Emerson Electric Co v. Sipco LLC

1. Case Identification

• Case #: IPR2019-00547
• Patent #: 8,964,708
• Filed: January 18, 2019
• Petitioner(s): Emerson Electric Co.
• Patent Owner(s): Sipco, LLC
• Challenged Claims: 1-24

2. Patent Overview

• Title: Systems and Methods for Monitoring and Controlling Remote Devices
• Brief Description: The ’708 patent discloses wireless communication systems for monitoring and controlling remote devices. The systems use wireless transceivers that communicate command and sensed data via messages containing elements such as addresses, command codes, and data values.

3. Grounds for Unpatentability

Ground 1: Claims 3-4, 9, 14, and 16-24 are obvious over Johnson in view of Cunningham

• Prior Art Relied Upon: Johnson (Patent 5,673,252) and Cunningham (Patent 6,124,806).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Johnson taught the core wireless network architecture, including remote cell nodes (RCNs) that communicate with network service modules (NSMs) using preformatted messages with addresses and command codes. However, Johnson lacked explicit teachings for using Internet Protocol (IP) addresses and directly associating actuators with its RCNs. Cunningham allegedly supplied these missing elements, disclosing a similar automated meter reading (AMR) system where data collection modules (which Petitioner equated to Johnson's RCNs) use unique IP addresses and can be directly connected to sensors or actuators like thermostats. The combination, Petitioner asserted, rendered the challenged claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Johnson and Cunningham to improve Johnson’s system. Cunningham, which cited Johnson as prior art, was directed to the same field (AMR systems) and provided a way to simplify Johnson's "complicated" data retrieval by using the well-understood and common IP address format. This would allow Johnson's network to more easily communicate with a variety of devices. Furthermore, applying Cunningham’s teachings on interfacing with sensors and actuators was a straightforward way to add control functionality to Johnson's monitoring network.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success because the devices in both systems (Johnson's RCNs and Cunningham's DCMs) served similar purposes with similar structures, making the combination predictable.

Ground 2: Claims 10 and 24 are obvious over Johnson in view of Lyons

• Prior Art Relied Upon: Johnson (Patent 5,673,252) and Lyons (Patent 6,208,266).

• Core Argument for this Ground:

  • Prior Art Mapping: Johnson taught a network that could benefit from reliability and stability checks but did not explicitly disclose a "ping" command. Lyons taught a network of wireless devices that periodically "ping" each other to verify they are functioning properly. Petitioner argued that adding Lyons' well-known "ping" functionality to Johnson's system to verify network integrity would have been obvious. This combination allegedly met the limitations of claim 10, which required a command code indicating a request for a ping response.
  • Motivation to Combine: A POSITA reviewing Johnson’s system would recognize the importance of maintaining a stable and reliable network for control applications. Lyons provided an advantageous and commonly used method for maintaining network integrity by issuing "ping" commands. A POSITA would therefore be motivated to incorporate this standard diagnostic tool into Johnson’s system to improve its reliability.
  • Expectation of Success: The combination was described as straightforward and predictable, as implementing a "ping" command was a common and well-understood practice in network management.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Johnson with Ardalan (Patent 6,396,839) to teach using TCP/IP addresses; with Ehlers (Patent 5,696,695) to teach tracking device locations within the network; and with Lee (Patent 5,477,216) to teach concatenating multiple commands in a single packet.

4. Key Claim Construction Positions

• "address is scalable" (Claim 6): Petitioner argued this term should be construed as an address having a variable size based on the system's size and complexity, where scalability refers to the variation in size the address occupies within a data packet. This construction was argued to be consistent with a Final Written Decision (FWD) for a related patent and the ’708 patent’s specification. Petitioner contended that even under the Patent Owner's narrower construction, the claim was still obvious over Johnson, which disclosed address fields of varying bit lengths (e.g., 0-bit, 8-bit, 32-bit, 40-bit) depending on the message type (e.g., broadcast vs. individual).

5. Key Technical Contentions (Beyond Claim Construction)

• Disputed Priority Date: Petitioner contended that the challenged claims of the ’708 patent were not entitled to claim priority to their earlier provisional applications. It was argued that the earlier applications (’268 and ’522) failed to provide adequate written description support for several key claim elements, such as communicating between remote devices, implementing functions based on command codes, and redundancy check error detectors. This argument was central to establishing the effective filing date of the claims and, consequently, the status of several cited references as prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §325(d) or §314(a). It was asserted that the grounds were new and not cumulative of arguments considered during prosecution, as one key reference (Lee) was not previously considered, and the other references were identified but not substantively discussed. Petitioner also argued that co-pending International Trade Commission (ITC) proceedings did not warrant denial under the Fintiv factors, asserting that the current petition raised distinct arguments not presented to the USPTO before.

7. Relief Requested

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