RF Controls, LLCv.A-1 Packaging Solutions Inc.

Patent Trial and Appeal Board

Mar 28, 2016

13857616 (P.T.A.B. Mar. 28, 2016)

Trials@uspto.gov Paper 20
Tel: 571-272-7822 Entered: March 28, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

RF CONTROLS, LLC,
Petitioner,
v.
A-1 PACKAGING SOLUTIONS, INC.,
Patent Owner.
_______________

Case IPR2014-015361
Patent 8,690,057 B2
_______________

Before HOWARD B. BLANKENSHIP, BRYAN F. MOORE, and
GREGG I. ANDERSON, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1 IPR2015-00119 has been consolidated with this case. All citations are to
the IPR2014-01536 consolidated record unless otherwise indicated.
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I. INTRODUCTION
RF Controls, LLC (“Petitioner”) filed a Petition (Paper 4, Corrected
Petition (“Pet.”)) to institute an inter partes review of claims 1–16 (the
“challenged claims”) of U.S. Patent No. 8,690,057 B2 (Ex. 1001, “the ’057
patent”). See 35 U.S.C. §§ 311–319. A-1 Packaging Solutions, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). RF
Controls, LLC (“Petitioner”) also filed a second Petition (IPR2015-00119,
Paper 1, Petition (“Second Pet.”)) to institute an inter partes review of
claims 17–30 (the “challenged claims”) of the ’057 patent.” A-1 Packaging
Solutions, Inc. (“Patent Owner”) filed a Preliminary Response to the Second
Petition (IPR2015-00119, Paper 6 (“Second Prelim. Resp.”)). We
determined Petitioner had established a reasonable likelihood that it would
prevail in showing the unpatentability of at least one of the challenged
claims in each Petition. We instituted an inter partes review as to claims 1,
17, and 27. Paper 10 (“Dec. on Inst.”); Paper 15 (“Second Dec. on Inst.”).
We declined to institute an inter partes review as to claims 2–16, 18–26, and
28–30. Id. We also exercised our authority under 35 U.S.C. § 315(d) to
consolidate the IPR2015-00119 proceeding and the proceeding in
IPR2014-01536 as one trial. Second Dec. on Inst. 21.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 16 (“PO Resp.”)) and Petitioner filed a Reply (Paper 17
(“Pet. Reply”)). The parties did not ultimately request an oral hearing.
Papers 17, 19.
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
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a preponderance of the evidence that claims 1, 17, and 27 of the ’057 patent
are unpatentable.
II. BACKGROUND
A. Related Matters
The parties have not identified any related proceedings.
B. The ’057 Patent (Ex. 1001)
The ’057 patent relates to a process management system that uses a
radio frequency identification (RFID) detection system in the form of, for
example, a phased array antenna based RFID detection system to track and
manage material storage and flow in a manufacturing process or plant.
Ex. 1001, Abstract. A block diagram of an exemplary process management
system is shown in Figure 1 of the ’057 patent, reproduced below.

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As illustrated in Figure 1, above:
[I]nventory and process management or tracking system 10
include[s] a command system 12 connected to an RFID detection
and tracking system that includes a network of antenna systems
14 (which may be for example, one or more electronically
steerable phased array antenna systems each having multiple
antenna elements 24) connected to a processor (not shown) that
directs or operates the antennas or elements 24 . . . and performs
RFID detection and tracking.

Id. at 13:66–14:7. “During operation, material inputs and material outputs at
each stage or region of the manufacturing process 19 are tagged with RFID
tags 22 for identification and tracking.” Id. at 14:25–28. “The antenna
systems 14 . . . are used to detect and track the location and movement of the
RFID tagged material inputs and material outputs and use this tracking
information to manage the manufacturing process 19 using, for example, the
controllers 16.” Id. at 14:28–36.
C. Illustrative Claim
Of the challenged claims, claim 1 is independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An inventory tracking system for use in tracking
placement of physical items within an inventory tracking
region, comprising:
a radio frequency tag detection system including:
a plurality of radio frequency antennas disposed in a
spaced apart manner within the inventory tracking
region; and
a detection controller coupled to the plurality of radio
frequency antennas, the detection controller
including a beam-steering control system that
controls the operation of each of the radio
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frequency antennas, wherein one of the plurality of
radio frequency antennas uses a beam to scan a
portion of the inventory tracking region to detect a
current physical location of one or more radio
frequency tags disposed in a scanned portion of the
inventory tracking region, wherein the current
physical location corresponds to a position defined
by two coordinate units in a multidimensional
coordinate system and the value of each of the two
coordinate units is determined by the one of the
plurality of radio frequency antennas, and wherein
the detection controller generates indications of the
one or more detected radio frequency tags and the
current physical locations of the one or more
detected radio frequency tags in the scanned
portion within the inventory tracking region; and
a tracking system coupled to the radio frequency tag detection
system to receive the indications of the one or more
detected radio frequency tags and the current physical
locations of the one or more detected radio frequency
tags in the scanned portion within the inventory tracking
region, the tracking system including:
a memory for storing inventory item information for each
of a plurality of inventory items, the inventory
item information for each of the plurality of
inventory items including an inventory item radio
frequency tag identifier, inventory item
identification information defining the identity of
the inventory item, and an indication of the current
physical location of the inventory item within the
inventory tracking region; and
an access system that accesses the memory and provides
at least a subset of the inventory item information
for one or more of the inventory items to a user for
determining the current physical location of the
one or more of the inventory items within the
inventory tracking region,
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wherein the tracking system updates the indication of the
current physical location of at least one particular
inventory item within the inventory tracking region as
stored in the memory for the at least one particular
inventory item based on the indication of the current
physical location of the one or more detected radio
frequency tags for at the least one particular inventory
item as produced by the detection controller.
D. Evidence Relied Upon
Petitioner’s patentability challenge is based on the following
references, either directly or as allegedly incorporated by reference:
Reference Patent/Printed Publication Exhibit
Hofer US 8,493,182 B2 1007
Bloy WO 2009/035723 A1 1008

