Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 25
`Entered: March 27, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`Case 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.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`Paper 25
`Entered: March 27, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`Case 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.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`
`I. INTRODUCTION
`Emerson Electric Co. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`seeking to institute an inter partes review of claims 13, 14, 16–21, and 23–
`35 of U.S. Patent No. 8,013,732 B2 (Ex. 1001, “the ’732 patent”) pursuant
`to 35 U.S.C. §§ 311–319. SIPCO, LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 6. Based on our review of these submissions,
`we instituted inter partes review of claims 13, 14, 16–21, and 23–35 of the
`’732 patent. Paper 8 (“Dec.”). Specifically, we authorized this inter partes
`review to proceed as to the following grounds:
`
`
`References
`
`Kahn1 and APA2
`
`Kahn, APA, and Burchfiel3
`Kahn, APA, and Fisher4
`Kahn, APA, and Cerf5
`
`§ 103
`
`Basis Claim(s) Challenged
`13, 14, 19–21, 25, 26, 30,
`31, and 33
`§ 103 16–18, 24, 28, 29, and 35
`§ 103 23
`§ 103 32
`
`
`1 Robert E. Kahn, Advances in Packet Radio Network Protocols,
`Proceedings of the IEEE, Vol. 66, No. 11, Nov. 1978 (Ex. 1002) (“Kahn”).
`2 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
`3 J. Burchfiel, et al., Functions and Structure of a Packet Radio Station,
`National Computer Conference presented paper, 1975 (Ex. 1003)
`(“Burchfiel”).
`4 Fisher General Catalog 501, 5th ed., 1989, © Fisher Controls (Ex. 1008)
`(“Fisher”).
`5 Vinton G. Cerf & Peter T. Kirstein, Issues in Packet-Network
`Interconnection, Proceedings of the IEEE, Vol. 66, No. 11, Nov. 1978 (Ex.
`1011) (“Cerf”).
`
`
`
`2
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`
`References
`Basis Claim(s) Challenged
`Kahn, APA, Burchfiel, HART
`Data Link,6 and Hart Command7 § 103 27 and 34
`
`
`Id. at 25.
`Patent Owner filed a Patent Owner’s Response (Paper 12, “PO
`Resp.”), and Petitioner filed a Reply (Paper 14, “Reply”). An oral hearing
`was held on October 28, 2016. Paper 24 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has not demonstrated by a
`preponderance of the evidence that claims 13, 14, 16–21, and 23–35 of the
`’732 patent are unpatentable.
`
`A. Related Proceedings
`
`Petitioner informs us that SIPCO, LLC, v. Emerson Electric Co., No.
`6:15-cv-00907-JRG-KNM (E.D. Tex.) may be impacted by this proceeding.
`Paper 7 (Petitioner’s Amended Mandatory Notices). In addition, there are
`several pending patent applications that claim priority to the ’732 patent.
`Pet. 2, Paper 7.
`
`B. The ’732 Patent (Ex. 1001)
`
`The ’732 patent is titled “Systems and Methods for Monitoring and
`Controlling Remote Devices.” Ex. 1001, at [54]. It describes “a system for
`monitoring a variety of environmental and/or other conditions within a
`
`6 HART® Smart Communications Protocol Physical and Data Link
`Specification printed Mar. 28, 1988 (Ex. 1009) (“HART Data Link”).
`7 HART® Smart Communications Protocol Universal Command
`Specification, Rev. 4.1, Rosemount, Inc., printed Nov. 3, 1990 (Ex. 1010)
`(“HART Command”).
`
`
`
`3
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`defined remotely located region.” Id. at Abstract. “The system is
`implemented by using a plurality of wireless transmitters, wherein each
`wireless transmitter is integrated into a sensor adapted to monitor a
`particular data input.” Id. Figure 2 of the ’732 patent is reproduced below.
`
`
`
`
`Figure 2 is a block diagram of the monitoring and control system of a
`preferred embodiment of the invention. Id. at 4:42, 7:33–56. Control
`system 200 includes one or more sensor/actuators 212, 214, 216, 222, and
`224. Id. at 5:65–67. Each of these sensor/actuators is integrated with a
`transceiver. Id. Transceivers 212, 214, 216, 222, and 224 may be located
`within an environment to be monitored such as an automobile, rainfall
`gauge, or parking lot access gate. Id. at 7:34–37. These devices may be
`used to monitor vehicle diagnostics, total rainfall and sprinkler supplied
`water, and access gate position. Id. The control system also includes a
`
`
`
`4
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`plurality of stand-alone transceivers 211, 213, 215, and 221. Id. at 6:15–17.
