Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`Filed: May 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00216
`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: May 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00216
`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
`
`
`
`
`
`
`
`
`
`IPR2017-00216
`Patent 8,013,732 B2
`
`
`A. Background
`
`I. INTRODUCTION
`
`Emerson Electric Co. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`
`seeking to institute an inter partes review of claims 1–7 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
`
`7, “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.”
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`Petitioner contends the challenged claims are unpatentable under
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`35 U.S.C. §103 on the following specific grounds (Pet. 15–69):
`
`References
`Kahn,1 APA,2 Cerf,3 and Cunningham4
`Kahn, APA, Cerf, and Ehlers5
`
`Claims Challenged
`1, 2, 6, and 7
`1–7
`
`Our factual findings and conclusions at this stage of the proceeding
`
`are based on the evidentiary record developed thus far (prior to Patent
`
`
`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. 19–20.
`
`3 Vinton G. Cerf & Peter T. Kirstein, Issues in Packet-Network
`Interconnection, Proceedings of the IEEE, Vol. 66, No. 11, Nov. 1978 (Ex.
`1011) (“Cerf”).
`4 U.S. Patent No. 6,124,806 (Ex. 1014) (“Cunningham”).
`
`5 U.S. Patent No. 5,924,486 (Ex. 1012) (“Ehlers”).
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`2
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`Patent 8,013,732 B2
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`Owner’s Response). This is not a final decision as to patentability of claims
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`for which inter partes review is instituted. Our final decision will be based
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`on the record as fully developed during trial. For reasons discussed below,
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`we institute inter partes review of claims 1–7 of the ʼ732 patent.
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`B. Related Proceedings
`
`We have been informed that SIPCO, LLC, v. Emerson Electric Co.,
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`No. 1:15-cv-0319-AT (N.D. Ga) and SIPCO LLC v. Acuity Brands, Inc., No.
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`1:16-cv-00480 (D. Del.) may be impacted by this proceeding. Paper 5.
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`Also, an inter partes review between these same parties involving claims 13,
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`14, 16–22, and 23–35 of the ’732 patent recently was concluded. SIPCO,
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`LLC, v. Emerson Electric Co., IPR2015-01973 (PTAB Mar. 27, 2017)
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`(Paper 25) (finding that Petitioner had not carried its burden to prove the
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`challenged claims unpatentable). In addition, there are several pending
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`patent applications that claim priority to the ’732 patent. Pet. 3.
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`C. The ʼ732 Patent
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`The ’732 patent is titled “Systems and Methods for Monitoring and
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`Controlling Remote Devices.” Ex. 1001, at [54]. It describes “a system for
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`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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`3
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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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`Patent 8,013,732 B2
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`D. Illustrative Claim
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`As noted above, Petitioner challenges claims 1–7 of the ʼ732 patent,
`
`of which claim 1 is independent. Claim 1 and is illustrative of the
`
`challenged claims and is reproduced below:
`
`1.
`
`A system for remote data collection, assembly, storage,
`event detection and reporting and control, comprising:
`
` a
`
` a
`
` computer configured to execute at least one computer
`program that formats and stores select information for
`retrieval upon demand from a remotely located device,
`said computer integrated with a wide area network
`(WAN);
`
` plurality of transceivers dispersed geographically at defined
`locations, each transceiver electrically interfaced with a
`sensor and configured to receive select information and
`identification information transmitted from another
`nearby wireless transceiver electrically interfaced with a
`sensor in a predetermined signal type and 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;
`
`
`at least one gateway connected to the wide area network
`configured to receive and translate the select information,
`the identification information associated with the nearby
`wireless transceiver, and transceiver identification
`information associated with one or more retransmitting
`transceivers, said gateway further configured to further
`transmit the translated information to the computer over
`the WAN and wherein at least one of said plurality of
`transceivers is also electrically interfaced with an
`actuator to control an actuated device.
`
`
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`II. CLAIM CONSTRUCTION
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`In an inter partes review, “[a] claim in an unexpired patent shall be
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`given its broadest reasonable construction in light of the specification of the
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`patent in which it appears.” 37 C.F.R. § 42.100(b). Under this standard, we
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`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
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`otherwise that may be afforded by the written description contained in the
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`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`
`1997).