E. Asserted Ground of Unpatentability
Petitioner challenges the patentability of the ’057 patent claims based
on the following ground:
Reference Basis Claims Challenged
Hofer § 102 1, 17, and 27

III. CLAIM CONSTRUCTION
Claims of an unexpired patent are interpreted using the broadest
reasonable construction in light of the specification of the patent. See 37
C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., 793 F.3d 1268,
1275 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v.
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Lee, 136 S. Ct. 890 (mem.) (2016). Petitioner and Patent Owner offer
respective constructions for several claim terms. See Pet. 5–13; Prelim.
Resp. 6–11. For purposes of this decision, we determine the only claim
language requiring some degree of express construction is the phrase
encompassing the term “antenna,” recited in independent claim 1.
In the Decision to Institute, we did not find that a specific definition of
antenna was necessary. Dec. on Inst. 7–10. However, we clarified that one
of ordinary skill in the art would understand that “one of the plurality of
radio frequency antennas” may refer to a single antenna such as a phase
array antenna. Id. at 9–10. The parties have not presented any further
argument or evidence on this point. We adopt this determination and the
analysis at pages 7–10 of the Decision to Institute into this Final Decision.
IV. ANALYSIS
A. Anticipation of Claim 1 by Hofer
1. Hofer (Ex. 1007)
Hofer discloses that each steerable phased array antenna module
comprises an “RFID reader module 16[, which] directs an interrogation
signal to and receives corresponding signals from the steerable phased array
antenna 18” as well as a “beam steering unit 12 under the control of a
location processor 14.” Ex. 1007, 2:46–50, 2:50–57. Hofer further discloses
that “[a]n output 36 of the location processor comprises the tag identifier,
time stamp and three dimensional location of the associated RFID tag.”
Ex. 1007, 3:15–17. “Hofer generally describes that the steerable phased
array antenna system scans a volume, detects RFID tags, and gathers data
sets associated with each detected RFID which are processed by a location
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processor to derive the three-dimensional position of each detected RFID
tag.” Pet. 25–26 (emphasis deleted) (citing Ex. 1007, 3:8–12, 30–33, 44–49,
56–58). “Hofer further discloses that the data sets include the values of the
two angular dimensions of a polar coordinate system (phi and theta), which
are provided by the beam steering unit, and the value of the third coordinate
(distance or range of the tag from the antenna) is derived from other data in
the data set using a phase ranging algorithm.” Id. at 26 (emphases deleted)
(citing Ex. 1007, 3:8–17, 30–33, 4:1–5:44). Hofer further discloses that
"[a]n output 36 of the location processor comprises the tag identifier, time
stamp and three dimensional location of the associated RPID tag.”
Id. (citing Ex. 1007, 3:15–17).
Hofer purports to incorporate by reference the tracking system
described in Bloy (Ex. 1008). Ex. 1007, 1:11–29. “To incorporate material
by reference, the host document must identify with detailed particularity
what specific material it incorporates and clearly indicate where that
material is found in the various documents.” Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1282–83 (Fed. Cir. 2000). Whether a
patent describes material to be incorporated by reference with sufficient
particularity is assessed from the perspective of a person of ordinary skill in
the art. Id. at 1283. Hofer recites:
Commonly owned PCT Patent Application Publication
WO 2009/035723, titled “Radio Frequency Signal Acquisition
and Source Location System” by Bloy et al published Mar. 19,
2009, hereby incorporated by reference in its entirety, discloses
a real-time RFID location system that utilizes an Intelligent
Tracking and Control System (ITCS) coupled to one or more
intelligent scanning antenna Signal Acquisition and Source
Location (SASL) modules (an ITCS installation) to enable the
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accurate 3-dimensional location of RFID tags arbitrarily placed
and/or moving through a defined target area (volume). Touch
free Identification, location and/or tracking systems such as the
ITCS object identification systems disclosed in WO
2009/035723 enable the identification and location of tags and/or
tagged items, attributing significance to the appearance,
disappearance, location or co-location of tags or tagged items and
thereby facilitating better business process decisions.

