HTC Corporationv.NFC Technology, LLC

Patent Trial and Appeal Board

Feb 3, 2016

11302291 (P.T.A.B. Feb. 3, 2016)

Trials@uspto.gov Paper 32
Tel: 571-272-7822 Entered: February 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

HTC CORPORATION and HTC AMERICA, INC.,
Petitioner,

v.

NFC TECHNOLOGY, LLC,
Patent Owner.
_______________

Case IPR2014-01199
Patent 7,665,664 B2
_______________

Before JAMES B. ARPIN, NEIL T. POWELL, and
BART A. GERSTENBLITH, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
HTC Corporation and HTC America, Inc. (collectively, “Petitioner”)
filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of
claims 13 and 29 of Patent No. US 7,665,664 B2 (Ex. 1001; “the
’664 patent”) pursuant to 35 U.S.C. §§ 311–319. Pet. 1. NFC Technology,
LLC (“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim.
Resp.”). On February 4, 2015, we issued a Decision on Institution
(Paper 10, “Dec. on Inst.”), instituting inter partes review of claims 13 and
29 of the ’664 patent. Dec. on Inst. 3. Subsequent to institution, Patent
Owner filed a Patent Owner Response (Paper 18, “PO Resp.”), and
Petitioner filed a Reply (Paper 23, “Pet. Reply”) thereto.
The parties requested an oral hearing (Paper 27; Paper 28) and
appeared before us on November 2, 2015. The record includes a transcript
of the oral hearing. Paper 31 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
addresses issues and evidence raised during the inter partes review. For the
reasons that follow, Petitioner demonstrates by a preponderance of the
evidence that claims 13 and 29 of the ’664 patent are unpatentable.
B. Related Proceedings
Petitioner indicates that the ’664 patent is the subject of the following
co-pending U.S. district court case: NFC Tech., LLC v. HTC Corp.,
No. 2:13-cv-1058 (E.D. Tex.), filed December 5, 2013. Pet. 1. In addition,
at the request of Petitioner, we instituted an inter partes review, IPR2014-
01198, with respect to a related patent, Patent No. US 6,700,551 B2, against
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Patent Owner. HTC Corp. v. NFC Tech., LLC, Case IPR2014-01198, slip
op. at 3, 17–18 (PTAB Feb. 4, 2015) (Paper 10).
C. The ’664 Patent
The ’664 patent is directed to apparatus for supplying a power supply
voltage to a contactless integrated circuit reader when the reader is in a
passive operating mode. Ex. 1001, Abstract. The claimed invention
allegedly rests on two related insights. See Prelim. Resp. 4. First, electrical
energy could be efficiently extracted “directly from the antenna circuit of the
reader, without using a dedicated antenna coil” for that purpose. Ex. 1001,
col. 3, ll. 58–60. For example, claim 13 recites an antenna circuit having an
antenna coil that may be used in an active operating mode, in a passive
operating mode, or by using an auxiliary supply circuit. See Ex. 1001,
col. 16, ll. 40–59. Second, an auxiliary supply circuit may be coupled to the
antenna other than at the input terminals of the antenna circuit. See
Ex. 1001, col. 5, ll. 10–19; cf. id. at Figs. 1B, 6.
Figure 1A of the ’664 patent is reproduced below:

Figure 1A depicts a “classical” induction coupling reader. Ex. 1001, col. 6,
ll. 24–25. The Specification of the ’664 patent refers to two “readers”—
RDPA1 and RDPA2, depicted in Figure 1A. RDPA1 is an inductive
coupling reader capable of operating in passive and active modes. Id. at col.
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1, ll. 13–15; col. 3, ll. 33–36; Ex. 1003 ¶ 14. In the active operating mode,
antenna coil L1 of antenna circuit ACT of reader RDPA1 emits magnetic
field FLD1. Ex. 1001, col. 2, ll. 29–37. For example, claim 13 recites:
“when the reader is in the active operating mode, an excitation signal
oscillating at the working frequency [is applied to the input terminal of the
antenna circuit], so that the antenna coil emits a magnetic field.” Id. at col.
16, ll. 51–54. In the passive operating mode, antenna coil L1 of antenna
circuit ACT of reader RDPA1 does not emit a magnetic field. Id. at col. 3,
ll. 34–37. Nevertheless, even in the passive operating mode, RPDA1 uses
energy. See id. at col. 3, ll. 47–49.
Figure 1B of the ’664 patent, including our annotations, is reproduced
below:

Referring to Figure 1B, in the passive operating mode, circuit CCT
deactivates circuit EMCT and oscillator CGEN, opens switches SW1a and
SW1b, and closes switches SW2a and SW2b. Id. at col. 7, ll. 24–26. Thus,
rectifier Pd is connected to terminals A, B of antenna circuit ACT. Id. at
col. 7, ll. 27–28; see PO Resp. 7. In the presence of magnetic field FLD2
(“Inducing Field”) emitted by reader RDPA2, rectifier Pd receives
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alternating voltage Vab that varies (1) according to the voltage Vcd of
antenna signal SA induced in coil L1, i.e., the voltage appearing between
terminal C of coil L1 and midpoint MP (id. at col. 7, ll. 28–33) and
(2) according to the impedance of antenna circuit ACT, seen from terminals
A and/or B (id. at col. 7, ll. 35–36). Voltage Vcd also appears between
terminal D of the coil and midpoint MP. Id. at col. 7, ll. 33–34. Rectifier Pd
then supplies an auxiliary supply voltage Vccr by rectifying the voltage Vab.
Id. at col. 7, ll. 36–38.
Figure 6 of the ’664 patent, including our annotations, is reproduced
below:

