METRC LLC

Patent Trials and Appeals Board

Nov 23, 2021

IPR2021-01015 (P.T.A.B. Nov. 23, 2021)

Trials@uspto.gov Paper 7
571-272-7822 Date: November 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

VYRIPHARM ENTERPRISES, INC.,
Petitioner,

v.

METRC LLC,
Patent Owner.
_______________

IPR2021-01015
Patent 9,959,438 B2
_______________

Before KARL D. EASTHOM, JULIA HEANEY, and AMBER L. HAGY,
Administrative Patent Judges.

HAGY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Vyripharm Enterprises, Inc. (“Petitioner”) filed a Petition under 35
U.S.C. § 311 requesting inter partes review of claims 1–18 (“the challenged
claims”) of U.S. Patent No. 9,959,438 B2 (“the ’438 patent”). Paper 2
(“Pet.”). Metrc LLC (“Patent Owner”) filed a Preliminary Response. Paper
6 (“Prelim. Resp.”).
Section 314(a) does not authorize institution of review unless
Petitioner demonstrates a reasonable likelihood that it will prevail with
respect to at least one challenged claim. 35 U.S.C. § 314(a). Having
considered the arguments and evidence presented by Petitioner and Patent
Owner, and applying that standard on behalf of the Director (37 C.F.R.
§ 42.4(a)), we do not institute the petitioned review.
II. BACKGROUND
A. Real Parties in Interest and Related Proceedings
Petitioner identifies the following entities as real parties in interest:
Vyripharm Enterprises, Inc.; VpH, Inc.; Vyripharm Biopharmaceuticals,
Inc.; Vyripharm International, Inc.; Vyripharm Technologies, Inc.;
Vyripharm Enterprises LLC; VpH LLC; Vyripharm Biopharmaceuticals
LLC; Vyripharm Technologies LLC; and Vyripharm International LLC.
Pet. 3.
Patent Owner identifies itself as the real party-in-interest. Paper 3, 1.
Both parties represent that there are no related proceedings. Pet. 3;
Paper 3, 1.

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B. ’438 Patent
The ’438 patent is entitled “Method and Apparatus for Tracking One
or More Plants and/or Plant Based Products and/or Tracking the Sale of
Products Derived from the Same, Utilizing RFID Technology,” and issued
on May 1, 2018. Ex. 1001, codes (54), (45). The ’438 patent issued from
U.S. Patent Application No. 14/764,904, which claims priority to
Provisional Application No. 62/011,463, filed on June 12, 2014. Id. at codes
(21), (60).
The ’438 patent is directed to a system “for tracking plants, plant
based raw material, and/or plant based products.” Ex. 1001, 3:6–8.
Specifically, the ’438 patent discloses a radio-frequency identification
(“RFID”) tag assembly “that incorporates a strap to position an RFID label
relative to a plant.” Id. at 3:12–14, 4:34–37. “[T]he strap can be used for
attachment to the plant, the plant’s pot, and/or other structures,” and the
RFID label “can be read by [an] RFID reader.” Id. at 5:38–42. Figure 1,
reproduced below, depicts a strap according to the ’438 patent:

Figure 1 depicts a front view of a strap. Id. at 4:63.
Strap 10 comprises “tooth 1” and “passage 2,” where the tooth can be
inserted into the passage “to create a tamper proof locking position.” Id. at
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Fig. 1, 6:14–19.1
As shown in Figure 4, reproduced below, the RFID label comprises
label body 20 that has RFID inlay 8, wherein RFID inlay 8 has an RFID
antenna and RFID circuit chip. Id. at 7:7–9.

Figure 4 depicts “a front view of an RFID label.” Id. at 4:1–2.
The RFID label has two “openings 9,” which allow the strap to pass
through. Id. at Fig. 4, 7:48–50. Figures 6 and 8, reproduced below,
illustrate an RFID tag and a strap in two configurations. Id. at Figs. 6, 8,
10:40–42, 11:13–16.

