Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`Filed: March 28, 2016
`
`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.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 8
`Filed: March 28, 2016
`
`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.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
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`I. INTRODUCTION
`
`A. Background
`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, “Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`Petitioner contends the challenged claims are unpatentable under
`35 U.S.C. §103 on the following specific grounds (Pet. 10–60):
`Reference(s)
`Basis Claim(s) Challenged
`13, 14, 19–21, 25, 26, 30,
`31, and 33
`§ 103 16–18, 24, 28, 29, and 35
`§ 103 23
`
`Kahn1 and APA2
`
`§ 103
`
`Kahn, APA, and Burchfiel3
`Kahn, APA, and Fisher4
`
`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”).
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`Reference(s)
`Kahn, APA, and Cerf5
`Kahn, APA, Burchfiel, HART Data
`Link,6 and Hart Command7
`
`Basis Claim(s) Challenged
`§ 103 32
`
`§ 103 27 and 34
`
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far (prior to Patent
`Owner’s Response). This is not a final decision as to patentability of claims
`for which inter partes review is instituted. Our final decision will be based
`on the record as fully developed during trial. For reasons discussed below,
`we institute inter partes review of claims 13, 14, 16–21, and 23–35 of the
`ʼ732 patent.
`
`B. 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.
`
`C. The ʼ732 Patent
`The ’732 patent is titled “Systems and Methods for Monitoring and
`Controlling Remote Devices.” Ex. 1001, at [54]. It describes “a system for
`
`
`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”).
`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”).
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`monitoring a variety of environmental and/or other conditions within a
`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
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`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.
`
`D. Illustrative Claim
`As noted above, Petitioner challenges claims 13, 14, 16–21, and 23–
`35 of the ʼ732 patent, of which claims 13, 20, 26, and 31 are independent.
`Claim 13 and 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.
`
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`II. CLAIM CONSTRUCTION
`In an inter partes review, “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b). Under this standard, we
`construe claim terms using “the broadest reasonable meaning of the words in
`their ordinary usage as they would be understood by one of ordinary skill in
`the art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997). We presume that claim terms have their ordinary and customary
`meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). This presumption, however, may be rebutted if the specification
`includes defines the claim term with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner seeks construction of the terms “gateway,” “sensor,”
`“actuator,” and “function code.” Pet. 6–10. Patent Owner opposes
`Petitioner’s constructions and provides an explicit construction for “sensor.”
`Prelim. Resp. 12–14. Based on the issues currently before us, we are
`persuaded that no terms require express construction. See Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`
`III. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
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`A. Analysis of Asserted Grounds Based on Kahn and APA
`1. Overview of Kahn
`Kahn discusses “the basic concepts of packet radio.” Ex. 1002,
`Abstract. In particular, Kahn describes PRNET, a multi-hop, multiple
`access packet radio network. Id. at 1469, col. 1. Kahn notes that the
`network “should be capable of internetting in such a way that a user
`providing a packet address in another net can expect his network to route the
`associated packet to a point of connection with the other net or to an
`intermediate (transit) net for forwarding.” Id. at 1470, col. 1.
`The packet radios (“PRs”) in Kahn’s network “contains the antenna,
`RF transmitter/receiver, and all signal processing and data detection logic.”
`Id. at 1477, col. 2. In addition, each radio contains a microprocessor
`controller plus semiconductor memory for packet buffering and software.
`Id. Each PR has an identifier known as its “selector” that is used in routing
`and control procedures. Id. at 1479, col. 1. These selectors may be “unique
`and preassigned.” Id. at 1479 n.1.
`Packets are transmitted to a destination using a store-and-forward
`method. Id. In this method, a user generated packet with associated
`addressing and control information in the packet’s header is sent to the PR
`for processing. Id. The PR adds network routing and control information
`and transmits the packet to a nearby PR, called a repeater, which is identified
`within the packet. Id. at 1477, col.1, 1477, col. 2. The repeater processes
`the header to ascertain whether it should relay the packet, deliver it to an
`attached device, or discard it. Id. at 1477, col. 2. The packet will be relayed
`repeater to repeater until it reaches the final repeater, which broadcasts it to
`the destination PR. Id.