As depicted in annotated Figure 6, reader RD1 is provided with auxiliary
supply voltage Vccr that is produced
using an alternating voltage taken off at a higher impedance
point of the antenna circuit, preferably using the voltage Vcd
taken off on the terminals C and/or D of the antenna coil L1,
instead of producing the voltage Vccr using the voltage Vab
present on the [input] terminals A, B of the antenna circuit.
Id. at col. 8, ll. 27–32; see PO Resp. 5, 8. Thus, the auxiliary supply circuit
is configured to supply the auxiliary supply voltage, e.g., Vccr, using an
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alternating supply voltage induced in the antenna circuit, e.g., at terminal C
and/or D, as recited in claims 13 and 29.
D. Challenged Claims
Petitioner challenges independent, apparatus claims 13 and 29 of the
’664 patent. Pet. 3. Claims 13 and 29 of the ’664 patent are reproduced
below with disputed limitations emphasized:
13. An inductive coupling reader having an active operating
mode and a passive operating mode, the inductive coupling
reader comprising:
an antenna circuit substantially tuned to a working
frequency, the antenna circuit having at least one input
terminal, at least one capacitor, and an antenna coil having two
end terminals, the capacitor and the coil being chosen so that
the antenna circuit is substantially tuned to the working
frequency and has, at the working frequency and as measured
with respect to the at least one input terminal, a first
impedance;
an emitter circuit that applies to the input terminal of the
antenna circuit, when the reader is in the active operating mode,
an excitation signal oscillating at the working frequency, so that
the antenna coil emits a magnetic field, and that modulates the
excitation signal to send data; and
an auxiliary supply circuit coupled to the antenna circuit and
configured to supply an auxiliary supply voltage of the reader
using an alternating voltage induced in the antenna circuit by an
external magnetic field.
Ex. 1001, col. 16, ll. 40–59 (emphases added).
29. A portable electronic device comprising:
a processor;
a rechargeable battery coupled to the processor; and
an inductive coupling reader having an active operating
mode and a passive operating mode, the inductive coupling
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reader being coupled to the processor, the inductive coupling
reader including:
an antenna circuit substantially tuned to a working
frequency, the antenna circuit having at least one input
terminal, at least one capacitor, and an antenna coil having two
end terminals, the capacitor and the coil being chosen so that
the antenna circuit is substantially tuned to the working
frequency and has, at the working frequency and as measured
with respect to the at least one input terminal, a first
impedance;
an emitter circuit that applies to the input terminal of the
antenna circuit, when the reader is in the active operating mode,
an excitation signal oscillating at the working frequency, so that
the antenna coil emits a magnetic field, and that modulates the
excitation signal to send data; and
an auxiliary supply circuit coupled to the antenna circuit and
configured to supply an auxiliary supply voltage of the reader
using an alternating voltage induced in the antenna circuit by an
external magnetic field.
Id. at col. 18, ll. 17–41 (emphases added).
E. Relied Upon References, Document, and Declarations
Petitioner relies upon the following references, document, and
declarations in support of its grounds for challenging the identified claims of
the ’664 patent:
Exhibit Nos. References, Document, and Declarations
1002 Excerpts from Prosecution File History for the ’664 patent
(U.S. Patent Application No. 11/302,291)
1003 Declaration of Dr. Emmanouil Tentzeris
1005 Patent No. US 7,603,090 B2 to Amtmann et al.
(“Amtmann”)
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1006 ECMA International, Near Field Communication Interface
and Protocol (NFCIP-l) (Dec. 2002) (“ECMA-340”)
1007 Patent Application Publication No. US 2003/0169152 A1 to
Charrat et al. (“Charrat”)
1008 Patent No. US 8,384,519 B2 to Kuhl et al. (“Kuhl”)
1011 Rebuttal Declaration of Dr. Emmanouil Tentzeris
F. Grounds Under Review
We instituted inter partes review on the following grounds of
unpatentability (Dec. on Inst. 17):
Ground References Challenged Claims
35 U.S.C. § 103(a) Amtmann and ECMA-340 13 and 29
35 U.S.C. § 103(a) Charrat and Kuhl 13 and 29
II. ANALYSIS
A. Claim Construction
Consistent with the statute and the legislative history of the America
Invents Act (“AIA”), we interpret claims of an unexpired patent using the
broadest reasonable interpretation in light of the specification of the
patent. Pet. 8; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012) (Claim Construction); 37 C.F.R. § 42.100(b).1
Under the broadest reasonable interpretation standard, a claim term is

