PTAB

IPR2019-00545

Emerson Electric Co v. Sipco LLC

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1. Case Identification

2. Patent Overview

  • Title: SYSTEMS AND METHODS FOR MONITORING AND CONTROLLING REMOTE DEVICES
  • Brief Description: The ’708 patent describes systems and methods for monitoring and controlling remote wireless devices, such as sensors and actuators. The technology involves wireless communication devices that format and exchange preformatted messages containing receiver addresses, command codes, and data values to manage a network of remote devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mason, Shuey, and C12.18 - Claims 1–2, 5-9, 11-13, 15-20, 22, 24 are obvious over Mason in view of Shuey and C12.18.

  • Prior Art Relied Upon: Mason (Patent 6,100,817), Shuey (Patent 5,874,903), and C12.18 (ANSI Standard C12.18-1996).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mason disclosed the core wireless communication system for automatic meter reading (AMR) using a CEBUS RF protocol, where meters can function as repeaters. This combination met limitations for a wireless device (Mason's meter), a controller (Mason's metering and RF boards), a command indicator (C12.18 command codes within Mason's packets), and the ability to send and receive preformatted messages. Shuey provided necessary implementation details for the meters and repeaters, while C12.18—an industry standard explicitly incorporated by Mason—disclosed the specific packet structures and command codes (e.g., for read/write requests) needed to perform the claimed functions.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references because Mason expressly cited Shuey's application for its teachings on repeater functionality and stated that its communication protocol adhered to the C12.18 standard. This would direct a POSITA to use Shuey for device implementation and C12.18 for protocol details to build Mason's disclosed system.
    • Expectation of Success: The combination was a predictable integration of compatible technologies. Mason's system was designed to use the C12.18 standard, and Shuey provided a known, working implementation for the very devices (CEBUS meters) used in Mason, ensuring a high likelihood of success.
    • Key Aspects: Petitioner emphasized that the Board had previously found very similar claims in the ’708 patent’s parent unpatentable over the same prior art combination in a Final Written Decision (FWD) for IPR2016-01895.

Ground 2: Obviousness over Mason, Shuey, C12.18, and Ardalan - Claims 3-4, 14, 21 are obvious over Mason, Shuey, C12.18, and Ardalan.

  • Prior Art Relied Upon: Mason (Patent 6,100,817), Shuey (Patent 5,874,903), C12.18 (ANSI Standard C12.18-1996), and Ardalan (Patent 6,396,839).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built on the base combination from Ground 1 to address claims requiring the unique device address to be an Internet Protocol (IP) address. Petitioner asserted that Ardalan taught assigning unique TCP/IP addresses to individual meters on a CEBUS local area network (LAN) that connects to a wide area network (WAN).
    • Motivation to Combine: A POSITA implementing Mason’s system, which disclosed a CEBUS LAN connecting to a WAN, would be motivated to incorporate Ardalan’s teachings to enable IP-based communication. Ardalan provided a well-understood method for assigning IP addresses in the exact network architecture described by Mason, offering the known benefits of internet connectivity for remote monitoring.
    • Expectation of Success: Integrating TCP/IP addressing into a CEBUS network was a conventional and predictable design choice for achieving WAN connectivity, as demonstrated by Ardalan.

Ground 3: Obviousness over Mason, Shuey, C12.18, and Ehlers - Claims 9, 11-13, 15, 17, 23 are obvious over Mason, Shuey, C12.18, and Ehlers.

  • Prior Art Relied Upon: Mason (Patent 6,100,817), Shuey (Patent 5,874,903), C12.18 (ANSI Standard C12.18-1996), and Ehlers (Patent 5,696,695).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground added Ehlers to the base combination to address claims related to controlling an actuator (claim 9) and determining the location of a message's origin (claim 11.g). Ehlers disclosed a system for controlling actuators (like meters and thermostats) and taught using a specific data structure to track the physical location of each device in the network, which could be used to identify the source of duplicate messages or network faults.
    • Motivation to Combine: A POSITA would be motivated to combine Ehlers because Mason explicitly cited Ehlers as an example of how Mason’s technology could be applied in a residential CEBUS RF system. This citation would lead a POSITA to Ehlers for methods of actuator control and location tracking to enhance the functionality and serviceability of Mason’s AMR system.
    • Expectation of Success: Because Mason itself pointed to Ehlers as a compatible application, a POSITA would have had a high expectation of success in integrating Ehlers's control and location-tracking features.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Lee (for concatenating multiple commands in a single packet), Lyons (for using "ping" commands for network diagnostics), and LonTalk (for implementing scalable addresses), but relied on similar design modification theories.

4. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: Petitioner argued that the ’708 patent was not entitled to its claimed priority date of June 1998. It contended the priority applications failed the written description requirement of 35 U.S.C. §112 for numerous claim elements, such as communicating between remote devices and implementing functions based on command codes. Successfully challenging the priority date would make certain prior art references, like Mason, applicable under §102(e).

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and §314(a).
  • Against §325(d) Denial: Petitioner asserted the grounds were not cumulative of art considered during prosecution. It noted that key references like C12.18 and Lee were never cited by the examiner, and while other references were of record, they were never substantively discussed or applied in rejecting the claims.
  • Against §314(a) Denial: Petitioner argued that a co-pending International Trade Commission (ITC) proceeding involving the ’708 patent should not warrant denial. It cited a prior PTAB decision to support the position that concurrent proceedings do not automatically justify the exercise of discretion to deny institution of an inter partes review (IPR).

6. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-24 of the ’708 patent as unpatentable under 35 U.S.C. §103.