1) When drafting appeals to the USPTO board, it is very important to take the time to address each and every limitation that could possibly be argued at a later point. Therefore, patent attorneys should not view appeals or pre-appeal briefs as extensions of office actions that are going to be reviewed by the board. Instead, patent attorneys must realize that if their initial arguments are lost that they should at least address each possible fall-back position. This might be a hard sell to your clients, especially if you are re-hashing your original main arguments (when they seem reasonable) in the appeal, as well as having to come up with additional arguments to make, which may take extra hours to formulate.

2) Don’t draft claims in means plus function form. I do not understand why I continually see cases litigated that deal with means-plus-function limitations. At this point, means-plus-function limitations will only be viewed narrowly as what is defined in the specification anyway. If patent attorneys/inventors desire broader protection why not just recite limitations as “a process to …” or “a memory to store…”

3) Most importantly from this case is the lesson that the same element described in a patent should not be described using multiple terminologies or defined in a plurality of different ways within the specification. If an element of an application is described multiple ways in multiple forms, then during claim construction a court will use the language that is least beneficial to your client. Therefore, as patent attorneys, it may not be best to broaden out terms in specific instances or try to formulate arguments where a different definition of a term is recited in the specification that may help the opposition.


This case relates to Avid Identification Systems, Inc.’s appeal of the USPTO board of patent appeals rejecting claims of patent 5,499,017 assigned to Avid Identification Systems, Inc during re-examination of the patent in view of three different references.

The ‘017 is directed towards radio-frequency identification (RFID) tag technology where a reader is associated with an identifying agency and a tag is associated with an object to be identified. A representative claim of the ‘017 patent are reproduced below. For the full opinion of the case please visit:

1. An electronic identification tag comprising:
a means for permanently storing data in an unalterable fashion, said data being known as unalterable data;
a means for permanently storing data in an alterable fashion, said data being known as alterable data;
means for detecting an interrogation signal;
means for discriminating between a non-modulated signal and a modulated interrogation signal; and
a means for communicating said unalterable data and said alterable data to an electronic identification reader upon detection of a non-modulated signal.

The three prior art references cited against the ‘017 patent in the reexamination hearing were Baldwin 4,937,581, Baldwin 4,075,632, and Chasek 4,303,904.

Baldwin ‘581 is directed towards an RFID tag installed on a moving object and an RFID reader, where the RFID tag includes a memory bank that stores both fixed and changing data in different portions of the memory. Baldwin ‘632 is directed towards an RFID system that can differentiate between modulated and non-modulated signals. Chasek teaches an electronic tool-paying system where a RFID tag can be used to pay a toll.

The Board agreed with the Examiner that Baldwin ‘581 anticipated each and every limitation as recited in claims 7, 10 and 19, and a combination of the references disclose each and every limitation as recited by the other independent claims, and denied Avid’s petition for a rehearing, which Avid appealed.

The court of appeals further held that the Board correctly held that the combination of the references disclose each limitation as recited by the claims on appeal and dismissed a couple of new arguments made by Avid because Avid waived its rights to these arguments for failing to raise the new arguments before the board.

On appeal, Avid argued that the Board’s construction of “unalterable data” was unreasonable and inaccurate, specifically arguing that the limitation should be read as “permanently storing data in an unalterable fashion.” On appeal, the court of appeals agreed with the Board that given the broadest reasonable interpretation the term “unalterable data” would be read as “data that is not readably changeable” due to the specification having various definitions/phrasings of unalterable data where one definition described unalterable data as data that “usually cannot be reprogrammed.”

Further, Avid argued that the Baldwin ‘581 did not disclose “means for permanently storing data in an unalterable fashion” because Baldwin ‘581 discloses “protected” memory that is not permanent and unalterable, and thus the RFID tags in Baldwin ‘581 are alterable. The court of Appeals disagreed with Avid’s arguments because even if the “protected” data of Baldwin is alterable but determined that the protected data may only be reprogrammed when  the RFID tag is physically removed from the moving object it is installed on, while the tag is installed the data is permanent and unalterable. As such, the court of appeals agreed with the Board that the Board did not err in its holding that Baldwin ‘581 meets each and every limitation as recited in the ‘017 patent.

The court of appeals further held that Avid waived its argument that the PTO failed to properly examine the “means for storing” limitation as recited in the independent claims because Avid failed to point out to the Board on appeal or rehearing its contention that procedure for interpreting for the “means for storing” clause was not followed.

By | 2013-01-08T16:47:54+00:00 January 8th, 2013|Patent Attorney Takeaways|Comments Off on IN RE AVID IDENTIFICATION