Trials@uspto.gov
`571-272-7822
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` Paper 35
` Date: April 10, 2020
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`IPR2015-01973
`Patent 8,013,732 B2
`_______________
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 35
` Date: April 10, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`IPR2015-01973
`Patent 8,013,732 B2
`_______________
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
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`I. INTRODUCTION
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`This Decision addresses the opinion of the United States Court of
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`Appeals for the Federal Circuit in Emerson Electric Co. v. SIPCO, LLC, 745
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`F. App’x 369 (Fed. Cir. 2018) (hereinafter Emerson), vacating our Final
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`Written Decision and remanding for further proceedings. Having analyzed
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`the entirety of the record anew in light of the court’s directives in Emerson,
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`we conclude that Petitioner has shown by a preponderance of the evidence
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`that claims 13, 14, 16, 18–21, 23–26, 28–33, and 35 of U.S. Patent No.
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`8,013,732 B2 (Ex. 1001, “’732 patent”) are unpatentable. We also conclude
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`that Petitioner has not shown by a preponderance of the evidence that claims
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`17, 27, and 34 of the ’732 patent are unpatentable.
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`A. Procedural History
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`Emerson Electric Co. (“Petitioner”) sought to institute an inter partes
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`review of claims 13, 14, 16–21, and 23–35 of the ’732 patent. Paper 2
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`(“Pet.”). SIPCO, LLC, (“Patent Owner”) filed a Preliminary Response.
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`Paper 6 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted inter
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`partes review as to all challenged claims of the ’732 patent on all grounds
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`presented in the Petition. Paper 8 (“Dec.”). Specifically, we authorized this
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`inter partes review to proceed as to the following grounds:
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`2
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`Claim(s) Challenged
`13, 14, 19–21, 25, 26, 30,
`31, 33
`16–18, 24, 28, 29, 35
`23
`32
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`27, 34
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`Id. at 25.
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`35 U.S.C § References/Basis
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`103(a)1
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`Kahn2, APA3
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`103(a)
`103(a)
`103(a)
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`103(a)
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`Kahn, APA, Burchfiel4
`Kahn, APA, Fisher5
`Kahn, APA, Cerf6
`Kahn, APA, Burchfiel, HART
`Data Link,7 Hart Command8
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`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, however, the amended
`version does not apply here because the ’732 patent was filed before March
`16, 2013, the effective date of the relevant amendment.
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`2 Robert E. Kahn, Advances in Packet Radio Network Protocols,
`Proceedings of the IEEE, Vol. 66, No. 11, Nov. 1978 (Ex. 1002) (“Kahn”).
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`3 Petitioner relies upon the disclosures found in column 1, lines 54 through
`65, column 2, lines 27 through 29, column 5 lines 32 through 44, and Figure
`1 of the ’732 patent as Admitted Prior Art (“APA”). See Pet. 13–14.
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`4 J. Burchfiel, et al., Functions and Structure of a Packet Radio Station,
`National Computer Conference presented paper, 1975 (Ex. 1003,
`“Burchfiel”).
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`5 Fisher General Catalog 501, 5th ed., 1989, Fisher Controls (Ex. 1008,
`“Fisher”).
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`6 Vinton G. Cerf & Peter T. Kirstein, Issues in Packet-Network
`Interconnection, Proceedings of the IEEE, Vol. 66, No. 11, Nov. 1978 (Ex.
`1011, “Cerf”).
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`7 HART® Smart Communications Protocol Physical and Data Link
`Specification printed Mar. 28, 1988 (Ex. 1009, “HART Data Link”).
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`8 HART® Smart Communications Protocol Universal Command
`Specification, Rev. 4.1, Rosemount, Inc., printed Nov. 3, 1990 (Ex. 1010,
`“HART Command”).
