EVRYTHNG Limited

Patent Trials and Appeals Board

Nov 16, 2021

IPR2021-00865 (P.T.A.B. Nov. 16, 2021)

Trials@uspto.gov Paper 13
571-272-7822 Entered: November 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

AVERY DENNISON RFID COMPANY and AVERY DENNISON
RETAIL INFORMATION SERVICES LLC,
Petitioner,
v.
EVRYTHNG LIMITED,
Patent Owner.

IPR2021-00865
Patent 9,582,595 B2

Before NEIL T. POWELL, ROBERT L. KINDER, and SHARON FENICK,
Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Avery Dennison RFID Company and Avery Dennison Retail
Information Services LLC (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
requesting inter partes review of claims 1–26 (the “challenged claims”) of
U.S. Patent No. 9,582,595 B2 (“the ’595 patent”). Patent Owner
EVRYTHNG Limited filed a Preliminary Response. Paper 7 (“Prelim.
Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard
for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
provides that an inter partes review may not be instituted “unless the
Director determines . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.”
For the reasons that follow, we do not institute an inter partes review
as to the challenged claims of the ’595 patent.
II. BACKGROUND
A. Real Parties in Interest
Petitioner identifies that Avery Dennison RFID Company and Avery
Dennison Retail Information Services LLC are subsidiaries of Avery
Dennison Corporation. Pet. 9. Patent Owner identifies only itself as a real
party in interest. Paper 4 (Patent Owner’s Mandatory Notices), 1.
B. Related Matters
Petitioner identifies Avery Dennison RFID Company et al. v
EVRYTHNG Limited, filed contemporaneously with the Petition by
Petitioner in the District of Massachusetts as a related matter. Pet. 9–10.
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Patent Owner also identifies this case as a related matter, and provides the
case number 1:21-cv-10719-LTS. Paper 4, 1.
C. The ’595 Patent (Ex. 1001)
The ’595 patent is titled “Computer-Implemented Object Information
Service and Computer-Implemented Method for Obtaining Information
about Objects From Same,” and generally relates to “using a client
application to access an online identity associated with an individual
product.” Ex. 1001, code (54), 1:36–38. Figure 1a, reproduced below,
shows exemplary system/framework 100 according to one embodiment of
the invention. Id. at 2:3–4, 2:17–19.

