Kenneth, What Is The Frequency? Prosecution Disclaimer Limits RFID Patent

2008-1412 RFID World v. Wal-Mart
ED/TX 06-cv-363
Judge Leonard Davis

Patentee RFID appeals from the stipulated summary judgment on noninfringement based on Judge Leonard Davis's order on claim construction.

RFID owns 6,967,563, which is generally directed to an inventory control system including radio frequency identification (RFID) tags attached to inventory items, an interrogator/reader, and a computer.  The interrogator/reader generates a radio frequency (“RF”) field sufficient to activate every RFID tag within the field range.  Using the RFID tags, which contain anti-collision capabilities, the system correlates each tag to a particular item of inventory and designate the item "present" or "absent" depending on whether the particular RFID tag is detected.

The court's Markman ruling construed several terms from the patent, but the particular language at issue is "interrogator/reader."  Claim 1 of the '563 states illustrates the use of the term, describing an inventory apparatus comprising:

. . . an interrogator/reader in communication with the computer and including:

a field generator capable of generating a field having a range characterized by a radius centered at the generator and a field strength sufficient to activate any field activated apparatus affixed to an item within the range of the generated field; and

a receiver. . . .

The parties dispute whether the claimed "interrogator/reader" can contain a transmitter (RFID's contention) or cannot (Gillette's contention).

The court starts its analysis with the claim language itself, noting that the language is "an interrogator/reader . . . including."  The court finds that the term "including" is open-ended, thus raising a presumption that an "interrogator/reader" is not limited to a field generator and a receiver, but may include additional features.

The court then found that the specification "did not rebut this presumption" even though it referred only to the interrogator/reader's receiving and field generating capabilities.  Thus, it did not strengthen the presumption either.

However, the court found that statements in the prosecution history disavowed transmitters.  Primarily relying on Omega Eng'n (334 F.3d 1314), Ormco Corp. (498 F.3d 1307) and Invitrogen (429 F.3d 1052), the court cited the following:

• to overcome a § 103(a) rejection over the Reis and Cato patents that required the interrogator to transmit information to the RFID tags, the applicant stated:

• "The present invention does not require the interrogator/reader to do anything more than receive transmitted signals from tags within the activation zone of a field generated by the interrogator/reader."
• "[t]he Reis and Cato Patents simply do not disclose, teach or suggest an inventory system where the interrogator/reader only received transmitted tag signals."
• "the interrogator/reader is nothing more than a receiver that receives a signal[], determines the unique code associated with the signal and forwards the code to the computer for updating the inventory list."
• “[t]he [claimed] method . . . requires no polling and no transmission from the interrogator/reader, the field performs the polling, and the tags emit their uniquely modulated signals to the interrogator/reader when activated by the field . . . .”
• “[a]ll anticollision processing is handled at the tag level and not at the interrogator/reader level." 

• Also, during prosecution of the parent application to the '563, the applicant made similar statements to overcome a rejection:

• “[t]he Reis [Patent] uses tag technology that requires the interrogator to send signals to the tags and receive signals from the tags in such a way as to minimize or eliminate simultaneous tag signal transmission.”
• “[i]n distinction, the present technology only requires that the interrogator generate a field and receive tag signals . . . . ”

The court also noted that although "the Examiner did not rely on these statements, as the parent application never issued, [it] does not negate the effect of the applicant’s disclaimer."  See Springs Window Fashions LP v. Novo Indus., L.P. , 323 F.3d 989, 995 (Fed. Cir. 2003).

The court concluded the foregoing constituted prosecution disclaimer, a clear disavowal of an interrogator/reader that included a transmitter.  Because it was undisputed that Gillette's interrogator included a transmitter, RFID stipulated to summary judgment of noninfringment.

More reading:

Claim Construction Order

Counsel:

RFID: Goldstein Faucett & Prebeg, Houston, TX (Edward W Goldstein, Alisa Anne Lipski, Corby R Vowell), Eric M. Albritton, and Ward & Smith, Longview, TX (Thomas John Ward, Jr.).
Gillette: Roth Law Firm, Marshall, TX (Carl Roth); Jones Day, Cleveland, OH (Ken Adamo, Joseph D. Pollack, David M. Maiorana).

Comments

[Rudie]

Where is the Dan Rather picture?

[michael]

Perhaps someone has taken in an R.E.M. show on their recent tour?

[michael]

Perhaps someone has taken in an R.E.M. show on their current tour?

[Kyle]

I actually had a Dan Rather photo for the post, but forgot to add it--thanks for the reminder. As for REM, I haven't caught a show in quite a while, but I went for the "original" quote from Dan rather than the song title.