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`3
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`IPR2015-01973
`Patent 8,013,732 B2
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`After institution of trial, Patent Owner filed a Response (Paper 12,
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`“PO Resp.”) and Petitioner filed a Reply (Paper 14, “Reply”). An oral
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`hearing was held on October 28, 2016, and the hearing transcript was
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`entered in the record. Paper 24 (“Tr.”). On March 27, 2017, we issued a
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`Final Written Decision and held that Petitioner had failed to demonstrate by
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`a preponderance of the evidence that claims 13, 14, 16–21, and 23–35 are
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`unpatentable. Paper 25 (“’1973 Final Written Decision”), 13. On April 3,
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`2017, Petitioner filed a Notice of Appeal (see Paper 26).
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`The ’732 patent at issue here is related to U.S. Patent No. 8,754,780
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`B2 (“’780 patent”)9, which was also the subject of an inter partes review
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`between the same parties—IPR2016-00984 (“’984 inter partes review”).
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`See Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984, Paper 43 at 2–3
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`(PTAB Oct. 25, 2017) (“’984 Final Written Decision”). On October 25,
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`2017, we issued a final written decision in the ’984 inter partes review and
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`determined that claims 1–15 of the ’780 patent are unpatentable. Id. at 61.
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`Patent Owner appealed our determination in the ’984 inter partes review.
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`Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984, Paper 44 (PTAB Dec.
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`21, 2017).
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`In the instant case, the Federal Circuit issued an opinion in Emerson,
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`vacating our determination and remanding for further proceedings.
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`Emerson, 745 F. App’x at 370; see also Paper 33. The court directed us, on
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`remand, to “address the seemingly opposite finding from the IPR2016-
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`00984 Final Written Decision.” Emerson, 745 F. App’x at 374.
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`Additionally, the court directed us to explain (1) why an explicit statement in
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`9 See ’984 Final Written Decision, 25, 28 (noting that the ’780 and ’732
`patents share nearly the same specification and claims).
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`“Kahn—that deployment of the packet radio net should be rapid and
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`convenient—does not provide a” sufficient motivation to combine the prior
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`art teachings and (2) how we determined that impermissible hindsight would
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`be required to conclude that Kahn provided the motivation to combine. Id.
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`at 373–74.
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`We conferred with the parties to discuss the procedure for the remand.
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`Paper 32, 3. Petitioner sought additional briefing post-remand and Patent
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`Owner asserted that no additional briefing was needed. Id.; see also Ex.
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`1014 (transcript of conference call). We agreed with Patent Owner and
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`determined that no additional briefing was required. Paper 32, 3.
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`The Board has jurisdiction under 35 U.S.C. §§ 144 and 6. This
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`Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
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`§ 42.73. For the reasons discussed below, we determine that Petitioner has
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`shown by a preponderance of the evidence that claims 13, 14, 16, 18–21,
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`23–26, 28–33, and 35 of the ’732 patent are unpatentable. We further
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`determine that Petitioner has failed to show by a preponderance of the
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`evidence that claims 17, 27, and 34 of the ’732 patent are unpatentable.
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`B. Related Proceedings
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`Petitioner informs us that SIPCO, LLC, v. Emerson Electric Co., No.
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`6:15-cv-00907-JRG-KNM (E.D. Tex.) may be impacted by this proceeding.
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`Paper 7 (Petitioner’s Amended Mandatory Notices). This civil action has
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`been transferred to the Northern District of Georgia and consolidated with
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`Civil Action No. 1:15-cv-0319-AT (N.D. Ga.). In addition, there are several
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`pending patent applications that claim priority to the ’732 patent. Pet. 2,
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`Paper 7.
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`C. The ’732 Patent (Ex. 1001)
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`The ’732 patent is titled “Systems and Methods for Monitoring and
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`Controlling Remote Devices.” Ex. 1001, code (54). It describes “a system
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`for monitoring a variety of environmental and/or other conditions within a
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`defined remotely located region.” Id. at Abstract. “The system is
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`implemented by using a plurality of wireless transmitters, wherein each
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`wireless transmitter is integrated into a sensor adapted to monitor a
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`particular data input.” Id. Figure 2 of the ’732 patent is reproduced below.