1 All bolding of reference numbers in quoted material has been omitted
herein.
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Figures 6 and 8 depict assemblies of a tag incorporating
a strap and an RFID label. Ex. 1001, 4:4–7, 4:12–13.
As shown in Figures 6 and 8, the ’438 patent describes embodiments
in which the strap may be inserted into the soil of a plant, with multiple
configurations for the RFID tag. Figure 6 shows one configuration in which
the strap passes through two holes of the RFID label. Figure 8 illustrates
another configuration where one end of the RFID label is interconnected
with the strap so that the strap can be wrapped around one of the main
branches of a plant with one end of the RFID label released, which enables
the RFID label to be straight, and tending to vertical, when the tag is
attached to a branch of the plant. Id. at Fig. 8, 11:15–26.
The ’438 patent describes the strap as having a rigidness or stiffness
such that when the strap has an RFID label 20 in accordance with
an embodiment of the invention interconnected with the strap to
form an RFID tag 30, and the RFID tag 30 combination is
inserted into a pot, such as into the soil in the pot, or clipped or
otherwise attached to the pot, the strap carries the weight of the
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RFID label and the strap itself, so that the RFID tag will still
stand upright.
Id. at 6:56–64 (emphasis added); see also id. at 8:8–10. The ’438 patent
describes that this configuration (positioning the label on an upright-standing
strap) enables the label portion to avoid contacting the “dirt/moisture” of the
potting soil. Id. at 10:59–60.
C. Challenged Claims
Claims 1–18 are challenged. Claim 1 is the sole independent claim,
and is reproduced below with the key limitation at issue herein italicized:
1. An RFID tag assembly, comprising:
a strap,
wherein the strap comprises:
a strap body having a strap body proximal end and a strap
body distal end;
a first strap connecting portion attached to the strap body
proximate to the strap body distal end; and
a second strap connecting portion attached to the strap body
proximate to the strap body proximal end,
wherein the first strap connecting portion and the second strap
connecting portion are configured such that when the first
strap connecting portion is connected to the second strap
connecting portion in a locked position, the first strap
connecting portion and second strap connecting portion
are in locked connection such that the strap body distal end
is in locked connection with the strap body proximal end;
and
an RFID label,
wherein the RFID label comprises:
an RFID label body having an RFID label body proximal end
and an RFID label body distal end;
an RFID circuit,
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wherein the RFID circuit is attached to the RFID label body;
an RFID antenna,
wherein the RFID antenna is connected to the RFID circuit,
wherein the RFID antenna is attached to the RFID label
body, and
wherein the RFID label and the strap are configured to:
(i) interconnect in a first configuration, such that when the
first strap connecting portion and the second strap
connecting portion are in locked connection, the RFID
label does not separate from the strap and an orientation of
the RFID label is dependent on an orientation of the strap,
and
(ii) interconnect in a second configuration, such that when the
first strap connecting portion and the second strap
connecting portion are in locked connection the RFID
label does not separate from the strap and the orientation
of the RFID label is adjust able independently from the
orientation of the strap,
wherein the RFID label body has a first opening and a second
opening,
wherein the first opening and the second opening allow the strap
body distal end to pass through,
wherein, when the RFID label and the strap are interconnected in
the first configuration, the strap body distal end extends
through the first opening and through the second opening,
such that the RFID label does not rotate about an axis
perpendicular to a longitudinal axis of the strap body,
wherein, when the RFID label and the strap are interconnected in
the second configuration, the strap body distal end extends
through the first opening and does not extend through the
second opening,
wherein the strap body has a rigidness or stiffness, such that
when the RFID label and the strap are interconnected in the
first configuration or the second configuration, and the strap
body distal end is inserted into soil, the tag assembly can
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stand so as to prevent the label body from touching the soil.
Ex. 1001, 31:40–32:35 (emphasis added).
D. Asserted Grounds of Unpatentability and Evidence
Petitioner asserts that the challenged claims are unpatentable based on
the following grounds (Pet. 16):
Claim(s) Challenged 35 U.S.C. § References
1–4, 6–18 103 Debrody,2 Mosher,3 Nakajima4
5 103 Debrody, Mosher, Nakajima, Mears5

As further support, Petitioner relies on the Declaration of Rodney T.
Fernandez, Ph.D. Ex. 1002. Patent Owner relies on the Declaration of
Robert G. Hardin IV, Ph.D. Ex. 2001.