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`An exemplary packet consists of a 48 bit preamble followed by a
`variable length header that is followed by the text and a checksum. Id. at
`1478, col. 2. In routing the packet, a station can send the entire path directly
`to the sending or receiving PR and in this case, the transmitted packet “could
`then contain the entire set of selectors in its header.” Id. at 1479, col. 2.
`2. Overview of APA
`The ’732 patent describes a variety of known “systems for monitoring
`and controlling manufacturing processes, inventory systems, emergency
`control systems, and the like.” Ex. 1001, 1:54–56. Representative systems
`include “[h]eating, ventilation, air-conditioning systems, fire reporting and
`damage control systems.” Id. at 2:27–30. These systems “use remote
`sensors and controllers to monitor and automatically respond to system
`parameters.” Id. at 1:56–59. “A number of control systems utilize
`computers to process system inputs, model system responses, and control
`actuators to implement process corrections within the system.” Id. at 1:59–
`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
`4:41. Prior art control system 100 includes a plurality of sensor/actuators
`111, 112, 113, 114, 115, 116, and 117. Id. at 5:32–36. The sensors are
`“electrically coupled to a local controller 110.” Id. at 5:36–37. The local
`controller often is coupled with the public telephone network and a central
`controller 130. The wiring between the elements of the prior art system is
`described as “a dangerous and expensive proposition.” Id. at 5:59–61.
`3. Analysis of Asserted Ground of Obviousness over Kahn and APA
`Petitioner asserts that claims 13, 14, 19–21, 25, 26, 30, 31, and 33 of
`the ’732 Patent are unpatentable under 35 U.S.C. § 103 as obvious over
`Kahn and APA. Pet. 10–44. Petitioner relies on a Declaration from
`Dr. Stephen Heppe to support its allegations. Ex. 1004.
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`Petitioner argues that Kahn’s packet radio network combined with
`APA’s monitoring and control system would have taught one of ordinary
`skill the limitations of the challenged claims. Pet. 14. 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.” Id. Specifically, “[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.” Id. (citing Ex. 1004 ¶¶ 30–31).
`a. Independent Claims 13, 20, 26, and 31
`Independent claims 13, 20, 26, and 31 recite similar structures, and
`Petitioner points to similar teachings for the overlapping portions of the
`claims. Petitioner’s arguments regarding these claims may be summarized
`as follows: Kahn’s PRs include a transmitter/receiver that Petitioner asserts
`teaches the claimed transceiver. Pet. 17. Each of Kahn’s PRs has a unique
`selector that is argued to teach the claimed unique identification code. Id.
`The text portion of Kahn’s packets contains information including the
`unique selectors for the repeaters on the path along which the packet is to be
`routed. Id. at 19–21 (citing Ex. 1004 ¶¶ 57–60). Further, Petitioner
`contends that the microprocessor controller described as part of Kahn’s PR
`would have taught the claimed controller. Id. at 22. Petitioner argues that
`APA teaches the claimed sensors. Id. at 19. According to Petitioner
`“Kahn’s controller would be coupled to the sensors described in the APA so
`that the controller could assemble the data packet containing the data from
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`the sensor that would be transmitted by the transceiver.” Id. at 19 (citing Ex.
`1004 ¶ 55).
`Petitioner makes several alternative arguments using Kahn’s
`disclosures in place of those relied upon in the APA. We, however, do not
`find these arguments persuasive. For example, Petitioner argues that Kahn’s
`discussion of the PR’s transmitter/receiver (transceiver) would have taught
`the claimed sensor. Id. at 18. As Patent Owner points out, the claims recite
`that the transceiver is “interfaced with” the sensor. Prelim. Resp. 21. Thus,
`Patent Owner argues persuasively that the ’732 patent contemplates sensors
`that are separate from the transceiver. Id.; see e.g., Ex. 1001, Fig. 3C
`(depicting sensor 310 that is coupled to transceiver 360). Petitioner also
`argues that the claimed sensor would have been taught by Kahn’s discussion
`of a keyboard or other user input device. Pet. 18. As Patent Owner notes,
`however, the specification “specifically distinguishes sensors from
`keyboards and other input devices.” Prelim. Resp. 24 (citing Ex. 1001, 6:8–
`14 (describing that sensors may optionally include a keypad)). Thus, we are
`not persuaded by Petitioner’s arguments that the challenged claims would
`have been obvious over Kahn alone.
