Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 45
`Filed: May 15, 2018
`
`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.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 45
`Filed: May 15, 2018
`
`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.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`IPR2017-00216
`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 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). Based on our review of these submissions and associated
`evidence, we instituted inter partes review of claims 1–7 of the ’732 patent
`on all asserted grounds. Paper 8 (“Dec.”). The instituted grounds are as
`follows:
`References
`Kahn,1 APA,2 Cerf,3 and Cunningham4
`Kahn, APA, Cerf, and Ehlers5
`Id. at 29.
`Patent Owner filed a Patent Owner’s Response (Paper 21, “PO
`Resp.”), and Petitioner filed a Reply (Paper 33, “Reply”). An oral hearing
`was held on February 5, 2018. Paper 32 (“Tr.”).
`
`Claims Challenged
`1, 2, 6, and 7
`1–7
`
`
`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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`We have jurisdiction under 35 U.S.C. § 318(a). For the reasons
`discussed below, Petitioner has demonstrated by a preponderance of the
`evidence that claims 1–7 of the ’732 patent are unpatentable.
`
`B. Related Proceedings
`We have been informed that SIPCO, LLC, v. Emerson Electric Co.,
`No. 1:15-cv-0319-AT (N.D. Ga); SIPCO LLC v. Acuity Brands, Inc., No.
`1:16-cv-00480 (D. Del.); and SIPCO, LLC v. Streetline, Inc., No. 1:16-cv-
`00830 (D. Del.), may be impacted by this proceeding. Papers 5, 32, 36.
`Also, a final written decision has been issued in inter partes review between
`these same parties involving claims 13, 14, 16–22, and 23–35 of the ’732
`patent. SIPCO, LLC, v. Emerson Electric Co., IPR2015-01973 (PTAB Mar.
`27, 2017) (Paper 25) (finding that Petitioner had not carried its burden to
`prove the challenged claims unpatentable). That decision has been appealed.
`IPR2015–01973, Paper 26. The parties also are involved in a number of
`other proceedings before the Board involving related patents. Paper 31, 2;
`Paper 32. In addition, there are several pending patent applications that
`claim priority to the ’732 patent. Pet. 3.
`
`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
`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 transceivers. At least one
`wireless transceiver is interfaced with a sensor, transducer, actuator or some
`other device associated with the application parameter of interest.” Id. at
`3:19–24. Figure 2 of the ’732 patent is reproduced below.
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`Figure 2 is a block diagram of the monitoring and control system of a
`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
`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.
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`D. Illustrative Claim
`As noted above, we instituted Petitioner’s challenges as to claims 1–7
`of the ʼ732 patent, of which claim 1 is independent. Claim 1 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:
`
` 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);
`
` a
`
` a
`
` 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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`E. 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. 15 (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 ¶ 79. 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. 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
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`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997).
`At the Petition stage, Petitioner sought construction of the terms
`“gateway,” “sensor,” and “actuator.” Pet. 10–13. In our Decision to
`Institute we determined that, at that time, no terms required express
`construction. Dec. 6. In its Response, Patent Owner proffered constructions
`for “sensor” and “actuator.” PO Resp. 15–20. Petitioner argues that no
`construction is needed for these terms and points out that none of Patent
`Owner’s arguments are tied to these proposed constructions. Reply 1. We
`have reviewed the full record in this matter and based on the issues before
`us, we conclude that no terms require express construction for the purposes
`of this Decision. 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
`determine whether Petitioner has met its burden under 35 U.S.C. § 316(e).
`
`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.
`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
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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
`associated packet to a point of connection with the other net or to an
`intermediate (transit) net for forwarding.” Id. at 1470, col. 1.
`Each of 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 the
`packet to the destination PR. Id.
`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; Fig. 8. In routing the packet, a station can send the entire path
`directly to the sending or receiving PR and in this case, the transmitted
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`packet “could then contain the entire set of selectors in its header.” Id. at
`1479, col. 2.