`Local gateways 210 and 220 receive transmissions from the transceivers and
`analyze and convert these transmissions as necessary in order to retransmit
`the information via a wide area network. Id. at 6:37–40.
`
`C. Illustrative Claim
`
`As noted above, we instituted inter partes review of claims 13, 14,
`16–21, and 23–35 of the ʼ732 patent, of which claims 13, 20, 26, and 31 are
`independent. Claim 13 is illustrative of the challenged claims and is
`reproduced below:
`13.
`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
`comprising data representative of data sensed with the
`sensor.
`
`
`
`
`
`5
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`D. Person of Ordinary Skill in the Art
`
`Patent Owner and Petitioner provide similar definitions of the person
`of ordinary skill in the art. Petitioner’s declarant, Dr. Stephen Heppe, opines
`that this individual would have, through formal education or practical
`experience, the equivalent of a Bachelor’s Degree in Electrical Engineering
`and two to three years of experience in the development and design, or
`technical marketing, of radio communications or computer network systems.
`Pet. 10 (citing Ex. 1004 ¶ 8). Patent Owner’s declarant, Dr. Kevin
`Almeroth, opines that this individual would have a four-year degree from an
`accredited institution (usually denoted as a B.S. degree) in computer science,
`computer engineering or the equivalent and at least two years of experience
`with, or exposure to, the design and development of wireless communication
`network systems, including familiarity with protocols used therein. Ex.
`2001 ¶ 75. We are persuaded that there is no substantive difference in these
`proposals and we find that the person of ordinary skill in the art would have
`a bachelor’s degree or equivalent experience in electrical engineering,
`computer science, or a related discipline and also would have at least two
`years of experience directed to network development and design.
`II. ANALYSIS
`All of the instituted grounds in this proceeding stem from allegations
`that the challenged claims would have been obvious under 35 U.S.C.
`§ 103(a). In particular, claims 13, 14, 19–21, 25, 26, 30, 31, and 33 are
`alleged to have been obvious over the teachings of Kahn and APA. See Dec.
`25. All of the other challenged claims are alleged to have been obvious over
`Kahn, APA, and one or more of the other cited references. See id.
`
`
`
`6
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`
`A patent claim is unpatentable if the differences between the claimed
`subject matter and the prior art are such that the subject matter, as a whole,
`would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). As part of our analysis
`to determine whether the challenged claims would have been obvious, we
`must be vigilant to avoid the distortion caused by hindsight bias and cautious
`of arguments reliant upon ex post reasoning. Id. at 421. “[W]e must . . . be
`careful not to allow hindsight reconstruction of references to reach the
`claimed invention without any explanation as to how or why the references
`would be combined to produce the claimed invention.” Kinetic Concepts,
`Inc. v. Smith & Nephew, Inc., 688 F.3d 1343, 1368 (Fed. Cir. 2012) (quoting
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir.
`2008)). Thus, “[c]are must be taken to avoid hindsight reconstruction by
`using ‘the patent in suit as a guide through the maze of prior art references,
`combining the right references in the right way so as to achieve the result of
`the claims in suit.”’ Grain Processing Corp. v. Am.-Maize Prods. Co., 840
`F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United
`States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)).
`Petitioner asserts 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.” Pet. 14. According to Petitioner, these teachings
`would be combined to handle “[o]ne of the problems that the applicants of
`the ’732 patent expressly set out to solve [, which] was the ‘costs associated
`with the sensor-actuator infrastructure required to monitor and control
`
`
`
`7
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`functions within such systems.’” Id. (quoting Ex. 1001, 2:34–37).
`Petitioner’s declarant, Dr. Stephen Heppe, testifies that “[t]he applicants’
`response to this perceived problem, at least in part, is to propose an RF
`network for the exchange of data.” Ex. 1004 ¶ 30. Petitioner asserts that
`“[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
`and wiring.” Pet. 14. Dr. Heppe concludes that “Kahn combined with the
`APA solves the same problems noted by the applicants.” Ex. 1004 ¶ 31.