1 In re Cuozzo Speed Techs. LLC, 793 F.3d 1268, 1278 (“Congress
implicitly approved the broadest reasonable interpretation standard in
enacting the AIA”), 1279 (“the standard was properly adopted by PTO
regulation”) (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs.
LLC v. Lee, 84 U.S.L.W. 3218 (Jan. 15, 2016) (No. 15-446).
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presumed to have an ordinary and customary meaning as would have been
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). A patentee may act as his or her own lexicographer by providing a
special definition for a claim term in the specification with “reasonable
clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). Generally, in the absence of such a special definition or
other considerations, “limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
1. Confirmation of Previous Constructions
In its Petition, Petitioner proposed constructions for the following
claim terms: (1) active operating mode and (2) passive operating mode.
Pet. 7–8. We construed each of these terms for purposes of our Decision on
Institution. Dec. on Inst. 8–10. Patent Owner does not contest these
constructions in its Patent Owner Response. PO Resp. 2–10; see Paper 11,
2–3 (“The patent owner is cautioned that any arguments for patentability not
raised in the response will be deemed waived.”). Consequently, we now
confirm our constructions of the claim terms: (1) active operating mode and
(2) passive operating mode, as follows:
a. “active operating mode” (Claims 13 and 29)
“active operating mode” means “an operating mode where the antenna
coil of the antenna circuit emits a magnetic field” (Dec. on Inst. 9); and
b. “passive operating mode” (Claims 13 and 29)
“passive operating mode” means “an operating mode where the
antenna coil of the antenna circuit does not emit a magnetic field” (id. at 10).
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2. Additional Constructions Proposed in Patent Owner
Response
Although neither party contests our previous claim term constructions,
in the Patent Owner Response, Patent Owner proposes constructions for
additional terms: (1) “at least one input terminal” and (2) “two end
terminals.” PO Resp. 6–10. In particular, these terms are recited in each of
the challenged claims, and Patent Owner contends that “[i]t is an essential
element of the invention of claims 13 and 29 that the antenna circuit’s input
terminal is an electrically distinct point from the end terminals of its antenna
coil.” Id. at 1 (emphasis added). Further, Patent Owner contends that “[t]he
input terminal is an electrically distinct point that has a claimed ‘first
impedance’ that is ‘measured with respect to the at least one input
terminal.’” Id. at 4 (emphasis omitted). Thus, Patent Owner contends that
the claim terms require “an antenna circuit that has at least one input
terminal that is separate and different from the end terminals of the antenna
coil.” Id. at 10–11; see also id. at 13 (“Independent claim 13 unambiguously
requires that the antenna circuit’s input terminal is separate and different
from the end terminals of the antenna coil.”). Petitioner disagrees. Pet. 5–
10.
As an initial matter, neither party proposes a construction for the term
“terminal” in its submitted papers. At the oral hearing, we asked each party
whether it was necessary for us to construe the term “terminal” and, if so,
what construction would they propose. Tr. 9:2–20, 19:22–20:15. Petitioner
acknowledged that it had not proposed a construction for “terminal,” but
indicated that we should construe the term according to its ordinary
meaning. Id. at 9:6–8. Petitioner argues that the ordinary meaning of
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“terminal” is “an end of a particular element.” Id. at 9:20; see Ex. 2003,
44:12–13 (With respect to Figure 6 of the ’664 patent, Petitioner’s declarant,
Dr. Tentzeris, testified that “input terminal could be any node or any point.”
(emphasis added)). Patent Owner contends that “terminal” should be
construed as “a point of entry or exit into a particular circuit element, like a
battery’s end terminals.” Id. at 20:3–6. A relevant definition of a “terminal”
is “[a] screw, soldering lug, or other point to which electrical connections
can be made. Also known as electric terminal. . . . One of the electric input
or output points of a circuit or component.” MCGRAW-HILL DICTIONARY OF
SCIENTIFIC AND TECHNICAL TERMS 1904 (4th ed. 1989) (emphases added)
(Ex. 3001).
Because of its breadth, Petitioner’s proposed construction of this term
would render the modifier “end,” in the term “end terminal,” essentially
meaningless. “A claim construction that gives meaning to all the terms of
the claim is preferred over one that does not do so.” Merck & Co., Inc. v.
Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005); see
Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330–31 (Fed. Cir. 2008)
(rejecting claim construction that “ascribes no meaning to the term . . . not
already implicit in the rest of the claim”). Thus, Patent Owner’s
construction of “terminal” is more consistent with the language of the
challenged claims and the context, in which the term appears in the
Specification (see, e.g., Ex. 1001, col. 2, ll. 8–21), and the ordinary meaning
of the term as exemplified by the quoted dictionary definition. Therefore,
Patent Owner’s construction is the broadest reasonable interpretation of
“terminal.”
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Patent Owner’s construction of the additional terms is grounded in
three bases.2 First, the plain language of claims 13 and 29 recites “input
terminal” and “end terminals.” It is axiomatic in claim construction that
different claim terms recite different claim limitations. PO Resp. 5–6 (citing
CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308,
1317 (Fed. Cir. 2000)). Nevertheless, the challenged claims do not recite
expressly a structural relationship between the “input terminal” and the “two
end terminals.” In particular, as Petitioner notes, claims 13 and 29 merely
recite “the antenna circuit having at least one input terminal, at least one
capacitor, and an antenna coil having two end terminals.” Ex.1001, col. 16,
ll. 44–46, col. 18, ll. 25–27 (emphases added). Specifically, Petitioner
argues that the challenged claims broadly recite the three components of the
antenna circuit: (1) “at least one input terminal,” (2) “at least one capacitor,”
and (3) “an antenna coil having two end terminals”; but the language of
these claims does not specify structural connections or relationships with
respect to each component or other components recited in the challenged
claims. Pet. Reply 7; Tr. 8:6–12, 10:1–24. We agree with Petitioner that the
challenged claims do not specify a structural relationship between the recited
components, and none is presumed based on this claim language. See
Tr. 19:14–17. Thus, according to the plain language of claims 13 and 29,
the “at least one capacitor” and the “input terminal” may be separate from or
connected to either or neither of the “two end terminals.”