`Kahn’s PR’s have measurement capabilities “designed-in as an
`integral part of the experimental network.” Id. at 1494, col. 2–1495, col. 1.
`Data are collected and delivered over the radio channel while an experiment
`is being conducted. Id. at 1495, col. 1. “At the conclusion of a
`measurement run, the data can be automatically spooled over the ARPANET
`to a remote site (e.g., UCLA) for analysis.” Id. Kahn describes four primary
`measurement tools—cumulative statistics (“CUMSTATS”), snapshots,
`pickup packets, and neighbor tables. Id.
`CUMSTATS consist of a variety of activity counters in each
`node. Snapshots periodically record the disposition of packet
`buffers and other node resources. Pickup packets are ‘crates’
`that start out empty at a traffic source, and pick up information
`at each node they traverse enroute to their destination, thus
`providing a trace of their history. Neighbor tables are a table of
`counts of packets received from each ‘neighbor’ PR in range.
`Id. CUMSTATS are written in the measurement file by internal packet
`handling processes (such as those found at a gateway or forwarding node).
`Id. “Network connectivity, labeling, and route updates are all written on the
`measurement file as they occur.” Id. The final destination for the PRNET
`measurement data is a computer at UCLA. Id.
`2. 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
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`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
`Translation Gateways translate the packets from one network for use in
`another network. Id. at Fig. 13, 1398, col. 2–1399, col. 1.
`3. Overview of Cunningham
`Cunningham is a U.S. patent titled “Wide Area Remote Telemetry.”
`Ex. 1014, at [54]. Cunningham describes a “system which monitors and
`controls remote devices by means of an information control system.” Id. at
`Abstract. The system uses sensor interface modules to monitor devices for
`triggering events and transmits the sensor information to at least one data
`collection module. Figure 2 of Cunningham is reproduced below.
`
`
`Figure 2 depicts sensor interface module 102. Id. at 7:46. “Sensor interface
`modules 102 are intelligent communications devices which attach to gas,
`electric, and water meters and other types of monitored equipment.” Id. at
`7:32–34. As shown in Figure 2, sensor interface main body 200 is
`connected to external hardware sensor 204. Id. at 7:46–56. “Sensor
`interface modules 102 include an appropriate hardware sensor for the device
`being monitored; a computerized monitoring system with associated
`firmware; battery power supply and/or converter for external power; and a
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`transmitter.” Id. at 7:39–44. An example of a preferred embodiment of
`sensor interface module 102 is depicted in Figure 3. Id. at 7:62–63. That
`exemplar of sensor interface module 102 is attached to a gas meter. Id.
`There, the sensor monitors the rotation of the dials of the gas meter display.
`Id. at 8:13–14. The system may be used for a variety of applications “such
`as monitoring and control of lights, security monitoring devices, utility
`disconnect actions, utility outage reporting, or other control functions.” Id.
`at 30:66–31:2.
`Figure 49 of Cunningham is reproduced below.
`
`
`
`Figure 49 depicts “an example of an overall network schematic
`implementing the present invention.” Id. at 6:1–2. The network includes a
`number of devices such as gas meter 6302, electricity meter 6304, air
`conditioning system 6308, heaters 6310, lights 6312, security monitoring
`devices 6314, and point of sale devices 6316. Id. at Fig. 49. The devices
`communicate with their associated telemetry interface modules 6318, 6320,
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`and 6324. Id. at 47:15–30. Data from those devices are sent through the
`various telemetry interface modules to telemetry gateway 6326 (also called
`data collection module 6326). Id. Data are routed from the gateway to host
`module 6344 and customer computers 6350 or workstations 6352. Id. at
`47:44–54.
`4. 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
`111–117. 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.
`5. Independent Claim 1
`Petitioner asserts that claim 1 would have been obvious over the
`teachings of Kahn, APA, Cerf, and Cunningham. Pet. 26–46. Petitioner’s
`contentions regarding the unpatentability of claim 1 are summarized as
`follows: Claim 1 recites at least one computer program that formats and
`stores select information for retrieval from a remotely located device.