`As to specific limitations that differ between the independent claims,
`claim 20 recites that the subject device is a “wireless enabled thermostat.”
`Petitioner asserts that this would have been obvious over APA’s discussion
`of “‘heating, ventilation, and air-conditioning systems’ which have
`thermostat devices.” Pet. 17 (citing Ex. 1001, 2:26-31; Ex. 1004 ¶ 85).
`Claim 31 recites, in relevant part, that “the controller is configured to
`receive control signals from a data packet and based on the control signals
`send instructions to an actuator to implement the command.” Petitioner
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`asserts that this would have been taught by APA’s discussion of local
`controller 110, which returns a control signal to the system actuators. Pet.
`43 (citing Ex. 1001, 5:37–41; Ex. 1004 ¶ 128).
`Claim 26 recites, in relevant part, that the “controller is configured to
`format some data packets by concatenating received data packets with data
`packets formatted by the controller enabling the controller to prepare data
`for transmission that includes repeated data and sensed data.” Petitioner
`argues that “concatenate” can be understood in two ways. Id. at 34.
`First, Petitioner asserts that the term means “to link together” and
`argues that under this interpretation the disputed limitation would have been
`obvious over Kahn’s description of transmitting packets back-to-back. Id.
`Second, Petitioner argues that “it could be understood to mean that the
`controller inserts data generated by the controller into a received packet to
`create a new, modified data packet for transmission.” Id. Petitioner
`contends that under this interpretation the disputed limitation would have
`been obvious over Kahn’s description of “route finding packets.” Id. Route
`finding packets are used to ascertain the best route between two radios. Ex.
`1002, 1484, col. 1.
`This packet contains the source selector, the desired destination
`selector, and a sequence number which insures uniqueness.
`Any PR which hears the route finding packet appends its own
`selector to the data field, stores the information which uniquely
`identifies the packet, increments a “hop” count in the packet
`and rebroadcasts it.
`
`Id. (emphasis added). Petitioner argues that appending the PR’s selector
`would have taught the claimed concatenating of received data packets with
`data packets formatted by the controller. Petitioner also asserts that the
`delay estimate and other data collected as the packet travels to the
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`destination would have taught the claimed sensed data. Id. at 35. In the
`alternative, Petitioner argues that APA taught the transmission of data
`sensed by the sensors. Id. (citing Ex. 1001, 5:32–41).
`
`Patent Owner argues persuasively that Petitioner’s first interpretation
`is not supported by the specification. Prelim. Resp. 33–35. The
`specification discusses data controller 324 “assembl[ing] data packets 332
`by concatenating received data packet 330 with its own transceiver
`identification code 326.” Ex. 1001, 10:54–56. This comports with the
`customary definition of concatenation. Ex. 3001, Concatenate, THE
`AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS (7th ed. 2000)
`(defining “concatenate” to mean “To append one item to the end of another
`so as to form a single unit in a contiguous pattern. For example, if we
`concatenate ‘AP’ with ‘PLE,’ the results is ‘APPLE.’”). Thus, we agree
`with Patent Owner’s argument that Kahn’s discussion of transmitting
`packets back-to-back would not have taught the disputed limitation. As to
`the second interpretation, Patent Owner argues that APA and Kahn would
`not have taught the recited sensor. As will be discussed below, we are not
`persuaded by this argument.