2 Patent Owner does not base its constructions in the prosecution history of
the ’664 patent (see Ex. 1002) or, as noted below, in a declarant’s testimony.
On this record, the construction of these terms would not differ under the
Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
(en banc).
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Second, Patent Owner contends that because the challenged claims
recite that “the capacitor and the coil [are] chosen so that the antenna circuit
is substantially tuned to the working frequency and has, at the working
frequency and as measured with respect to the at least one input terminal, a
first impedance.” Ex. 1001, claim 16, ll. 46–50, col. 18, ll. 27–31 (emphasis
added). In the context of the challenged claims, Patent Owner contends that
the two end terminals of the coil and the input terminal must have different
impedances, that is, they must be “electrically distinct.” PO Resp. 2–3; see
Tr. 23:9–24:18. Although each of claims 13 and 29 recites a “first
impedance” “measured with respect to the at least one input terminal,”
neither recites another “impedance.” Instead, claim 14 depends directly
from independent claim 13 and recites that the antenna circuit has “a higher
impedance point,” having an impedance higher than the first impedance; and
“the auxiliary supply circuit is coupled to the higher impedance point
without going through the input terminal of the antenna circuit.” Ex. 1001,
col. 16, ll. 60–67 (emphasis added). Thus, Petitioner argues that
claim 14 in its express language clarifies two things: Number
one, the input terminal is distinctive from the end terminals of
the claim -- of the claimed antenna coil, using the antenna
circuit; number two -- actually three things. Number two is that
that first impedance is different from another higher impedance
point. And number three, the auxiliary supply circuit is coupled
in a very specific manner, that is at the higher impedance point.
Tr. 16:18–25. The recitation of claim 14, however, does not mean that
claim 13 must be construed to require that the “input terminal” and “two end
terminals” have different impedances. Pet. Reply 12–13. While
independent claim 13 encompasses the limitations of its dependent claim 14,
claim 13 is not limited to those encompassed limitations. Tr. 17:1–24; cf.
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Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291–92 (Fed. Cir. 2006)
(holding a dependent claim in a patent invalid under 35 U.S.C. § 112, ¶ 4,
for failure to “‘specify a further limitation of the subject matter’ of the
[independent] claim to which [the dependent claim] refers”). Therefore, we
are not persuaded that, in view of the recitation of a “first impedance” in
claims 13 and 29 and a “higher impedance” in claim 14, we should construe
the “input terminal” and “two end terminals” as necessarily separate and
“electrically distinct.”
Patent Owner contends that “there is nothing in the challenged claims
themselves to suggest that the antenna circuit’s input terminal can be the
same electrical point as the separately listed antenna coil’s two end
terminals.” PO Resp. 6. For the reasons set forth above, however, there also
is nothing in the challenged claims to suggest that the antenna circuit’s input
terminal cannot be the same electrical point as the separately listed antenna
coil’s two end terminals. We conclude that, consistent with our
Rule 42.100(b), the language of the claims favors the broader construction
that the antenna circuit’s “input terminal” may or may not be the same
electrical point as one of the antenna coil’s “two end terminals.” See
Tr. 36:23–37:10.
Third, Patent Owner contends that, in the context of the Specification
of the ’664 patent, the “input terminal” and “two end terminals” are separate
and “electrically distinct.” PO Resp. 6–10. In particular, Patent Owner
contends that each of the embodiments disclosed in the Specification
describes the “input terminal” and “two end terminals” as separate and
“electrically distinct.” Id. at 9–10. Petitioner disagrees. Pet. Reply 10–12.
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Patent Owner contends that, in each of the embodiments depicted in
Figures 1B, 2A, 3A, 4, and 6 of the ’664 patent, filters and capacitors are
disposed between the “input terminal” and the “two end terminals” of the
antenna coils. PO Resp. 9 (“[I]n every instance, points A and B[, i.e., the
input terminal,] are electrically distinct points from point C and D[, i.e., two
end terminals], having, for instance, a capacitor or a filter between A(B) and
C(D).”); see id. at 7–8 (reproducing annotated versions of Figs. 1B, 2A, 3A,
4, and 6 of the ’664 patent). Nevertheless, the disclosure of the
Specification is not limited to the disclosed embodiments. See Ex. 1001,
col. 4, l. 60–col. 5, l. 9. Petitioner argues that Patent Owner improperly
seeks to incorporate limitations from the Specification into claims 13 and 29.
Pet. Reply 9–10; see Ex. 1011 ¶¶ 26–27. As Dr. Tentzeris testifies,
There is no reference of a filter in the claim. So the
presence of this filter could or could not exist in an antenna
circuit. The way that the antenna circuit is defined in claims 13
and then the way it’s defined in claims 29, does not include the
filter.

