PTAB

IPR2020-01073

STMicroelectronics Inc v. TriDiNeTWorks Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Control Systems, Commissioning Tools, Configuration Adapters and Method for Wireless and Wired Networks Design, Installation and Automatic Formation
  • Brief Description: The ’276 patent discloses a method and system for designing, installing, and automatically forming wired and wireless networks. The technology focuses on commissioning network devices by downloading configuration data, including to unpowered devices, using technologies like radio frequency identification (RFID) or near field communication (NFC).

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-7, 9, and 15-25 are obvious over Knibbe in view of Smith.

  • Prior Art Relied Upon: Knibbe (Patent 8,665,772) and Smith (Patent 7,825,776).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Knibbe taught the overall framework for designing and commissioning a network. Knibbe disclosed a software suite for designing a network with both wired and wireless devices, creating virtual devices in a database, installing physical devices according to the design, and then loading functionality into the devices from a central controller (a laptop). Petitioner contended that Knibbe met most limitations of independent claims 1 (method) and 17 (system), including creating a network design with configuration data, installing devices per the design, and accessing the design with a commissioning tool.
    • However, the key limitation added during prosecution to overcome prior art was the ability to download configuration data from a powered commissioning tool to an unpowered device. Petitioner asserted that Smith supplied this missing element. Smith disclosed a method to wirelessly configure devices using an RFID reader/writer to transmit data to a passive RFID tag on a device, specifically teaching that this process works "even if the device is unpowered at the time" and "still in its shipping carton." The combination of Knibbe’s network design and installation process with Smith’s method for unpowered configuration allegedly rendered the claims obvious. For dependent claims, Petitioner mapped features such as automatic network formation upon initialization and the use of standard communication links to disclosures within Knibbe and Smith.
    • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine Knibbe and Smith for several reasons:
      • Both references addressed the same technical problem of improving and simplifying the setup and configuration of electronic devices.
      • The combination would yield predictable results, as Smith’s RFID configuration system could be incorporated into Knibbe’s network commissioning process without modification.
      • Knibbe itself suggested an embodiment where a network card is replaced by a "short-range transceiver," which is precisely what Smith’s RFID-based system provided.
      • Smith disclosed that its technology was suitable for configuring network parameters like IP addresses and security keys, directly suggesting its application to the network configuration taught by Knibbe.
    • Expectation of Success: A POSITA would have a high expectation of success because Smith’s technology for configuring unpowered devices was a well-known, standardized application of RFID/NFC technology that could be predictably integrated into Knibbe's more general network design and commissioning system.

4. Key Claim Construction Positions

  • Petitioner asserted that claim terms should be given the plain and ordinary meanings provided by the patentee, who acted as their own lexicographer by including a glossary in the specification. Key proposed constructions included:
  • Commissioning tool: "A usually portable unit used to deploy and configure devices." Petitioner argued Knibbe's laptop used for on-site commissioning met this definition.
  • Configuration adapter: "A component in a device or connected to a device which receives and stores configuration data." Petitioner mapped this to the memory in Knibbe's network nodes and, crucially, to the passive RFID tag with writable storage disclosed in Smith.
  • Configuration Interface: "The interface through which the configuration data is transferred between a commissioning tool and a device to be configured." This was central to the obviousness argument, as Smith disclosed an RFID reader/tag system as such an interface.
  • Device Contact Interface: "A wired interface through which a device accesses configuration data that has been downloaded from a commissioning tool." Petitioner argued Smith disclosed this feature for when the device is powered on and reads the data from its storage element via a wired internal bus.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 5-7, 9, and 15-25 of Patent 8,437,276 as unpatentable.