`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 directs us to Kahn’s
`discussion of software developers in Texas and Boston that could debug and
`install software on PRs in San Francisco over the ARPANET. Id. at 29. In
`addition, Petitioner 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.
`Claim 1 further recites a plurality of transceivers that are interfaced
`with a sensor and those transceivers are configured to receive select
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`information and identification information from another transceiver that is
`interfaced with a sensor. Petitioner argues that Kahn’s PRs are
`geographically distributed and they include an RF transmitter/receiver. Id.
`at 31–32. As to the recited sensors, Petitioner cites APA’s discussion of
`sensors for monitoring and controlling processes and systems. Id. at 35.
`Petitioner cites Kahn to teach or at least suggest the recited select
`information and identification information transmitted from another
`transceiver. Id. at 35. Petitioner asserts that Kahn’s PRs 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 argues
`that Kahn’s radios have a “digital section” with a microprocessor that
`assembles packets before they are transmitted to other radios. Id. at 37.
`Petitioner asserts that one of ordinary skill in the art would have used Kahn’s
`microprocessor to assemble packets containing data from the APA’s sensors.
`Id.
`
`Additionally, Petitioner asserts that “Cunningham discloses a system
`that monitors and controls remote devices. A host module receives data
`from a plurality of sensor interface modules through data collection modules
`and data repeater modules.” Id. at 23 (citing Ex. 1014, 7:19–27, 44:12–41,
`44:53–64, 47:44–54). Further, Cunningham describes “gas, electric and
`water meters, and other types of monitored equipment, and include[s] both
`an appropriate hardware sensor for the device being monitored and a
`transmitter for communicating sensor data to data collection modules.” Id.
`Cunningham’s sensor interface modules 102 “are intelligent communication
`devices” for use with a variety of monitored equipment. Ex. 1014, 7:32–34.
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`Cunningham describes that “sensor interface modules 102 can be connected
`to external hardware sensor 204.” Id. at 9:49–52. Examples of sensors 204
`include “flow sensor 600, pressure sensor 602, and temperature sensor 604
`which gather information about the flow of gas or other liquids 606 through
`a pipeline 608.” Id. at 9:52–55. Petitioner asserts that one of ordinary skill
`in the art “would have also been motivated to combine the teachings of
`Cunningham’s sensors and post-collection analysis tools with Kahn’s radio
`communication system to provide additional capabilities to the Kahn system
`that would allow the combined system to be used in other applications.” Pet.
`25.
`
`Claim 1 also recites a plurality of transceivers further configured to
`wirelessly retransmit select information and identification information (for
`both the sending and receiving transceivers). Here, Petitioner relies upon
`Kahn’s disclosure of a routing technique in which the selector for each PR
`along the route is included in the packet header that is relayed to the next
`transceiver. Id. at 39. According to Petitioner, “[t]he claim does not require
`the ‘repeating’ transceiver to insert its unique ID into the message before
`retransmission. The claim element is satisfied if the ‘repeating’ transceiver’s
`ID is already in the message when it is received and retransmitted.” Id. The
`header relied upon by Petitioner includes the “entire set of unique
`identifiers/selectors” and thus, Petitioner asserts that the packet includes
`identification for both the sending and receiving transceivers. Id.
`Claim 1 further recites at least one gateway connected to the WAN
`configured to receive and translate the select information and identification
`information (for both the sending and receiving transceivers) and retransmit
`the translated information over the WAN. Petitioner relies upon the
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`disclosures of Kahn, Cerf, and Cunningham to teach the recited gateway that
`is connected to a WAN and configured to receive and translate the select,
`identification, and transceiver information. Id. at 39–42. According to
`Petitioner, Kahn describes a PRNET network that is connected to
`ARPANET using a gateway. Id. at 39. Petitioner asserts that Kahn’s
`gateway receives information from PRNET and transmits the received
`information to computers over the ARPANET, a predecessor to the internet.