Ex. 2003, 46:13–17. Absent a specific reason, limitations from the
Specification should not be read into the claims. Pet. Reply 8; see Van
Geuns, 988 F.2d at 1184.
In addition, Petitioner argues that Figure 6 of the Specification
illustrates a capacitor and a coil where “point G is situated between the filter
FLTa and the capacitor C1a and would correspond to an input terminal of
the antenna circuit if the latter did not have the filter FLTa.” Pet. Reply 3
(citing Ex. 1001, col. 15, ll. 3–9). A portion of Figure 6 of the ’664 patent,
including Petitioner’s annotations, is reproduced below.
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Pet. Reply 4 (reproducing an annotated portion of Fig. 6); see Ex. 1001,
col. 5, ll. 24–25 (“According to one embodiment, the auxiliary supply circuit
is connected to one of the end terminals of the coil.”). As indicated by the
annotated portion of Figure 6, Petitioner argues that point G may be the
“input terminal” of the antenna circuit and that point G is not electrically
distinct from point C, one of the “two end terminals” of coil L1. Thus,
Petitioner argues that, contrary to Patent Owner’s contention, all
embodiments of the antenna circuit disclosed in the Specification of the
’664 patent do not teach that the “input terminal” and the “two end
terminals” are separate and “electrically distinct.” Tr. 12:17–13:5.
In response to Petitioner’s arguments, Patent Owner contended, for
the first time during the oral hearing, that there is an error in the text of the
Specification of the ’664 patent and that Figure 6 may not be interpreted in
the manner that Petitioner argues. Tr. 20:21–22:2. Initially, we note that
Patent Owner may not present new arguments or evidence for the first time
at the oral hearing. See id. at 34:23–35:5. As we state in our Office Patent
Trial Practice Guide,
[a] party may rely upon evidence that has been previously
submitted in the proceeding and may only present arguments
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relied upon in the papers previously submitted. No new
evidence or arguments may be presented at the oral argument.
77 Fed. Reg. at 48,768 (emphasis added). Thus, Patent Owner’s contention
during the oral hearing that there is an error in Figure 6 is entirely improper.
Upon considering Figure 6 and the corresponding portions of the
Specification text, however, we recognize that there appears to be an
inconsistency between the drawing and the corresponding text of the
’664 patent (Ex. 1001, col. 15, ll. 1–15). Specifically, the Specification text
states that “point G is situated between the filter FLTa and the capacitor
C1a” although Figure 6 depicts both the filter FLTa and the capacitor C1a as
situated between point A and point G. At the oral hearing, Patent Owner
contended that point G was drawn improperly (see Tr. 22:14–25), but it is
unclear whether any error lies in the labeling of Figure 6 or in the
description in the corresponding portions of the Specification text, or both.3
For example, if point G is situated properly in Figure 6, the textual error may
lie in the reference to capacitor C1a, instead of capacitor C2b. Further, even
if it had been properly presented,4 Patent Owner’s modification to Figure 6
would require not only the relocation of point G, but the relocation of the

3 We note that, regarding the relative positions of points A, C, and G,
Figure 6 of the ’664 patent appears to be identical to Figure 6 of the French
parent application. See Ex. 1002, 109. Thus, any error appears to have been
present as of the priority date of the ’664 patent and uncorrected since then.
See Prelim. Resp. 8.
4 During the oral hearing, Patent Owner acknowledged that it had not filed a
Certificate of Correction specifically identifying whether the supposed error
was in Figure 6 or the text of the Specification and proposing a specific
correction. Tr. 22:3–10. Moreover, a request for a Certificate of Correction
relating to a patent involved in a trial before the Board must comply with 37
C.F.R. § 42.20. 37 C.F.R. § 1.323.
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“classical demodulation circuit DEMCT” (see Ex. 1001, col. 12, ll. 1–4)
coupled to point G and extending from the antenna circuit. Finally, each of
Figures 1A and 1B of the ’664 patent depicts the “classical demodulation
circuit DEMCT” attached to substantially the same point in the depicted
reader as that depicted in Figure 6. Id. at Figs. 1A, 1B; see supra
Section I.C. (reproducing Figures 1A, 1B, and 6). Figure 6 of the
’664 patent labels that attachment point “G”; Figures 1A and 1B of the
’664 patent depict the point, but do not label it. None of Figures 1A, 1B,
2A, 3A, 4, and 6 of the ’664 patent depicts a point between filter FLTa and
capacitor C1a, as proposed by Patent Owner. Therefore, we are not
persuaded that the modification proposed by Patent Owner is the proper
correction for the inconsistency in the Specification, including Figure 6, of
the ’664 patent.5
The parties cite no precedent mandating a preference for the text over
the figures of the Specification when construing the claim terms, and, on this
record, we find no reason here to prefer one over the other. See Tr. 22:3–
23:3, 36:23–37:10. As it is, the noted inconsistency bears on the weight
given the presented evidence regarding the context of the Specification to
the disputed construction of the terms “input terminal” and “two end
terminals.” Consequently, for the reasons set forth above, the embodiments
disclosed in the Specification, considered together, do not persuade us to

