Emerson Electric Co v. Sipco

1. Case Identification

• Case #: IPR2015-01579
• Patent #: 6,914,893
• Filed: July 13, 2015
• Petitioner(s): Emerson Electric Co.
• Patent Owner(s): Sipco, LLC
• Challenged Claims: 1, 2, 10, and 37

2. Patent Overview

• Title: System And Method For Monitoring And Controlling Remote Devices
• Brief Description: The ’893 patent discloses a system for monitoring and controlling remote devices. The system uses a plurality of remote transceivers, each with a unique address, to communicate command and sensor data via preformatted messages in a standard packet protocol.

3. Grounds for Unpatentability

Ground 1: Anticipation by Kahn - Claims 1, 2, 10, and 37 are anticipated by Kahn under 35 U.S.C. §102.

• Prior Art Relied Upon: Kahn ("Advances in Packet Radio Technology," Nov. 1978).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kahn, which describes the ARPA-sponsored packet radio network ("PRNET"), discloses every element of the challenged claims. Kahn's system uses geographically remote packet radios (transceivers) with unique identifiers ("selectors") to communicate command and sensed data via preformatted packets. Petitioner asserted that Kahn’s packets include a header with a destination identifier that is variable in length to accommodate routing through multiple intermediate stations, thus teaching a "scalable address." The packet's variable-length text section constitutes a "scalable message," and its 32-bit CRC is a "redundancy check error detector." Kahn’s "stations" and microprocessor controllers meet the "controller" limitation, while its built-in "measurement facilities" for collecting network data function as the claimed "sensor." The ability to remotely turn traffic sources on or off was argued to disclose an "actuator," thereby rendering transceivers "actuated."

Ground 2: Obviousness of Claim 10 over Kahn, Kantronics, and Admitted Prior Art - Claim 10 is obvious over Kahn in view of Kantronics and the Admitted Prior Art.

• Prior Art Relied Upon: Kahn ("Advances in Packet Radio Technology," Nov. 1978), Kantronics (KPC-3 – Users Guide, 1997), and Admitted Prior Art (APA) from the ’893 patent specification.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this ground as an alternative to its anticipation argument for claim 10. It argued that if Kahn is found not to explicitly teach an "actuated transceiver" (comprising a transceiver, sensor, and actuator), then this feature is supplied by Kantronics and the APA. Kahn provides the foundational wireless packet radio communication system. Kantronics, a user guide for amateur packet radio, explicitly describes a "Remote Sensing and Control" application using a sensor (fluid level) and actuators (pump and drain) integrated with a transceiver. The APA from the ’893 patent itself admits it was well known to use sensors and actuators to monitor and control automated systems.
  • Motivation to Combine: A POSITA would combine Kahn's wireless packet network with the sensor and actuator functionalities of Kantronics and the APA to improve upon the wired control systems disclosed in the APA. The motivation was to achieve the known benefits of remote wireless control, such as monitoring and automatically responding to system parameters without the limitations of a physical connection like a public switched telephone network (PSTN).
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining known sensor/actuator control elements with a known wireless communication network was a predictable application of existing technologies to achieve a known goal. The respective functions of Kahn’s network and Kantronics’s control elements would remain unchanged.

Ground 3: Anticipation by Kantronics - Claims 1, 2, 10, and 37 are anticipated by Kantronics under 35 U.S.C. §102.

• Prior Art Relied Upon: Kantronics (KPC-3 – Users Guide, 1997).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Kantronics user guide, which describes a Terminal Node Controller (TNC) for packet radio, discloses all limitations of the challenged claims. The system uses multiple packet radio stations (transceivers) with unique callsigns (unique addresses) that communicate using the preformatted AX.25 packet protocol. The packet structure includes an address field that can list up to eight intermediate relay stations, which Petitioner contended makes the address "scalable" based on network complexity. The packets also contain a control field (command indicator), a variable-length data section from 1 to 256 bytes (scalable message), and a checksum (error detector). The TNC itself, which contains a microprocessor, functions as the "controller." Kantronics’s "Remote Sensing and Control" example explicitly discloses an integrated and actuated transceiver, showing a fluid-level sensor and pump/drain actuators connected to a remote TNC/transceiver pair.

4. Key Claim Construction Positions

Petitioner argued for specific constructions of key terms, asserting they aligned with intrinsic evidence and a prior court construction.

• "scalable address": Construed as "an address that has a variable size based on the size and complexity of the system." This is critical to mapping prior art where address fields change to accommodate different routing paths.
• "scalable message": Construed as "a message in which the size of the message can be varied." This is based on disclosures of variable-length data or text fields in prior art packet structures.
• "sensor": Construed as "an equipment, program or device that monitors or measures the state or status of a parameter or condition and provides information concerning the parameter or condition." This broad construction allows software-based "measurement facilities" to qualify as sensors.
• "actuator": Construed as "equipment, program and/or device that receives control signals and controls the state or status of a parameter, condition, equipment, program or device."
• "integrated": Construed as "a combination of elements communicatively coupled together."

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 10, and 37 of the ’893 patent as unpatentable.