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As seen in the embodiment of Figure 1A, in system/framework 100, client
device 102 interacts with object 104, enabling client device to
obtain/ascertain information about object 104, which may (among other
things) be a physical item, a virtual item, a location, person, sound. Id. at
2:22–29, 2:34–37, 3:21–31. This interaction may be via a camera or other
sensor on the client device 102. Id. at 2:29–33. Object 104 may include
object indicia 110, which may be, for example, a serial number, Universal
Product Code, radio frequency ID, or QR code. Id. at 1:52–55, 1:57, 3:32–
47.
System/framework 100 additionally includes object information
service 112, which generates, maintains, uses, and hosts information profiles
that describe and store information about known objects. Id. at 3:55–62.
Preferably, information about individual objects 104 is maintained in one or
more object databases 118 of the object information service 112. Id. at
:1–3. Each object 104 for which object information service 112 maintains
information has a unique object identifier associated with it, and information
about an object 104 within object information service 112 is preferably
indexed on that unique object identifier, but could be indexed on other
information or keys. Id. at 4:3–13, 4:19–22. API(s) 120 (Application
Program Interface(s)) allow users to access the functionality of object
information service 112. Id. at 1:44, 6:5–31. API requests allow creation
and deletion of an object, and retrieval and updating of object information,
in the object information service. Id. at 8:17–12:3.
System/framework 100 also includes object identification service 114
that is used to try to identify an object 104 and to provide the unique
identifier for it. Id. at 4:49–60. Figure 3A, reproduced below, illustrates
exemplary operation of system/framework 100. Id. 15:33–64.
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Figure 3A shows actions by a client and an object identification service by
which the client can obtain the unique object identifier for an object. Id. at
15:38–64. As shown at block S302, the client obtains images of an object,
possibly including object indicia. Id. at 15:41–44. The client then processes
the images, extracts information from them, and provides some of this
information to the object identification service, at blocks S304 and S306. Id.
at 15:45–50. In block S308, the object identification service ascertains a
unique object identifier for the object. Id. at 15:51–52. If the object
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identification service does not know the unique object identifier for the
object, it may provide information to the object information service in order
to instantiate a new unique object identifier for the object. Id. at 15:51–52,
16:1–16, Fig. 3B. In blocks S310 and S312, the unique object identifier is
returned from the object identification service to the client and the client
provides a client application with that unique object identifier. Id. at 15:59–
64.
The ’595 patent describes two examples of use. In a first example, a
user of a product may take a photo of a product with an indicium that is
recognized in the photo. Id. at 16:57–63. A unique product identity for that
object and user is then generated, and the user can then attach personalized
multimedia content that can be shared. Id. at 16:63–67. In a second
example, a user buys a bottle of wine with a scannable tag, and scans the
bottle using a camera to take part in a contest. Id. at 17:1–7. The
information on the tag allows the product to be verified as genuine and not
yet entered in the contest, and the user can enter the contest. Id. at 17:7–10.
D. Illustrative Claims
Claim 1, reproduced below, is the only independent claim of the ’595
patent and is representative.
1. A computer-implemented method, implemented by hardware
in combination with software, operable on an object information
service, said object information service comprising: (i) an object
database, (ii) object information applications for maintaining and
accessing information in said object database, and (iii) an
Application Programming Interface (API) to said object
information applications, said API being externally accessible,
wherein said object data base maintains a persistent profile for
each of a plurality of objects,
the method comprising:
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(a) obtaining, at a device, information about an object;
(b) determining an identifier for the object from the
information obtained in (a) by:
(b)(1) providing at least some of said information to an
identification mechanism; and
(b)(2) obtaining an identifier for the object from an
identification mechanism; and then
(c) using the identifier and said API to add said object to
said object information service, wherein the
information service maintains a persistent online
profile for the object in said object database, said
profile being accessible at the information service
using the identifier, and wherein the identifier for the
object is unique within the information service; and
then,
(d) using the identifier and said API to access and store
data about the object at said object information service.
Ex. 1001, 21:8–34.
E. Prior Art Relied Upon
Petitioner relies on the following references (Pet. 12):
Reference Exhibit No.
Boncyk et al., US 2004/0208372 A1, pub. Oct. 21, 2004 Ex. 1007
Harris et al., US 2006/0200480 A1, pub. Sept. 7, 2006 Ex. 1012
Davis et al., US 2012/0208592 A1, pub. Aug. 16, 2012 Ex. 1014
Gentile et al., US 2013/0299569 A1, pub. Nov. 14, 2013 Ex. 1004
Mark Massé, REST API Design Rulebook (2012) (“Massé”) Ex. 1008
The status of these references as prior art patent or printed
publications is not currently contested by Patent Owner. See Prelim. Resp.
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F. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of the claims on the following
grounds, relying on a Declaration from Dr. Oded Gottesman (Ex. 1003).
Pet. 11–12, 35–85.
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1–11, 13–18, 21–26 102 Gentile
1–11, 13–18, 21–26 103 Gentile, Massé
1–11, 13–18, 20–26 103 Gentile, Harris
1–11, 13–18, 21–262 103 Gentile, Boncyk
1–11, 13–18, 20–26 103 Gentile, Massé, Boncyk
1–11, 13–18, 20–26 103 Gentile, Harris, Boncyk
1–26 103 Gentile, Davis
1–26 103 Gentile, Massé, Davis
1–26 103 Gentile, Harris, Davis