`
`Petitioner seeks construction of the terms “gateway,” “sensor,” and
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`“actuator.” Pet. 10–13. Patent Owner opposes Petitioner’s constructions
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`and provides explicit constructions for “sensor” and “actuator.” Prelim.
`
`Resp. 12–18. Based on the issues currently before us, we conclude that no
`
`terms require express construction. See Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`III. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability to
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`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
`
`A. Analysis of Asserted Grounds Based on Kahn, APA, Cerf, and
`Cunningham
`
`Petitioner asserts that claims 1, 2, 6, and 7 of the ’732 patent are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Kahn, APA, Cerf, and
`
`Cunningham. Pet. 15–48. Petitioner relies on a Declaration from
`
`Dr. Stephen Heppe to support its allegations. Ex. 1004.
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`6
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`1. Overview of Kahn
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`Kahn discusses “the basic concepts of packet radio.” Ex. 1002,
`
`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
`
`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 of the packet radios (“PRs”) in Kahn’s network “contains the
`
`antenna, RF transmitter/receiver, and all signal processing and data detection
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`logic.” Id. at 1477, col. 2. In addition, each radio contains a microprocessor
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`controller plus semiconductor memory for packet buffering and software.
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`Id. Each PR has an identifier known as its “selector” that is used in routing
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`and control procedures. Id. at 1479, col. 1. These selectors may be “unique
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`and 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
`
`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
`
`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
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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
`
`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–
`
`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, 112, 113, 114, 115, 116, and 117. Id. at 5:32–36. The sensors are
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`“electrically coupled to a local controller 110.” Id. at 5:36–37. The local
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`controller often is coupled with the public telephone network and a central
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`controller 130. The wiring between the elements of the prior art system is
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`described as “a dangerous and expensive proposition.” Id. at 5:59–61.
`
`3. Overview of Cerf
`
`Cerf is a paper titled “Issues in Packet-Network Interconnection.” Ex.
`
`1011. Kahn cited Cerf as part of its discussion of gateways. Ex. 1002,
`
`1494, col. 2. n.34. Cerf “introduces the wide range of technical, legal, and
`
`political issues associated with the interconnection of packet-switched data
`
`communication networks.” Ex. 1011, Abstract. One of the issues addressed
`
`in Cerf is the interconnection of networks using different protocols. Id. at
`
`1387, col. 1. Cerf defines a protocol translator as “[a] collection of software,
`
`and possibly hardware, required to convert the high level protocols used in
`
`one network to those used in another.” Id. at 1387, col. 2. Cerf’s Protocol
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`Translation Gateways translate the packets from one network for use in
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`another network. Id. at Fig. 13, 1398, col. 2–1399, col. 1.
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`4. Overview of Cunningham6
`
`Cunningham is a US patent titled “Wide Area Remote Telemetry.”
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`Ex. 1014, at [54]. Cunningham describes a “system which monitors and
`
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`6 Petitioner asserts that Cunningham is prior art to the ’732 patent under 35
`U.S.C. § 102(e). Pet. 23. The application leading to Cunningham was filed
`September 11, 1998. Ex. 1014, at [22]. Petitioner asserts that the
`challenged claims have a priority date no earlier than March 18, 1999,
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`controls remote devices by means of an information control system.” Id. at
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`Abstract. Figure 49 of Cunningham is reproduced below.
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`
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`Figure 49 depicts “an example of an overall network schematic
`
`implementing the present invention.” Id. at 6:1–2. The network includes a
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`number of devices such as gas meter 6302, electricity meter 6304, air
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`conditioning system 6308, heaters 6310, lights 6312, security monitoring
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`devices 6314, and point of sale devices 6316. Id. at Fig. 49. The devices
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`communicate with their associated telemetry interface modules 6318, 6320,
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`and 6324. Id. at 47:15–30. Data from those devices is sent through the
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`various telemetry interface modules to telemetry gateway 6326 (also called
`
`
`because that is filing date of the earliest application in the ’732 patent’s
`chain of priority that could support the claimed gateway connected to a
`WAN. Pet. 14. Patent Owner has not spoken to this issue. See generally,
`Prelim. Resp. On the record before us, we are persuaded that Petitioner has
`made a sufficient showing that Cunningham is prior art to the ’732 patent
`under 35 U.S.C. § 102(e).
