IP Law Daily, PATENT—Fed Cir.: PTAB’s obviousness ruling affirmed in item tracking dispute, (Dec 12, 2025)

By Kevin M. Finson, J.D.

Claims relating to tracking surgical tools or similar items using RFID were properly found unpatentable by the PTAB because the Board’s claim construction was not erroneous and its factual findings were supported by expert testimony.

The Patent Trial and Appeal Board did not err in finding all challenged claims of four patents relating to systems for tracking surgical tools unpatentable, the U.S. Court of Appeals for the Federal Circuit has held. The court found no error in the Board’s claim construction, and its findings were supported by substantial evidence in the form of expert testimony, (Lone Star SCM Systems, Ltd. v. Zebra Technologies Corp., Nos. 24-1731, 24-1732, 24-1733, 24-1734, (Fed. Cir. Dec. 12, 2025)).

Lone Star SCM Systems, Ltd. (Lone Star) was the owner of U.S. Patents Nos. 7,557,711 (the ’711 patent), 9,646,182 (the ’182 patent), 9,996,717 (the ’717 patent), and 10,482,293 (the ’293 patent), all of which shared a specification and related to interrogation systems used to identify and track items used in surgical procedures or similar environments by way of radio frequency identification (RFID). Zebra Technologies Corporation (Zebra) petitioned for inter partes review of all four patents. The Patent Trial and Appeal Board (PTAB) instituted review and found all four patents unpatentable. Lone Star appealed.

Claim construction. Lone Star argued that the Board erred in its construction of “multiscan, coherent signal processing,” “sensing subsystem configured to,” and “in close unobstructed proximity.” With regard to the first term, Lone Star argued that the Board’s construction was improperly based on argument raised for the first time in Zebra’s reply brief, but the court found that Lone Star had been given the opportunity to file sur-replies on that issue and never objected to the arguments as untimely.

With regard to the second term, Lone Star failed to show that its preferred construction would alter the Board’s obviousness decision. With regard to the final term, Lone Star argued that “unobstructed” should mean “nothing between [the objects] except for air,” but the specification illustrated use of the claimed systems when objects were separated by tissues and organs.

Reasoning. Lone Star contended that the Board failed to provide sufficient reasoning for its decision that two of the claims were unpatentable as obvious. Reviewing the Board’s written decision, the court found that the Board had properly explained that it was rejected a proposed claim construction and therefore finding that a prior art reference did in fact teach the limitations at issue. This was sufficient, according to the Federal Circuit.

Teachings of prior art. Finally, Lone Star argued that the Board erred by finding that a prior art reference disclosed a “single position sensor” as required by the claim language, and that instead the prior art reference disclosed only multiple position sensors. The Federal Circuit found that the Board was within its rights to have credited expert testimony that such sensors were well known and available, and that the language of the prior art reference could apply to one or multiple sensors.

The Federal Circuit affirmed the Board’s decision.

The Case is Nos. 24-1731, 24-1732, 24-1733, 24-1734.

Judge: Prost, S.

Attorneys: Steven Nelson Williams (Munsch Hardt Kopf and Harr PC) for Lone Star SCM Systems, Ltd. Julie S. Goldemberg (Morgan, Lewis & Bockius LLP) for Zebra Technologies Corp.

Companies: Lone Star SCM Systems, Ltd.; Zebra Technologies Corp.

Cases: Patent FedCirNews USPTO