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103 for
applications filed on or after March 16, 2013. Petitioner argues that
September 26, 2013 is the earliest possible effective date of the ’595 patent,
and its expert uses this date in the analysis. Pet. 12–13; Ex. 1003 ¶ 36; see
Ex. 1001, code (60). Patent Owner does not comment on whether this is
correct. See Prelim. Resp. 7. For the purpose of institution, we apply the
AIA version of 35 U.S.C. §§ 102 and 103. Our analysis and determination
remain the same under either the pre- or post-AIA versions of 35 U.S.C.
§§ 102 and 103.
2 Petitioner presents this challenge as part of its Ground 4 and describes the
ground as challenging claim 20, however the Petition does not appear to
address claim 20 under a combination of Gentile and Boncyk.
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III. ANALYSIS
A. Legal Standards
“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 never shifts to
Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
proof in inter partes review). Furthermore, Petitioner must explain with
particularity how the prior art would have rendered the challenged claims
unpatentable. 35 U.S.C.A. § 312(a)(3); 37 C.F.R. § 42.104 (“The petition
must specify where each element of the claim is found in the prior art
patents or printed publications relied upon.”). Under 35 U.S.C. § 103(a), a
claimed invention is unpatentable 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. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
A claim is unpatentable under 35 U.S.C. § 102 “if each and every
[claim] limitation is found either expressly or inherently in a single prior art
reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851
F.3d 1270, 1273 (Fed. Cir. 2017) (citation omitted). “A claim limitation is
inherent in the prior art if it is necessarily present in the prior art, not merely
probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless
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Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco,
Inc. v. Mirror Lite, Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)).
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the subject matter sought to be patented 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, 550 U.S. at 406. 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 skill in the art; and
(4) objective evidence of nonobviousness, i.e., secondary considerations.
See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
Relying on the testimony of Dr. Gottesman, Petitioner contends that at
the time of the effective filing date, a person of ordinary skill in the art
“would have had a bachelor’s degree in computer science, electrical
engineering, or a related field of study, and at least three years of experience
with online web services, database systems, and/or related software
applications.” Pet. 21–22 (citing Ex. 1003 at ¶ 127). Petitioner adds, “[t]his
is an approximation and additional education (e.g., masters/doctorate
degree(s)) could make up for less practical experience (and vice versa). Id.
Patent Owner does not present a different proposal for level of skill or
comment on Petitioner’s proposal. See Prelim. Resp.
For purposes of this Decision on Institution, we adopt Petitioner’s
proposed level of ordinary skill in the art. This level of skill comports with
the teachings of the ’595 patent and the asserted prior art.
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C. Claim Construction
In an inter partes review, claims are construed using the same claim
construction standard that would be used to construe the claims in a civil
action under 35 U.S.C. § 282(b), including construing the claims in
accordance with the ordinary and customary meaning of such claims as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). We apply the claim
construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc).
Claim terms are generally given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art in the
context of the specification, the prosecution history, other claims, and even
extrinsic evidence including expert and inventor testimony, dictionaries, and
learned treatises, although extrinsic evidence is less significant than the
intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
dispositive, and it is the single best guide to the meaning of a disputed term.
Id. at 1315.
Only those terms that are in controversy need be construed, and only
to the extent necessary to resolve the controversy. Nidec Motor Corp., 868
F.3d at 1017 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999)).
Petitioner requested construction of the term “application
programming interface (API),” which appears in challenged claims 1 and 9,
and in all other challenged claims by virtue of dependency from challenged
claim 1. Pet. 28–34. Petitioner additionally requests construction of the
term “mechanism,” which appears in challenged claims 1 and 10–13, and in
all challenged claims by virtue of dependency from challenged claim 1. Id.
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at 34. Patent Owner also addresses the construction of API. Prelim. Resp.
10–15.
In this instance, we determine that no terms require construction to
resolve the controversy.
D. Asserted Anticipation of Claims 1–11, 13–18, and 21–26 by Gentile
Petitioner argues that claims 1–11, 13–18, and 21–26 are anticipated
by Gentile. Pet. 19–68. Patent Owner asserts certain deficiencies in
Petitioner’s anticipation case. Prelim. Resp. 18–27.
1. Gentile
Gentile is titled “Method and System for Retrieving Information
Using Serialized Scannable Codes,” and describes products with attached
machine-readable unique identification tags, and the storage of information
associated with the products. Ex. 1004, codes (54), (57). The tags allow
easy retrieval of information specific to the individual products, such as
registration and service functions. Id. ¶¶ 1, 10. For example, a QR code
may be affixed to a window in a home, and the homeowner may use a code
reader application on a cell phone to read the code. Id. ¶ 10. Based on the
code, the homeowner may access information through a website associated
with the product, which allows access to a record including the type or
dimensions of the window, date of installation, and warranty information,
among other data. Id. Generally, a product owner may use the system to
obtain access to registration information, contact information, warranty
information, recall information, or other product information; an installer
may obtain access to installation information; a field service technician may
obtain access to registration, service, or troubleshooting information. Id.
¶¶ 37–39.
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Gentile describes that, at the time of manufacturing of a product, a
unique identification tag is created for the product and the unique
identification tag is stored in a product information database, associated with
a unique identifier, product information, customer information, and other
information related to the product. Id. ¶ 59. Once the association between
the product and the tag has been stored in the database, a scanning device
can be used to scan the unique identifier from the tag and retrieve
information related to the product from the database. Id. ¶¶ 60–62.
Figure 2, reproduced below, describes the process for creating an
association between a unique product identifier and a database record. Id.
¶ 65.

