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IPR2014-01505

General Electric Co v. TransData Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Antenna for Use with Electric Meter
  • Brief Description: The ’713 patent discloses an electric meter designed for automatic meter reading (AMR) that includes an antenna located within the meter's dielectric housing. The independent claims require the electric meter circuitry to be located in a "circuit board rack" within the meter's chassis.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bush and Battocletti - Claims 1, 7, 8, 14, 15, and 20-25 are obvious over Bush in view of Battocletti.

  • Prior Art Relied Upon: Bush (Patent 6,078,785) and Battocletti (Patent 4,615,009).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bush disclosed all elements of the independent claims except for the explicit recitation of a "circuit board rack." Bush taught an "increased-capability electronic power meter" with built-in two-way RF communications, including an integral antenna, wireless communication electronics, and meter circuitry (microprocessor, memory, sensors) supported on a printed circuit board, all within a meter housing. Petitioner contended that Battocletti cured the remaining limitation by disclosing the use of a "circuit board rack" in an electric meter to support circuit boards.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Battocletti's circuit board rack with Bush's meter design to gain the known benefits of modularity for repair and function modification. Petitioner asserted it was a simple and predictable design choice to use a standard rack to support the circuit boards and electronics already disclosed in Bush.
    • Expectation of Success: A POSITA would have a high expectation of success, as incorporating a standard component like a circuit board rack to support circuit boards is a routine and predictable practice in the electronics and electric meter industries.

Ground 2: Obviousness over AMR Report and Battocletti - Claims 1, 7, 8, 14, 15, and 20-24 are obvious over the AMR Report in view of Battocletti.

  • Prior Art Relied Upon: The AMR Report (“Automatic Meter Reading – The Report for Electric Utilities,” 1993) and Battocletti (Patent 4,615,009).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this ground as an alternative to Ground 1. The AMR Report, like Bush, disclosed digital electric meters (e.g., the ABB Alpha meter) with internal wireless radio systems, including communication option boards and antennas "installed under the meter glass." Petitioner argued the AMR Report taught every limitation except for the "circuit board rack." As in Ground 1, Battocletti was cited to supply this missing element.
    • Motivation to Combine: The motivation was identical to Ground 1: a POSITA would replace the "circuit board housing" of the AMR Report's meter with Battocletti's more modular "circuit board rack" to easily support the main circuit board and the optional communication board, a predictable design improvement.
    • Key Aspects: Petitioner noted that the AMR Report, published in 1993, could not be sworn behind by the Patent Owner, making it a stronger primary reference than Bush.

Ground 3: Obviousness over Primary References and Johnson - Claims 2, 3, 5, 9, 10, 12, 16, and 18 are obvious over Bush or the AMR Report in view of Battocletti and Johnson.

  • Prior Art Relied Upon: Bush or the AMR Report, in combination with Battocletti and Johnson (Patent 5,553,094).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claims reciting specific antenna configurations. Petitioner argued that Johnson taught an antenna for a wireless AMR system that was arc-shaped, conformed to the internal surface of the meter housing, and had a flattened lateral cross-section, meeting the limitations of claims 2, 5, 9, 12, 16, and 18. Johnson also disclosed locating the antenna between circuit boards, relevant to claims 3 and 10.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Johnson's antenna design into the meters of Bush or the AMR Report. Johnson's antenna was designed for a standard cylindrical meter and similar frequencies, making it an interchangeable and obvious design choice to achieve a compact and effective antenna placement that maximized separation from other metal components.
    • Expectation of Success: The interchangeability of antenna designs was well-known, and a POSITA would predictably expect Johnson's antenna to function effectively when coupled to the transmitters in the systems of Bush or the AMR Report.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on adding further prior art to the primary combinations of Bush/Battocletti or AMR Report/Battocletti. These grounds targeted specific dependent claims by using: Lau (Patent 5,565,783) to teach electromagnetic shielding; Siwiak (Patent 4,737,797) to teach a dipole antenna and a required balance circuit; and Moore (Patent 5,270,639) to teach the use of a flexible strip connector.

4. Key Claim Construction Positions

  • "Electric Meter Circuitry": Petitioner argued for the broadest reasonable interpretation of "circuitry in an electric meter," which would include both digital and electromechanical meters. This construction was based on the term's plain meaning and the patent's specification, which discusses the entire "electric meter industry." Petitioner contested the narrow construction of "digital-only" circuitry that the Patent Owner successfully argued during a prior reexamination, asserting that the distinction was illusory for patentability purposes.
  • "Circuit Board Rack": Petitioner proposed a primary construction of "a specific type of structure for supporting a plurality of circuit boards where each board can be independently removed and replaced." As an alternative, Petitioner proposed the broader construction of "any structure for supporting at least one circuit board."

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner's central technical contention was that the Patent Owner's distinction between purely "digital" meters and "electromechanical" meters (which may contain digital components) was illusory and lacked patentable consequence. Petitioner argued that all meters measure analog quantities (voltage, current) and that once a digital signal is generated—regardless of the sensor type—the subsequent digital processing and wireless transmission are the same. This argument was intended to defeat the narrower claim construction that led to allowance in a prior reexamination.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and a final decision cancelling claims 1-27 of the ’713 patent as unpatentable under 35 U.S.C. §103.