PTAB

IPR2017-00001

Emerson Electric Co v. Sipco LLC

Key Events

Petition

Title: System for Remote Monitoring and Control
Brief Description: The ’661 patent describes a system for monitoring and controlling remote devices using a wide area network (WAN). The system utilizes geographically dispersed wireless transceivers, which may act as repeaters, to relay data from sensors and to actuators via a gateway connected to the WAN for processing by a remote computer.

Prior Art Relied Upon: Kahn (a 1978 IEEE article on packet radio), APA (admissions in the ’661 patent), Enterprise (a 1992 software manual), Cerf (a 1978 IEEE article on network interconnection), and Cunningham (Patent 6,124,806).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kahn taught a multi-hop wireless network of transceivers that relay data packets containing source identifiers. APA supplied the known practice of using sensors and actuators in such monitoring and control systems. Enterprise or Cunningham added the element of a WAN-connected computer that stores collected data for remote retrieval upon demand. Cerf, which was explicitly cited by Kahn, was alleged to teach that the gateway connecting the wireless network to the WAN functions as a protocol translator.
- Motivation to Combine: A POSITA would combine Kahn's wireless network with APA's sensors to create a flexible monitoring system. Adding the remote data access taught by Enterprise or Cunningham was described as a predictable and desirable improvement. Petitioner asserted the motivation to combine Cerf was direct, as Kahn pointed to it for a more detailed description of the system’s gateway function.
- Expectation of Success: Petitioner contended that success was expected because the combination involved integrating known elements for their conventional purposes to achieve a predictable outcome.

Prior Art Relied Upon: Kahn, APA, Cerf, and Cunningham.
Core Argument for this Ground:
- Prior Art Mapping: This ground focused on control functionality. Petitioner asserted Kahn taught remote control of network devices over the ARPANET (a WAN). APA was cited for the explicit teaching of using actuators in control systems. The combination allegedly showed a system where a WAN-connected computer generates a control signal, a gateway (Cerf) translates it, and the wireless network (Kahn) delivers it to a remote device equipped with an actuator (taught by APA or Cunningham).
- Motivation to Combine: The primary motivation cited was to leverage Kahn's wireless infrastructure to reduce the cost and complexity of wiring the control systems described in APA. This would create a more flexible and mobile control system, a recognized advantage of packet radio networks discussed in Kahn.
- Expectation of Success: Petitioner argued that sending control signals over a known communication network to trigger standard actuators was a straightforward engineering task with a high likelihood of success.

Prior Art Relied Upon: Mason (Patent 6,100,817), Cunningham (Patent 6,124,806), and Shuey (Patent 5,874,903), all relating to automatic meter reading (AMR) systems.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Mason taught the foundational system: sensor-equipped meters (transceivers) that communicate wirelessly, act as repeaters, and connect to a WAN via a gateway. To meet the claim limitation of retransmitting identification data for both the nearby and retransmitting transceivers, Petitioner relied on Shuey. Cunningham was used to supply the separate teaching of formatting and storing collected data on a server for retrieval on demand by a remote user.
- Motivation to Combine: A POSITA would combine Shuey with Mason because Mason itself identified systems like Shuey's as a suitable application for its invention, providing a strong reason to incorporate Shuey's repeater identification method. Adding Cunningham's remote data access functionality was presented as a common-sense improvement to enhance the utility of Mason's AMR system.
- Expectation of Success: Petitioner argued that because all three references operate in the same technical field of AMR, combining their respective features would have been a predictable and successful integration for a POSITA.

Priority Date Challenge: Petitioner contended that key concepts in the independent claims, such as a gateway translating retransmitted information, were not supported by the earliest-filed parent applications. It was argued that the challenged claims were therefore only entitled to a priority date of March 18, 1999. This assertion was critical for establishing Mason, Shuey, and Cunningham as valid prior art under pre-AIA 35 U.S.C. §102(e).

Petitioner requested institution of an inter partes review and cancellation of claims 1, 5, 6, 8-12, and 14 of the ’661 patent as unpatentable.