioner’s primary technical contention was that the ’233 patent was improvidently granted based on a flawed argument. During prosecution, the Patent Owner overcame an obviousness rejection over prior art (Mullis) by arguing that Mullis taught a complete, impedance-matched "booster antenna," not the claimed "un-tuned antenna section." Petitioner argued this was a mischaracterization and pointed to a declaration from the ’233 patent's inventor (Dr. Roesner), submitted in a separate IPR proceeding, where he described an identical split-dipole structure as being un-tuned. Petitioner contended this prior declaration demonstrated that the patentability argument relied upon before the Examiner was erroneous.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although some references were cited during prosecution, Petitioner contended its challenge was not cumulative because it relied on multiple additional references not considered by the Examiner (Atherton and Roesner ’2012). More importantly, Petitioner presented new declaration testimony from its expert (Fischer) and, crucially, declaration testimony from the Patent Owner's own inventor (the Roesner Dec.) from a different proceeding. Petitioner argued this new evidence presented the prior art and its teachings in a new light that was not before the Examiner, warranting institution.

7. Relief Requested

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