`Patent Owner puts forth several arguments to refute Petitioner’s
`contentions regarding the independent claims. Specifically, Patent Owner
`argues that (1) Kahn does not teach “a transceiver that is configured to
`wirelessly retransmit select information, identification information of a
`nearby transceiver, and its own identification information (Prelim. Resp. 17–
`20); (2) Kahn and APA do not teach “a data controller operatively coupled
`to the transceiver and the sensor” (id. at 25–26); and (3) Petitioner does
`provide adequate argument to show how Kahn and APA would have taught
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`the claimed invention (id. at 36–39). We address each of these arguments in
`turn.
`
`First, Patent Owner asserts that Kahn does not teach “a transceiver
`that is configured to wirelessly retransmit select information, identification
`information of a nearby transceiver, and its own identification information.”
`Prelim. Resp. 17–20. Petitioner relies upon Kahn’s discussion of a routing
`technique in which the entire set of unique identifiers (“selectors”) is
`included in the packet header that is relayed by the second transceiver. Pet.
`44. Patent Owner responds by stating that Kahn notes that providing the
`entire set of selectors in the packet is disfavored because “the selectors
`[identification information] would contribute overhead to the packet and, at
`most, only a small finite set of them could be carried along.” Prelim. Resp.
`18 (citing Ex. 1002, 1479, col. 2). Patent Owner further asserts that Kahn
`disparages the inclusion of selectors in the message because “this choice
`may have a significant impact on the network efficiency and ultimately its
`extendibility since the selectors would contribute overhead to the packet.”
`Id. at 19 (citing Ex. 1002, 1479, col. 2). Patent Owner argues that one of
`ordinary skill in the art would have been dissuaded from including the
`selectors in the packet due to the statements in Kahn that discuss limitations
`and efficiency issues with following this course of action. Id. at 19–20.
`“When a piece of prior art ‘suggests that the line of development
`flowing from the reference’s disclosure is unlikely to be productive of the
`result sought by the [claimed invention]’ the piece of prior art is said to
`‘teach away’’ from the claimed invention.” Medichem, SA v. Rolabo, SL,
`437 F. 3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551,
`553 (Fed. Cir.1994)). As our reviewing court has noted, a given course of
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`action often has simultaneous advantages and disadvantages and this in itself
`is not enough to establish teaching away. Id. We must look to the facts
`presented and ascertain whether an artisan of ordinary skill would have been
`discouraged from taking the course of action or led in a direction divergent
`to that taken in the challenged claims. Gurley, 27 F.3d at 553. On the
`record currently before us, we are persuaded that Kahn describes alternative
`routing methods, but does not teach away from including the PR’s selector
`in the message. Kahn describes three alternatives and opts for one that it
`describes as the “more attractive choice.” See Ex. 1002, 1479, col. 2. Kahn,
`however, also notes that “[r]egardless of how the routing entries are finally
`created . . . it may still be desirable to carry along within each data packet
`the selector for the next downstream repeater, or even the next few
`repeaters.” Id. So, although Kahn notes that there may be increased
`overhead associated with maintaining a list of selectors in the packet, there
`are also “significant operational as well as performance advantages” related
`to including a set of selectors in the packet. Id.; see also id. at 1482, col. 2
`(describing uses for packets that contain a list of some or all of the selectors
`for a route). Thus, after considering Petitioner’s argument and evidence and
`Patent Owner’s argument, we are persuaded that Kahn would have taught
`this limitation.
`Patent Owner also asserts that Kahn and APA do not teach “a data
`controller operatively coupled to the transceiver and the sensor.” Prelim.
`Resp. 25–26. Patent Owner directs us to Figures 13 and 14 of Kahn. Id. at
`25. According to Patent Owner, these Figures show that the PR’s processor
`only has an interface that may be accessed by a device with the capacity to
`communicate using packets. Id. at 25–26. Thus, a simple device such as a
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`sensor or actuator would not be capable of communicating with Kahn’s
`controller. Id. Thus, Kahn and APA do not teach the claimed sensor. Dr.