Ex. 1007, 1:11–29. Thus, Hofer discloses aspects of Bloy relied on by
Petitioner are specifically incorporated. Given this text from Hofer, we find
the citations to Bloy relied on by Petitioner are properly incorporated by
reference.
2. Analysis
Petitioner provides citations, as detailed above, to Hofer that
correspond to the radio frequency antennas and detection controller recited
in claim 1. Pet. 25–26.
Patent Owner argued in its Preliminary Response that “[n]either Hofer
nor Bloy is directed towards inventory management using RFID tags, or
even inventory management of any kind, but instead deal with general
methods of locating RFID tags.” Prelim. Resp. 21. To anticipate, a prior art
reference need not come from the same field or have the same intended
function as the patent-in-suit. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). In Schreiber, the Federal Circuit held that prior art disclosing a
container with a conical top for dispensing liquids anticipated a patent for a
container with a conical top for dispensing popcorn. Id. The court observed
that “[i]t is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” Id. We
stated in our Decision to Institute, with respect to inventory tracking, the
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body of the claim refers only to an “inventory tracking region” (an area
where tag detection occurs) and an “inventory item” with associated
“inventory item information” (data to be stored and displayed).
Additionally, Bloy does state that the invention provides tracking that may
be useful to identify movement related to inventory control. Ex. 1008, 21–
22.2 Thus, in deciding to institute, we determined that Hofer (with Bloy) is
directed at least in part to inventory management.
i. Intended Use
Patent Owner now argues that “[e]ven assuming that the ‘inventory
tracking’ limitations recite an intended use, these limitations are closely tied
to structure in the claims, entitling them to patentable weight.” PO Resp. 5.
Patent Owner further argues:
the “inventory tracking” limitations describe aspects of tracking
that are particular to inventory (as opposed to tracking other
things) and, importantly, those limitations are intertwined with
multiple structural components of the claims, and the functions of
those structural components—such as “memory” (which stores
inventory tracking information), the “access system” (which
accesses the inventory tracking information), and the “tracking
system” (which updates the inventory information in memory).
These functions, collectively, describe part of what makes an
inventory tracking system different: that it tracks not only the
location of an RFID tag, but the identity/quantity/etc. of the items
the RFID tag represents.

Id. at 6.

2 The Petition cites to the internal page numbers of Bloy rather than the page
numbers added to Ex. 1008. To avoid confusion, we cite to the internal page
numbers of Bloy in this Final Decision.
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The relevant claim language is “inventory tracking region” or
“inventory region.” Claim 1 recites in the preamble “[a]n inventory tracking
system for use in tracking placement of physical items within an inventory
tracking region” and claims 17 and 27 recite in the preamble “[a] method of
tracking inventory within an inventory region.” “Whether to treat a preamble
as a limitation is a determination ‘resolved only on review of the
entire[] . . . patent to gain an understanding of what the inventors actually
invented and intended to encompass by the claim.’” Catalina Mktg. Int’l v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Corning
Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.
1989)). A preamble is not limiting where a structurally complete invention is
defined in the claim body and the preamble only states a purpose or intended
use for the invention. Id. The preambles of claims 1, 17, and 27 recite where
the apparatus and system are to be used. Also, the bodies of claims 1, 17, and
27 define a structurally complete apparatus or system.
One guidepost for determining the effect of a preamble on claim
scope is whether the preamble language provides antecedent basis for any
limitation in the body of the claim. Id. The bodies of claims 1, 17, and 27
specify that the “inventory tracking region” or “inventory region” is the
place in which the RFID tag is detected and tracked. But, other than that,
the claims do not rely on the preamble for structure. Thus, we find that the
“inventory tracking region” of claim 1 and “inventory region” of claims 17
and 27, in the preamble and the body of those claims, are an intended use in
those claims and give them no patentable weight. See Schreiber, 128 F.3d at
1477.
Patent Owner argues that, in another matter:
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the Board gave patentable weight to a claim limitation directed
to a control system, “operable to modify the drive signal and
thereby maintain oscillation of the flowtube,” holding that the
phrase “thereby maintain oscillation of the flowtube” required
that the control system have the appropriate structure to modify
the drive signal and achieve the claimed function.

