Emerson Electric Co v. Sipco LLC

1. Case Identification

• Case #: IPR2016-00984
• Patent #: 8,754,780
• Filed: April 29, 2016
• Petitioner(s): Emerson Electric Co.
• Patent Owner(s): Sipco, LLC
• Challenged Claims: 1-15

2. Patent Overview

• Title: Wireless Systems and Methods for Monitoring and Controlling Remote Devices
• Brief Description: The ’780 patent describes a system for monitoring and controlling remote devices, such as thermostats or sensors in industrial environments. The system uses a plurality of wireless transceivers integrated with sensors that communicate data to a controller via a packet message protocol.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Parent Patent - Claims 1-15 are obvious over Patent 8,013,732.

• Prior Art Relied Upon: Patent 8,013,732 (’732 patent).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’780 patent is not entitled to an effective filing date earlier than its actual filing date of April 2, 2013, because there was a break in co-pendency with its alleged parent applications. Consequently, the ’732 patent, which issued on September 6, 2011, and is allegedly the grandparent of the ’780 patent, qualifies as prior art. Petitioner contended that claims 1-15 of the ’780 patent are rendered obvious because they are completely encompassed by, and contain nearly verbatim language from, claims 13-25 of the ’732 patent. Minor wording differences, such as "second" wireless transceiver in the ’780 patent versus "another" wireless transceiver in the ’732 patent, were argued to be substantively identical.
  • Motivation to Combine (for §103 grounds): The motivation was presented as inherent. Because the claims were argued to be substantively identical, a person of ordinary skill in the art (POSITA) would have found it obvious to arrive at the claims of the ’780 patent from the prior art claims of the ’732 patent, as it required no modification. The identical specifications further supported that the claim terms should be interpreted identically.

Ground 2: Obviousness over a Packet Radio Network in view of Admitted Prior Art - Claims 1, 2, and 7 are obvious over Kahn in view of the Admitted Prior Art.

• Prior Art Relied Upon: Kahn (Robert E. Kahn, “Advances in Packet Radio Network Protocols,” 1978) and Admitted Prior Art (APA) from the specification of the ’780 patent.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kahn taught the core elements of the claimed wireless device, including a packet radio network (PRNET) with a plurality of wireless devices (packet radios), each having a transceiver and a unique identifier (“selector”). Each packet radio's digital section, containing a microprocessor, functioned as the claimed controller, formatting and transmitting data packets. While Kahn did not explicitly disclose a "sensor" separate from the transceiver, the APA (as described in the ’780 patent itself) supplied this element by acknowledging the known use of remote sensors and actuators in various monitoring and control systems (e.g., manufacturing, HVAC). The combination of Kahn’s wireless network with the APA’s known sensors met the limitations of independent claim 1. Dependent claims 2 and 7 were met by the APA’s disclosure of controllers providing control signals to actuators.
  • Motivation to Combine: A POSITA would combine Kahn with the APA to solve a known problem explicitly mentioned in the ’780 patent: the high cost and complexity associated with the physical wiring of sensors and actuators in conventional control systems. Applying Kahn's wireless packet radio network to the monitoring systems described in the APA was a logical step to reduce installation expense and improve flexibility.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these technologies, as it involved applying a known wireless communication protocol (Kahn) to a known application area (the monitoring and control systems of the APA).

Ground 3: Obviousness over Packet Radio Network with Function Codes - Claims 4-6 and 8 are obvious over Kahn in view of the Admitted Prior Art and Burchfiel.

• Prior Art Relied Upon: Kahn, the Admitted Prior Art (APA), and Burchfiel (J. Burchfiel, et al., “Functions and structure of a packet radio station,” 1975).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 2, adding Burchfiel to teach limitations related to function codes. Petitioner argued that Burchfiel, which is expressly cited by Kahn for further detail, disclosed the use of a “function field” or “function code” within a data packet. This code selects specific processes, such as control, debugging, or measurement, thereby teaching the limitation of claim 4 where a controller implements a function in response to a function code. Burchfiel, in conjunction with Kahn, also taught that data packets contain this function code along with the unique identifier, meeting claim 5. The memory for storing software in Kahn’s packet radios would inherently store these function codes, as taught by Burchfiel, meeting claim 6. The "nearby" limitation of claim 8 was taught by both Kahn and Burchfiel, which describe communications between "nearby" radios or repeaters "within earshot."
  • Motivation to Combine: A POSITA would combine Burchfiel with Kahn because Kahn explicitly directs the reader to Burchfiel for additional information on the functions of the packet radio station. This provided a direct and compelling reason to consult and integrate Burchfiel's teachings on function codes into Kahn's packet radio network.

4. Key Claim Construction Positions

• For Ground 1, Petitioner argued no constructions were necessary because the language of the challenged claims was identical or substantively identical to the prior art ’732 patent claims, meaning the terms would have the same meaning in both contexts.
• For Grounds 2 and 3, Petitioner proposed constructions consistent with those in a related case (IPR2015-01973), including:
  • "sensor": "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."
  • "function code": "a code corresponding to a function or condition."

5. Key Technical Contentions (Beyond Claim Construction)

• The central technical/legal contention underpinning Ground 1 was that the ’780 patent was not entitled to claim priority to its parent applications. Petitioner provided a patent family tree and filing dates to demonstrate a period where no co-pendency existed between the ’780 patent's application and any of its alleged parent applications. This break in the priority chain was critical to establishing that the ’732 patent, an alleged grandparent, qualified as prior art under 35 U.S.C. §102.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-15 of Patent 8,754,780 as unpatentable.