`Patent Owner asserts 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 patent as a blueprint to
`reconstruct the claimed invention.” PO Resp. 33. Petitioner relies upon the
`’732 patent to describe the problem that would motivate one of ordinary skill
`in the art to combine the teachings of Kahn and APA. The Federal Circuit,
`however, has noted that “[o]ften the inventive contribution lies in defining
`the problem in a new revelatory way. In other words, when someone is
`presented with the identical problem and told to make the patented
`invention, it often becomes virtually certain that the artisan will succeed in
`making the invention.” Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377
`(Fed. Cir. 2012).
`Petitioner responds that “there is nothing wrong with using the known
`problem the inventors set out to solve as a starting point for the obviousness
`analysis.” Reply 11. Patent Owner asserts that this was not a known
`problem, but rather it was a problem recognized by the patentee and this
`insight motivated the patentee to come up with the invention claimed in the
`
`
`
`8
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`’732 patent. Tr. 54:11–19. A determination of obviousness “is in a sense
`necessarily a reconstruction based upon hindsight reasoning, but so long as it
`takes into account only knowledge which was within the level of ordinary
`skill at the time the claimed invention was made and does not include
`knowledge gleaned only from applicant’s disclosure, such a reconstruction is
`proper.” In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Thus,
`we look to see if the Petitioner has provided evidence that this was a known
`problem in the art or just a problem defined by the patentee.
`At the oral hearing, Petitioner responded that Exhibit 2004 (Tr. 24:11–
`25:12) and Kahn (id. at 54:22–56:5) provide additional evidence to support
`its assertion that one of ordinary skill in the art would have been motivated
`to combine Kahn and APA. Petitioner’s first reference to Exhibit 2004,
`however, occurred at the oral hearing and neither Petitioner’s briefing nor
`Dr. Heppe’s declaration refer to this exhibit. The only reference to this
`exhibit in this proceeding was in Dr. Kevin Almeroth’s declaration where he
`cited it to support his assertion of “challenges and significant delays
`associated with using radio technology.” Ex. 2001 ¶ 113 (citing Ex. 2004,
`31–32). Thus, we find that it is improper to rely upon Exhibit 2004 as
`evidence that a person of ordinary skill in the art at the time of the filing of
`the application for the ’732 patent would have been looking to reduce the
`expense associated with installing the sensors and actuators at remote
`locations with physical cables and wiring. Therefore, we move to the
`disclosures of Kahn to see if Kahn provides evidence that one of ordinary
`skill in the art at the time the invention was made would have been
`motivated to combine the teachings of these references. We note, however,
`that our narrow focus on Kahn is dictated by Petitioner’s arguments. It is
`
`
`
`9
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`Petitioner’s burden to prove unpatentability and thus, we analyze the
`allegations and evidence as provided by Petitioner to determine whether
`Petitioner has met its burden. Under KSR, Petitioner was not limited to
`proving its case by finding a motivation on the pages of the cited references
`and a much broader range of arguments would have been permissible. KSR,
`550 U.S. at 419.
`First, we note that Kahn does not discuss costs related to installation
`or wiring. See generally Ex. 1002. Second, Kahn’s discussion of cost is
`based on the speed at which data may be transferred through the network
`and the reference specifically states that “delay, throughput, and cost are
`intricately related because lower delay usually means higher data rates
`which in turn, implies higher throughput and greater cost.” Ex. 1002, 1468
`col. 2. Kahn also speaks to costs associated with providing with a sufficient
`number of relays in order to provide adequate coverage in a particular area
`and notes that this cost could be acceptable if the user population is
`sufficiently dense. Id. at 1471 col. 2. Kahn does state that “all routes are
`assigned by the station to minimize PR cost and complexity”; however,
`based on our review of the reference as a whole, we are not persuaded that
`the costs referenced in that statement are related to wiring or installation
`costs. Id. at 1477, col. 1. Thus, we are not persuaded that Kahn provides
`evidence that the problem described in the ’732 patent was a known problem
`in the art.
`Next, we review Petitioner’s assertions and evidence to see if there
`exists another rationale for combining the teachings of Kahn and APA.