PO Resp. 6 (citing Micro Motion Inc. v. Schneider Electric SA, IPR2014-
00392, (Dec. on Inst.) Paper 13, 12 (PTAB Aug. 4, 2014)). Thus, according
to Patent Owner, “[j]ust as a control system requires an appropriate structure
to maintain oscillation in a flowtube, the memory, access system, and
detection controller have an associated physical structure to facilitate
updating of inventory item information.” Id. at 7. In this case, however, the
claim calls out the structure required to track the item inventory information
in the inventory tracking region, e.g. the antennas arranged as claimed and
RFID tags associated with inventory items.
Patent Owner argues further that:
These inventory tracking features are not merely an intended use
of an RFID tracking system, but are functional limitations
describing interoperability between the memory, access system,
and tracking system structures. These limitations, in other words,
describe how an RFID inventory tracking system works
differently from non-inventory RFID tracking systems.

PO Resp. 8–9. We disagree. For example, claim 1 describes storing and
accessing data that is displayed to a user. Nothing in the claim points out
any aspect of the manipulation of this data that is unique to “inventory” data
versus any other data that would be stored and accessed. As to the tracking
aspect of the claim, the claim explicitly states that it is the RFID tag that is
tracked, not the inventory item. Nothing in the Specification suggests that
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tracking an RFID tag attached to an inventory item as embodied in the
invention is different in any material way to tracking any other kind of item
with an RFID tag attached.
ii. Non-Functional Descriptive Material
We also determine that the recitation of “item inventory information”
is non-functional descriptive material to the extent that it means anything
other than the identity of an item. That is, we find that while the claim
requires information about an item associated with an RFID tag, there is no
use of the information in the claim the requires the information be inventory
related. Patent Owner states that “[t]he inventory tracking system of claims
1, 17, and 27, on the other hand, not only tracks the location of the items, but
also manages information about the inventory, like what it is, or how long it
has been on the shelf.” PO Resp. 5. However, independent claims 1, 17,
and 27 do not specify that the information must include what the inventory
item is, or how long it has been on the shelf.
Below, we will discuss each of the limitations reciting “item inventory
information.” Claim 1 recites “a memory for storing . . . inventory item
information defining the identity of the inventory item.” Claim 1 further
recites “an access system that accesses the memory and provides at least a
subset of the inventory item information for one or more of the inventory
items to a user.” Thus, Claim 1 does not recite performing any new function
or action based upon the fact that the item is an inventory item to achieve a
desired result. As such, the limitation of claim 1 to “item inventory
information” is directed to non-functional descriptive material, which is not
entitled to weight in the patentability analysis. See Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) (“wellness-related” data in
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databases and communicated on distributed network did not functionally
change either the data storage system or the communication system used in
the claimed method), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006).
“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been [invalidated] by the prior art.” Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative) (citing In
re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), aff’d, 191 Fed. Appx. 959
(Fed. Cir. 2006); see Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI
2008) (precedential).
The first step in determining whether a claim limitation is non-
functional descriptive material (i.e. printed matter) is finding that the
“printed matter [is] matter claimed for what it communicates.” In re
Distefano, 808 F.3d 845, 850 (Fed. Cir. 2015). Here, the inventory item
information is claimed for its communication of information about the item
of inventory.
The next step is determining “if the claimed informational content has
a functional or structural relation to the substrate.” Id. Here, the inventory
aspect of the item inventory information is not related to claimed
computerized tracking system. See generally MPEP § 2111.05, 9th ed., Rev.
7, Nov. 2012 (“[W]here the claim as a whole is directed [to] conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists.”).
Finally, claim 1 recites “the tracking system updates the indication of
the current physical location of at least one particular inventory item . . .
based on the indication of the current physical location of the one or more
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detected radio frequency tags for at the least one particular inventory item as
produced by the detection controller.” For this limitation, it is the RFID tag
that has a functional relationship to the limitations of the claim, i.e. the
location of the inventory item is commensurate with the location of the
RFID tag such that it is the RFID tag’s location which is detected and
updated in claim 1. Thus, the inventory item itself and the fact that it is
inventory as opposed to any other item does not have a functional
relationship to the tracking system or any other part of claim 1.
Claims 17 and 27 contain substantially similar limitations as discussed
above. Thus, for the reasons stated above, the limitation of claims 17 and 27
to “item inventory information” is directed to non-functional descriptive
material to the extent that it means anything other than the identity of an
item, which is not entitled to weight in the patentability analysis.
Patent Owner cites to In re Lowry for the proposition that “[m]ore
than mere abstraction … the data structures provide tangible benefits: data
stored in accordance with the claimed data structures are more easily
accessed, stored, and erased…The Board is not at liberty to ignore such
limitations.” PO Resp. 8–9 (citing In re Lowry, 32 F.3d 1579, 1583–84
(Fed. Cir. 1994)). In Lowry, the Federal Circuit pointed out that “the
[claimed] data structures [are not] analogous to printed matter. Lowry’s
ADOs do not represent merely underlying data in a database. ADOs contain
both information used by application programs and information regarding
their physical interrelationships within a memory.” 32 F.3d at at 1583.
Thus, the nature of relationship between the data structures and the memory
in Lowry created a functional relationship between the data structure and the
computer. See id. Here the inventory item information is data of not
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specific structure that is manipulated by generic computer functions of
storing and displaying to a user.
Patent Owner analogizes this case to Fujian Newland Computer Co.,
Ltd. v. Hand Held Products, Inc., IPR2013-00595, which involved a bar
code. PO Resp. 10 (citing Fuijan, IPR2013-00595, Paper 14, 21 (PTAB
Feb. 28, 2014)). Patent Owner suggests by this analogy that item inventory
information is functional in the way a bar code is functional. Petitioner
responds that “a bar code recognition module must have a specific structure,
such as circuitry or program logic to recognize and distinguish bar code
symbols from other descriptive material in image data.” Pet. Reply 10. We
agree with Petitioner. Bar codes are more like the data structures of Lowry.
In fact, bar codes are also more analogous to the RFID tag in this case,
which must have a particular structure in order to be read by the claimed
antenna. Thus, we do not find that Fuijan supports Patent Owner’s position
with respect to the functionality of the “item inventory information” of claim
1.
Patent Owner further argues that:
if [item inventory information] is ignored as merely descriptive,
other limitations in the claim become confused and unworkable.
For example, the “access system” limitation must “access[] the
memory” and provide “a subset of the [item inventory
information].” If “inventory item information” is not limiting,
then what subset is the access system providing?