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`Figure 2 is a block diagram of the monitoring and control system of a
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`preferred embodiment of the invention. Id. at 4:42, 7:33–56. Control
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`system 200 includes one or more sensor/actuators 212, 214, 216, 222, and
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`224. Id. at 5:65–67. Each of these sensor/actuators is integrated with a
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`transceiver. Id. Transceivers 212, 214, 216, 222, and 224 may be located
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`within an environment to be monitored such as an automobile, rainfall
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`gauge, or parking lot access gate. Id. at 7:34–37. These devices may be
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`used to monitor vehicle diagnostics, total rainfall and sprinkler supplied
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`water, and access gate position. Id. The control system also includes a
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`plurality of stand-alone transceivers 211, 213, 215, and 221. Id. at 6:15–17.
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`Local gateways 210 and 220 receive transmissions from the transceivers and
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`analyze and convert these transmissions as necessary in order to retransmit
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`the information via a wide area network. Id. at 6:37–40.
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`D. Illustrative Claim
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`We instituted inter partes review of claims 13, 14, 16–21, and 23–35
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`of the ʼ732 patent, of which claims 13, 20, 26, and 31 are independent.
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`Claim 13 is illustrative of the challenged claims and is reproduced below.
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`13.
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`In a system comprising a plurality of wireless devices
`configured for remote wireless communication and
`comprising a device for monitoring and controlling
`remote devices, the device comprising:
`a transceiver having a unique identification code and being
`electrically interfaced with a sensor, the transceiver being
`configured to receive select information and
`identification information transmitted from another
`wireless transceiver in a predetermined signal type;
`the transceiver being further configured to wirelessly retransmit
`in the predetermined signal type the select information,
`the identification information associated with the nearby
`wireless transceiver, and transceiver identification
`information associated with the transceiver making
`retransmission; and
`a data controller operatively coupled to the transceiver and the
`sensor, the data controller configured to control the
`transceiver and receive data from the sensor, the data
`controller configured to format a data packet for
`transmission via the transceiver, the data packet
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`comprising data representative of data sensed with the
`sensor.
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`E. Person of Ordinary Skill in the Art
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`Patent Owner and Petitioner provide similar definitions of the person
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`of ordinary skill in the art. Petitioner’s declarant, Dr. Stephen Heppe, opines
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`that this individual would have had, through formal education or practical
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`experience, the equivalent of a Bachelor’s Degree in Electrical Engineering
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`and two to three years of experience in the development and design, or
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`technical marketing, of radio communications or computer network systems.
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`Pet. 10 (citing Ex. 1004 ¶ 8). Patent Owner’s declarant, Dr. Kevin
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`Almeroth, opines that this individual would have had a four-year degree
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`from an accredited institution (usually denoted as a B.S. degree) in computer
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`science, computer engineering or the equivalent and at least two years of
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`experience with, or exposure to, the design and development of wireless
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`communication network systems, including familiarity with protocols used
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`therein. Ex. 2001 ¶ 75. We are persuaded that there is no substantive
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`difference in these proposals and we find that the person of ordinary skill in
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`the art would have had a bachelor’s degree or equivalent experience in
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`electrical engineering, computer science, or a related discipline and would
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`also have at least two years of experience directed to network development
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`and design.
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`F. Overview of Kahn
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`Kahn discusses “the basic concepts of packet radio.” Ex. 1002,
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`Abstract. In particular, Kahn describes PRNET, a multi-hop, multiple
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`access packet radio network. Id. at 1469, col. 1. Kahn notes that the
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`network “should be capable of internetting in such a way that a user
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`providing a packet address in another net can expect his network to route the
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`associated packet to a point of connection with the other net or to an
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`intermediate (transit) net for forwarding.” Id. at 1470, col. 1.