5 Patent Owner does not address other potential inconsistencies in the figures
of the ’664 patent that may bear on the construction of the term “input
terminal” and has not explained or proposed corrections for those
inconsistencies. See Tr. 30:3–33:6; see also Ex. 1001, Fig. 1B (depicting
input terminal A disposed outside the antenna circuit ACT), Fig. 2A
(depicting line “A”).
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construe the challenged claims to require that the “input terminal” and the
“two end terminals” are separate and “electrically distinct.”
“In claim construction, [the Federal Circuit] gives primacy to the
language of the claims, followed by the specification. Additionally, the
prosecution history, while not literally within the patent document, serves as
intrinsic evidence for purposes of claim construction. This remains true in
construing patent claims before the PTO.” Tempo Lighting, Inc. v. Tivoli
LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (citing In re Morris, 127 F.3d
1048, 1056 (Fed. Cir. 1997)). Although we are persuaded that the additional
claim terms may be properly construed based on the intrinsic evidence of
record, we note that Petitioner’s declarant, Dr. Tentzeris, testifies that a
person of ordinary skill in the art would have understood the claims
[to] state a shopping list of well-known and conventional
electronic parts to create an antenna circuit in a text-book style
configuration that a [person of ordinary skill in the art], or an
Electrical Engineering student for that matter, could easily
assemble by visiting an electronics store. A [person of ordinary
skill in the art] could create the claimed antenna circuit by
purchasing and assembling “at least one capacitor, and an
antenna coil having two end terminals.” Naturally, any antenna
circuit would require “at least one input terminal” to receive or
send signals.
Ex. 1011 ¶ 24; see id. ¶¶ 22–32, 63 (challenging Patent Owner’s proposed
constructions of these additional terms). Dr. Tentzeris testifies that any
terminal of Figure 6, including terminals G and H could be input terminals
consistent with the language of claims 13 and 29. See Ex. 2003, 43:6–48:12.
Patent Owner provides no testimonial evidence challenging Dr. Tentzeris’s
testimony.
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After consideration of the parties’ arguments and evidence, we
determine that the broadest reasonable interpretation of an “input terminal”
is “a point of entry into the antenna circuit” and of the “two end terminals” is
“a point of entry into and a point of exit from opposite ends of the antenna
coil.” The “input terminal” and at least one of the “two end terminals” may
be, but are not required to be, separate and “electrically distinct.” Further,
because the plain language of the challenged claims does not recite an
express structural relationship between these limitations or functional
relationships that impose structural relationships, we determine that, under
the broadest reasonable interpretation of these terms, they describe any
structural relationship within an antenna circuit, including, but not limited to,
a structural relationship in which the “input terminal” and at least one of the
“two end terminals” are not separate or electrically distinct.
3. Other Claim Terms
Neither party offers constructions of other terms in the challenged
claims. See Pet. 7–8; PO Resp. 2–10. Only terms which are in controversy
in this proceeding need to be construed, and then only to the extent
necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Therefore, no other claim terms
require express construction.
III. ANALYSIS
A. Overview
Petitioner argues that claims 13 and 29 of the ’664 patent are rendered
obvious over Amtmann and ECMA-340 and Charrat and Kuhl. Pet. 3. A
patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are “such that the
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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 skill in the art; and (4) objective evidence of nonobviousness,
i.e., secondary considerations.6 Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966). On this record, Petitioner demonstrates by a preponderance of
the evidence that claims 13 and 29 are rendered obvious over Amtmann and
ECMA-340 and over Charrat and Kuhl.
1. Person of Ordinary Skill in the Art
Petitioner’s declarant, Dr. Tentzeris, defines a person of ordinary skill
in the art as “a person with at least a master’s degree in electrical
engineering (or a substantively equivalent degree), in addition to two years
of experience with systems that use short-range wireless communication,
such as radio frequency identification (RFID) or Near Field Communication
(NFC) systems.” Ex. 1003 ¶ 12; see also Pet. 7 (adopting this definition).
Based on Exhibit 1003 (Attachment A), Dr. Tentzeris meets or exceeds these
requirements for qualification as a person of ordinary skill in the art. Patent
Owner does not propose an alternative definition or challenge Petitioner’s
declarant’s definition. See supra Section II.A.2. Moreover, as noted above,
Patent Owner does not challenge Dr. Tentzeris’s credentials. Id. Therefore,