PO Resp. 10–11. Patent Owner misses the point. Because item inventory
information is non-limiting, any subset of item inventory information is also
non-limiting. Additionally, the claim recites “at least” a subset, thus more
than a subset satisfies the claim limitation. Patent Owner’s question
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assumes that all elements of the claim must be found to be limiting. That is
not the case.
Patent Owner further argues that:
“the identity of the inventory item”—has nothing to do with the
RFID tag. Rather, the “identity of the inventory item” is an
important limitation that defines the invention of inventory
tracking over other kinds of RFID tracking. In an inventory
tracking system, it is not enough to simply know the physical
location of the RFID tag. The system must also know the identity
of the goods the RFID tag represents.

PO Resp. 10. We disagree. While the identity of the item associated with
the RFID tag is necessary to know what specific item is being tracked, there
is no structural significance to the fact that the item is inventory versus any
other kind of item. As noted above, we find that the inventory aspect of item
inventory information has no patentable weight.
We find that the inventory aspect of “inventory item identification
information defining the identity of the inventory item, and an indication of
the current physical location of the inventory item”—upon which the generic
computer operations are performed—is non-functional descriptive material
related to the RFID tag, and lacks patentable weight. Whether the recited
“inventory item information” is related to an item of inventory does not
affect the operations of the “access” or “tracking” limitations, rather the
information is simply stored and provided to a user. See Ngai, 367 F.3d at
1339; In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (holding when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). It is the RFID tag that has a functional relationship
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to the limitations of the claim, i.e. the location of the inventory item is
commensurate with the location of the RFID tag such that it is the RFID
tag’s location which is detected and updated in claim 1. Claims 1, 17, and
27 do not use the item information for any purpose specific to inventory
other than storing and presenting the item information to the user. Thus, we
find that item inventory information is simply data representing some
information about an item.
iii. Hofer Is Enabled
Patent Owner argues “Hofer/Bloy does not describe any features of
inventory management using RFID tags, let alone describe them in sufficient
detail to enable a person of ordinary skill in the art to carry out the claimed
invention.” PO Resp. 11 (citations omitted). Patent Owner further argues
“Hofer/Bloy provides, in just one sentence, a passing reference to ‘inventory
control.’ That sentence states, ‘[t]he invention provides direction and
velocity tracking, useful for example to identify movement of targets into
areas where additional actions may be desired, such as user access, process
control, inventory control and/or theft prevention.’” PO Resp. 11–12 (citing
Ex. 1008, 21–22). Finally, Patent Owner argues:
Hofer/Bloy says nothing about . . . “inventory item information.”
Without knowing information about the inventory in addition to
the physical locations of the inventory itself, a user attempting to
manage inventory with the Hofer/Bloy system is left with a
disorganized pool of tag locations and no link between the tags
and what they are attached to.

