Zoho Corp v. RFID Technology Innovations LLC

1. Case Identification

• Case #: IPR2021-00448
• Patent #: 9,582,689
• Filed: January 14, 2021
• Petitioner(s): Zoho Corporation
• Patent Owner(s): RFID Technology Innovations, LLC
• Challenged Claims: 1-7, 9-17

2. Patent Overview

• Title: System and Method for Presenting Information About an Object on a Portable Electronic Device
• Brief Description: The ’689 patent describes a system where a portable electronic device, like a smartphone, captures an image of a symbology (e.g., a barcode) on an object. The device decodes the symbology to get a decode string, sends it to a remote server, receives information about the object from the server, and displays it.

3. Grounds for Unpatentability

Ground 1: Anticipation over the '015 Patent

Claims 1-3, 5-7, 9-11, 13, 15-17 are anticipated by the '015 patent.

• Prior Art Relied Upon: Rothschild (’015 patent; Patent 7,309,015).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’015 patent disclosed every element of the challenged independent claims. It taught a method where a mobile device scans a machine-readable code, which could be an RFID code, on an item of commerce. An application on the device decodes the symbology to create a decode string ("barcode information"), which is then sent to a remote server. The server parses the string, uses it to retrieve information from various vendors, aggregates the information into a WAP page, and sends it back to the mobile device for display. This process was alleged to map directly to the method of claim 1 and the systems of claims 15 and 16. Petitioner further asserted that the ’015 patent, including its incorporated reference, disclosed the additional limitations of dependent claims, such as setting user preferences (claim 2), automatically detecting symbology (claim 5), and using search technology for decoding (claim 13).

Ground 2: Anticipation over the '978 Application

Claims 1 and 15 are anticipated by the '978 application.

• Prior Art Relied Upon: Rothschild (’978 application; Application # 2008/0004978).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that the ’978 application, filed by the same inventor as the ’689 patent and not considered during prosecution, anticipated the core invention. The ’978 application described a system for identifying an article of commerce by using a mobile phone to capture an image of a barcode, decoding it to get an "identification code" (decode string), and transmitting that code to a remote server. The server then retrieves and returns related content for display on the device. Petitioner highlighted that the ’978 application explicitly disclosed that the articles of commerce could contain RFID tags, directly teaching a key limitation of independent claims 1 and 15. The overall process and system architecture described were asserted to be the same as that claimed in the ’689 patent.

Ground 3: Obviousness over '015 Patent in view of '164 Patent

Claims 2 and 3 are obvious over the '015 patent in view of the '164 patent.

• Prior Art Relied Upon: Rothschild (’015 patent; Patent 7,309,015) and He (’164 patent; Patent 7,195,164).

• Core Argument for this Ground:

  • Prior Art Mapping: The ’015 patent served as the primary reference disclosing the base method of claim 1. The ’164 patent taught a mobile computing device with more than one imaging engine (e.g., a low-resolution scanner and a high-resolution camera) and switching circuitry allowing a user to select between them via a "user-selected mode." This addressed the need for a more versatile optical code reader.
  • Motivation to Combine: A POSITA would combine the teachings of the ’164 patent with the system of the ’015 patent to improve its versatility. Since the ’015 patent already disclosed using different scanner types (barcode scanner, digital camera) and noted the desirability of scanning many barcode types, incorporating the user-selectable switching mechanism from the ’164 patent would have been an obvious improvement to enhance scanning capabilities in various situations. This combination rendered obvious claim 2’s limitation of enabling a user to select presets before detection, and claim 3’s selection of detection applications for scanning and image capture.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining these known elements, as both references involved implementing different imaging modules on a portable device for scanning purposes.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 4 is obvious over the ’015 patent in view of the ’205 patent (Patent 7,708,205), and that claims 12 and 14 are obvious over the ’015 patent in view of the ’859 publication (Application # 2006/0173859).

4. Key Claim Construction Positions

• "symbology": Petitioner proposed this term be construed as "a machine-readable symbol such as a barcode for encoding information." This construction was based on consistent descriptions throughout the patent’s specification and abstract.
• "analyzing the decode string..." (claim 9): Petitioner argued that the language of claim 9 contained a typographical error. It proposed correcting the phrase "a category of the selecting one or more..." to mean "analyzing the decode string to determine a category of the object and selecting one or more appropriate applications to process the decode string." This correction was argued to be necessary to give the claim antecedent basis and align it with the specification.

5. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued against discretionary denial under §325(d), asserting that the primary prior art references (’015 patent and ’978 application) were not considered by the examiner during prosecution of the ’689 patent. It contended that the arguments raised in the petition were new and substantively different from those previously considered by the USPTO.
• Fintiv Arguments (§314(a)): Petitioner argued that the Fintiv factors weighed strongly against discretionary denial. The parallel district court litigation was in a nascent stage, with no trial date set, no answer to the complaint filed, and no substantive proceedings having occurred. Therefore, Petitioner contended that the IPR would conclude long before a potential trial and that institution would promote efficiency by simplifying issues for the district court.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 and 9-17 of the ’689 patent as unpatentable.