`Id. According to Petitioner, because “ARPANET does not support the link-
`layer protocols employed by the PRNET, networking protocols must be
`converted or translated. Cerf provides the additional teaching for this aspect
`of the system.” Id. (citing Ex. 1004 ¶¶33, 69–71, 72). Petitioner also directs
`us to Cunningham’s disclosure of telemetry gateway 6326, which transmits
`data from the sensor interface modules to the internet. Id. at 41.
`Finally, claim 1 recites that at least one of the plurality of transceivers
`also is electrically interfaced with an actuator. Petitioner relies upon APA
`and/or Cunningham to teach the recited actuators that control an actuated
`device. Id. at 42–43. APA discusses actuators that implement commands
`from local controllers. Id. at 42. Cunningham discusses monitoring and
`controlling devices including A/C, heaters, lights, point of sale devices, and
`security monitoring devices. Id. at 45. Petitioner asserts that these devices
`would teach the claimed “actuated devices.” Id.
`We have analyzed Petitioner’s assertions of unpatentability in light of
`Patent Owner’s arguments and evidence to the contrary and we determine
`that Petitioner has met its burden under 35 U.S.C. § 316(e). As noted by
`Dr. Heppe, “Kahn provides an overview of the basic concepts of packet
`radio, including a then-current (1978) description of a particular packet radio
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`network (‘PRNET’), a multi-hop, multi-access packet radio network
`sponsored by the Advanced Research Projects Agency (‘ARPA’).” Ex.
`1004 ¶ 17 (citing Ex. 1002, 1468–69). Further, “Cerf, which Kahn explicitly
`identified in his paper in relation to the ‘gateway process’ between Kahn’s
`PRNET and the ARPANET, describes four different options for creating an
`‘internetwork.’ Each of these options uses a gateway between the
`networks.” Id. ¶ 20 (citing Ex. 1002, 1494, col. 2 n. 34; Ex. 1011, 1393–
`1399) (internal citations omitted). Dr. Heppe goes on to note that Cerf
`“provides for translating protocols of the networks coupled by the gateway.”
`Id. ¶ 21 (citing Ex. 1011, 1398–1399). Dr. Heppe further discusses
`Cunningham’s “sensor interface modules [that] attach to gas, electric and
`water meters, and other types of monitored equipment, and include an
`appropriate hardware sensor for the device being monitored and a
`transmitter for communicating sensor data to data collection modules using
`low-power radio-frequency transmissions.” Id. ¶ 22 (citing Ex. 1014, 6:11–
`19, 7:30–8:21). As to APA, Dr. Heppe explains that “the applicants
`admitted that it was known to use sensors and actuators to monitor and
`automatically respond to system parameters.” Id. ¶ 28. APA further
`describes coupling sensors and actuators to a local control system that may
`be integrated with a network such as a public switched telephone network.
`Id.
`
`Dr. Heppe brings these teachings together by noting that “both Kahn
`and Cunningham are directed to networks of wireless transceivers dispersed
`over a wide area.” Id. ¶ 32. According to Dr. Heppe, Kahn provides for the
`collection and delivery of measurement data over a radio channel in real
`time and Cunningham addresses the need for near real-time information
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`from remote monitored locations. Id. Dr. Heppe testifies that Kahn may be
`combined with Cunningham “with or without [the teachings] of the APA.”