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`Each packet radio in Kahn’s network “contains the antenna, RF
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`transmitter/receiver, and all signal processing and data detection logic.” Id.
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`at 1477, col. 2. In addition, each radio contains a microprocessor controller
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`plus semiconductor memory for packet buffering and software. Id. Each PR
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`has an identifier known as its “selector” that is used in routing and control
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`procedures. Id. at 1479, col. 1. These selectors may be “unique and
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`preassigned.” Id. at 1479 n.1.
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`Packets are transmitted to a destination using a store-and-forward
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`method. Id. In this method, a user-generated packet with associated
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`addressing and control information in the packet’s header is sent to the PR
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`for processing. Id. The PR adds network routing and control information
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`and transmits the packet to a nearby PR, called a repeater, which is identified
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`within the packet. Id. at 1477, col. 1, 1477, col. 2. The repeater processes
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`the header to ascertain whether it should relay the packet, deliver it to an
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`attached device, or discard it. Id. at 1477, col. 2. The packet will be relayed
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`repeater to repeater until it reaches the final repeater, which broadcasts it to
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`the destination PR. Id.
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`An exemplary packet consists of a 48-bit preamble followed by a
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`variable length header that is followed by the text and a checksum. Id. at
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`1478, col. 2. In routing the packet, a station can send the entire path directly
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`to the sending or receiving PR and in this case, the transmitted packet “could
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`then contain the entire set of selectors in its header.” Id. at 1479, col. 2.
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`G. Overview of the APA
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`The ’732 patent describes a variety of known “systems for monitoring
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`and controlling manufacturing processes, inventory systems, emergency
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`control systems, and the like.” Ex. 1001, 1:54–56. Representative systems
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`include “[h]eating, ventilation, air-conditioning systems, fire reporting and
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`damage control systems.” Id. at 2:27–30. These systems “use remote
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`sensors and controllers to monitor and automatically respond to system
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`parameters.” Id. at 1:56–59. “A number of control systems utilize
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`computers to process system inputs, model system responses, and control
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`actuators to implement process corrections within the system.” Id. at 1:59–
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`61. Figure 1 of the ’732 patent is reproduced below.
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`Figure 1 “is a block diagram of a prior art control system.” Id. at
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`4:41. Prior art control system 100 includes a plurality of sensor/actuators
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`111–117. Id. at 5:32–36. The sensors are “electrically coupled to a local
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`controller 110.” Id. at 5:36–37. The local controller often is coupled with
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`the public telephone network and a central controller 130. The wiring
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`between the elements of the prior art system is described as “a dangerous
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`and expensive proposition.” Id. at 5:59–61.
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`H. The ’1973 Final Written Decision
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`In the ’1973 Final Written Decision, we analyzed Petitioner’s
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`arguments and evidence regarding the teachings of Kahn and APA. ’1973
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`Final Written Decision, 9. We noted that Petitioner bears the burden of
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`proving unpatentability and we thus analyzed the allegations and evidence as
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`provided by Petitioner to determine whether Petitioner met its burden. Id. at
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`9–10; see also Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d
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`1349, 1356 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
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`1357 (2018)) (“[T]he statute tells us that the petitioner’s contentions, not the
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`Director’s discretion, define the scope of the litigation all the way from
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`institution through to conclusion . . . . It would thus not be proper for the
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`Board to deviate from the grounds in the petition and raise its own
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`obviousness theory.”); Kranos Corp. v. Riddell, Inc., IPR2016-01650, 2018
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`WL 1037395, at *5 (PTAB Feb. 21, 2018) (citing DeSilva v. DiLeonardi,
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`181 F.3d 865, 866–67 (7th Cir. 1999)) (“A brief must make all arguments
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`accessible to the judges, rather than ask them to play archeologist with the
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`record.”).
