Emerson Electric Co v. Sipco LLC

1. Case Identification

• Case #: IPR2019-00549
• Patent #: 9,439,126
• Filed: January 18, 2019
• Petitioner(s): Emerson Electric Co.
• Patent Owner(s): Sipco, LLC
• Challenged Claims: 1-14

2. Patent Overview

• Title: Wireless Network Protocol System and Methods
• Brief Description: The ’126 patent discloses systems and methods for wireless communication between a site controller and a plurality of remote devices in an ad-hoc network. The technology enables remote devices to forward data packets for other devices, maintain a connection list with a "success data score" for neighboring devices, and determine optimal communication paths based on that score, including selecting alternative paths upon transmission failure.

3. Grounds for Unpatentability

Ground 1: Claims 1-14 are obvious over Nasipuri in view of Couto.

• Prior Art Relied Upon: Nasipuri (a 2001 article on multipath routing for mobile ad hoc networks) and Couto (a 2003 conference proceeding on a high-throughput path metric for wireless routing).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nasipuri taught the foundational wireless ad-hoc network where mobile hosts (remote devices) discover routes to a destination (site controller) on-demand using the Dynamic Source Routing (DSR) protocol. Nasipuri's nodes maintained routes in a "route cache" but used a simplistic "shortest hop-count" metric for path selection. Couto, in turn, taught an explicit extension to the same DSR protocol that introduced an Expected Transmission count (ETX) metric. This ETX metric functioned as the claimed "success data score" by measuring packet delivery ratios to identify higher-throughput, more reliable routes, and stored this link quality information in a "link cache," analogous to the claimed "connection list."
  • Motivation to Combine: A POSITA would combine Couto’s superior ETX metric with Nasipuri’s DSR system to solve the well-known problem of network overhead caused by route discovery floods and excessive retransmissions, a problem Nasipuri acknowledged. Couto was presented as a direct improvement to the initial route selection process in DSR, making it a natural and logical modification to Nasipuri’s system to enhance performance and conserve network bandwidth.
  • Expectation of Success: Since Couto was specifically designed as an enhancement for the DSR protocol used by Nasipuri, a POSITA would have had a high expectation of success in combining the teachings to predictably create a more efficient and reliable network.

Ground 2: Claims 1-14 are obvious over Nasipuri in view of Couto and Nieberg.

• Prior Art Relied Upon: Nasipuri, Couto, and Nieberg (a 2003 article on collaborative algorithms for communication in wireless sensor networks).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground augmented the combination of Nasipuri and Couto with Nieberg. Petitioner contended that Nieberg provided more explicit details for a "site controller" and "remote devices" functioning as sensors. Nieberg taught a wireless sensor network architecture comprising "sensor nodes" (remote devices) and a "data sink" (site controller). This data sink collected data from the sensor nodes and could actively poll them for information or receive passive notifications, mapping directly to the functions of the claimed site controller.
  • Motivation to Combine: A POSITA implementing the combined Nasipuri/Couto system for the "networking sensors" application expressly mentioned in Nasipuri would have been motivated to look to a reference like Nieberg for established implementation details. Nieberg provided an advantageous and well-understood architecture for the exact purpose of data collection in a wireless sensor network, making it a logical source for a skilled artisan to consult.
  • Expectation of Success: Combining Nieberg's sensor network architecture with the underlying Nasipuri/Couto routing protocol would have been a predictable integration. All three references operated in the same technical field of ad-hoc wireless networks and were directed toward similar goals, ensuring a high likelihood of successful implementation.

4. Key Claim Construction Positions

• Petitioner argued that a formal claim construction was not determinative to the invalidity analysis, as the challenged claims were obvious under either party’s proposed constructions from a parallel ITC proceeding.
• However, if construction were deemed necessary, Petitioner proposed that "site controller" should be construed as "a device configured to receive data from and send commands to the plurality of remote devices in the network." This was based on the specification's disclosure of site controllers that function in both a passive data-receiving role and an active command-sending role.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) or §325(d).
• The petition asserted that the cited prior art references and the arguments based upon them were new and not cumulative to the art considered by the Examiner during prosecution. It further argued that a co-pending ITC proceeding involving the ’126 patent did not warrant discretionary denial of the petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-14 of Patent 9,439,126 as unpatentable under 35 U.S.C. §103.