6 Patent Owner does not contend in the Patent Owner Response that
secondary considerations are present that would render the challenged
claims patentable over the applied references. See Paper 11, 2–3.
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to the extent necessary, we adopt Petitioner’s Dr. Tentzeris’s definition of a
person of ordinary skill in the art.
2. Obviousness over Amtmann and ECMA-340
Petitioner contends that Amtmann discloses all of the limitations of
challenged claims 13 and 29 of the ’664 patent. Pet. 28–42. In particular,
with regard to claim 13, Petitioner argues that Amtmann discloses “an input
terminal,” an “an antenna coil having two end terminals,” and a “first
impedance.” See Pet. Reply 14 (citing Ex. 1011 ¶ 38). For example,
Amtmann discloses that the “antenna configuration (7) includes a
transmission coil (5) connected in parallel to a capacitor (6) to form an
oscillating circuit.” Pet. 32 (citing Ex. 1005, col. 5, ll. 29–40; Ex. 1003
¶ 62); see Pet. Reply 14 (citing Ex. 1011 ¶¶ 38–39). The “[a]ntenna
configuration (7) includes two input terminals (3) and (4) . . . [and a]
[t]ransmission coil (5) [that] has two winding ends.” Pet. 32 (citing
Ex. 1005 col. 5, ll. 11–28, 29–35; Ex. 1003 ¶¶ 63–65); see Pet. Reply 14
(citing Ex. 1011 ¶¶ 38–39). Petitioner further argues that Amtmann
discloses the remaining limitations of challenged claims 13 and 29. Pet. 33–
38; see id. at 38–42 (reciting disclosure of Amtmann corresponding to the
limitations of claim 29).
Nevertheless, each of the challenged claims recites that
the antenna circuit is substantially tuned to the working
frequency and has, at the working frequency . . . , a first
impedance [and that] an emitter circuit that applies to the input
terminal of the antenna circuit, when the reader is in the active
operating mode, an excitation signal oscillating at the working
frequency.
Ex. 1001, col. 16, ll. 47–53 (Claim 13), col. 18, ll. 28–35 (Claim 29). With
respect to these limitations Petitioner argues that
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[b]ecause the Amtmann antenna circuit controls a
communication operation according to the NFC ECMA-340
standard, the Amtmann antenna circuit is tuned to a working
frequency that is defined by the NFC ECMA-340 standard and
needed for communications that comply with the NFC ECMA-
340 standard. Ex. 1003, ¶ 65. Thus, capacitor (5) and coil (6)
are chosen so that antenna configuration (7) is substantially
tuned to the working frequency, e.g. a frequency in the NFC
ECMA-340 standard. Ex. 1003, ¶ 65.
Pet. 33; see Ex. 1005, col. 1, ll. 31–35; Pet. Reply 14. Further, Petitioner
argues that “[a]s measured with respect to input terminals (3) and (4), the
parallel combination of coil (5) and capacitor (6) has an impedance . . . .”
Pet. 34 (citing Ex. 1003 ¶ 67); see Ex. 1011 ¶¶ 38–39.
Although the ’664 patent does not discuss the NFC ECMA-340
standard, Petitioner contends that
[a person of ordinary skill in the art] would have understood
that coil (5) and capacitor (6) of Amtmann’s oscillating circuit
are chosen so that Amtmann’s oscillating circuit operates at a
working frequency. In addition, it would have been obvious to
a [person of ordinary skill in the art], in referring to the ECMA-
340 document, which describes the ECMA-340 NFC standard
used in Amtmann, that Amtmann’s “working frequency” is the
communication carrier frequency specified by the ECMA-340
NFC standard.
Pet. 43 (citing Ex. 1003 ¶ 84; Ex. 1005, col. 1, ll. 16–18).
Further, Petitioner explains that
[b]ecause ECMA-340 describes the particular NFC
standard that is referenced in Amtmann as the standard used by
Amtmann’s devices to perform contactless communication, a
[person of ordinary skill in the art] would have naturally
turned to the teachings in ECMA-340 to provide details of how
to implement the NFC ECMA-340 standard that is specified in
Amtmann. Ex. 1003, ¶ 86. In doing so, a [person of ordinary
skill in the art] would have recognized that the “oscillating
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circuit” in Amtmann should operate at a particular center
frequency of 13.56 MHz, as specified in ECMA-340, in order
to be compatible with other devices using the same NFC
ECMA-340 protocol. Id. Therefore, the combination of
Amtmann and ECMA-340 discloses “an antenna circuit
substantially tuned to a working frequency” and “an emitter
circuit that applies to the input terminal of the antenna circuit,
when the reader is in the active operating mode, an excitation
signal oscillating at the working frequency, so that the antenna
coil emits a magnetic field, and that modulates the excitation
signal to send data,” as well as all other features of Claims 13
and 29 . . . .
Pet. 44–45 (emphasis added). Thus, Petitioner argues that Amtmann
discloses all of the limitations of claims 13 and 29 and that a person of
ordinary skill in the art, knowing that the Amtmann devices operate at the
working frequency and according to the ECMA-340 standard, would have
recognized that the “oscillating circuit” in Amtmann should operate at center
frequency, as specified in ECMA-340, in order to be compatible with other
devices using the same standard. Id. at 42–45. We agree with and adopt
Petitioner’s analysis discussed above. See KSR, 550 U.S. at 421 (“When
there is a design need . . . to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense.”). Therefore, Petitioner argues that a
person of ordinary skill in the art would have had reason to combine the
teachings of Amtmann and ECMA-340 and the combination of the teachings
of Amtmann and ECMA-340 would achieve the apparatus recited in claims
13 and 29 of the ’664 patent. Pet. 45.
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Patent Owner does not dispute Petitioner’s argument that there was
reason to combine the teachings of Amtmann and ECMA-340.7 Instead
Patent Owner contends that, in view of its proposed constructions of the
terms: “input terminal” and “two end terminals,” the combination of
Amtmann and ECMA-340 fails to teach or suggest all of the limitations of
claims 13 and 29. PO Resp. 10–13. In particular, Patent Owner contends
that
[i]n every instituted ground, HTC’s alleged antenna input
terminal is the same as HTC’s alleged coil end terminals. HTC
does not identify an antenna circuit that has at least one input
terminal that is separate and different from the end terminals of
the antenna coil. Because independent claims 13 and 29
require these features, claims 13 and 29 are patentable over the
applied references.
Id. at 10–11 (emphases added). As noted above, however, we do not
construe claims 13 and 29 to “require” the at least one input terminal of the
recited antenna circuit to be separate and different, i.e., “electrically distinct”
from the end terminals of the antenna coil. See supra Section II.A.2.
Therefore, we are not persuaded by Patent Owner’s contentions.
For the reasons set forth above, Petitioner demonstrates by a
preponderance of the evidence that claims 13 and 29 are unpatentable over
Amtmann and ECMA-340.
3. Obviousness over Charrat and Kuhl
With regard to Charrat and Kuhl, Petitioner maps Charrat onto each of
the limitations of claims 13 and 29, except for an auxiliary supply circuit in
an inductive coupling reader. Pet. 46, 49–56, 57–60. Further, Petitioner