2 Debrody et al., U.S. Patent No. 6,981,725 B2, issued January 3, 2006
(Ex. 1005, “Debrody”).
3 Mosher Jr., et al., U.S. Patent Pub. No. US 2007/008138 A1, published
January 11, 2007 (Ex. 1006, “Mosher”).
4 Nakajima, et al., Japanese Unexamined Patent Application Pub. 2006-
101739 A, published April 20, 2006. Petitioner’s proffered English
translation is submitted as Exhibit 1007. Patent Owner’s proffered certified
English translation is submitted as Exhibit 2004. The untranslated Japanese
application is Exhibit 1008. Herein, we will refer to Nakajima by specific
exhibit numbers as appropriate.
5 Mears, U.S. Patent No. 5,901,416 (Ex. 1009, “Mears”).
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III. ANALYSIS
A. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) when in evidence, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
A patent claim “is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art.” KSR,
550 U.S. at 418. An obviousness determination requires finding “both ‘that
a skilled artisan would have been motivated to combine the teachings of the
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prior art references to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of success in doing so.’”
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (explaining
that, for an obviousness analysis, “it can be important to identify a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does”).
Although the KSR test is flexible, “the Board ‘must still be careful not
to allow hindsight reconstruction of references . . . without any explanation
as to how or why the references would be combined to produce the claimed
invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
2016) (citation omitted). Further, an assertion of obviousness “cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d
1376, 1383 (Fed. Cir. 2016) (stating that “conclusory statements” amount to
an “insufficient articulation[] of motivation to combine”; “instead, the
finding must be supported by a ‘reasoned explanation’” (citation omitted));
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
(“To satisfy its burden of proving obviousness, a petitioner cannot employ
mere conclusory statements. The petitioner must instead articulate specific
reasoning, based on evidence of record, to support the legal conclusion of
obviousness.”).
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B. Level of Ordinary Skill in the Art
Relying on the testimony of Dr. Fernandez, Petitioner describes the
level of ordinary skill as follows:
[A] person of ordinary skill in the art (“POSA”) is a person with
knowledge of both horticulture and RFID tracking systems
obtained through education and/or work experience. While there
are many variations of education and work experience that a
POSA could to achieve the requisite level of knowledge, one
example of a POSA is a person having at least a Bachelor’s
degree in Horticulture or related discipline and at least two years
of experience working in a position that involves RFID plant
inventory management.
Pet. 15–16 (citing Ex. 1002 ¶ 23).
Patent Owner does not offer a different assessment, but states:
“[Patent Owner] does not acquiesce to, and reserves the right to address,
[Petitioner’s] definition of a POSA. The Petition fails to meet the
requirements for institution under any definition of a POSA.” Prelim. Resp.
3, n.3.
To the extent necessary, and for purposes of this Decision, we accept
the assessment offered by Petitioner as it is consistent with the ’438 patent
and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (recognizing that the prior art itself may reflect an
appropriate level of skill in the art).
C. Claim Construction
We apply the same claim construction standard used in district court
actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b)
(2020).
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In applying that standard, we generally give claim terms their ordinary
and customary meaning as would have been understood by a person of
ordinary skill in the art at the time of the invention and in the context of the
entire patent disclosure. Phillips, 415 F.3d at 1312–13. In so doing, “we
look principally to the intrinsic evidence of record, examining the claim
language itself, the written description, and the prosecution history, if in
evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
Neither party proposes an explicit claim construction for any term.
See Pet. 20 (“Petitioners respectfully submit that the Board need not
expressly construe any term.”); see generally Prelim. Resp. On this record
and for purposes of this decision, we determine that no claim terms require
express construction.
D. Ground A: Obviousness of Claims 1–4 and 6–18 Based on
Debrody, Mosher, and Nakajima
In Ground A, Petitioner asserts that claims 1–4 and 6–18 are
unpatentable as obvious over Debrody in combination with Mosher and
Nakajima. Pet. 5. In particular, Petitioner alleges:
It would have been obvious to a POSA at the time of the alleged
invention of the ’438 Patent to combine the stiff lockable strap
disclosed in Debrody with the RFID label disclosed in Mosher in
order to track plants, particularly marijuana plants, using RFID
in a manner taught by the horticultural management system
disclosed in Nakajima. . . . As discussed below, Debrody’s stiff
lockable strap provided the benefit of a strap that can both stand
upright in soil or be attached to a plant body while Mosher’s
RFID tag provided the benefit of multiple attachment
configurations to improve the readability of the RFID tag.
Pet. 23–24 (emphases added).
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Patent Owner asserts that Petitioner’s combination of references fails
to show (1) “an RFID tag assembly wherein the RFID label and the strap are
configured to interconnect in the second configuration” as recited in claim 1;
and (2) “the rigidness or stiffness of the strap,” as also recited in claim 1.
Prelim. Resp. 2–3. Patent Owner also contends:
[Petitioner] fails to show that a person of ordinary skill in the art
(“POSA”) would have combined the cited references and made
each of the purported modifications to arrive at the invention of
Claim 1. [Petitioner’s] purported motivations to combine and to
modify the cited reference appear nowhere in the prior art.
Instead, [Petitioner’s] motivations are premised on, among other
things, an incorrect English translation of the cited Japanese
patent application Nakajima; misinterpretations of the
disclosures of Debrody, Mosher, and Nakajima; unsubstantiated
assertions of purported “common” or “well-known” practices;
and improper hindsight based on the disclosure of the ’438
patent. Furthermore, [Petitioner] has failed to establish a
reasonable expectation of success in arriving at the claimed
invention.
Id. at 3 (footnote omitted).
For reasons discussed below, we determine that Petitioner has not
shown a reasonable likelihood that it would prevail in establishing
unpatentability of independent claim 1 (and the claims dependent thereon) as
obvious over Debrody, Mosher, and Nakajima.
1. Asserted Prior Art
a. Debrody
Debrody was filed on January 29, 2004 and issued on January 3, 2006
as U.S. Patent No. 6,981,725. Ex. 1005, codes (10), (22), (45). Petitioner
asserts Debrody is prior art under 35 U.S.C. § 102. Pet. 17. Patent Owner
does not dispute the prior-art status of Debrody.
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Debrody is generally directed to bidirectional locking security seals.
Ex. 1005, 1:4. Debrody describes such lockable seals as being used for
preventing “unauthorized entry or access into a secured container,” such as
“shipping containers, mail pouches, shipping bags,” as well as “valves,
meters or storage areas.” Id. at 1:13–17.
Debrody describes a lockable seal device made of thermoplastic
material that includes a “flexible shackle” having a plurality of locking
elements, which is molded as a single piece, as illustrated in Figure 7 of
Debrody reproduced below. Ex. 1005, 4:18–20, 7:33–40, 8:9–25, Fig. 7.