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As shown in Figure 2, at the time of manufacturing, a unique identifier is
generated for the individual product, at step 201. Id. In step 202, the unique
identifier is then associated with a unique product record that will only be
used for the product associated with that identifier. Id. At the time that the
association is made between the unique identifier and the unique record,
additional information can be added to the record if available at the time of
manufacture. Id. ¶ 66. “Once a unique identifier has been generated and
associated with a unique product record, and any additional information has
been added to the unique product record, the unique product record is stored
in step 204.” Id. ¶ 68.
Figure 3, reproduced below, describes the process for scanning a
unique identification tag and providing information based on the scan. Id.
¶ 69.
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As shown in Figure 3, a scanning device is used to scan the identification tag
and obtain a unique identifier from that tag, in steps 301 and 302. Id. ¶¶ 69–
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70, 80. Additional context information, such as data about who is
performing the scan, where the scan is being performed, or the software
being used to perform the scan, is also gathered. Id. ¶¶ 70, 80. The
scanning device sends the information to the primary server in step 304. Id.
¶¶ 70, 81. The primary server uses the unique identifier to retrieve the
unique record from the database, which is used along with the context
information to generate a user interface, which is sent to the scanning
device, in steps 305–307. Id. ¶¶ 71–72, 82–83.
2. Claim 1
Petitioner contends that the method of claim 1 is anticipated by
Gentile. Pet. 35–58. Patent Owner presents arguments countering certain
aspects of these contentions. Prelim. Resp. 18–27.
a) Preamble and Steps (a) of Claim 1
Petitioner asserts that, to the extent the preamble is limiting, Gentile
discloses the hardware and software set forth in the preamble, and the object
database, in its system including a server and database. Pet. 35–37 (citing
Ex. 1004 ¶¶ 14, 60–61, 64, 78, Fig. 5; Ex. 1003 ¶¶ 196–200). Petitioner
argues that Gentile discloses object information applications for maintaining
and accessing information in the database and an API to these object
information applications in Gentile’s disclosure of applications that maintain
and access database records and interfaces to access those applications. Id.
at 37–41 (citing Ex. 1004 ¶¶ 13, 18–19, 62, 81, 77, 78, 97, Fig. 5; Ex. 1003
¶¶ 201–214). Petitioner also argues that Gentile’s object database
“maintains a persistent profile for each of a plurality of objects,” as recited
in the preamble, as the product information database in Gentile stores a
unique record associated with each product. Id. at 41–42 (citing Ex. 1004
¶ 78; Ex. 1003 ¶ 215).
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Claim 1 describes a method operable on an object information service,
reciting a step of “(a) obtaining, at a device, information about an object.”
Petitioner argues that this is disclosed in Gentile’s description of a user using
a scanning device, such as a device with a camera, to obtain information
about a product. Id. at 42 (citing Ex. 1004 ¶ 60; Ex. 1003 ¶¶ 217–218).
b) Steps (b) and (c) of Claim 1
The method of claim 1 additionally sets forth step (b), the step of
“determining an identifier for the object from the information obtained in
[step] (a) by” “providing at least some of said information to an
identification mechanism” and “obtaining an identifier for the object from an
identification mechanism.” Petitioner argues that this step is disclosed in
Gentile’s extraction of a QR code from a QR tag on the object, arguing that
