Emerson Electric Co. v. Sipco, LLC

1. Case Identification

• Patent #: 8,908,842
• Filed: July 18, 2016
• Petitioner(s): Emerson Electric Co.
• Patent Owner(s): SIPCO, LLC
• Challenged Claims: 1, 7, 9, 16, 17

2. Patent Overview

• Title: Multi-Functional General Purpose Transceivers and Devices
• Brief Description: The ’842 patent describes a system using general-purpose transceivers for communicating status information from remote devices, such as financial transaction machines (ATMs) or vending machines, to a central location. The system is intended to automate service requests and eliminate the need for manual, periodic status checks.

3. Grounds for Unpatentability

Ground 1: Patent-Ineligible Subject Matter under §101

• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the challenged claims are directed to the patent-ineligible abstract idea of establishing a communications route to relay information between two points. This was framed as a fundamental concept practiced for centuries via methods like the postal service and telegraph. Petitioner contended the claims lack an "inventive concept" sufficient to transform this abstract idea into a patent-eligible application. The implementation was described as using only generic, well-known hardware (e.g., a "general purpose transceiver," controller, interface circuit) performing their conventional functions.
  • Key Aspects: The problem solved by the patent—the "relatively expensive" cost of employing individuals for manual status checks—was characterized as a purely financial or business problem, not a technical one. Petitioner asserted that automating this long-standing human activity with generic technology does not confer patent eligibility. It was also argued that the claims fail the machine-or-transformation test, as they merely recite the movement of electronic information on a general-purpose computer, which is not a legally sufficient transformation.

Ground 2: Obviousness over Kahn in view of Burchfiel

• Prior Art Relied Upon: Kahn (a 1978 article on packet radio network protocols) and Burchfiel (a 1975 paper on the structure of a packet radio station).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kahn taught a packet radio network with stations, repeaters, and terminals, where packet radio units (PRs) comprised a transceiver, a controller, and an interface circuit. Kahn disclosed establishing communication links (routes) using addresses, which it termed "selectors," contained in packet headers. Petitioner argued that Burchfiel, which is explicitly cited by Kahn, taught key implementation details for such networks, including the advantageous use of "simple, low-powered component[s]" to enable extended remote operation. The combination of these references was alleged to teach all limitations of the challenged claims.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Kahn and Burchfiel. The references are in the same technical field, share overlapping authorship, and Kahn expressly cited Burchfiel when discussing the "functions of a station." Burchfiel was presented as providing known and advantageous implementation details, such as the use of low-power components, that would have been an obvious and logical modification to implement or improve upon Kahn's system, particularly for mobile or power-constrained applications.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as it involved applying known, compatible design principles from Burchfiel to the well-defined system architecture of Kahn, which would lead to the predictable result of an operational packet radio network.

Ground 3: Obviousness over Tymes

• Prior Art Relied Upon: Tymes (Patent 5,157,687).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Tymes, standing alone, rendered the claims obvious. Tymes was said to disclose a packet data transmission system that linked remote data-gathering units to a central computer via intermediate base stations (BSs). These BSs were described as acting as intermediaries and comprising a controller (CPU), an interface circuit, and a transceiver. Petitioner argued Tymes taught establishing a communication link between a remote unit and the central computer using the remote unit's ID number, included in data packets, as a form of address. The system in Tymes was explicitly designed for low-power, unlicensed operation suitable for indoor networks, thus teaching the low-power transceiver limitation.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Kahn as a single reference and further argued that claims 1, 7, 9, 16, and 17 are unpatentable under 35 U.S.C. §112 for lack of written description.

4. Key Claim Construction Positions

• Petitioner proposed that the term "remote device" (claims 3-6, 17) should be construed as "a device connected to a sensor or actuator and whose condition or characteristic is monitored or controlled by the sensor or actuator." This construction was presented as critical for tying the broad claim language to the patent’s specific disclosed embodiments, such as ATMs and vending machines that monitor their own status.
• Petitioner also referenced its position from related litigation that the term "controller" is indefinite under §112(6) because the specification allegedly fails to disclose a corresponding structure for the claimed functions.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention of the petition was that the ’842 patent does not claim a "technological invention," a threshold requirement for a patent to be eligible for Covered Business Method (CBM) review. Petitioner argued the claims are directed to solving a purely business problem (reducing the expense of manual status checks) rather than a technical problem. This argument asserted that the claims achieve this solution by merely arranging generic, off-the-shelf computer and communication components that perform their conventional functions, which does not amount to a technological solution.

6. Relief Requested

• Petitioner requested institution of a Covered Business Method Patent Review and cancellation of claims 1, 7, 9, 16, and 17 of Patent 8,908,842 as unpatentable.