Adasa Inc. v. Avery Dennison Corporation
Opinion and Order. The claims in this action are construed as discussed in this Opinion and Order. Signed on 1/22/2019 by Magistrate Judge Thomas M. Coffin. (plb)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
Opinion and Order
AVERY DENNISON CORPORATION,
This is a patent action in which this court has full consent.
Presently before the court is the construction of the claims.
There have been no filings of motions for summary judgment at this
point in the litigation.
1 - OPINION AND ORDER
Plaintiff and counter defendant ADASA Inc.'s (plaintiff Adasa)
( Defendant Avery)
seek construction of
Adasa's '967 patent.
The '967 Patent is related to merchandise tracking. As alleged
by plaintiff Adasa,
in merchandising tracking applications,
memory bank of an RFID 1 tag is encoded with an Electronic Product
The Electronic Product Code is an identifier for an item in
supply chain to uniquely identify that particular item.
serialized to be unique for avoidance of duplicate
numbers among items in the supply chain.
Plaintiff alleges that "[t]he '967 Patent generally speaking,
relates in part, to systems for encoded and commissioned wireless
radio frequency identification ('RFID') devices."
Paragraph 7 of
technology in this field and it is addressed as needed below.
A Claim Construction Hearing was held after extensive briefing
on the issues. 2
RFID stands for "Radio Frequency Identification Device."
This court granted plaintiff's motion to amend the complaint
at the beginning of the hearing.
2 - OPINION AND ORDER
The applicable Claim Terms as presented by the parties and
this court's constructions thereof follow.
AGREED UPON CONSTRUCTIONS
object class information space
The parties agree such phrase
should be construed as "data
within the memory of the RFID integrated circuit chip for
information identifying the class of an
object, such as a company
prefix, item reference code, partition value, and/or filter value."
unique serial number space
The parties agree such phrase should be construed as" data
information identifying a unique serial number."
being assigned a limited number of most significant bits
"includes a limited, predefined sequence of higher order bits at
the leading end."
4. remaining bits of lesser significance
The parties agree such phrase should be construed as "the
remaining lower order bits at the trailing end."
3 - OPINION AND ORDER
TERMS WITH DISPUTED CONSTURCTIONS
As explained in further detail below, this court ultimately
construes the terms with disputed constructions in accordance
language proposed by plaintiff Adasa.
is encoded with one serial number instance
Plaintiff Adasa argues that this phrase should be construed as
"[h]as stored within
it one serial number instance."
Defendant Avery initially argued that the phrase should be
construed with plaintiff's language and the addition of" stored by
database to ensure that the serial number is unique."
P. 2 of
conceded that its proposed construction was not appropriate as it
did not take into consideration the fact that "an RFID encoding
databases, not just a
than proposed a different construction as
within it one serial number instance,
Id . Defendant Avery
stored by an encoder that
database to ensure that the serial number is unique."
In support of its constructions, defendant Avery argues that
plaintiff Adasa' s
Adasa disavowed claim scope during the reexamination of its claims.
4 - OPINION AND ORDER
However, find from the material before the court that Adasa
not disavow its claim scope during the reexamination proceedings:
database for its hardware-based numbering scheme -such hardwarebased numbering scheme can be used in direct connection with a
central data base or in a less direct, ad hoc mode.
As explained in detail by plaintiff Adasa, the '967 Patent was
reviewed for patentability in an Ex Parte Reexamination.
declarations with the Patent and Trademark Office
Plaintiff Adasa made the same arguments to overcome
the Examiner's rejections consistently throughout the reexamination
Plaintiff Adasa repeatedly pointed to the partitioned
accommodating a serial number instance with most significant bits
along with bits of lesser significance, as a novel feature within
the claims of the '967 Patent not in any prior art combinations.
In its response to the PTO, plaintiff Adasa was explaining that the
prior art was focused on a centralized scheme operated entirely by
uniqueness of the Electronic Product Codes that were to be later
encoded to RFID transponders,
but the asserted claims require and
a hardware - based approach that is used on top of any
5 - OPINION AND ORDER
central database scheme for uniqueness.
