PTAB

IPR2014-01380

General Electric Co v. TransData Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Communication Device for an Electric Meter and Method of Using the Same
  • Brief Description: The ’699 patent describes a wireless communication device for an electric utility meter. The core inventive concept is placing a communication antenna entirely within the meter's dielectric housing to protect it from weather and vandalism, distinguishing it from prior art systems that used external antennas.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 3, 5, 8, 10, 11, 16, 21, 23, 25-47, and 49 under 35 U.S.C. §102

  • Prior Art Relied Upon: Bush (Patent 6,078,785).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bush, which discloses an electronic power meter with "built-in two-way RF communications," teaches every element of the challenged claims. Bush describes its Demand Relay Meter (DRM) as an electronic, or "digital," meter. Critically, Bush explicitly teaches the desirability of integrating the antenna within the meter case to protect against vandalism, thereby disclosing the core limitation of an antenna element within the dielectric housing. Petitioner further asserted that Bush discloses the claimed communication circuit coupled to meter circuitry and the transmission of various data types (e.g., energy usage, power factor, time of use, diagnostic information), meeting the limitations of numerous dependent claims.

Ground 2: Obviousness of Claims 1, 3, 5, 8, 10, 11, 16, 21, 23, 25-47, and 49 over Bush in view of Johnson

  • Prior Art Relied Upon: Bush (Patent 6,078,785) and Johnson (Patent 5,553,094).
  • Core Argument for this Ground:
    • Prior Art Mapping: As an alternative to anticipation, Petitioner argued that to the extent Bush is found not to explicitly disclose the antenna's specific location within the housing, Johnson remedies this. Johnson discloses an under-the-glass arc-shaped internal antenna coupled to a digital control subsystem in a utility meter.
    • Motivation to Combine: A POSITA would combine Johnson’s known internal antenna placement with Bush's digital meter system because both references are directed to the same field of RF-AMR (Automatic Meter Reading) meters. The combination would have been a simple substitution of one known internal antenna design for another to achieve the predictable result of a digital meter with a protected, well-performing internal antenna.
    • Expectation of Success: A POSITA would have had a high expectation of success, as integrating a known internal antenna design like Johnson's into a digital meter like Bush's involved applying established engineering principles to achieve a predictable improvement in durability and security.

Ground 3: Obviousness of Claims 45-48, 50, and 52 over Bush in view of the AMR Report

  • Prior Art Relied Upon: Bush (Patent 6,078,785) and the AMR Report (“Automatic Meter Reading – The Report for Electric Utilities,” 1993).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on limitations requiring the meter circuitry and/or antenna to be located on a circuit board. Petitioner argued that the AMR Report, which describes commercially available solid-state meters like the ABB Alpha meter, explicitly shows a main circuit board for meter circuitry and an optional "communication option board" installed "under the meter glass." This communication board necessarily includes a transceiver and antenna.
    • Motivation to Combine: A POSITA would combine the references because they address the same subject matter, and Bush itself identifies the ABB Alpha meter (detailed in the AMR Report) as a known solid-state meter. To the extent Bush lacked detail on its "P.C. Board," a POSITA would look to a known, commercially available implementation like that in the AMR Report to implement the communication functions on a dedicated circuit board within the meter housing.
    • Expectation of Success: Coupling a communication board to a main processor board was a standard and necessary design choice for creating a functional AMR system, leading to a high expectation of success.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Bush and Johnson with Bearden (Patent 5,627,759) for communicating power quality information; combining Bush and the AMR Report with Siwiak (Patent 4,737,797) for an antenna and balance circuit embodied on a circuit board; and combining Bush and the AMR Report with Krenz (Patent 5,508,709) for an antenna composed of copper.

4. Key Claim Construction Positions

  • "electric meter circuitry": Petitioner proposed two alternative constructions. The Broadest Reasonable Interpretation is simply "circuitry in an electric meter," which encompasses meters with both digital and electromechanical components. Alternatively, acknowledging the Patent Owner's arguments in a prior reexamination, Petitioner proposed the narrower construction of "circuitry in a digital electric meter." Petitioner maintained the claims were invalid under either construction, as the prior art disclosed antennas in fully digital meters.
  • "within said chassis": Petitioner argued this term should be construed as "on or supported by a chassis, base, or any structure connected to a chassis or base." This construction, adopted by the examiner in a prior reexamination, includes all structures under the main dielectric housing, not just the base plate.

5. Key Technical Contentions (Beyond Claim Construction)

  • Digital vs. Electromechanical Distinction is Illusory: A central technical argument was that the Patent Owner’s distinction between purely "digital" meters and "electromechanical" meters (like Johnson, which used both a rotating disk sensor and a digital control system) was illusory for patentability. Petitioner contended that all electric meters measure analog phenomena (voltage, current) and that the method of converting this to digital data for wireless transmission does not change the fundamental operation of the antenna or communication circuit.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 3, 5, 8, 10, 11, 16, and 21-53 of the ’699 patent as unpatentable under 35 U.S.C. §§ 102 and 103.