       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

  INTERMEC, INC., INTERMEC TECHNOLOGIES
        CORP., INTERMEC IP CORP.,
                   Appellants

                           v.

            ALIEN TECHNOLOGY, LLC,
                      Appellee
               ______________________

                      2015-1808
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,265.
                  ______________________

              Decided: November 15, 2016
                ______________________

    NEIL C. JONES, Nelson Mullins Riley & Scarborough,
LLP, Greenville, SC, argued for appellants. Also repre-
sented by ASHLEY BOLAND SUMMER.

    ELIZABETH LAUGHTON, Munger, Tolles & Olson LLP,
Los Angeles, CA, argued for appellee. Also represented by
EDWARD GEORGE DANE.
                ______________________
2                   INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC



    Before PROST, Chief Judge, DYK and STOLL, Circuit
                         Judges.
PROST, Chief Judge.
     This appeal arises from an inter partes reexamination
of U.S. Patent No. 6,812,841 (“’841 patent”) in Reexami-
nation No. 95/001,265. The examiner rejected claims 1,
7–15, and 25–29 as obvious and the U.S. Patent and
Trademark Office, Patent Trial and Appeal Board
(“Board”) affirmed those rejections. Appellants Intermec
Inc., Intermec Technologies Corp., and Intermec IP Corp.
(collectively, “Intermec”) then requested rehearing, which
the Board denied. This appeal followed. For the following
reasons, we affirm the Board’s decision.
                       BACKGROUND
    The ’841 patent relates to radio frequency identifica-
tion (RFID) tags, also called transponders. Generally
speaking, RFID tags fall within one of two types—active
or passive. Active tags contain an internal power supply
and, thus, function without the aid of external power,
signals, or other stimuli. Passive tags, on the other hand,
receive their power from RF signals that RFID readers
produce when communicating with the tag. The ’841
patent specifically addresses passive-type RFID tags.
Because passive tags do not include independent power
supplies, these devices lose power when the tag exceeds
the range of the RF signal powering it. When the tag
loses its signal, its memory clears and the RFID reader
must repeat commands to restore it to its previous pow-
ered state. This restoration process creates inefficiencies
and imposes delays in relation to the tag’s functionality.
    To remedy these drawbacks, the ’841 patent includes
a “state holding cell” within the tag to allow it to store
state information during a loss of power. By including the
state holding cell, the tag maintains its present state for a
limited time (ideally until at least the tag receives subse-
INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC                  3



quent RF waves from the reader). This allows passive
RFID transponders to preserve their state information
even if the tag loses its external power supply for a short
period of time.
    On appeal, Intermec challenges the Board’s rejections
of various claims on three distinct grounds: (1) claims 1
and 7–15 under § 103 as obvious over U.S. Patent No.
7,248,145 to Littlechild et al. (“Littlechild”) in view of
“RFID Handbook Radio-Frequency Identification Funda-
mentals and Applications” by Klaus Finkenzeller
(“Finkenzeller”); (2) claims 25–26 and 28–29 under § 103
as obvious over Littlechild in view of U.S. Patent No.
6,942,155 to Stewart et al. (“Stewart”); and (3) claim 27
under § 103 as obvious over U.S. Patent No. 4,674,618 to
Eglise et al. (“Eglise”) in view of Finkenzeller. Appellants’
Br. 2. Independent claim 25 is representative:
    25. A method for operating an RFID transponder,
    comprising:
    receiving an interrogating RF signal;
    recovering analog signals from said received in-
    terrogating RF signal and providing state infor-
    mation defining a desired state of said RFID
    transponder corresponding to said analog signals;
    executing at least one command in accordance
    with said state information;
    storing digital data in and retrieving digital data
    from a memory responsive to said at least one
    command;
    providing electrical power for said RFID tran-
    sponder derived from said interrogating RF sig-
    nal;
    maintaining said state information in a state
    holding cell during a temporary lapse in receipt of
    said interrogating RF signal, wherein said
4                   INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC



    memory and said state holding cell are provided
    by separate circuit elements.
J.A. 3313.
     Although the scope of the rejected claims-at-issue
vary, the three grounds of rejection primarily turn on the
following disputes: (1) whether the prior art references, in
combination, result in a tag that contains a state holding
cell that is separate from a non-volatile memory;
(2) whether the prior art teaches the recited “state holding
cell”; and (3) whether the prior art references, in combina-
tion, render the claims obvious, particularly in light of the
recited “memory and [a] state holding cell . . . provided by
separate circuit elements” claim limitation.
     The ’841 patent issued on November 2, 2004, consist-
ing of twenty-four claims. As a result of an infringement
litigation between Alien and Intermec, Alien requested,
and the Patent Office instituted, an inter partes reexami-
nation for claims 1, 7–15, and 21–24 of the ’841 patent.
Along with its first response to the Patent Office’s reex-
amination determination, Intermec presented newly
added claims 25–29. Upon initial examination of the
claims, the examiner declared all claims subject to this
appeal allowable. Alien appealed, and the Board reversed
the examiner and rejected the claims. Although Intermec
reopened prosecution to obtain a different result, the
examiner ultimately adopted the Board’s rejections.
    For the first ground (claims 1 and 7–15, Littlechild in
view of Finkenzeller), the examiner recognized that
Littlechild describes state information stored within a
volatile memory (a “mute chip bit”) but that it did not
describe another memory provided by separate circuit
elements. Finkenzeller discloses that a separate, distinct
non-volatile memory was a standard feature of RFID tags
as of its 1999 publication, and the examiner determined
that it would have been obvious to combine these two
references to achieve the claimed the invention. For the
INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC                 5