`Id. Dr. Heppe opines that a person of ordinary skill in the art “would have
`been motivated to use Cunningham’s sensors in Kahn’s system in order to
`further extend Kahn’s ability to conduct ‘the collection and delivery of
`measurement data’ . . . [and] to provide additional capabilities to Kahn’s
`system.” Id. According to Petitioner, “[i]mplementing Cunningham’s
`teachings would, for example, advantageously allow remote users to easily
`access collected data from a central location instead of having to physically
`visit a single computer.” Reply 22. Dr. Heppe testified that one of ordinary
`skill in the art “would have been motivated and found it obvious and
`straightforward to implement Cunningham’s teaching of a computer that
`‘formats and stores information for retrieval upon demand from a remotely
`located device.’” Ex. 1046 ¶ 65. We are persuaded that Cunningham’s
`“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 that person's skill.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
`401 (2007). We credit Dr. Heppe’s testimony that it would have been within
`the skill of one of ordinary skill in the art to modify Kahn to include prior art
`sensors. Ex. 1004 ¶ 31
`In addition, a person of ordinary skill in the art would have looked to
`Cerf for additional teachings regarding Kahn’s gateway because Cerf was
`cited on the face of Kahn for that specific purpose. Id. ¶ 33; see Ex. 1002,
`1494, col. 2 (citing Cerf as part of its discussion of gateways). We find Dr.
`Heppe’s testimony to be persuasive and well supported by the record.
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`Patent Owner disputes Petitioner’s assertions by arguing that several
`of the claim limitations are not taught by the cited art. PO Resp. 24–55.
`Patent Owner also argues that Petitioner’s combination of cited art
`improperly relied upon hindsight. Id. at 57–71. We address Patent Owner’s
`arguments in turn.
`First, as noted above “claim 1 requires a system comprising a gateway
`that receives and translates select information, identification information of a
`nearby transceiver and identification information of retransmitting
`transceivers and to transmit the translated information to a computer over a
`WAN.” PO Resp. 24. Patent Owner argues that this limitation is not taught
`by the cited art because Kahn’s pickup packets are not transmitted from
`PRNET to ARPANET via a gateway and as such, the cited art does not teach
`the translation of data before transmission to ARPANET. Id. at 24–30, 34–
`41. Patent Owner further argues that Kahn’s measurement file does not
`contain the recited identifiers. Id. at 30–34.
`Petitioner relies upon Kahn’s discussion of transmitting PRNET
`measurement data over the ARPANET to a computer at UCLA. Pet. 28.
`Four measurement tools are described in Kahn—CUMSTATS, snapshots,
`pickup packets, and neighbor tables. Ex. 1002, 1495, col. 2. A PR’s
`measurement software “collects subnet CUMSTATS and snapshots; enters
`local data into pickup packets; and periodically sends collected data to
`station measurement process.” Id. Kahn’s stations contain measurement
`software that “controls experiments and collects the resulting measurement
`data” including data collected from internal packet handling processes. Id.
`This information is collected and written to a measurement data file. Id.
`“Network connectivity, labeling, and route updates are all written on the
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`measurement file as they occur.” Id. Finally, “[t]he data are sent from the
`station over the ARPANET and are stored at UCLA, for use by several
`analysis programs.” Id.
`Patent Owner argues that Kahn’s station does not perform any
`protocol conversion/translation of a pickup packet because Kahn does not
`transmit a pickup packet to the ARPANET. PO Resp. 29. According to
`Patent Owner, Kahn only transmits the measurement data file and this file is
`created for the purpose of transmission over the ARPANET, so that no
`translation of the measurement data file is required. Id. Dr. Almeroth
`supports this argument by testifying that “Petitioner and Dr. Heppe conflate
`the data transmitted within the PRNet with the data transmitted by Kahn’s
`station over the ARPANET” and asserting that the information sent over the
`ARPANET is “new packets with the measurement file as payload.”
`Ex. 2014 ¶¶ 117, 118. Petitioner responds by arguing that “nothing in the
`claim would require the pickup packet itself to be translated and sent over
`the APRANET. What the claims require is that the information within the
`pickup packet be received at the station, translated, . . . and then then
`transmitted over to the ARPANET.” Tr. 28:26–29:4 (emphasis added). We
`agree with Petitioner.
`Claim 1 recites “a network configured to receive and translate the
`select information.” The claim language does not require the information to
`remain in the same packet prior to it
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