7 See Paper 11, 2–3 (“The patent owner is cautioned that any arguments for
patentability not raised in the response will be deemed waived.”).
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argues that Kuhl teaches or suggests the auxiliary supply circuit recited in
claims 13 and 29. See id. at 46–49, 56–57. Finally, Petitioner argues that a
person of ordinary skill in the art would have reason to combine the
teachings of Charrat and Kuhl to achieve the devices recited in claims 13
and 29. Id. at 46–47, 47–48.
Petitioner argues that “Kuhl describes several problems encountered
by users of RFID reader devices that rely solely on a separate power supply
(such as Charrat’s reader device (RD1), which relies on an internal power
supply (Vcc)).” Id. at 47–48 (emphasis added) (citing Ex. 1008, col. 44,
ll. 4–19; Ex. 1007 ¶ 82; Ex. 1003 ¶ 120). Specifically, Petitioner notes that
in situations in which the power supply of the RFID reader device either is
not available or is not allowed to be used, Kuhl explains that such an RFID
reader device may not be functional at all. Id. at 48 (citing Ex. 1008, col. 7,
ll. 55–64; Ex. 1003 ¶ 120). In addition, Kuhl teaches a configuration that
allows an RFID reader device to detect automatically when an internal
power supply is not available, and to switch automatically to an auxiliary
supply circuit and extract power from a received electromagnetic field.
Ex. 1008, col. 7, ll. 26–35; see Ex. 1003 ¶ 121. Specifically, Kuhl teaches
that, “[d]epending on the capability of the RFID tag reader unit 200, the
antenna is adapted to communicate with a RFID tag in passive
communication mode and with another RFID tag reader device 600 in active
communication mode.” Ex. 1008, col. 7, ll. 32–35; see Ex. 1003 ¶ 121.
Petitioner argues that a person of ordinary skill in the art would have
recognized that these benefits would have been useful in Charrat’s reader,
and, thus, a person of ordinary skill in the art would have had reason to
combine the teachings of Kuhl’s auxiliary supply circuit with the teachings
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of Charrat’s reader. See Ex. 1003 ¶ 120. We agree with and adopt
Petitioner’s analysis discussed above. See KSR, 550 U.S. at 421.
Patent Owner does not dispute Petitioner’s argument that there would
have been a reason to combine the teachings of Charrat and Kuhl.8 Instead,
Patent Owner contends that, in view of its proposed constructions of the
terms: “input terminal” and “two end terminals,” the combination of Charrat
and Kuhl fails to teach or suggest all of the limitations of claims 13 and 29.
PO Resp. 13–15. In particular, Patent Owner contends that
Independent claim 13 unambiguously requires that the
antenna circuit’s input terminal is separate and different from
the end terminals of the antenna coil. Charrat’s alleged antenna
circuit’s input terminal, in contrast, is the same as its alleged
antenna coil’s end terminals.
Id. at 10–11 (emphasis added). As noted above, however, we do not
construe claims 13 and 29 to “require” the at least one input terminal of the
recited antenna circuit to be separate and different, i.e., “electrically distinct”
from the end terminals of the antenna coil. See supra Section II.A.2.
Therefore, we are not persuaded by Patent Owner’s contentions.
For the reasons set forth above, Petitioner demonstrates by a
preponderance of the evidence that claims 13 and 29 are unpatentable over
Charrat and Kuhl.
4. Observations on Cross-Examination of Dr. Tentzeris
Petitioner argues that, even if we accept Patent Owner’s proposed
constructions of the terms: “input terminal” and “two end terminals,” the
combination of Amtmann and ECMA-340 or of Charrat and Kuhl teaches or
suggests all of the limitations of claims 13 and 29. Pet. Reply 19–20

8 See supra 23 n.5.
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(Amtmann and ECMA-340), 23–24 (Charrat and Kuhl). Petitioner relies on
the Declaration of Dr. Tentzeris in support of these alternative arguments.
See, e.g., Pet. Reply 19 (citing Ex. 1011 ¶¶ 49–50), 23 (citing Ex. 1011
¶¶ 57–59). Patent Owner cross-examined Dr. Tentzeris regarding these
alternative arguments and, in its Motion for Observation (Paper 26),
challenges the testimony of Dr. Tentzeris in support of Petitioner’s
arguments. See also Paper 30 (Petitioner’s Response to Patent Owner’s
Motion for Observation). Because we do not construe the terms: “input
terminal” and “two end terminals,” as proposed by Patent Owner; we do not
reach Petitioner’s alternative arguments. Although we considered Patent
Owner’s Motion for Observation, in view of our claim constructions, we
find those observations to be moot.
IV. CONCLUSION
Petitioner demonstrates by a preponderance of the evidence that
claims 13 and 29 of the ʼ664 patent are unpatentable.
V. ORDER
For the reasons given, it is
ORDERED that claims 13 and 29 of the ’664 patent are unpatentable
as
1. rendered obviousness over Amtmann and ECMA-340, and
2. rendered obviousness over Charrat and Kuhl; and
FURTHER ORDERED that, because this is a final 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:

Bing Ai
Matthew C. Bernstein
Thomas N. Millikan
Miguel J. Bombach
PERKINS COIE LLP
Ai-ptab@perkinscoie.com
MBernstein@perkinscoie.com
TMillikan@perkinscoie.com
MBombach@perkinscoie.com
Perkins-Service-HTC-NFC-IPR@perkinscoie.com

PATENT OWNER:

Jon E. Wright
John H. Curry
Amirali Sharifi
STERNE, KESSLER, GOLDSTAIN & FOX P.L.L.C.
Jwright-PTAB@skgf.com
jcurry-PTAB@skgf.com
asharifi-PTAB@skgf.com

Robert Auchter
MCKOOL SMITH, P.C.
rauchter@McKoolSmith.com