in Gentile “the scanning device . . . extract[s] the unique identification
information . . . from the identification tag.” Id. at 42–44 (citing Ex. 1004
¶¶ 43, 60, 80; Ex. 1003 ¶¶ 219–226). Petitioner cites the QR code reader as
disclosing the “identification mechanism” of step (b), arguing that in Gentile
the QR code reader is provided image information (“at least some of said
information”) from, e.g., a camera, and decodes the product identifier. Id. at
42–43 (citing Ex. 1004 ¶¶ 60, 84; Ex. 1003 ¶¶ 221–223). Petitioner argues
that “obtaining an identifier for the object” is disclosed by Gentile’s QR
code reader obtaining the unique product identifier from the image. Id. at 44
(citing Ex. 1004 ¶¶ 71, 80, 81; Ex. 1003 ¶¶ 224).
Step (c) of claim 1 recites that the identifier is used to add the object
to the object information service. Petitioner argues that Gentile describes
this in the initial association of a unique identifier with a product. Pet. 45–
46 (citing Ex. 1004 ¶¶ 46, 65–67, Fig. 2; Ex. 1003 ¶¶ 227–231). Petitioner
quotes Gentile’s disclosure that “[a]t the time the association between the
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unique identifier and the unique record is made, additional information can
be added at step 203.” Id. at 45 (quoting Ex. 1004 ¶ 66). Petitioner
additionally cites Gentile’s disclosure that additional information added to
the unique record could come from the manufacturer or a user’s scanning
device. Id. (quoting Ex. 1004 ¶ 67). Petitioner quotes the disclosure that
“[a] scanning device or similar smart device could be used for data
collection and could also be used to add information such as GPS location or
photos to the unique record.” Id. (quoting Ex. 1004 ¶ 67). Petitioner
concludes “when the unique identifier and additional information (e.g.,
information from the scanning device) is sent to primary server 531 for
storage in database 561 as unique record 562, both the identifier and the API
are used to add the product to the database.”
Patent Owner argues that Gentile does not disclose using a scanned
identifier to add the object to the object information service. Prelim. Resp.
23–26. Instead, Patent Owner argues, Gentile teaches that a manufacturer
directly adds objects to its database, and that “[o]nce the association between
product 103 and unique identification tag 104 has been stored in the product
information database 108” then the scanning device can be used to retrieve
the record. Id. at 25–26. Patent Owner asserts “[t]here is no disclosure that
the adding of an object to the database is performed based on information
obtained from the device.” Id. at 26.
We agree with Patent Owner. As Petitioner argues, Gentile does
discuss the use of a scanner to add “additional information” to a unique
record for an object, however, Gentile does not disclose the use of a scanner
to read a unique identifier for an object during the creation of an association
between the unique identifier and an object as required by the claims. Id. at
23–26; see Ex. 1004 ¶¶ 59–61, 65–72. Gentile discloses that “[a]t the time
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of manufacturing, a unique identification tag 104 is created for product 103”
and “stored in product information database 108.” Ex. 1004 ¶¶ 59, 65.
Gentile also discloses that at the time the product record associated with the
identifier is stored, additional information can be added that could come
from a scanning device. Id. ¶¶ 66–67. However, this “additional
information” is disclosed as information in addition to the unique identifier.
Id. ¶ 67. It is only after the initial association has been created that a scanner
is disclosed in Gentile as being used to scan the unique identification tag on
a product. Id. ¶¶ 61, 69–70.