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`We noted that Petitioner asserts, in its Petition, that one of ordinary
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`skill would have been motivated to use Kahn’s wireless, packet radio
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`network to reduce the costs associated with installing the physical cables and
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`wiring that the APA systems require. Id. at 7–8, 14 (quoting Ex. 1001,
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`2:34–37; Ex. 1004 ¶¶ 30–31). In the Petition, Petitioner relies on Kahn and
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`APA, as well as Dr. Heppe’s declaration. Id. at 7–9; see also Pet. 14 (citing
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`Dr. Heppe’s declaration to argue for a motivation to combine). Specifically,
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`Petitioner cites paragraphs 30 and 31 of Dr. Heppe’s declaration to support
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`its argument that “[a] POSITA would have recognized the advantage of
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`using the communication infrastructure disclosed in Kahn to allow the
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`sensors and actuators of the APA to be moved from location to location
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`without having to re-install physical cables and wires to connect the sensors
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`and actuators.” Pet. 14 (citing Ex. 1004 ¶¶ 30–31).
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`At the oral hearing, Petitioner for the first time directed us to
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`Greeves’s10 disclosure of a cost comparison between radio technology and
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`technology that uses physical connections to provide additional support for
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`its assertions regarding Kahn and APA. Tr. 24:11–20, 26:8–14, 59:16–20
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`(citing Ex. 2004, 1). In the ’1973 Final Written Decision, we found that
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`Petitioner’s reliance on Greeves was improper and untimely because it was
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`first raised at the hearing. ’1973 Final Written Decision, 9. We thus
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`declined to analyze Greeves as part of Petitioner’s asserted grounds of
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`obviousness; instead we focused our analysis on Petitioner’s allegations as
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`to Kahn and APA.
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`We found that Kahn discloses certain costs (such as costs associated
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`with data transfer speeds and complexity of the packet radio), but it does not
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`discuss any costs related to physical cables or wiring, like Petitioner asserts.
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`Id. at 10. Petitioner does not identify in its briefing any discussion of
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`physical cables or wires in Kahn. Id. at 11. We thus determined that
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`Petitioner failed to demonstrate that one of ordinary skill would have
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`gleaned from Kahn, without the benefit of impermissible hindsight, any
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`10 B. Greeves, “SCADA Uses Radio to Bridge the Gap,” Sensor Review,
`vol. 14, no. 2, pp. 31–34, 1994 (Ex. 2004, “Greeves”).
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`reference to physical cables or wiring or a problem associated with their
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`costs. Id. at 12. Thus, because we found that Kahn neither discusses nor
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`includes express teachings regarding physical cables and wires or their
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`associated costs, and because Petitioner did not otherwise provide support
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`for its alleged motivation to combine Kahn with APA, we determined that
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`Petitioner failed to establish that one of ordinary skill in the art would have
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`been motivated to combine Kahn and APA. Id. Ultimately, we determined
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`that in the absence of a sufficient rationale for combining Kahn and APA,
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`Petitioner failed to demonstrate by a preponderance of the evidence that
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`claims 13, 14, 16–21, and 23–35 would have been obvious over Kahn and
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`APA.
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`I. The ’984 Final Written Decision
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`In the ’984 Final Written Decision, we determined that claims 1–15 of
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`the ’780 patent are unpatentable. ’984 Final Written Decision, 2, 61. We
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`found that the ’780 patent and the ’732 patent share nearly the same
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`specification and claims. Id. at 25. We further found that even though the
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`claim language of the two patents had some differences, those differences
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`were non-substantive. Id. at 28; see also id. at 25–28 (reproducing a table
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`comparing claim 1 of the ’780 patent with claim 13 of the ’732 patent, and
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`discussing the differences that Petitioner identified).
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`In the’984 proceeding, Petitioner contended that claims 1, 2, and 7 of
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`the ’780 patent are unpatentable as obvious over Kahn and APA. Id. at 31.