second grounds (claims 25–26 and 28–29, Littlechild in
view of Stewart), although the examiner recognized that
Littlechild does not specifically disclose maintaining state
information in a separate holding cell (i.e., provided by
separate elements), the examiner found that Stewart
disclosed this feature by reciting a “tenacious latch.” For
the third and final ground, (claim 27, Eglise in view of
Finkenzeller), although the examiner recognized that
Eglise does not specifically disclose maintaining the state
information in a state holding cell provided by separate
circuit elements (as parent claim 25 requires), the exam-
iner observed that Finkenzeller teaches a separate, non-
volatile memory in addition to a temporary memory, and
that this memory arrangement existed as a standard
feature of RFID tags.
    Intermec appealed the examiner’s rejections, but the
Board affirmed. On rehearing, the Board declined to
modify its decision. Intermec timely appealed the Board’s
decision.    We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A) (2012).
                         DISCUSSION
    We review the Board’s legal determinations de novo
and its underlying factual determinations for substantial
evidence. Rambus Inc. v. Rea, 731 F.3d 1248, 1251 (Fed.
Cir. 2013). Obviousness is legal question based on under-
lying factual findings. In re DBC, 545 F.3d 1373, 1377
(Fed. Cir. 2008).
    For the first ground (obviousness of claims 1 and 7–
15), Intermec argues that the hypothetical RF tag result-
ing from the Board’s combination of Littlechild and
Finkenzeller would result in a tag that contains one non-
volatile memory (including the state information) and a
superfluous, unused memory. Moreover, Intermec argues
that even if the memory holding the state information
equates to the recited state holding cell, the other memory
cannot meet the requirements of the claim because the
6                   INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC



other memory is volatile, rather than non-volatile
memory. To that point, Intermec concludes that the
combination of these references as the Board proposed
would require moving the state information holding
function of Littlechild’s volatile memory to a non-volatile
memory in the hypothetical tag. Put another way, Inter-
mec contends that the Board improperly switched the
location of the state bit when proposing its hypothetical
combination that resulted in the non-volatile memory
storing this bit. Intermec additionally argues that there
is no motivation to combine the references in the manner
recited in the claims.
    We conclude that the Board did not err in its obvious-
ness determination and that substantial evidence sup-
ports its factual findings underpinning its conclusions.
There is no dispute that Littlechild discloses a volatile
memory that stores state information. In particular,
Littlechild discloses a “temporary memory” array that
stores information in a “mute chip bit.” Littlechild uses
the mute chip bit to retain information during the event
of a power loss to the tag. Intermec does not contest that
this mute chip bit equates to the recited state holding cell.
Finkenzeller provides a general handbook on RFID tech-
nology that describes various RFID tags and their appli-
cations, and discloses the implementation of various types
of memory in RFID tags (e.g., EEPROM, FRAM, ROM,
RAM). As the examiner correctly observed, Finkenzeller
teaches that a separate non-volatile memory in addition
to temporary memory was a standard feature of RFID
tags of the time. And by adding Finkenzeller’s non-
volatile memory to Littlechild’s volatile memory contain-
ing the mute chip bit, the resulting combination neces-
sarily includes all of the recited elements in the claims.
Indeed, Intermec does not appear to dispute this fact.
    COURT: I’m just saying, if you do combine [Lit-
    tlechild and Finkenzeller], you get the invention.
INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC                   7



    Mr. Jones [counsel for Intermec]: . . . if the combi-
    nation results in a non-volatile readable, writable
    memory that is separate and apart from . . . a
    state holding cell.
    COURT: So combining them will do that, right?
    Mr. Jones: It would structurally put them togeth-
    er, yes your Honor.
Oral      Argument      10:47–11:10,      available     at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
15-1808.mp3.
     Although Littlechild does not necessarily disclose an
additional, separate non-volatile memory, Finkenzeller
proposes the use of separate memories within an RFID
transponder; each with advantages vis-à-vis the others
based on its particular application (e.g., access time,
persistence during power loss, costs, etc.). In light of this
disclosure, Finkenzeller teaches the benefits of providing
separate memories within RFID transponders. Therefore,
substantial evidence supports the Board’s findings that
one of ordinary skill would be motivated to combine these
references. 1 We therefore conclude that Littlechild in
view of Finkenzeller renders the claims obvious. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (observ-
ing that the combination of known elements according to
known methods yields predictable results and would be a