`
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`data collection module 6326). Id. Data is routed from the gateway to host
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`module 6344 and customer computers 6350 or workstations 6352. Id. at
`
`47:44–54.
`
`5. Independent Claim 1
`
`Petitioner’s arguments regarding claim 1 may be summarized as
`
`follows: Petitioner relies on Kahn and Cunningham to teach the recited
`
`computer integrated with a wide area network (“WAN”) that formats and
`
`stores select information. See Pet. 28–31. Specifically, Petitioner cites
`
`Kahn’s discussion of transmitting PRNET measurement data over the
`
`ARPANET to a computer at UCLA. Id. at 28. Petitioner also cites
`
`Cunningham’s teaching of a computer that uses application software to
`
`compile received information into a readable format and then make that
`
`formatted information available at a separate computer or workstation. Id. at
`
`29. Petitioner relies upon the disclosures of Kahn and the APA to teach the
`
`claimed plurality of transceivers interfaced with sensors. Id. at 31–38.
`
`Petitioner asserts that Kahn’s packet radios include an RF
`
`transmitter/receiver. Id. at 31–32. As to the recited sensors, Petitioner cites
`
`the APA’s discussion of sensors for monitoring and controlling processes
`
`and systems. Id. at 35. Petitioner cites Kahn to teach the recited select and
`
`identification information transmitted from another transceiver. Id. at 35.
`
`Petitioner asserts that Kahn’s radio have unique identifiers (“selectors”) and
`
`select information (“text”). Id. According to Petitioner, Kahn discusses
`
`sending its packets, which include the selector and text, from one transceiver
`
`to another. Id. at 36, 38. Petitioner contends that Kahn’s radios have a
`
`“digital section” that has a microprocessor that assembles packets before
`
`they are transmitted to other radios. Id. at 37. Petitioner asserts that one of
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`ordinary skill in the art would use Kahn’s microprocessor to assemble
`
`packets containing data from the APA’s sensors. Id. As to the recited
`
`transceiver information, Petitioner relies upon Kahn’s disclosure of a routing
`
`technique in which the entire set of selectors is included in the packet header
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`that is relayed by the next transceiver. Pet. 39.
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`Petitioner relies upon the disclosures of Kahn, Cerf, and Cunningham
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`to teach the recited gateway that is connected to a WAN and configured to
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`receive and translate the select, identification, and transceiver information.
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`Id. at 39–42. According to Petitioner, Kahn describes a PRNET network
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`that is connected to ARPANET using a gateway. Id. at 39. Petitioner relies
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`upon Cerf’s discussion of gateways serving as network protocol translators
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`to teach the recited translation. Id. Petitioner also directs us to
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`Cunningham’s disclosure of telemetry gateway 6326, which transmits data
`
`from the sensor interface modules to the internet. Id. at 41. Petitioner relies
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`upon the APA and/or Cunningham to teach the recited actuators that control
`
`an actuated device. Id. at 42–43. The APA discusses actuators that
`
`implement commands from local controllers. Id. at 42. Cunningham
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`discusses monitoring and controlling devices including A/C, heaters, lights,
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`point of sale devices, and security monitoring devices. Id. at 45. Petitioner
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`asserts that these devices would teach the claimed “actuated devices.” Id.
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`We note that Petitioner makes an alternative argument regarding the
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`claimed sensors using Kahn’s disclosures in place of those relied upon in the
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`APA. Id. at 32–35. This argument is not persuasive. Petitioner contends
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`that Kahn’s discussion of the radio’s measurement facilities would have
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`taught the claimed sensor. Id. at 33–34. Thus, in Petitioner’s view the radio
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`would have taught both the claim sensor and transceiver. Id. Petitioner
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`asserts that the ’732 patent specification supports their view that the
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`transceiver and the sensor do not have to be separate. Pet. 32–33. As
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`support for this argument, Petitioner directs us to the ’732 patent’s
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`discussion of Figure 3C as depicting “a transceiver 360 that is integrated
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`with a sensor 310 and an actuator 380.” Ex. 1001, 9:65–10:1. Claim 1,
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`however, does not use the word integrated to describe the relationship
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`between the sensor and transceiver. Prelim. Resp. 34; Compare Ex. 1001,
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`18:56–57 (“electrically interfaced with a sensor”) with 18:50–51 (“computer
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`integrated with a wide area network (WAN)”). For the purposes of this
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`Decision, we are persuaded that in order for elements to be “interfaced” they
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`first need to be separate elements. Thus, we find persuasive Patent Owner’s
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`argument that the ’732 patent contemplates sensors that are separate from
`
`the transceiver and therefore, the claimed sensor and transceiver may not be
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`taught by the same radio. See Prelim. Resp. 34.