Plaintiff Adasa then went
on to describe to the PTO the hardware based numbering scheme in
greater detail , noting that "[t]his hardware- based approach of
'967 Patent manages assignments of the serial number at the
binary level by partitioning the bits of the serial number space
into a limited number or most significant bits and a remaining
number of least significant bits."
P. 14 of #59-3.
I agree with plaintiff Adasa that a proper reading of the
arguments to the PTO reveals that the novel feature within the
challenged claims is the use of a "hardware-based numbering scheme"
which is manifest in the claims through inclusion of requiring that
significant bits which corresponds to the most significant bits of
all serial numbers assigned will be unique,
explicitly stated that it is the "hardware -based numbering scheme"
feature that is missing from the prior art, and that such prior art
relies only on continuous connections to a central database to
neither plaintiff Adasa nor its
expert declarant before the PTO declared these two schemes for
ensuring uniqueness as being mutually exclusive such that an RFID
6 - OPINION AND ORDER
tagging system could not or would not implement both. 3
was noted that the use of the claimed scheme merely "allows" for
P.p. 4, 16 of #59-3; Paragraphs 43, 50 of# 59-2.
uniqueness- constant connection to a central database- rather than
a layered scheme also utilizing serial numbers comprising a limited
number of most significant bits.
Some of plaintiff Adasa's arguments were not initially found
persuasive by the Examiner and the non-final rejections of the
claims of the '967 Patent were maintained in the subsequent Final
The Examiner posited that the distinctions made by
Adasa relating to the hardware -based numbering scheme could not be
a basis for novelty because they related only to the process by
claimed RFID transponders
rather than the
structural elements of the RFID transponders. In plaintiff Adasa's
Amendment in Response to Final Office Action dated May 14, 2018,
Adasa successfully argued against this position asserting that
limitation that the encoded serial number space must include a
serial number instance that was selected from an allocated block
Plaintiff Adasa has
demonstrated that despite the
occasional use of the phrase "in essence" in conjunction with the
ad hoc mode, there is not claim disavowal.
7 - OPINION AND ORDER
that was specifically assigned (or allocated) based on a limited
number of most significant bits" p.
10 of #59-7.
To that end,
Adasa made a clarifying amendment to the claims of the '967 Patent
significant bi ts
uniquely correspond to the allocated block in support of Adasa's
position that the claimed serial number structure
is a structural
limitation of the claimed RFID transponders. 4
The positions taken by both Adasa and the Examiner with
claims of the
subsequent confirmation of validity of the
Patent as presented in the Reexamination Certificate do not relate
at all to limitations of the process for how the claimed RFID
transponders are encoded.
There is little to no discussion of
continuous connection to a central database, autonomous or quasiautonomous
or how the allocated block is derived or
The discussion focuses
solely on the novel
advanced throughout the reexamination by Adasa
- that the claimed
comprising most significant bits that was not present in any prior
In support of its disavowal argument, defendant Avery cites
Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed
Cir.2016) and Krippelz v. Ford Motor Co., 667 F.3d 1261, 1267 (Fed.
However, I find that such cases are distinguishable
and, as Adasa argued to the PTO, the patent at issue is more akin
to In Re Nordt, 881 F.3d 1371 (Fed Cir. 2018). See p.p. 50-54 of
8 - OPINION AND ORDER
2. an allocated block of serial numbers
Plaintiff Adasa argues that this phrase should be construed
as "a pre-authorized range of serial numbers."
argues this phrase should be construed as plaintiff Adasa suggests
with the addition of the phrase" that has been assigned to an
Defendant Avery makes an argument similar to one above
persuasive for the reasons stated above.
Defendant Avery acknowledges that the parties'
constructions may mean the same thing, p.
11 of Response
Based on the above discussion, the phrase "uniquely corresponding"
is construed as having its plain and ordinary meaning as plaintiff
The claims in this action are construed as discussed above.
day of January, 2019.
9 - OPINION AND ORDER
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