PTAB

IPR2016-01895

Emerson Electric Co v. Sipco LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Communication System and Method
  • Brief Description: The ’492 patent describes a system for monitoring and controlling remote devices. The system uses a packet message protocol to transmit command and sensor data between remote transceivers and a gateway interface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Johnson and Supporting Protocols - Claims 1-4, 6, 14, and 18 are obvious over Johnson in view of ISO-8473, Perkins, and/or EIA-709.1.

  • Prior Art Relied Upon: Johnson (Patent 5,673,252), ISO-8473 (a 1988 communications protocol), Perkins (Patent 5,442,633), and EIA-709.1 (a 1998 control network protocol).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Johnson, which discloses a wide area wireless network for communicating with remote devices like utility meters, teaches most limitations of the challenged claims. Johnson’s network service modules (NSMs) and remote cell nodes (RCNs) were mapped to the claimed remote devices, controllers, and transceivers. Petitioner contended that Johnson’s disclosure of a "variable length information field" met the "scalable message" limitation. For the "scalable address" limitation, Petitioner asserted that if Johnson's "expanding address field" was deemed insufficient, this feature was expressly taught by the ISO-8473 and EIA-709.1 protocols, which both describe protocol data units (PDUs) with variable-length destination address fields.
    • Motivation to Combine: A POSITA would combine Johnson with ISO-8473 or EIA-709.1 to gain the flexibility of scalable addressing, which allows a network to accommodate systems of varying size and complexity—a stated goal of the ’492 patent. The combination was presented as a predictable design choice. Perkins was cited to show it was well-known to use the ISO-8473 protocol in wireless systems like Johnson’s, reinforcing the rationale for the combination.
    • Expectation of Success: Because Perkins taught the successful implementation of the ISO-8473 protocol in a wireless environment, a POSITA would have had a reasonable expectation of success in integrating its scalable addressing features into Johnson’s wireless network.

Ground 2: Obviousness over Mason and Industry Standards - Claims 14, 15, 17, 19-21, and 25 are obvious over Mason in view of EIA-709.1, Shuey, and the C12.18 Protocol.

  • Prior Art Relied Upon: Mason (Patent 6,100,817), EIA-709.1 (a 1998 control network protocol), Shuey (Patent 5,874,903), and the C12.18 Protocol (a 1996 communications protocol for metering).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Mason discloses an automatic meter reading (AMR) system that meets many claim limitations, including wireless communication between remote devices (meters and nodes). However, Mason does not explicitly disclose certain features. Petitioner argued a POSITA would look to the secondary references to supply them. Shuey was used to supply a separate controller that interacts with a transceiver to send preformatted messages. EIA-709.1 was used to provide a scalable, variable-length destination address. The C12.18 Protocol was used to provide a scalable message via its variable-length write-request data field. Finally, Shuey was relied upon to teach the claimed step of reformatting a message when a device acts as a repeater.
    • Motivation to Combine: The motivation to combine was argued to be particularly strong, as Mason explicitly referenced Shuey as a system for which its invention is suited. Mason also expressly stated its system could use the C12.18 Protocol and the LonTalk protocol (which was later standardized as EIA-709.1). Therefore, a POSITA would have been directly motivated by Mason itself to integrate the teachings of these secondary references.
    • Expectation of Success: A POSITA would have a high expectation of success because Mason provided a clear roadmap for integrating the specific secondary references to build out its AMR system.

Ground 3: Anticipation by Johnson - Claims 1-3, 6, 8-11, 13, 14, 16, and 18 are anticipated by Johnson.

  • Prior Art Relied Upon: Johnson (Patent 5,673,252).

  • Core Argument for this Ground:

    • Prior Art Mapping: As an alternative to its obviousness grounds, Petitioner argued that Johnson alone discloses every element of the challenged claims. The central contention focused on the "scalable address" limitation. Petitioner detailed how Johnson’s system employs multiple addressing schemes of varying sizes depending on the message type and target devices. These schemes included a class broadcast address (8 or 0 bits), an individual device address (40 or 32 bits), and a tiered address (adding a 24-bit field). Petitioner argued this explicit use of variable-sized destination addresses based on system complexity and communication needs directly meets the "scalable address" limitation as construed. Johnson’s disclosure of a "variable length information field" was likewise argued to anticipate the "scalable message" limitation.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2) against claims 8-11, 13, and 16 based on Johnson in view of the same secondary references as Ground 1, with the addition of Toner (Patent 5,365,217) to teach determining the location from which a duplicate message originated.

4. Key Claim Construction Positions

  • Petitioner argued that the term "scalable address" should be construed as "an address that has a variable size based on the size and complexity of the system." This construction was asserted to be consistent with the patent’s specification, which describes an address that "can be scalable from one to six bytes based upon the size and complexity of the system." The validity of Petitioner's anticipation argument (Ground 3) and its obviousness arguments hinged on whether the prior art's variable-length address fields met this construction.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 6, 8-11, 13-21, and 25 of the ’492 patent as unpatentable.