Tile, Inc. v. Cell Witch Inc.

• Decision Date: 13 May 2021
• Docket Number: IPR2020-00317,872,Patent 8,655 B2
• Parties: TILE, INC., Petitioner, v. CELL WITCH INC., Patent Owner.
• Court: Patent Trial and Appeal Board

TILE, INC., Petitioner,
v.
CELL WITCH INC., Patent Owner.

IPR2020-00317

Patent 8, 872, 655 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 13, 2021

Final Written Decision Determining Some Challenged Claims Unpatentable 35 U.S.C. § 318(a)

For PETITIONER: Kevin McGann, Dargaye Churnet, FENWICK & WEST LLP

For PATENT OWNER: Nicole Jantzi, Ian Brooks, Paul Schoenhard, MCDERMOTT WILL & EMERY LLP

Before JONI Y. CHANG, KARA L. SZPONDOWSKI, and .JULIET MITCHELL DIRBA, Administrative Patent Judges.

JUDGMENT

Per curiam

I. INTRODUCTION

Tile, Inc. ("Petitioner") filed a Petition requesting an inter partes review ("IPR") of claims 1-23 ("the challenged claims") of U.S. Patent No. 8, 872, 655 B2 (Ex. 1001, "the '655 patent"), citing to the Declaration of Mr. Christopher Schrnandt (Ex. 1003) for support. Paper 2 ("Pet."), 3. Cellwitch Inc. ("Patent Owner") filed a Preliminary Response. Paper 9. We instituted an inter partes review as to all of the challenged claims and all of the grounds of unpatentability asserted in the Petition. Paper 13 ("Dec."). After institution, Patent Owner filed a Response (Paper 16, "PO Resp."), citing to the Declaration of Mr. Matthew Schor (Ex. 2006) for support. Petitioner filed a Reply (Paper 20, "Reply"). Patent Owner also filed a Sur-reply (Paper 21, "Sur-reply"). The transcript of the oral hearing held on February 8, 2021, is entered into the record as Paper 28 ("Tr.").

This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons that follow, Petitioner has demonstrated by a preponderance of the evidence that claims 1-3, 10-15, 22, and 23 of the '655 patent are unpatentable. Petitioner has not, however, demonstrated by a preponderance of the evidence that claims 4-9 and 16-21 are unpatentable.

A. Related Matter

The parties indicate that the '655 patent is involved in Cellwitch Inc. v. Tile, Inc., Case No. 4:19-cv-01315 (N.D. Cal. filed March 12, 2019). Pet. 3; Paper 6, 2.

B. The '655 Patent

The '655 patent discloses a system for tracking personal items. Ex. 1001, 1:13-43. Specifically, the system provides immediate notification of loss by monitoring for the loss of small items and notifying a person of that loss. Id.

Figure 8 is reproduced below.

(Image Omitted)

Figure 8 illustrates a system for providing wireless monitoring of personal items, comprising mobile station 10, wireless device 11 ("patch"), and processing system 80. Id. at 4:57-67, 8:54-55. Mobile station 10 has a wireless communication system to allow communications with patch 11. Id. at 4:58-67. Patch 11 has a unique identity and comprises a wireless communication system and a power source. Id. at 5:27-30. Patch 11 is designed to be attached to small personal items. Id. at 5:36-38. Processing system 80 is capable of communicating with mobile station 10 via communications link 81. Id. at 8:55-57. Processing system 80 comprises database 82 and processing means 83. Id. at 8:59-60. Database 82 stores records relating to mobile stations and patches, such as the identity of mobile stations and patches, and the items to which each patch is attached. Id. at 8:63-67.

Figure 14 of the '655 patent is reproduced below.

(Image Omitted)

As shown in Figure 14 above, network 200 comprises server 210 that includes processor 212, learning module 217, and a memory unit including database 215. Id. at 12:50-57. Network 200 also comprises base station 220, mobile stations 230, 240, 250, and associated patches 235, 245, 255. Id. at 12:57-59. Base station 220 may detect patches 225 and relay the detection to central server 210. Id. at 12:59-61. Mobile stations 230, 240, 250 may be configured as "buddies" to one another. Id. at 12:62-63. For example, mobile station 230 may be configured so as to monitor patches 245 associated with mobile station 240, and mobile station 240 may be configured so as to monitor patches 235 associated with mobile station 230. Id. at 12:63-67.