The claim requires that a scan be performed to determine an identifier
for an object, “and then” that the identifier is used to add the object to the
object information service, but this is not disclosed by Gentile’s process of
creating an association between a unique product identifier and a database
record (as disclosed in Figure 2 of Gentile and related disclosure) or by
Gentile’s process of scanning a unique product identifier to access an
already extant record (as disclosed in Figure 3 of Gentile and related
disclosure). Petitioner’s showing relies on elements from each of these two
separate processes, for example relying on Gentile’s disclosures of a device
scanning a QR code on an object to obtain the identifier (Pet. 42–44) for step
(b) and then on the disclosures relating to the initial association of the
identifier with a database record for step (c) (Pet. 45–47).
Gentile’s disclosures of scanning a QR code relied upon by Petitioner
for step (b) describe the use of the scanned code “to locate and read the
unique record . . . associated with the unique identifier found on [the] QR
Code” and do not address adding a new record or suggest any possibility that
the identifier might not yet be present in the database. Ex. 1004 ¶ 81.
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For these reasons, we determine that Petitioner has not sufficiently
shown how Gentile anticipates steps (b) and (c) of claim 1.
c) Conclusion – Claim 1
For the reasons above, therefore, we determine that Petitioner has not
shown a reasonable likelihood of prevailing in showing claim 1 anticipated
by Gentile.
3. Claims 2–11, 13–18 and 21–26
Petitioner’s arguments regarding the unpatentability of claims 2–11,
13–18 and 21–26 rely on the arguments made with respect to claim 1. Pet.
49–58. Therefore, for the same reasons, we determine that Petitioner has not
shown a reasonable likelihood of prevailing in showing claims 2–11, 13–18,
and 21–26 anticipated by Gentile.
E. Asserted Obviousness of Claims 1–11, 13–18, and 21–26
over Gentile and Massé
Petitioner’s arguments regarding the unpatentability of claims 1–11,
13–18, and 21–26 rely on the arguments made with respect to anticipation of
claim 1 by Gentile. Pet. 58–62. Therefore, for the same reasons, we
determine that Petitioner has not shown a reasonable likelihood of prevailing
in showing claims 1–11, 13–18, and 21–26 would have been obvious over
Gentile and Massé.
F. Asserted Obviousness of Claims 1–11, 13–18, and 20–26
over Gentile and Harris
Petitioner’s arguments regarding the unpatentability of claims 1–11,
13–18, and 20–26 rely on the arguments made with respect to anticipation of
claim 1 by Gentile. Pet. 62–74. Petitioner does describe Harris as teaching
a portion of step (c) of claim 1, however, Petitioner’s argument is that Harris
teaches providing “product updates” in order to “update” the records in the
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database. Pet. 68–70 (citing Ex. 1012 ¶¶ 112–113, Fig. 7B; Ex. 1003
¶¶ 343–345). Petitioner argues that a product ID is included in such updates,
and that therefore, “the product updates of Harris include ‘a unique
identifier’ and are provided to the ‘product identification database’” via an
API. Id. at 69–70. However, Petitioner does not provide any teaching that
addresses the deficiency noted in the ground with respect to anticipation
over Gentile – and there is no discussion of any teaching of Harris which,
alone or in combination with Gentile, would describe the required
determination of an identifier for an object that is unique within the
information service, which is obtained at a device and then used to add an
object to the object information service so as to be accessible using the
unique identifier.
For this reason, and for the reasons described with respect to the