`Petitioner alleges that “Kahn would also have motivated a POSITA to
`
`
`
`10
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`combine the teachings of Kahn with the APA.” Pet. 14. Dr. Heppe opined
`that
`
`Kahn specifically notes the use of packet radio in the mobile
`environment (Kahn, 1468–1469), and the advantage of
`broadcast radio technology (such as the PRNET discussed in
`the article) in terms of network deployment flexibility and
`reconfiguration, as compared with most fixed plant
`installations. Id., 1469, col. 1. Kahn expected to see “a
`considerable increase in the usage of civilian terminals and
`microcomputers ‘on the move’ during the early 1980’s but, in
`contrast to the military environment, these applications are
`expected to involve relatively simple equipment, reduced
`capabilities and lower costs.” Id. Thus, Kahn also recognized
`that cost is a factor for civilian applications. See also Kahn, p.
`1477, col. 1 (routes are assigned by the station to minimize PR
`cost and complexity).
`
`Ex. 1004 ¶ 31. Petitioner asserts that “[a] POSITA would have recognized
`the advantage of using the communication infrastructure disclosed in Kahn
`to allow the sensors and actuators of the APA to be moved from location to
`location without having to re-install physical cables and wires to connect the
`sensors and actuators.” Pet. 14 (citing Ex. 1004 ¶¶ 30–31). As previously
`noted, however, Petitioner does not identify discussion of physical cables or
`wires in Kahn. The portion of Dr. Heppe’s declaration cited in support of
`this proposition relies heavily on the APA, but it does note that Kahn states
`that “[d]eployment of the packet radio net ‘should be rapid and convenient,
`requiring little more than mounting the equipment at the desired location.’”
`Ex. 1004 ¶ 31 (quoting Ex. 1002, 1470 col. 2). According to Dr. Heppe,
`“[t]his aligns with the applicants’ awareness that an RF network does not
`require the installation of physical wires and cables to connect the
`sensors/actuators with the local controller, and that an RF system is easily
`
`
`
`11
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`expanded.” Id. Kahn, however, does not seem to discuss such issues. That
`portion of Kahn discusses “Rapid and Convenient Deployment [of a packet
`radio network].” Ex. 1002, 1470 col. 2. There, Kahn specifies that “the
`network should discover the radio connectivity between nodes and organize
`routing strategies on the basis of this connectivity and on the
`source/destination data of traffic presented to the net. Packet radios should
`be capable of unattended operation.” Id. Petitioner has not shown that
`without hindsight a person of ordinary skill in the art would have gleaned
`from this passage any reference to physical cables or wiring. Kahn does
`discuss using its network for civilian purposes, but Petitioner has not
`provided sufficient reasoning (apart from hindsight) as to why one of
`ordinary skill in the art would modify Kahn’s network to connect the sensors
`and actuators of the APA. Thus, we are not persuaded that Kahn provides a
`rationale, separate and apart from hindsight, which would motivate one of
`ordinary skill in the art to combine the teachings of Kahn and the APA.
`In the absence of proof of a sufficient rationale for combining Kahn
`and the APA, we find that Petitioner has not meet its burden to demonstrate
`that claims 13, 14, 19–21, 25, 26, 30, 31, and 33 would have been obvious
`over Kahn and APA. Petitioner also relies upon this same rationale as part
`of its reasoning for why claims 16–18, 23, 24, 27–29, 32, 34, and 35 would
`have been obvious over Kahn, APA and other cited references. Thus, for the
`reasons described above we are not persuaded that Petitioner has proffered
`sufficient rationale to demonstrate that claims 16–18, 23, 24, 27–29, 32, 34,
`and 35 would have been obvious. Therefore, we find that Petitioner has not
`met its burden as to any of the challenged claims in this proceeding.
`
`
`
`12
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`
`III. CONCLUSION
`Based on the arguments in the Petition, as well as the evidence of
`record, we determine that Petitioner has not demonstrated by a
`preponderance of the evidence that claims 13, 14, 16–21, and 23–35 of the
`ʼ732 patent would have been obvious.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner has failed to prove by a preponderance of
`the evidence that claims 13, 14, 16–21, and 23–35 of the ʼ732 patent are
`unpatentable; and
`FURTHER ORDERED that, because this is a final written decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`
`PETITIONER:
`
`Donald L. Jackson
`James D. Berquist
`Walter D. Davis, Jr.
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`djackson@dbjg.com
`jberquist@dbjg.com
`wdavis@dbjg.com
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`
`
`13
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`James E. Schutz
`TROUTMAN SANDERS LLP
`james.schutz@troutmansanders.com
`
`
`
`14
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