Figure 7 of Debrody depicts an “isometric view
of a preferred locking seal device.” Ex. 1005, 7:33–34.

As shown in Figure 7, Debrody’s locking seal device 100 comprises
socket 102 with a locking insert (not shown in Figure 7; shown in Figure 3
as item 10). Id. at 9:58–60. Shackle 104 extends from socket 102, and has
locking elements 106 that are frusto-conical. Id. at 9:61–62. Free end 124
of shackle 104 has ridged portion 114. Id. at 9:65–66. Opposite free end
124 of shackle 104 is flag structure 118. Id. at 10:9–10. To form a locking
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seal, free end 124 of shackle 104 is inserted through socket chamber 102,
which receives shackle 104 and engages locking elements 106. Id. at 4:20–
27.
b. Mosher
Mosher published on January 11, 2007 as U.S. Publication No.
2007/0008138. Ex. 1006, codes (10), (43). Petitioner contends Mosher is
prior art under 35 U.S.C. § 102. Pet. 20. Patent Owner does not contest the
prior-art status of Mosher.
Mosher discloses a band or strap that interconnects with an RFID
label to facilitate reliable and secure identification and tracking of items.
Ex. 1006 ¶¶ 44, 52, Fig. 12. In particular, Mosher discloses wristbands,
badges, stickers, labels, cards or any combinations thereof, which include an
RFID inlet for insertion of an RFID tag. Id. ¶ 57. Figures 12 and 13 of
Mosher, reproduced below, illustrate a wristband with an RFID tag:

Figure 12 depicts a wristband with an RFID tag, and
Figure 13 depicts the wristband as worn on a wrist. Ex. 1006 ¶¶ 39, 40.
Mosher describes that the RFID tags store information relating to the
item to which the RFID tag is attached, and an RFID reader reads this
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information. Id. ¶ 57. A computer comprising a database stores the
information obtained from the RFID reader. Id. ¶¶ 55, 57.
c. Nakajima
Nakajima was published as JP2006101739A on April 20, 2006.
Ex. 1008, code (43). Petitioner contends Nakajima is prior art under
35 U.S.C. §102. Pet. 21. Petitioner provides, as Exhibit 1007, what
Petitioner characterizes as “an English Translation of the document . . . as
well as an affidavit attesting to the accuracy of the translation,” which
Petitioner states is “in accordance with 37 C.F.R. §42.63(b).” Id.; Ex. 1007.
Patent Owner does not challenge the prior-art status of Nakajima, but
does challenge the accuracy of the English translation provided by
Petitioner. PO Resp. 6–7. Patent Owner provides its own translations in
Exhibit 2003 (a translation that Patent Owner represents is “publicly
available on the World Intellectual Property Organization website”) and
Exhibit 2004 (which Patent Owner represents is a “certified English
translation of Nakajima”). See PO Resp. 36. To the extent necessary herein,
we address below the alleged discrepancies in the translations.
Nakajima discloses a horticultural management system for managing
plants using RFID tags. Ex. 1007 ¶ 10; Ex. 2003 ¶ 10. Specifically,
Nakajima discloses “a gardening label having an RFID tag, attached to a
plant, on which is written gardening information for the plant.” Ex. 1007
¶ 10; see also Ex. 2003 ¶ 10 (describing a “horticultural label that comprises
an RFID tag that is attached to a plant and on which is written horticultural
information”). Information, such as the name of the plant, information
regarding care of the plant, and the like, may be written or recorded on the
RFID tag by a reader/writer. Ex. 1007 ¶ 20; see also Ex. 2003 ¶ 20.
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Nakajima describes that the RFID tag can be “attached to a
conventional label,” and the “label may be inserted into the pot, or it may be
attached to the plant itself.” Ex. 1007 ¶ 20; see also Ex. 2004 ¶ 20.
According to Petitioner’s translation, if the label is attached to the plant, “a
hole may be formed in the label to be attached by a strap, or the like” to the
plant. Pet. 21 (citing Ex. 1007 ¶ 20) (emphasis added). Notably, however,
Petitioner’s translation uses the term “scrap” instead of “strap.”
See Ex. 1007 ¶ 20. Petitioner does not acknowledge or explain this
discrepancy. Patent Owner’s translation states that the RFID label may be
attached to the plant, but uses the term “string” instead of “strap” (or
“scrap”). Ex. 2004 ¶ 20.
As addressed further below, we determine that the parties’ dispute
over the proper translation of paragraph 20 of Nakajima with regard to the
nature of the material that is used to affix an RFID label to a plant (that is,
whether it is a string, a strap, or a scrap) is not material to our decision.
2. Analysis
Claim 1 is the sole independent claim. It recites, essentially, an RFID
tag assembly, which comprises, among other things, a strap and an RFID
label, which are configured to interconnect in a first configuration and a
second configuration. Ex. 1001, 31:40–32:29. Claim 1 also requires the
strap body to have “a rigidness or stiffness, such that when the RFID label
and the strap are interconnected in the first configuration or the second
configuration, and the strap body distal end is inserted into soil, the tag
assembly can stand so as to prevent the label body from touching the soil.”
Id. at 32:30–35. Petitioner identifies this as limitation [1.16]. See Pet. 51.
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As discussed further herein, we find Petitioner has not satisfied its
burden to show, sufficiently for institution, that the prior art teaches or
suggests a strap body having the requisite rigidness or stiffness. Because we
find the “strap body” limitation [1.16] to be dispositive of our decision to
deny institution, we focus our analysis on that limitation. We do not express
an opinion as to the sufficiency of Petitioner’s showing as to any limitation
not discussed herein.
a. Petitioner’s Showing Regarding Limitation [1.16]
Petitioner contends that the ordinarily skilled artisan would have been
motivated to attach an RFID label, as described in Mosher, to a plant body
using a “stiff strap” as allegedly disclosed in Debrody, in order “to track
plants in the manner disclosed in Nakajima.” Pet. 52 (citing Ex. 1002
¶ 115). Petitioner argues:
In the “horticultural management system” described in
Nakajima, the RFID label “may be inserted into the pot or
attached to the plant body.” EX1007. A POSA would be
motivated to secure the RFID label at a position proximate the
plant as required by the Colorado RFP, but also at a sufficient
height and distance from the soil for several reasons that would
have been obvious to a POSA at the time. EX1002 at ¶116. That
is, a POSA would be motivated to (1) position the RFID at a
height sufficient that the cultivator could read the printed data on
the RFID label with relative ease; (2) position the RFID label so
as to avoid obstructions within a grow room negatively affecting
the propagation of the RF signals; (3) use the same RFID label
attachment assembly from seed to harvest to avoid waste and
human error in switching labels or straps; and (4) position the
RFID at a height sufficient that the RFID label will be at a
distance from the soil to avoid the moisture of the soil negatively
affecting the RF signals. EX1002 at ¶¶116–120. An obvious
choice for a POSA at the time would have been to use the stiff
strap disclosed in Debrody in place of the “strap, or the like”
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described in Nakajima to attach the RFID label disclosed in
Mosher in order to effectively track plants from seed to harvest
in the manner described in Nakajima. EX1002 at ¶116.
Id. at 52–53 (emphasis added).6
b. Patent Owner’s Arguments and Evidence Regarding Limitation [1.16]
Patent Owner contends “[n]one of the cited references discloses a
strap having [the claimed] ‘rigidness or stiffness.’” Prelim. Resp. 14 (citing
Ex. 2001 ¶ 66). In particular, Patent Owner disputes Petitioner’s
characterization of Debrody as disclosing a “stiff strap.” Id. (citing Pet. 52;
Ex. 2001 ¶¶ 67–73, 76–81). Patent Owner contends “Debrody does not
disclose a shackle that is rigid or stiff,” but instead “only discloses a locking
seal device having a ‘flexible shackle.’” Id. (citing Ex. 1005, 4:21–23 (“A
locking arrangement is in the chamber which arrangement may include an
insert . . . and locking a flexible shackle thereto.” (emphasis added));
Ex. 2001 ¶¶ 67–73, 76–81).
Patent Owner emphasizes that a locking seal according to Debrody
has no need for the “rigidness or stiffness,” as recited in claim 1, that would
allow the strap to stand upright while holding an RFID label. Id. at 15
(citing Ex. 2001 ¶¶ 70–72). As Patent Owner notes, Debrody discloses
locking security seals that “once closed . . . can no longer be opened without
being damaged or altered.” Id. at 15 (citing Ex. 1005, 1:4–23). As Patent
Owner further notes, Debrody describes that “its ‘[l]ockable seals are used