anticipation of claim 1 by Gentile, we determine that Petitioner has not
shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18,
and 21–26 would have been obvious over Gentile and Harris.
G. Asserted Obviousness over Combinations including Boncyk
Relying on arguments regarding anticipation by Gentile and
obviousness over Gentile and Massé or Gentile and Harris, Petitioner argues
that certain claims are unpatentable over a combination of Gentile and
Boncyk (claims 1–11, 13–18, and 21–26), Gentile, Massé, and Boncyk
(claims 1–11, 13–18, and 20–26), and Gentile, Harris, and Boncyk. Pet. 74–
80. These arguments incorporate by reference the prior arguments,
describing a different location for the identification mechanism of step (b) of
claim 1. Id. Again, no teaching is identified that addresses the deficiency
noted in the grounds upon which these arguments rely.
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Patent 9,582,595 B2
22
Therefore, for the reasons described with respect to the showings of
anticipation by Gentile and obviousness over Gentile and Massé or Gentile
and Harris, we determine that Petitioner has not shown a reasonable
likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would
have been obvious over Gentile and Boncyk, or that claims 1–11, 13–18, and
20–26) would have been obvious over Gentile, Massé, and Boncyk or over
Gentile, Harris, and Boncyk.
H. Asserted Obviousness over Combinations including Davis
Relying on arguments regarding anticipation by Gentile and
obviousness over Gentile and Massé or Gentile and Harris, Petitioner argues
that claims 1–26 are unpatentable over a combination of Gentile and
Boncyk, Gentile, Massé, and Boncyk, and Gentile, Harris, and Boncyk. Pet.
80–85. These arguments incorporate by reference the prior arguments,
substituting an online identification mechanism and the generation of new
identifiers for objects “on the fly” when identifying an object. Pet. 80–83.
No teaching is identified that addresses the deficiency noted in the grounds
upon which these arguments rely.
Therefore, for the reasons described with respect to the showings of
anticipation by Gentile and obviousness over Gentile and Massé or Gentile
and Harris, we determine that Petitioner has not shown a reasonable
likelihood of prevailing in showing claims 1–26 would have been obvious
over Gentile and Davis, over Gentile, Massé, and Davis, or over Gentile,
Harris, and Davis.
IV. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)
Patent Owner argues that we should exercise discretion under
35 U.S.C. § 314(a) and deny institution. See Prelim. Resp. 1, 37–44. As we
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Patent 9,582,595 B2
23
have found that the Petitioner has not shown a reasonable likelihood that it
would prevail on the merits, we do not address this argument.
V. CONCLUSION
After considering the evidence and arguments presented in the
Petition and the Preliminary Response, we determine that Petitioner has not
demonstrated a reasonable likelihood that it would prevail with respect to at
least 1 of the claims challenged in the petition. Accordingly, we do not
institute an inter partes review.
VI. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims of
the ’595 patent; and
FURTHER ORDERED that no inter partes review is instituted.

IPR2021-00865
Patent 9,582,595 B2
24
PETITIONER:

Joseph R. Klinicki
Michael J. Bonella
Ryan Peddle
Michael F. Piscitelli
FLASTER GREENBERG P.C.
joseph.klinicki@flastergreenberg.com
michael.bonella@flastergreenberg.com
ryan.peddle@flastergreenberg.com
michael.piscitelli@flastergreenberg.com

PATENT OWNER:

Richard F. Martinelli
Weimin Ning
ORRICK, HERRINGTON & SUTCLIFFE LLP
rfmptabdocket@orrick.com
ptabdocketw1n6@orrick.com

Naveen Modi
Daniel Zeilberger
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
danielzeilberger@paulhastings.com