C. Illustrative Claims

Of the challenged claims, claims 1, 12, and 23 are independent. Claims 2-11 depend from claim 1, and claims 13-22 depend from claim 12. Claims 1, 12, and 23 are illustrative:

1. A system for monitoring of location of items, comprising

[1a] a plurality of wireless devices, each of the plurality of wireless devices being associated with a monitored item;

[1b] a plurality of wireless communication terminals, each of the plurality of wireless communication terminals being associated with a respective user and associated with at least one respective associated wireless device of the plurality of wireless devices and configured to monitor the proximity of the at least one respective associated wireless device and to generate an alert when the proximity of at least one of the associated respective wireless devices from the associated wireless communication terminal meets or exceeds a proximity threshold to alert the respective user to the met or exceeded proximity threshold; and

[1c] a processing system that is in communication with the plurality of wireless communication terminals, the processing system comprising a database that collects and stores data related to the plurality of wireless devices and the plurality of wireless communication terminals

[1d] wherein at least one buddy wireless communication terminal of the plurality of wireless communication terminals is further configured to monitor the proximity of at least one wireless device of the plurality of wireless devices associated with one of the other wireless communication terminals and to generate an alert when the proximity of at least one of the wireless devices associated with one of the other wireless communication terminals from the buddy wireless com1munication terminal meets or exceeds a proximity threshold to alert the user of the buddy wireless communication terminal to the met or exceeded proximity threshold

Ex. 1001, 15:4-35 (bracketed matters and emphases added).

12. A computer-based method for monitoring of locatio1n of items, comprising

[12a] providing a plurality of wireless devices, each of the plurality of wireless devices being associated with a monitored item;

[12b] configuring each of a plurality of wireless communication terminals, each of the plurality of wireless communication terminals being associated with a respective user and associated with at least one respective associated wireless device of the plurality of wireless devices, to monitor the proximity of the at least one respective associated wireless device and to generate an alert when the proximity of at least one of the associated respective wireless devices exceeds a proximity threshold to alert the respective user to the met or exceeded proximity threshold;

[12c] collecting and storing, using a processing system that is in communication with the plurality of wireless communication terminals, data related to the plurality of wireless devices and the plurality of wireless communication terminals; and

[12d] configuring at least one buddy wireless communication terminal of the plurality of wireless communication terminals to monitor the proximity of at least one wireless device of the plurality of wireless devices associated with one of the other wireless communication terminals and to generate an alert when the proximity of at least one of the wireless devices associated with one of the other wireless communication terminals from the buddy wireless communication terminal meets or exceeds a proximity threshold to alert the user of the buddy wireless communication terminal to the met or exceeded proximity threshold.

Id. at 16:7-40 (bracketed matters and emphases added).

23. A system for monitoring of location of items, comprising:

[23a] a plurality of wireless devices, each of the plurality of wireless devices being associated with a monitored item;

[23b] a plurality of wireless communication terminals, each of the plurality of wireless communication terminals being associated with a respective user and associated with at least one respective associated wireless device of the plurality of wireless devices and configured to monitor the proximity of the at least one respective associated wireless device and to generate an alert when the proximity of at least one of the associated respective wireless devices from the associated wireless communication terminal meets or exceeds a proximity threshold to alert the respective user to the met or exceeded proximity threshold; and

[23c] a processing system that is in communication with the plurality of wireless communication terminals, the processing system comprising a database that collects and stores data related to the plurality of wireless devices and the plurality of wireless communication terminals,

[23d] wherein each of the plurality of wireless communication terminals is further configured to detect at least one wireless device of the plurality of wireless devices the respective wireless communication terminal is not configured to monitor and to transmit data related to the at least one wireless device of the plurality of wireless devices the respective wireless communication terminal is not configured to monitor to the processing system,

[23e] wherein, if the proximity of a lost wireless device of the plurality of wireless devices from the associated wireless communication terminal exceeds the proximity threshold, the processing system is configured to identify one of the other wireless communication terminals that detects the lost wireless device and to generate a signal enabling direct communication between the user of the wireless communication terminal associated with the lost wireless device and the user of the wireless communication terminal that detects the lost wireless device

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