`
`Patent Owner puts forth several arguments to refute Petitioner’s
`
`contentions regarding claim 1. Specifically, Patent Owner argues that
`
`(1) Kahn does not teach the transmission of “identification information of a
`
`nearby transceiver, and identification information of retransmitting
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`transceivers” (Prelim. Resp. 21–30); (2) Kahn does not teach “a transceiver
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`that is configured to wirelessly retransmit select information, identification
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`information of a nearby transceiver, and its own identification information”
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`(id. at 30–33); (3) the cited art does not teach a plurality of transceivers
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`electrically interfaced with a sensor (id. at 33–39); (4) the cited art does not
`
`teach the recited actuator (id. at 39–41) and (5) Petitioner does provide
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`adequate argument as to the motivation to combine the teachings of the cited
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`references (id. at 41–50). We address each of these arguments in turn.
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`First, Patent Owner asserts that Kahn does not teach the transmission
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`of “identification information of a nearby transceiver, and identification
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`information of retransmitting transceivers.” Prelim. Resp. 21–30.
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`According to Patent Owner, Petitioner’s contention that Kahn teaches these
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`limitations is unsupported attorney argument and thus, should not be
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`accorded any weight. Id. at 22. Petitioner cites Kahn’s discussion of point-
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`to-point routing techniques that include the entire set of selectors as teaching
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`the transmission of identification information. Pet. 41 (citing Ex. 1002,
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`1479, col. 2). Kahn states that “[e]ach radio has an identifier which we shall
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`call its selector. The selectors play a central role in the network routing and
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`control procedures.” Ex. 1002, 1479, col. 1. Kahn also notes that the
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`selectors are assumed to be unique and preassigned to each radio. Id. at
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`1479, col. 1 n.1. In one of the routing procedures described in Kahn, each
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`packet sent from a radio “could contain the entire set of selectors in its
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`header.” Id. at 1479, col. 2. Kahn, however, also notes that “[r]egardless of
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`how the routing entries are finally created . . . it may still be desirable to
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`carry along within each data packet the selector for the next downstream
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`repeater, or even the next few repeaters.” Ex. 1002, 1479, col. 2. On this
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`record, we are persuaded by Petitioner’s contentions and we disagree with
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`Patent Owner’s assertion that they are unsupported attorney argument.
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`Further, Patent Owner asserts that Petitioner’s arguments conflate data
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`transmitted within PRNET with the measurement data transmitted over the
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`ARPANET and that there is no evidence that the data transmitted over the
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`ARPANET contains the recited information. Prelim. Resp. 23. As Patent
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`Owner acknowledges, Kahn discloses that “[t]he four primary measurement
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`tools that have been developed are: cumulative statistics (CUMSTATS),
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`snapshots, pickup packets, and neighbor tables.” Id. at 24 (citing Ex. 1002,
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`1495, col. 1). Thus, one type of measurement data transmitted over the
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`ARPANET is the “pickup packet.” As described in Kahn, “[p]ickup packets
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`are ‘crates’ that start out empty at a traffic source, and pick up information at
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`each node they traverse enroute to their destination, thus providing a trace of
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`their history.” Ex. 1002, 1495, col. 1. Dr. Heppe testifies that “in order to
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`deliver the contents of a ‘pickup packet’ to a remote site on the ARPANET,
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`the gateway process receives and translates the identification information
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`(‘selectors’) and measurement data of multiple packet radios encoded in a
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`single communications packet.” Ex. 1004 ¶ 67 (citing Ex. 1002, 1494–
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`1495). On this record, we are persuaded by Dr. Heppe’s testimony and we
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`determine that Petitioner has shown sufficiently that Kahn’s discussion of
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`pickup packets would have taught one of ordinary skill in the art the recited
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`identification information.