`Heppe, however, testifies on behalf of Petitioner that, “Prior art sensors and
`actuators, intended for ‘third-party’ integration into control systems such as
`those disclosed in the APA of the ’732 patent, have well-defined behaviors
`and interface specifications to enable such integration with relative ease (i.e.,
`without undue experimentation), and with predictable results.” Ex. 1004 ¶
`31. Thus, on this record, we are persuaded that it was not beyond the
`capability of one of ordinary skill to integrate such devices. Therefore, after
`considering Petitioner’s argument and evidence and Patent Owner’s
`argument, we are persuaded that Kahn and APA would have taught this
`limitation.
`Finally, Patent Owner argues that Petitioner does not provide adequate
`argument to show how Kahn and APA would have taught the claimed
`invention. Prelim. Resp. 36–39. Specifically, Patent Owner asserts that
`Petitioner’s analysis is rooted in hindsight and based on an incorrect
`assumption regarding the level of ordinary skill in the art. Id. at 36. Further,
`Patent Owner posits that Petitioner has not provided evidence that
`combining APA and Kahn would have overcome the deficiencies of the
`prior art systems. Id. at 38.
`As to the level of ordinary skill, Dr. Heppe asserts that “a person of
`ordinary skill in the art in the field of the ’732 patent has, through formal
`education or practical experience, the equivalent of a Bachelor’s Degree in
`Electrical Engineering and 2–3 years of experience in the development and
`design, or technical marketing, of radio communications or computer
`network systems.” Ex. 1004 ¶ 8. He explains that in his experience the
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`subject matter of the ’732 patent normally would be taught as part of
`graduate level courses in electrical engineering. Id. In addition, it is
`possible for a diligent engineer to learn this information “on the job.” Id. At
`this time, Patent Owner has not offered a competing description for the
`person of ordinary skill. We have reviewed Dr. Heppe’s description and on
`this record, we find his analysis of the person of ordinary skill to be
`reasonable.
`As to whether Petitioner has put forth sufficient evidence to support
`the combination of APA and Kahn, we start by noting the Supreme Court’s
`rejection of rigid tests for obviousness. KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 407 (2007). Under current Supreme Court precedent, “if a
`technique has been used to improve one device, and a person of ordinary
`skill in the art would recognize that it would improve similar devices in the
`same way, using the technique is obvious unless its actual application is
`beyond his or her skill.” KSR, 550 U.S. at 417. Dr. Heppe discusses the
`problems attributed to the APA. Ex. 1004 ¶ 30. Specifically, he points to
`the cost associated with the prior art sensor/actuator infrastructure. Id.
`(citing Ex. 1001, 2:34–43, 5:48–61). He opines that using Kahn’s wireless
`network as the communication backbone for APA would avoid the expense
`of installing wiring and allow for easier expansion of the system. Id. ¶ 31.
`On this record, we are persuaded that Petitioner has put forth sufficient
`evidence to show that one of ordinary skill in the art would have combined
`the teachings of Kahn and APA.
`In view of the arguments made in the Petition and Petitioner’s
`supporting evidence and Patent Owner’s arguments, we determine Petitioner
`has demonstrated a reasonable likelihood it would prevail in showing that
`
`17
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`IPR2015-01973
`Patent 8,013,732 B2
`
`independent claims 13, 20, 26, and 31 would have been obvious under 35
`U.S.C. § 103 over the combined teachings of Kahn and APA.
`b. Dependent Claims 14, 19, 21, 25, and 30
`Claims 14 and 19 depend from claim 13, claims 21 and 25 depend
`from claim 20, and claim 30 depends from claim 26. Petitioner asserts that
`these claims would have been obvious over the combined teachings of Kahn
`and APA. Pet. 23–28, 36. These dependent claims, in relevant part, further
`recite actuators for implementing commands.
`Petitioner cites the actuator described in the APA as teaching this
`limitation. Id. at 25 (citing Ex. 1001, 5:37–41). In addition, Petitioner
`argues, in the alternative, that Kahn’s transceiver would have taught the
`claimed actuator. Id. at 24. Patent Owner persuasively argues that the
`challenged claims contemplate actuators and transceivers that are different
`devices. Prelim. Resp. 27. Patent Owner asserts that the specification
`“always identifies the actuator and transceiver as different components.” Id.