Id. at 13.
When a party asserts that a prior art patent anticipates specific patent
claims, the party enjoys a presumption that the anticipating disclosure also
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enables the claimed invention. Impax Labs., v. Aventis Pharms. Inc., 468
F.3d 1366, 1382 (Fed. Cir. 2006). However, the presumption can be
overcome with persuasive evidence showing that the prior art patent does
not enable the claimed invention. Id.
Petitioner points out that Bloy discusses inventory control in more
than just one sentence. Pet. Reply. 13. Bloy recites the use of RFID tags in
connection with “inventory feedback and control,” such as by tracking “a
pallet load of materials individually marked with RFID tags entering or
leaving a warehouse.” Ex. 1008, 4. Bloy, in describing previous entry/exit
systems, further recites that “[previous systems do] not provide a specific
location and/or direction of travel, other than by transient association
between the tags or tagged items and the location of the reader at the time of
interrogation” and thus, the disclosure of Bloy overcomes “a collective
mindset in the signal acquisition and source location technology space that
RFID technology in particular is applicable only with respect to gateway
type exit/entry and or general presence detection and reporting function(s).”
Id. We recognize the presumption of enablement and Bloy’s explicit
description of associating inventory with a location. Thus, even if the item
inventory information and at least a subset thereof were given patentable
weight, we find that Bloy, and thus Hofer, is enabled for the purpose of
anticipation.
iv. Anticipation
Petitioner provides citations to Bloy that allegedly disclose the
tracking system and access system limitations recited in claims 1, 17, and
27, along with explanations of those citations. Pet. 24–26, App. C, 7–10;
Second Pet. 25–30, App. C, 1–8, 12–14. As explained further below, we
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adopt those citations and explanations that specifically relate to claims 1, 17,
and 27 except the following: “the remaining elements of independent claim
1 recite little more than generic computer hardware performing generic
computer operations and add no patentable weight to independent claim 1.
See Alice, Slip Opinion No. 13-298”3 (Pet. 27); and “the remaining elements
of independent claims 17 and 27 recite little more than generic computer
hardware performing generic computer operations and add no patentable
weight to independent claims 17 and 27. See Alice, Slip Opinion No. 13-
298.” (Second Pet. 30).
Claim 1 recites “[a]n inventory tracking system for use in tracking
placement of physical items within an inventory tracking region.” Claims
17 and 27 recite “[a] method of tracking inventory within an inventory
region.” As noted above, we find that the preamble is not limiting.
Nevertheless, Hofer and Bloy disclose the elements of the preamble. Hofer
discloses “[i]t is an object of the invention to provide an object monitoring
solution[.]” Ex. 1007 1:65–66. Bloy discloses “[t]he inventors have
developed an RF signal intelligent tracking and control system (ITCS) 5[.]”
Ex. 1008, 5.
Claim 1 recites “a plurality of radio frequency antennas disposed in a
spaced apart manner within the inventory tracking region.” Hofer discloses
“[a]dditional intelligent steerable phased array antenna module(s) 10 may
also be included, each delivering a data set 34 to the location processor 14.”
Ex. 1007, 3:12–15.

3 The updated Alice cite is Alice Corp. v. CLS Bank International, 134 S. Ct.
2347, 189 L.Ed.2d 296 (2014).
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Claim 1 recites “a detection controller coupled to the plurality of radio
frequency antennas.” Hofer discloses:
[a]n RFID reader module 16 directs an interrogation signal to and
receives corresponding signals from the steerable phased array
antenna 18 through the RF port 20 of a multi-frequency
transceiver 22. The transceiver 22 processes the desired signals
through digital to analog transmit and analog to digital receive
converters 24 for each of transmit and receive signal paths
according to control instructions from a protocol processor 26.
Ex. 1007, 2:50–57; see also id. at 2:46–50; 3:15–17 (“An output 36 of the
location processor comprises the tag identifier, time stamp and three
dimensional location of the associated RFID tag 38.”).
Claim 1 recites “a beam-steering control system that controls the
operation of each of the radio frequency antennas.” Hofer discloses “[t]he
intelligent steerable phased array antenna module 10 is demonstrated with a
beam steering unit 12 under the control of a location processor 14.” Ex.
1007, 2:47–50.
Claim 1 recites “wherein one of the plurality of radio frequency
antennas uses a beam to scan a portion of the inventory tracking region to
detect a current physical location of one or more radio frequency tags
disposed in a scanned portion of the inventory tracking region.4” Claims 17