6 According to Petitioner, the “Colorado RFP” mentioned here is a Request
for Proposal sent out by the State of Colorado to solicit bids from potential
marijuana cultivators, which included requirements regarding use of RFID
tags to track marijuana plants from seed to harvest. See Pet. 7 (citing
Exs. 1020, 1021, 1022).
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where it is necessary to ensure that there has been no unauthorized entry or
access into a secured container,’ such as mail pouches, shipping bags,
valves, meters, and storage areas.” Id. (citing Ex. 1005, 1:13–19). Thus,
according to Patent Owner, Debrody’s teaching of locking devices
“designed to flex to create a closed seal for security applications” (securing,
e.g., mail pouches), suggests no need for a strap stiff or rigid enough to stand
upright. Id. (citing Ex. 1005, 4:18–23, 7:33–40, 8:9–25, 9:58–62, 10:64–
11:18, Figs. 7–8, 11).
Patent Owner also takes issue with Petitioner’s contentions that the
ordinarily skilled artisan “would understand” that “with proper dimensions”
the thermoplastic locking seal disclosed in Debrody could be “rigid and stiff
enough ‘to stand alone when it is inserted into a small pot.’” Prelim. Resp.
15 (citing Pet. 52–54). Patent Owner points out that not only does Debrody
describe the shackle as “flexible,” but Petitioner and its expert,
Dr. Fernandez, “fail to identify any evidence” to support their
characterization of Debrody’s shackle as a rigid, stiff strap. Id. at 16. Patent
Owner emphasizes that “[w]ithout such evidence, [Petitioner’s] argument
that Debrody’s thermoplastic locking seal device comprising a flexible
shackle is rigid or stiff is nothing more than improper speculation.” Id.
(citing Ex. 2001 ¶¶ 67–73, 76–81). Patent Owner, on the other hand,
submits evidence that thermoplastic materials, such as those described by
Debrody, “encompass a variety of plastic polymer materials with varying
properties,” and thus are not inherently stiff or rigid enough to stand upright
“so as to prevent the RFID label from touching the soil,” as required by the
’438 patent claims. Id. (citing Ex. 2001 ¶¶ 67–73, 76–81; Ex. 2007).
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c. Analysis of Limitation [1.16]
The “strap body” limitation, identified by Petitioner as limitation
[1.16], recites:
wherein the strap body has a rigidness or stiffness, such that
when the RFID label and the strap are interconnected in the first
configuration or the second configuration, and the strap body
distal end is inserted into soil, the tag assembly can stand so as
to prevent the label body from touching the soil.
Ex. 1001, 32:30–35.
This limitation, on its face, embodies a relatively simple concept of a
tag assembly having a strap body that is stiff enough to stand upright (e.g., in
potting soil) while supporting an RFID label above the soil. However,
Petitioner’s articulated case for this limitation is not premised on persuasive
evidence of record, but rather on speculation and assumptions that sound in
hindsight.
Petitioner relies on Debrody—in particular, Debrody’s shackle—as
disclosing the strap body as recited in limitation [1.16]. See Pet. 52–55. But
as Patent Owner contends, and we agree, Petitioner fails to cite evidence
supporting Petitioner’s characterization of Debrody’s shackle as “rigid” or
“stiff” enough to stand under its own weight while additionally supporting
an RFID tag. See Prelim. Resp. 14–15; cf. Pet. 24 (stating “Debrody’s strap
is stiff enough to let the strap to stand upright in the soil while also allowing
the strap to attach to the plant body.”) (citing Ex. 1002 ¶ 75). Petitioner
quotes no portion of Debrody purportedly describing the shackle as rigid or
stiff; rather, for this assertion, Petitioner cites the testimony of its designated
expert, Dr. Fernandez. See, e.g., Pet. 24 (citing Ex. 1002 ¶ 75); see also id.
at 27 (citing Ex. 1002 ¶ 79). The cited portions of Dr. Fernandez’s
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declaration (as well as related paragraphs), however, contain only
unsupported characterizations of Debrody’s shackle as a “stiff strap” along
with conclusory testimony regarding allegedly known advantages of using a
stiff strap. See, e.g., Ex. 1002 ¶¶ 75, 77–79.
Dr. Fernandez does cite, in paragraph 73 of his declaration, a portion
of Debrody in support of his statement that “Debrody discloses a stiff,
durable strap called a locking seal device that is made from thermoplastic
material.” Ex. 1002 ¶ 73 (citing Ex. 1005, 8:9–26). That cited portion of
Debrody, however, supports only the characterization of the locking seal
device as “made from, and molded, preferably, from thermoplastic
material.” Ex. 1005, 8:21–23. Nothing in the cited portion of Debrody
describes the locking seal device (or any portion of such device, including
the shackle) as “rigid” or “stiff.”
Simply put, Petitioner has no direct evidence that Debrody explicitly
discloses a strap (shackle) having the rigidness or stiffness required by the
’438 patent claims. Instead, Petitioner relies on conclusory testimony from
its designated expert. Our reviewing court has made clear that declarant
testimony “cannot be used as a wholesale substitute for reasoned analysis
and evidentiary support.” Arendi v. Apple, 832 F.3d 1355, 1361–62 (Fed.
Cir. 2016). Our Consolidated Trial Practice Guide (“CTPG”) also cautions,
“in an obviousness analysis, conclusory assertions from a third party about
general knowledge in the art cannot, without supporting evidence of record,
supply a limitation that is not evidently and indisputably within the common
knowledge of those skilled in the art.” CTPG (Nov. 2019)7 36 (citing K/S