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`There, we found that Petitioner sufficiently “articulated reasoning with
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`rational underpinning to support the legal conclusion of obviousness.” Id. at
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`43 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
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`We determined that Petitioner properly argued that one of ordinary
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`skill would have been motivated to combine Kahn and the APA to realize
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`the benefits of wireless communications that Greeves discloses, such as
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`“cost savings,” an increase in power and efficiency of the control system,
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`and improved integrity, incorruptibility, and ease of set-up and operation.
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`Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984, Paper 25 at 12 (PTAB
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`Mar. 31, 2017) (“’984 Reply”) (citing Ex. 2004, 31, 32). Greeves states that
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`radio is “relatively cost-effective when compared with other physical links.”
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`Ex. 2004, 1; see also ’984 Final Written Decision, 45.
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`Petitioner argued, in its ’984 Reply, that APA “refers to the expense
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`of installing wired sensors as a problem to be overcome.” ’984 Reply, 10;
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`see also ’780 patent, col. 2, ll. 41–53 (“A problem with expanding the use of
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`control systems technology to distributed systems are the costs associated
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`with the sensor-actuator infrastructure required to monitor and control
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`functions within such systems.”). The ’780 patent recites: “appropriately
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`wiring an existing industrial plant can be a dangerous and expensive
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`proposition.” ’780 patent, col. 6, ll. 1–3 (emphasis added); see also ’984
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`Reply, 10. Petitioner relied on these teachings from the ’780 patent, as
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`supplemented by Greeves’s discussion of the cost-effectiveness of wireless
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`communications, as an additional reason to combine Kahn with APA. ’984
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`Reply, 9–14.
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`Petitioner also argued that “Kahn clearly posits that a wireless system
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`is faster to deploy than a wired system.” ’984 Reply, 14. Petitioner thus
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`argued that Kahn’s teaching of a wireless system’s rapid deployment
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`provides a further motivation to combine Kahn and the APA. Id. Petitioner
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`further supported its arguments with citation to Greeves’s disclosure that a
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`wireless communication enables an easier set-up, when compared to
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`technology requiring physical links. Id. at 15 (citing Ex. 2004, 32).
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`Similarly, Petitioner argued that Greeves’s “promotion of wireless to
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`improve ‘ease of set-up’ serves as [an] additional evidence that at the time of
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`the invention, a POSITA would [have known] that a wireless system is more
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`reconfigurable and flexible than a wired system.” Id. at 15. And thus,
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`Petitioner argued that a wireless system’s improved reconfigurability and
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`flexibility provide additional motivations to combine Kahn and the APA. Id.
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`In the ’984 Final Written Decision, we found that Petitioner had
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`properly relied on Greeves to show the knowledge of an ordinarily skilled
`
`artisan at the time of the alleged invention. ’984 Final Written Decision, 46,
`
`48. We noted that Petitioner introduced Greeves in its Reply for purposes of
`
`responding to an argument that Patent Owner presented in its Response. Id.
`
`Further, we noted that by considering Greeves, we neither denied Patent
`
`Owner due process nor acted contrary to the requirements of the
`
`Administrative Procedure Act because Patent Owner received adequate
`
`notice of the issues that we considered and we did not deny Patent Owner a
`
`meaningful opportunity to be heard. Id. at 46–47.
`
`Upon review of the record, we determined that Petitioner
`
`demonstrated by a preponderance of the evidence that claims 1, 2, and 7 of
`
`the ’780 patent are unpatentable as obvious over Kahn and the APA. Id. at
`
`54–55.
`
`J. The Decision of the Federal Circuit and Issue on Remand
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`On appeal, Petitioner raised two main issues: (1) whether we erred in
`
`disregarding Greeves; and (2) whether we erred in finding that one of
`
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`15
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`IPR2015-01973
`Patent 8,013,732 B2
`
`ordinary skill would not have been motivated to combine Kahn and the
`
`APA. Emerson, 745 F. App’x at 371.