`at 28 (citing Ex. 1001, 3:9–11); see also id. at Fig. 3C (depicting actuator
`380 coupled to transceiver 360). The claims recite both terms, actuator and
`transceiver, and Petitioner has not provided evidence sufficient to persuade
`us that these terms are used interchangeably. Thus, we are not persuaded by
`Petitioner’s arguments that the recited actuator would have been obvious
`over Kahn alone.
`In addition, Patent Owner argues that Petitioner does not provide
`adequate argument to show how Kahn and APA would have taught the
`claimed invention. Prelim. Resp. 31. Specifically, Patent Owner argues that
`Petitioner has not explained adequately how the combination of Kahn and
`APA would have rendered obvious the claimed actuators. Id. Dr. Heppe
`
`18
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`IPR2015-01973
`Patent 8,013,732 B2
`
`explains that APA “includes a ‘local controller’ (110) which returns control
`signals to system actuators. [’]732 at 5:34–41. A POSITA would understand
`that the prior art ‘local controller’ could be replaced by Kahn’s
`microprocessor controller (in the PR), and the controller would then be
`coupled to sensors and actuators.” Ex. 1004 ¶ 71. On this record, we find
`Dr. Heppe’s analysis reasonable and, thus, we are not persuaded by Patent
`Owner’s argument.
`In view of the arguments made in the Petition and Petitioner’s
`supporting evidence and Patent Owner’s arguments, we determine Petitioner
`has demonstrated a reasonable likelihood it would prevail in showing that
`claims 14, 19, 21, 25, and 30 would have been obvious under 35 U.S.C.
`§ 103 over the combined teachings of Kahn and APA.
`c. Dependent Claim 33
`Claim 33 depends from claim 31. Petitioner asserts that claim 33
`would have been obvious over the combined teachings of Kahn and APA.
`Pet. 43–44. This claim, in relevant part, further recites “a computing device
`configured to receive user input and based on user input, the computing
`device formatting control signals, and wherein the controller is configured to
`receive the control signals via wireless transmission and take action based on
`the control signals.” In support of its argument that this claim would have
`been obvious, Petitioner relies on Kahn’s teaching of PRNET’s interactive
`communication between a computer and a terminal. Id. at 43. Petitioner
`directs us to Kahn’s discussion of debugging and measurement tools built
`into the PRs as teaching the recited control signals and related actions. Id. at
`44. Patent Owner makes no additional arguments directed to this claim. On
`this record, we are persuaded that Petitioner has put forth a sufficient
`
`19
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`IPR2015-01973
`Patent 8,013,732 B2
`
`showing and has demonstrated a reasonable likelihood it would prevail in
`showing that claim 33 would have been obvious under 35 U.S.C. § 103 over
`the combined teachings of Kahn and APA.
`
`B. Analysis of Asserted Ground of Obviousness Based on Kahn, APA, and
`Burchfiel
`Petitioner argues that dependent claims 16–18, 24, 28, 29, and 35 are
`unpatentable under 35 U.S.C. § 103(a) over Kahn, APA, and Burchfiel. Pet.
`46–51. These claims, in relevant part, further recite a data packet containing
`a function code. The recited function codes implement a function (claim
`16), correspond to sensed data (claim 17), are specific to a sensor (claim 35),
`unique to a transceiver (claim 28), or associated with wireless
`communications devices (claim 29), or the function codes may be stored in
`memory (claims 18 and 24). Petitioner relies upon Burchfiel’s discussion of
`function fields to teach the claimed function codes.
`Burchfiel is a paper titled “Functions and Structure of a Packet Radio
`Station.” Ex. 1003, Title. Burchfiel is cited in Kahn and provides additional
`information about certain radios in Kahn’s network. Ex. 1002, 1477, col. 1.
`Burchfiel describes these radios as performing control functions such as
`“establ
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