7 https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
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Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014)).
We, therefore, afford Dr. Fernandez’s unsubstantiated testimony little
weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose
the underlying facts or data on which the opinion is based is entitled to little
or no weight.”).
Petitioner also hedges its bets regarding Debrody’s explicit disclosure,
and makes assertions regarding what the ordinarily skilled artisan would
have understood from Debrody’s disclosure of a shackle made from
“thermoplastic material”:
A POSA would understand that a strap with proper dimensions
made with “thermoplastic material” can be rigid and stiff enough
“to stand alone when it is inserted into a small pot.” A POSA
would therefore understand that the thermoplastic strap disclosed
in Debrody therefore has a rigidness or stiffness, such that when
the strap body distal end is inserted into soil, the tag assembly
can stand so as to prevent the label body from touching the soil.
Pet. 53 (emphases added) (citing Ex. 1002 ¶ 121). Petitioner’s only
evidence cited in support of this statement is, again, a portion of the
declaration of Dr. Fernandez, which merely parrots the same statement
without supporting evidence. See Ex. 1002 ¶ 121. As above, we afford such
unsubstantiated testimony little weight in our analysis.
Patent Owner, on the other hand, presents persuasive evidence that the
ordinarily skilled artisan would not have understood that Debrody’s device
made from “thermoplastic material” would necessarily be rigid or stiff
enough to stand upright while supporting an RFID tag. See Prelim. Resp.
15–16. In particular, Patent Owner submits evidence that thermoplastic
materials encompass a variety of plastic polymer materials with varying
properties. See Prelim. Resp. 15 (citing Ex. 2001 ¶¶ 76–77 (testimony of
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Dr. Hardin); Ex. 2007, Table C-11 (describing properties of engineering
plastics as having, for example, different parameters for elasticity, tensile
strength, and compressive strength). Patent Owner also points out that
Debrody characterizes the shackle of its locking device as being “flexible.”
Prelim. Resp. 14 (citing Ex. 1005, 4:21–23) (“A locking arrangement is in
the chamber which arrangement may include an insert . . . and locking a
flexible shackle thereto.”) (emphasis added). A flexible thermoplastic
shackle, such as that disclosed in Debrody as part of its locking-seal devices,
may or may not be strong enough to stand upright; without additional
evidence, Petitioner’s characterization of Debrody’s thermoplastic locking-
seal devices as having the requisite rigidness or stiffness to stand upright is
based only on speculation. The inquiry at hand requires evidence, not
supposition.
Moreover, any assumptions regarding Debrody’s disclosure of
locking-seal devices having the “rigidness or stiffness” required by the ’438
patent claims is undermined by the fact that none of the locking-seal devices
described in Debrody are devices that would need to stand under their own
weight. As Patent Owner points out, Debrody discloses “locking security
seals that ‘once closed . . . can no longer be opened without being damaged
or altered.’” Prelim. Resp. 15 (citing Ex. 1005, 1:4–23; Ex. 2001 ¶ 70).
Such security seals are described in Debrody as being useful for preventing
unauthorized entry or access into secured containers such as mail pouches,
meters, or storage areas. Ex. 1005, 1:13–19. Patent Owner’s expert explains
(with evidentiary support), that although such security seals may need to be
strong, strength does not necessarily imply rigidness or stiffness.
See Ex. 2001 ¶¶ 71–72 (citing Ex. 2005, 1 (stating that “a strong object may
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not necessarily be stiff, and vice versa”); Ex. 2006, 1 (distinguishing
strength of a material from its stiffness)).
Petitioner’s showing regarding limitation [1.16] otherwise consists of
cites to Dr. Fernandez’s testimony regarding allegedly well-known and
common practices, such as his statement that “tracking plants from seed to
harvest using RFID labels (such as described in Mosher) attached to stiff
straps (such as described in Debrody) was a well-known and common
practice.” Ex. 1002 ¶ 77. Dr. Fernandez’s testimony in that regard,
however, contains no evidentiary support for the use of a stiff strap; rather,
the only evidence cited in paragraph 77 is Exhibit 1011, which describes use
of RFID labels to track plants. See Ex. 1011. Exhibit 1011 does not
describe or suggest any stiff straps for inserting into the soil and supporting
RFID labels above the soil; instead, the RFID tags depicted in Exhibit 1011
are shown affixed directly to plant stems using strap tags that appear to be
similar to the wrist straps depicted in Mosher. See id. at 2, 3; cf. Ex. 1006,
Fig. 12. Similarly unsupported are Dr. Fernandez’s many statements
regarding the benefits of a stiff strap that allegedly would have been
apparent to the ordinarily skilled artisan, such as the following:
[I]t was well known to a POSA at the time that the RFID label
needed to remain in close proximity to the plant as the plant
grows and matures in unpredictable ways. It became apparent
and also common to a POSA at this time for growers to attach
the RFID labels to stiff straps (like the strap disclosed in
Debrody) that could be inserted into the soil and stand upright.
A stiff strap that is inserted into the soil and stands upright is
useful in positioning the RFID labels to permit the printed data
to be read, avoid obstructions that attenuate the RF signals, and
avoid the moisture contained in the soil. Soil contains moisture