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`Second, Patent Owner asserts that Kahn does not teach “a transceiver
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`that is configured to wirelessly retransmit select information, identification
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`information of a nearby transceiver, and its own identification information.”
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`Prelim. Resp. 30–33. Petitioner relies upon Kahn’s discussion of a routing
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`technique in which the entire set of unique identifiers (“selectors”) is
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`included in the packet header that is relayed by the second transceiver. Pet.
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`44. Patent Owner responds by stating that Kahn notes that providing the
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`entire set of selectors in the packet is disfavored because “the selectors
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`[identification information] would contribute overhead to the packet and, at
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`most, only a small finite set of them could be carried along.” Prelim. Resp.
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`31 (citing Ex. 1002, 1479, col. 2). Patent Owner further asserts that Kahn
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`disparages the inclusion of selectors in the message because “this choice
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`15
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`IPR2017-00216
`Patent 8,013,732 B2
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`may have a significant impact on the network efficiency and ultimately its
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`extendibility since the selectors would contribute overhead to the packet.”
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`Id. at 32 (citing Ex. 1002, 1479, col. 2). Patent Owner argues that one of
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`ordinary skill in the art would have been dissuaded from including the
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`selectors in the packet due to the statements in Kahn that discuss limitations
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`and efficiency issues with following this course of action. Id. at 32.
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`“When a piece of prior art ‘suggests that the line of development
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`flowing from the reference’s disclosure is unlikely to be productive of the
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`result sought by the [claimed invention]’ the piece of prior art is said to
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`‘teach away’ from the claimed invention.” Medichem, SA v. Rolabo, SL, 437
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`F. 3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553
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`(Fed. Cir.1994)). As our reviewing court has noted, a given course of action
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`often has simultaneous advantages and disadvantages and this in itself is not
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`enough to establish teaching away. Id. We must look to the facts presented
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`and ascertain whether an artisan of ordinary skill would have been
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`discouraged from taking the course of action or led in a direction divergent
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`to that taken in the challenged claims. Gurley, 27 F.3d at 553. On the
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`record currently before us, we are persuaded that Kahn describes alternative
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`routing methods, but does not teach away from including the PR’s selector
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`in the message. Kahn describes three alternatives and opts for one that it
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`describes as the “more attractive choice.” See Ex. 1002, 1479, col. 2. Kahn,
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`however, also notes that “[r]egardless of how the routing entries are finally
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`created . . . it may still be desirable to carry along within each data packet
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`the selector for the next downstream repeater, or even the next few
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`repeaters.” Id. So, although Kahn notes that there may be increased
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`overhead associated with maintaining a list of selectors in the packet, there
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`are also “significant operational as well as performance advantages” related
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`to including a set of selectors in the packet. Id.; see also id. at 1482, col. 2
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`(describing uses for packets that contain a list of some or all of the selectors
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`for a route). Thus, on the present record, after considering Petitioner’s
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`argument and evidence and Patent Owner’s argument, we are persuaded that
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`Kahn would have taught this limitation.
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`Third, Patent Owner asserts that the cited art does not teach a plurality
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`of transceivers electrically interfaced with a sensor. Prelim. Resp. 33–39.
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`Patent Owner argues that the processor in Kahn’s radio cannot teach the
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`recited sensor. Id. at 33. As noted above, we agree that Kahn’s disclosures
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`would not teach the recited sensors. Petitioner, however, argues in the
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`alternative that this limitation may be taught by the disclosures of the APA.
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`Pet. 35 (citing Ex. 1001, 1:54–59). Patent Owner asserts that the APA
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`sensors could not be modified to work with Kahn because the APA sensors
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`would not be able to communicate with the packet based stations described
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`in Kahn. Prelim. Resp. 38–39. Dr. Heppe, however, persuasively testifies
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`that, “Prior art sensors and actuators, intended for ‘third-party’ integration
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`into control systems such as the HVAC system disclosed in the APA of the
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`’732 patent, have well-defined behaviors and interface specifications to
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`enable such integration with relative ease (i.e., without undue
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`experimentation), and with predictable results.” Ex. 1004 ¶ 31. Thus, on
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`this record, we are persuaded by Petitioner’s assertion that Kahn and the
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`APA would have taught the recited transceivers electrically interfaced with a
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`sensor.