`
`Regarding the first issue, the Federal Circuit concluded that Petitioner
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`improperly relied on Greeves for the first time at the oral hearing, and we
`
`thus correctly disregarded it in our analysis. Id. at 372. Our reviewing court
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`acknowledged that at oral argument, parties may only present arguments that
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`rely on papers that were previously submitted and may not present new
`
`evidence or arguments at that late stage in the proceeding. Id.
`
`Regarding the second issue, the court concluded that the ’1973 Final
`
`Written Decision “‘does not address, or at least does not clearly address,’
`
`why the statement in Kahn—that deployment of the packet radio net should
`
`be rapid and convenient—does not provide a rationale that would have
`
`motivated a skilled artisan to combine the teachings of Kahn and the
`
`Admitted Prior Art.” Id. at 373 (citing Pers. Web Techs., LLC v. Apple, Inc.,
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`848 F.3d 987, 993 (Fed. Cir. 2017)). The court found our analysis to lack
`
`the necessary support. Id. As such, it noted that we concluded, without
`
`sufficient reasoning, that Kahn does not provide a rationale that would have
`
`motivated one of ordinary skill to combine Kahn and the APA. Id.
`
`The court then turned to IPR2016-00984 and noted that there we also
`
`considered Kahn and the APA, but came to opposite conclusions on
`
`patentability and the motivation to combine their teachings. Id. at 373. The
`
`court recognized that Petitioner properly raised Greeves in IPR2016-00984
`
`whereas it did not do so in the instant proceeding. Id. But the court also
`
`noted that Dr. Heppe’s declarations in the two proceedings were
`
`substantially identical concerning the motivation to combine. Id.
`
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`16
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`IPR2015-01973
`Patent 8,013,732 B2
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`
`The court explained that because we did not adequately explain our
`
`reasoning in finding that Kahn does not provide a rationale that would have
`
`motivated one of ordinary skill to combine Kahn and the APA and because
`
`our conclusion was contrary to our determination in IPR2016-00984, the
`
`court vacated and remanded our determination. Id. at 370, 373.
`
`On remand, the Federal Circuit has instructed us to (1) “address the
`
`seemingly opposite finding from the IPR2016-00984 Final Written
`
`Decision,” (2) “explain why an explicit statement in Kahn regarding a
`
`potential motivation to combine was not enough,” and (3) explain how we
`
`determined that impermissible hindsight would be required to conclude that
`
`Kahn provided the motivation to combine. See id. at 373–74.
`
`II. ANALYSIS
`
`A. Motivation to Combine Kahn and the APA
`
`In light of the court’s instructions in Emerson, we consider anew
`
`whether Petitioner has articulated sufficient rationale to support its argument
`
`that one of ordinary skill in the art would have combined the teachings of
`
`Kahn and the APA.
`
`As noted in the ’1973 Final Written Decision, “Petitioner assert[ed]
`
`that one of ordinary skill in the art ‘would have been motivated to use the
`
`wireless, packet radio network of Kahn as a communications network for the
`
`prior art monitoring and control systems described in the APA.’” ’1973
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`Final Written Decision, 7 (quoting Pet. 14). According to Petitioner,
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`“[c]ombining Kahn with monitoring and control systems described in the
`
`APA would allow a POSITA to reduce the expense associated with
`
`installing the sensors and actuators at remote locations with physical cables
`
`
`
`17
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`IPR2015-01973
`Patent 8,013,732 B2
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`and wiring.” Pet. 14. Petitioner further asserted that these teachings would
`
`be combined to handle “[o]ne of the problems that the applicants of the ’732
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`patent expressly set out to solve [, which] was the ‘costs associated with the
`
`sensor-actuator infrastructure required to monitor and control functions
`
`within such systems.’” Id. (quoting Ex. 1001, 2:34–37). Dr. Heppe
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`supported that assertion by opining that “Kahn combined with the APA
`
`solves the same problems noted by the applicants.” Ex. 1004 ¶ 31. Patent
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`Owner took issue with these assertions and argued that “[t]he reliance of
`
`both the Petitioner and its expert on the ’732 patent in their attempt to
`
`establish a motivation to combine constitutes classic hindsight use of the
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`patent as a blueprint to reconstruct the claimed invention.” PO Resp. 33.
