Emerson Electric Co. v. SIPCO, LLC

1. Case Identification

• Case #: IPR2017-00001
• Patent #: 7,468,661
• Filed: October 1, 2016
• Petitioner(s): Emerson Electric Co.
• Patent Owner(s): SIPCO, LLC
• Challenged Claims: 1, 5, 6, 8, 12, and 14

2. Patent Overview

• Title: System for monitoring and controlling remote devices
• Brief Description: The ’661 patent discloses a system for monitoring and controlling remote devices. The system uses geographically dispersed wireless transceivers connected to sensors or actuators, which form a multi-hop network to relay information to a gateway connected to a wide area network (WAN), such as the Internet, for processing by a remote computer.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 6, 8, 12, and 14 are obvious over Kahn in view of Admitted Prior Art (APA), and further in view of Enterprise and Cerf, or Cunningham.

• Prior Art Relied Upon: Kahn (“Advances in Packet Radio Technology,” Nov. 1978), APA (admissions in the ’661 patent), Enterprise (“Enterprise Server Configuration Manual,” June 1992), Cerf (“Issues in Packet-Network Interconnection,” Nov. 1978), and Cunningham (Patent 6,124,806).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kahn, describing the ARPANET-sponsored PRNET packet radio network, teaches most elements of the challenged claims, including a system for data collection (preamble), a plurality of geographically dispersed transceivers configured to receive and retransmit information (claim 1c), and a gateway connected to a WAN (claim 1d). The ’661 patent’s APA was cited to supply the teaching of interfacing these transceivers with sensors, a feature the Board previously found missing from Kahn alone in a related IPR. To meet the limitation of a computer storing information for retrieval upon demand, Petitioner combined Kahn with either Enterprise (disclosing a server that provides historical data to workstations upon request) or Cunningham (disclosing a host module that makes compiled data available to remote computers). The gateway’s protocol translation function was taught by Cerf, which is expressly cited by Kahn.
  • Motivation to Combine: A POSITA would combine Kahn with Enterprise or Cunningham for the known and desirable purpose of making centrally collected data available to multiple remote users. The motivation to combine Kahn and Cerf was explicit, as Kahn directs the reader to Cerf for details on gateway functionality. The combination with APA’s sensors was motivated by the desire to apply Kahn's versatile wireless network to known monitoring and control applications.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these known elements, such as adding a remote-access database function (from Enterprise) to a data collection network (from Kahn), as it involved applying conventional technologies for their intended purposes.

Ground 2: Claims 9-11 of the ’661 patent are obvious over Kahn in view of APA, and further in view of Cerf or Cunningham.

• Prior Art Relied Upon: Kahn, APA, Cerf, and Cunningham.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground leveraged the same prior art combination as Ground 1 but targeted the system’s control capabilities as recited in claims 9-11, which require elements like an "actuator to be controlled" and a "control signal." Petitioner asserted that Kahn teaches remote control functionality through its disclosure of a cross-internetwork debugger (X-NET) used to remotely alter operating parameters in the packet radios. To the extent Kahn was deemed insufficient, APA was cited for its admission that prior art systems used actuators to implement process corrections. Cunningham was presented as an alternative that explicitly teaches remote control of devices like lights and thermostats.
  • Motivation to Combine: A primary motivation to combine Kahn’s wireless network with the control systems of APA was to solve a problem stated in the ’661 patent: the high costs associated with wired sensor-actuator infrastructure. A POSITA would have been motivated to replace physical wiring with Kahn’s packet radio network to reduce installation expense and increase system flexibility.

Ground 3: Claims 1, 5, 6, 8, 12, and 14 are obvious over Mason in view of Cunningham and Shuey.

• Prior Art Relied Upon: Mason (Patent 6,100,817), Cunningham (Patent 6,124,806), and Shuey (Patent 5,874,903).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented Mason as a base reference disclosing an automatic meter reading (AMR) system with the core components: remote utility meters (transceivers with sensors) that can act as repeaters and a node/collector (gateway) connected to a WAN. Petitioner argued Mason teaches most claim elements. However, Mason did not explicitly disclose that a retransmitted message includes identification information for both the originating transceiver and the retransmitting transceiver. To supply this element, Petitioner relied on Shuey, which discloses a two-level repeat system where a message retransmitted by a second repeater includes identifiers for both the first and second repeaters. Cunningham was used, as in Ground 1, to supply the teaching of a computer that formats and stores data for retrieval on demand by a remote device.
  • Motivation to Combine: The motivation to combine Mason and Shuey was strong, as Mason explicitly stated that its invention is particularly suited for systems like the one disclosed in Shuey. A POSITA would combine Cunningham’s remote-access data retrieval feature with Mason's AMR system for the conventional benefit of making collected meter data easily accessible to multiple users.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner contended that the challenged claims were not entitled to their earliest claimed priority date of June 22, 1998. It was argued that key concepts—specifically the gateway’s function to "receive and translate retransmitted information" (claims 1, 5, 12) and the remote control of an "actuator" (claim 9)—were not disclosed until a later-filed application (Application # 09/271,517) with a filing date of March 18, 1999. This assertion, if successful, would make several prior art references, including Cunningham, Mason, and Shuey, available under §102(e).

5. Arguments Regarding Discretionary Denial

• Petitioner noted that several related patents were or had been the subject of other IPR proceedings and co-pending litigation. To promote administrative efficiency and consistent decision-making, Petitioner requested that if the present IPR was instituted, it be assigned to the same PTAB panel that handled the related IPRs, particularly IPR2015-01973 which involved a related patent and similar prior art.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 5, 6, 8, 12, and 14 of Patent 7,468,661 as unpatentable.