    1   Intermec raises concerns that the Board improp-
erly transposed the position of the state information in its
hypothetical combination (i.e., from Littlechild’s volatile
memory to the Finkenzeller’s non-volatile). Appellants’
Br. 18 (citing J.A. 9, 44). Although it appears that both
the Board and the examiner set forth some conflicting
findings as to where, precisely, the state information
would be stored in this hypothetical combination, we
consider such misstatements harmless error.
8                   INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC



predictable variation). Accordingly, we find that the
Board correctly affirmed the examiner’s obviousness
rejections under the first ground.
    Regarding the second ground (obviousness of claims
25–26 and 28–29), Intermec argues that Stewart does not
teach a state holding cell but rather a timing circuit that
delays, or slows down, certain operations of a device. As
Intermec observes, Stewart uses this “tenacious latch” to
delay the password-protected destruct sequence of an RF
tag. Intermec argues that Stewart cannot consistently or
reliably retain state information beyond the time period of
the latch’s discharge period, because once the capacitor’s
charge dissipates, the tag cannot maintain information
even if the tag has not lost power at that time. Finally,
Intermec argues that the latch’s capacitor merely repre-
sents a binary “1,” but not “0,” thus it cannot store state
information by merely representing a single state. Inter-
mec concludes that this deficiency undermines the pur-
pose of the ’841 patent and the problem that its inventors
solved, i.e., storing the current state of the tag and main-
taining that state information during a power loss.
    We conclude that substantial evidence supports the
Board’s findings that Stewart’s tenacious latch meets the
limitations of the claims under this ground of rejection.
The claims-at-issue require “maintaining said state
information in a state holding cell during a temporary
lapse in receipt of said interrogating RF signal . . . .” J.A.
3313. Although Stewart teaches employing this latch to
slow down the functioning of a circuit in one embodiment,
the reference is not so limited. In particular, Stewart
teaches employing this latch to retain the state of the
device during a disruption in the power supply. See J.A.
618 (Stewart col. 2 ll. 9–11) (“Likewise, it is also im-
portant that certain tag states like the SLEEP/WAKE or
other command states persist even through short inter-
ruptions of the power supply.”). In particular, Stewart
expressly discloses applying this latch to electronic devic-
INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC                    9



es prone to temporary power losses. “One skilled in the
art will recognize that any device that might suffer from a
loss of power will benefit from a tenacious storage state or
latch.” J.A. 620 (Stewart col. 6 ll. 18–20). Thus, as the
Board properly concluded, Stewart’s latch similarly
maintains state information in a state holding cell be-
cause it “enabl[es] a circuit to continue to function in the
event of a brief loss of power.” J.A. 11 (citing Stewart
col. 2 ll. 29–31); see also, J.A. 620 (Stewart col. 5 ll. 8–11)
(disclosing the stabilization of storage nodes). We thus
conclude that substantial evidence supports the Board’s
findings and that it correctly affirmed the examiner’s
obviousness rejections under this ground as well.
    Regarding the third and final ground (obviousness of
claim 27), Intermec argues that Eglise discloses storing
state information in a single non-volatile memory struc-
ture (i.e., EAROM) and that this reference does not dis-
close a separate memory and a state holding cell.
Intermec criticizes the Board’s modification of Eglise in
view of Finkenzeller which, according to Intermec, would
result in an entirely duplicative non-volatile memory that
would increase the cost and size of the tag. Intermec
additionally argues that this combination is inconsistent
with Alien’s proposed combination that required storage
of the state information in Finkenzeller’s volatile memory.
    We conclude that the Board did not err in its obvious-
ness determination and that substantial evidence sup-
ports the factual findings underpinning its conclusions.
Intermec does not dispute that Eglise discloses storing the
state information in a single non-volatile memory (i.e.,
EAROM). Even though Eglise does not specifically dis-
close maintaining the state information in a state holding
cell (where the memory and the state holding cell are
provided by separated circuit elements), Finkenzeller
discloses the implementation of various types of memory
in RFID tags (e.g., EEPROM, FRAM, ROM, RAM). As the
examiner properly observed, by combining these known
10                  INTERMEC, INC.   v. ALIEN TECHNOLOGY, LLC



elements according to known methods, it would have been
obvious to use a separate element (i.e., Finkenzeller’s non-
volatile memory) to perform the already-disclosed func-
tion of maintaining the state information during a loss in
power in the system disclosed by Eglise. KSR, 550 U.S. at
416. Specifically, with the benefit of Finkenzeller’s disclo-
sure, one of ordinary skill in the art would recognize that
various memory types conventionally employed within
RFID tags each carry particular advantages and disad-
vantages vis-à-vis the others (e.g., access time, persistence
during power loss, costs, etc.). In light of these teachings,
substantial evidence supports the Board’s underlying
factual findings and we conclude that it would have been
obvious to store the state information and the operational
data in separate memories when maintaining state in-
formation during a loss in power. Thus, we conclude that
the Board correctly affirmed the examiner’s obviousness
rejections under this final ground as well.
                       CONCLUSION
    For the foregoing reasons, we affirm the Board’s deci-
sion.
                       AFFIRMED