4 Claims 17 and 27 recite “periodically scanning the inventory region with one
or more radio frequency antennas using a beam steering scanning technique.”
Claim 27 further recites “one of the one or more radio frequency antennas
scans a portion of the inventory region to detect one or more radio frequency
tags disposed in a scanned portion of the inventory region, each of the
one or more radio frequency tags being associated with a different inventory
item.” Claim 17 recites ‘wherein one of the one or more radio frequency
antennas scans a portion of the inventory region to detect one or more radio
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and 27 are limited to “periodically scanning.” Hofer discloses using a beam
to scan an area for the location of RFID tags. Id. at 3:8–19, 30–35, 44–47.
Bloy discloses that an RFID tag can be scanned for inventory tracking. Ex.
1008, 4–5. Hofer discloses that a “plurality of data sets” are gathered
through scanning. Ex. 1007, 3:32–33. We find that in order to gather
multiple data sets at least two scans needed to separate by some period of
time. Thus, Hofer discloses periodically scanning. Claim 27 is limited to
RFID tags being associated with a different inventory item. Bloy discloses
“RFID tags may be read by readers (also known as interrogators) in order to
collect the identity of the RFID tags and therefore by association the identity
of the item to which the tag is attached . . . such as a pallet load of material
individually marked with RFID tags entering or leaving a warehouse for
inventory feedback and control[.]” Ex. 1008, p. 2. Thus, individual RFIDs
are associated with individual inventory items.
Claim 1 recites “wherein the current physical location corresponds to
a position defined by two coordinate units in a multidimensional coordinate
system and the value of each of the two coordinate units is determined by
the one of the plurality of radio frequency antennas.”5 Hofer discloses beam

frequency tags disposed in a scanned portion of the inventory region, each of
the one or more radio frequency tags being associated with an inventory item.”
5 Claims 17 and 27 recite “determining a current physical location for the one
or more detected radio frequency tags in the scanned portion within the
inventory region based on the detection of the one or more radio frequency tags
within a scan wherein the current physical location corresponds to a position
defined by two coordinate units in a multidimensional coordinate system and
the value of each of the two coordinate units is determined by the one of the
one or more radio frequency antennas and wherein the current physical location
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steering unit 12 of intelligence steerable phased array antenna module 10
delivers Theta and Phi direction coordinates of interrogation beam to
location processor 14, and RFID reader module 16 of intelligent steerable
phased array antenna module 10 delivers tag ID and tag response signal
phase information. Ex. 1007, FIG. 1, 3:8–19. Claims 17 and 27 are limited
to “wherein the current physical location for the one or more detected radio
frequency tags is resolved to a region less than the coverage area of any of the
radio frequency antennas.” Hofer discloses that:
[t]o apply phase ranging to the RFID tag scan data, for a beam
direction at which an RFID tag 38 has been detected, the beam
extent or a shorter segment of interest of the beam extent at the
instant direction is derived, at 52. . . . The ends of the beam extent
identified at 52 may be referenced as MIN and MAX, representing
the minimum distance and the maximum distance, respectively,
that the present RFID tag 38 is expected to be from the antenna,
along the present beam direction.

Ex. 1007, 4:1–4, 4:29–33; see also id. at 4:5–28 (describing a scan sweep of a
volume), 4:48–5:45 (describing the use of phase ranging to determine distance
of the RFID tag along the signal beam from the antenna), 5:46–54 (describing a
refinement of the location process).
Claim 1 recites “wherein the detection controller generates indications
of the one or more detected radio frequency tags and the current physical
locations of the one or more detected radio frequency tags in the scanned
portion within the inventory tracking region.” Hofer discloses “[a]n output
36 of the location processor 14 comprises the tag identifier, time stamp and

for the one or more detected radio frequency tags is resolved to a region less
than the coverage area of any of the radio frequency antennas.”
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three dimensional location of the associated RFID tag 38.” Ex. 1007, 3:15–
17.
Claim 1 recites “a tracking system coupled to the radio frequency tag
detection system to receive the indications of the one or more detected radio
frequency tags and the current physical locations of the one or more detected
radio frequency tags in the scanned portion within the inventory tracking
region” and “a memory for storing inventory item information for each of a
plurality of inventory items, the inventory item information for each of the
plurality of inventory items including an inventory item radio frequency tag
identifier, inventory item identification information defining the identity of
the inventory item, and an indication of the current physical location of the
inventory item within the inventory tracking region.”6 Bloy discloses:
[a] processor . . . is operatively coupled to the RF transceiver 12
and the electronic steering circuit 16 . . . The signal data record
including at least a signal identification, a received signal
strength indicator and an RF signal direction along which
respective signal(s) are received by the antenna 14. The RF
signal direction is derived from the electronic steering circuit 16
and a position logic operative upon the signal data record(s) is
applied to derive a three dimensional signal original location of

6 Claim 17 recites “storing, in a computer readable memory, for each of the
one or more detected radio frequency tags, inventory item information, wherein
the inventory item information for a radio frequency tag includes an inventory
item radio frequency tag identifier, inventory item identification information
defining the identity of the inventory item, and current physical location
information for the inventory item.” Claim 17 recites “storing inventory item
information in a computer readable memory for each of the different inventory
items, the inventory item information for a particular inventory item including a
radio frequency tag identifier, inventory item identification information
defining the identity of the inventory item, and current physical location
information for the inventory item.”
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each response signal . . . where the response signal is from an
RFID tag, the signal identification can be the RFID tag
identification or item identity.