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`In examining whether Petitioner’s argument and evidence are
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`sufficient, the Federal Circuit has directed us to consider Kahn’s explicit
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`statement “that deployment of the packet radio net should be rapid and
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`convenient.” Emerson, 745 F. App’x at 373. We thus begin our analysis
`
`with Kahn’s relevant teachings.
`
`Kahn recites, “The use of broadcast radio technology for local
`
`distribution of information can also provide a degree of flexibility in rapid
`
`deployment and reconfiguration not currently possible with most fixed plant
`
`installations.” Ex. 1002, 1469, col. 1 (emphasis added). Further, under the
`
`heading “Rapid and Convenient Deployment,” Kahn recites the following:
`
`Deployment of the packet radio net should be rapid and
`convenient, requiring little more than mounting the equipment
`at the desired location. No alignment procedure should be
`required, and in most applications omni-directional antennas
`would be used, thus eliminating the need for antenna alignment.
`Once installed, the system should be self-initializing and self-
`organizing.
`
`
`
`18
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`Id. at 1470, col. 2 (emphasis added).
`
`
`
`The APA relied upon by Petitioner includes Figure 1, which illustrates
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`prior art control system 100. Ex. 1001, 5:33–34. The ’732 patent recites,
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`“[T]hese systems[, such as control system 100,] require electrical coupling
`
`between the local control and system sensors and actuators. As a result,
`
`appropriately wiring an existing industrial plant can be a dangerous and
`
`expensive proposition.” Id. at 5:57–61 (emphasis added).
`
`In light of these teachings, we find that one of ordinary skill would
`
`have recognized that Kahn’s teachings would improve the APA’s control
`
`system 100. We are persuaded that Kahn’s radio technology has a degree of
`
`flexibility in rapid deployment and reconfiguration that is not possible in
`
`fixed installations. We thus determine that one of ordinary skill in the art
`
`would have been motivated to improve the APA’s control system 100,
`
`which requires electrical couplings, with Kahn’s radio technology to attain
`
`said degree of flexibility in rapid deployment and reconfiguration. In the
`
`combination of Kahn and the APA, an ordinarily skilled artisan would bring
`
`to fruition a control system 100 that is capable of rapid deployment and
`
`reconfiguration, requiring little more than mounting control system 100’s
`
`equipment at the desired location.
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`Thus, we are persuaded by Petitioner’s contention that one of ordinary
`
`skill would have recognized the advantage of using the broadcast radio
`
`technology described in Kahn to allow the sensors and actuators of the APA
`
`to be moved from location to location without having to re-install the
`
`physical cables connecting the sensors and actuators. Pet. 14 (citing Ex.
`
`1004 ¶¶ 30–31). Similarly, we are persuaded by Petitioner’s contention that
`
`one of ordinary skill would have recognized that incorporating Kahn’s radio
`
`
`
`19
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`IPR2015-01973
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`technology in the APA’s control system 100 would reduce the expense
`
`associated with the electrical couplings. Id. The radio technology would
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`eliminate some or all of the wiring that the APA recognizes as an “expensive
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`proposition.” Id.
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`Dr. Heppe’s declaration further corroborates what one of ordinary
`
`skill would have understood from Kahn and the APA. Dr. Heppe’s
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`declaration recites the following:
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`30. The applicants note that a problem with expanding
`the use of control systems technology to distributed systems
`“are the costs associated with the sensor-actuator infrastructure
`required to monitor and control functions within su
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