that inhibits the RF signals emitted from the RFID labels, thereby
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negatively affecting the user’s ability to read the RFID labels.
Therefore, stiff straps, like the strap described in Debrody []
could be used by a POSA to hold the RFID labels near the plants
and also permit cultivators to read the printed data on the RFID
labels, avoid attenuating the RF signals due to obstructions in the
grow room, and keep the RFID labels safely away from the soil.
Id. ¶ 78 (emphasis added). As noted above, we afford Dr. Fernandez’s
unsubstantiated testimony little weight. See 37 C.F.R. § 42.65(a).
Petitioner does not rely on any of the other references in Ground A as
teaching or suggesting a stiff strap for supporting an RFID label above the
soil. In particular, although Nakajima discloses use of RFID labels for
horticultural management, Petitioner tacitly admits that Nakajima does not
disclose a stiff strap that would separate the RFID label from the soil.
See Pet. 52. Rather, Petitioner acknowledges that Nakajima describes an
RFID label body that may be inserted directly into the pot of a plant being
tracked (e.g., Ex. 1007 ¶ 20 (“The label may be inserted into the pot, or it
may be attached to the plant itself.”); Ex. 2004 (“The label can be inserted
into a pot, but it can also be attached to the plant itself.”)). As such,
Nakajima discloses inserting the RFID label body itself into the soil, and
therefore does not teach or suggest a strap body that separates the label body
from the soil, as recited in the ’438 patent claims. See Ex. 1001, 32:31–35
(reciting a strap body that allows the tag assembly to “stand so as to prevent
the label body from touching the soil”). Indeed, Nakajima’s teachings of
inserting an RFID label body directly into the soil are contrary to
Petitioner’s arguments and the testimony of Dr. Fernandez that the ordinarily
skilled artisan knew, at the time of the ’438 patent, to “keep the RFID labels
safely away from the soil.” See Ex. 1002 ¶ 78; Pet. 52.
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Given the lack of any explicit disclosure in Petitioner’s cited
references of a “stiff strap” as recited in the ’438 claims, it appears that
Petitioner and Dr. Fernandez improperly use the challenged claims and the
’438 patent as a guide to turning Debrody’s flexible thermoplastic shackle
into a stiff strap that resembles a portion of the claimed invention.
See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)
(stating that without the necessary reasoning, “we cannot simply assume that
‘an ordinary artisan would be awakened to modify prior art in such a way as
to lead to an obviousness rejection.’ It is in such circumstances, moreover,
that it is especially important to guard against the dangers of hindsight bias.”
(citation omitted)). This analysis, infected with impermissible hindsight,
cannot form the basis of an obviousness conclusion. See KSR, 550 U.S. at
421 (“A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read
into the prior art the teachings of the invention in issue” and instructing
courts to “ ‘guard against slipping into use of hindsight’ ” (citation omitted)).
In sum, we are not persuaded that the Petition shows sufficiently why
one of ordinary skill in the art—without resorting to improper hindsight—
would have turned Debrody’s flexible thermoplastic shackle into a stiff
strap, as recited in the ’438 patent claims, and then combined that strap with
an RFID label, as disclosed in Mosher, and used it for horticultural
management, as disclosed in Nakajima, as Petitioner argues. See Pet. 23–24,
51–55.
The remaining challenged claims, claims 2–4 and 6–18, each depends
directly or indirectly from independent claim 1. Petitioner’s arguments
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regarding these claims do not cure the defects of the underlying challenge to
independent claim 1. See Pet. 55–86. Accordingly, Petitioner also has not
demonstrated a reasonable likelihood of prevailing in its challenge to claims
2–4 and 6–18.
3. Conclusion
We determine that Petitioner’s arguments and evidence, considered as
a whole, do not demonstrate a reasonable likelihood of prevailing on
Petitioner’s contention that challenged claims 1–4 and 6–18 are unpatentable
as obvious in view of Debrody, Mosher, and Nakajima.
E. Ground B: Obviousness of Claim 5 Based on Debrody,
Mosher, Nakajima, and Mears
Petitioner’s challenge to claim 5, which depends from claim 1, is
premised on the same analysis as presented for claim 1, with the Mears
reference additionally cited for the specific limitations recited in claim 5.
Pet. 86–90. Petitioner’s arguments and evidence regarding claim 5 do not
cure the defects of the underlying challenge to independent claim 1. See id.
We, therefore, determine that Petitioner’s arguments and evidence,
considered as a whole, do not demonstrate a reasonable likelihood of
prevailing on Petitioner’s contention that challenged claim 5 is unpatentable
as obvious in view of Debrody, Mosher, Nakajima, and Mears.
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IV. CONCLUSION
For the foregoing reasons, we determine that Petitioner has not shown
a reasonable likelihood that it would prevail in establishing unpatentability
of any of the challenged claims of the ’438 patent.
V. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no trial is instituted.

PETITIONER:

James Murphy
jpmurphy@polsinelli.com

LaTasha Snipes
tsnipes@polsinelli.com

Margaux Savee
msavee@polsinelli.com

PATENT OWNER:

Naveen Modi
naveenmodi@paulhastings.com

Phillip Citroen
phillipcitroen@paulhastings.com

Bruce Wexler
brucewexler@paulhastings.com

Mi Zhou
mizhou@paulhastings.com

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