Ex. 1008, 8–9 (emphases added). Thus, Bloy stores the identity of an “item”
associated with an RFID tag. As noted above, we give no patentable weight
to the inventory aspect of the claimed “item inventory information.” Thus,
Bloy discloses the limitation at issue. Alternatively, if inventory is given
patentable weight, Bloy explicitly states that the item being tracked may be
inventory. Ex. 1008, 4 (monitoring entry and exit of “a pallet load of
materials individually marked with RFID tags”).
Claim 1 recites “a memory for storing inventory item information for
each of a plurality of inventory items, the inventory item information for
each of the plurality of inventory items including an inventory item radio
frequency tag identifier, inventory item identification information defining
the identity of the inventory item, and an indication of the current physical
location of the inventory item within the inventory tracking region.” Bloy
discloses “[t]he processor is preferably provided with a data storage 26, for
example a hard drive ... for storing a signal data record for each of at least
one response signal(s) received by the RF transceiver” and that “[t]he signal
data record including at least a signal identification, a received signal
strength indicator and an RF signal direction along which respective
signal(s) are received by the antenna 14.” Ex. 1008, 9. “[S]ignal
identification can be the RFID tag identification or item identity.” Id. The
strength and direction of the signal indicate the current physical location of
the RFID tag.
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Claim 1 recites “an access system that accesses the memory and
provides at least a subset of the inventory item information for one or more
of the inventory items to a user for determining the current physical location
of the one or more of the inventory items within the inventory tracking
region.”7 As noted above, Bloy discloses storing the item identity and
physical location of an RFID tag. See Ex. 1008, 9. Item identity meets the
limitation to at “at least a subset” because even if item identity is the whole
of item inventory information, the whole may be more than a subset but the
claim requires at least a subset which suggests more than a subset may be
stored.
Bloy further discloses “[t]he SASL module(s) 10 and or edge server
34 if present are coupled to an operator interface such as computer display
and or a user accessible web page for control and feedback.” Ex. 1008, 19.
Thus, information necessary for control is displayed to the user. As noted
above, we give no patentable weight to the inventory aspect of the claimed
“item inventory information.” Ex. 1008, 19. Thus, Bloy meets the
limitation at issue. Alternatively, if inventory is given patentable weight,
Bloy explicitly states that the item being tracked may be inventory. Ex.
1008, 4 (monitoring entry and exit of “a pallet load of materials individually
marked with RFID tags”).
Claim 1 recites:

7 Claim 17 recites “accessing the stored inventory item information to determine
the current physical location of the one or more of the set of inventory items
within the inventory region. Claim 27 recites “enabling access to the stored
inventory item information for each of the inventory items to determine the
current physical location of the inventory items within the inventory region.”
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the tracking system updates the indication of the current physical
location of at least one particular inventory item within the
inventory tracking region as stored in the memory for the at least
one particular inventory item based on the indication of the
current physical location of the one or more detected radio
frequency tags for at the least one particular inventory item as
produced by the detection controller.8

Bloy discloses:
[t]he edge server 34 and or processor 28 of each SASL module
10 may also perform comparisons of changes between the three
dimensional signal origin location resulting from successive
interrogation signal sweeps of the zone and apply same as inputs
to a velocity and or direction logic, to determine a speed and
direction indication for each response signal.

Ex. 1008, 18.
Upon review of Petitioner’s analysis and supporting evidence
and Patent Owner’s analysis and supporting evidence, for the reasons
set forth above, we are persuaded that Petitioner has shown by a
preponderance of the evidence that claims 1, 17, and 27 are
unpatentable under 35 U.S.C. § 102 as anticipated by Hofer.

8 Claim 17 recites “updating the current physical location information of at
least one inventory item within the inventory region as stored in the computer
readable memory based on the determined current physical location of the one
or more detected radio frequency tags for the at the least one inventory item as
determined during one or more scans.” Claim 27 recites “updating the current
physical location information of each of the inventory items within the
inventory region as stored in the computer readable memory based on the
determined current physical location of the one or more detected radio
frequency tags for the inventory items as determined during one or more
Scans.”
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V. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
1, 17, and 27 are unpatentable under 35 U.S.C. § 102 as anticipated by
Hofer.
VI. ORDER
For the reasons given, it is
ORDERED that claims 1, 17, and 27 of U.S. Patent 8,690,057 are
unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Michael J. Hickey
mhickey@lewisrice.com

Benjamin J. Siders
bsiders@lewisrice.com

Kirk A. Damman
kdamman@lewisrice.com

PATENT OWNER:

Roger Heppermann
rheppermann@marshallip.com

Shawn Buchanan
sbuchanan@marshallip.com

Benjamin T. Horton
bhorton@msrshallip.com