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`Fourth, Patent Owner contends that the cited art does not teach the
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`recited actuator. Prelim. Resp. 39–41. Patent Owner disputes Petitioner’s
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`17
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`contention that the claimed actuators could be taught by Kahn’s disclosure
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`of a terminal interface unit (“TIU”) or its associated software. Id. at 39. As
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`described in Kahn, a TIU is a microprocessor based device, which supports
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`the user’s terminal by providing certain processing services (e.g., formatting,
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`local echoing, and end-to-end protocol processing). Ex. 1002, 1481, col. 1.
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`The TIU also supports debugging of the stations. Id. at 1494, col. 2.
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`“Operating software in the PRU’s, TIU’s, and station performs the collection
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`of measurement data and uses the system protocols for delivery of this data
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`to a measurement file located at the station.” Id. at 1495, col. 1. Petitioner
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`asserts that these disclosures would have taught one of ordinary skill in the
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`art the recited actuator. Pet. 42; see Ex. 1004 ¶ 73. We, however, are not
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`persuaded that these disclosures would have taught an actuator. According
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`to Petitioner, an actuator is “anything that controls the state or status of
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`another thing.” Pet. 12. Petitioner has not provided sufficient argument or
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`evidence to persuade us that the TIU or its software “control the state or
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`status” of their associated user terminal. See id. at 42. Thus, we agree with
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`Patent Owner that Petitioner has not shown sufficiently that Kahn’s
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`disclosure of a TIU or its associated software would have rendered obvious
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`the recited actuator.
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`Petitioner, however, provides two other alternative arguments in
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`regards to the recited actuator. First, Petitioner asserts that the APA’s
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`disclosure of actuators would have rendered obvious the recited actuators.
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`Pet. 43–44. Second, Petitioner cites Cunningham’s disclosure of device
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`control modules and sensor interface modules which monitor and control
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`lights, thermostats, utility disconnect actions, and other control functions.
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`Id. at 44 (quoting Ex. 1014, 30:66–31:2), 45 (citing Ex. 1014, 46:64–47:10).
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`18
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`Patent Owner contends that Petitioner merely concludes that the cited art
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`would have taught this limitation without providing the necessary analysis as
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`to how the references would have been combined or why such a
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`combination would have been successful. Prelim. Resp. 41. On the record
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`presently before us, we are persuaded that each of these alternatives would
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`have taught the disputed limitation and below, we address Patent Owner’s
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`concerns as to the adequacy of Petitioner’s arguments regarding the
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`motivation to combine the cited art and the likelihood of success.
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`Finally, Patent Owner argues that Petitioner does not provide adequate
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`argument to show how and why the combination of Kahn, APA, Cerf, and
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`Cunningham would have taught the claimed invention. Prelim. Resp. 41–
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`50. Specifically, Patent Owner asserts that Petitioner’s analysis is rooted in
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`hindsight and based on an incorrect assumption regarding the level of
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`ordinary skill in the art. Id. at 41–42. Further, Patent Owner posits that
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`Petitioner has not provided evidence that combining the cited references
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`would have overcome the deficiencies of the prior art systems. Id. at 42. In
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`addition, Patent Owner asserts that Petitioner failed to identify the claim
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`limitations it believed to be missing from Kahn. Id. at 43. According to
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`Patent Owner, Petitioner merely lists claim limitations and provides partial
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`descriptions of one or more references without specifying why Petitioner
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`relied upon a particular secondary reference.
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`As to the level of ordinary skill, Dr. Heppe asserts that “a person of
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`ordinary skill in the art in the field of the ’732 patent has, through formal
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`education or practical experience, the equivalent of a Bachelor’s Degree in
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`Electrical Engineering and 2–3 years of experience in the development and
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`design, or technical marketing, of radio communications or computer
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`19
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`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
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`graduate level courses in electrical engineering. Id. In addition, it is
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`possible for a diligent e
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