Emerson Electric Co.v.Sipco

Patent Trial and Appeal Board

Jan 14, 2016

09812044 (P.T.A.B. Jan. 14, 2016)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Entered: January 14, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

EMERSON ELECTRIC CO.,
Petitioner,

v.

SIPCO, LLC,
Patent Owner.
_______________

Case IPR2015-01579
Patent 6,914,893 B2
_______________

Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Emerson Electric Co. (“Petitioner”) filed a Petition seeking to institute
an inter partes review of claims 1, 2, 10, and 37 (“the challenged claims”) of
U.S. Patent No. 6,914,893 B2 (Ex. 1001, “the ’893 patent”) pursuant to
35 U.S.C. §§ 311–319. Paper 2 (“Pet.”). SIPCO, LLC (“Patent Owner”)
filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have statutory
authority under 35 U.S.C. § 314(a), which provides that an inter partes
review may not be instituted “unless . . . there is a reasonable likelihood that
the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.”
Upon consideration of the Petition, Patent Owner’s Preliminary
Response, and the associated evidence, we conclude Petitioner has not
established a reasonable likelihood it would prevail in showing the
unpatentability of at least one challenged claim. Therefore, we deny the
Petition for an inter partes review.
B. Additional Proceedings
Petitioner informs us that it has previously filed a declaratory
judgement action challenging the validity of claim 1 of the ’893 patent in
Emerson Electric Co. v. SIPCO, LLC, No. 1:13-cv-02528 (N.D. Ga.) (“DJ
Action”). Pet. 3. Petitioner asserts previous filing of the DJ Action does not
bar it from requesting inter partes review of the ’893 patent because
plaintiffs in that case, including Petitioner, dismissed the action without
prejudice on January 29, 2015, prior to the filing of the Petition. Id. Patent
Owner does not assert the Petition is barred under 35 U.S.C. § 315(a)(1) by
the previously filed DJ Action. Federal courts treat a civil action that is
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dismissed without prejudice as “something that de jure never existed,”
“leav[ing] the parties as though the action had never been brought.”
Holloway v. U.S., 60 Fed. Cl. 254, 261 (2004), aff’d 143 F. App’x 313 (Fed.
Cir. 2005) (unpublished); Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir.
2002); see also Beck v. Caterpillar, Inc., 50 F.3d 405, 407 (7th Cir. 1995).
Based on the assertions and evidence before us, therefore, we conclude the
previously filed DJ Action does not bar Petitioner from filing the Petition.
C. The ’893 Patent
The ’893 patent is titled “System and Method for Monitoring and
Controlling Remote Devices,” and generally relates to a system or method
for monitoring and controlling remote devices by transmitting data between
the remote devices and a gateway using a packet message protocol.
Ex. 1001, Abstract. Figure 2 of the patent is reproduced below:
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Figure 2 depicts control system 200 comprising a plurality of stand-alone
transceivers (211, 213, 215, 221), transceivers with integrated sensors and/or
actuators (212, 214, 216, 222, 224), and local gateways (210, 220).
Ex. 1001, Fig. 2, 3:38–41, 4:23–28. Radio frequency (“RF”) transmissions
(i.e., “messages”) between transceivers, and between local gateways and
transceivers, use a standard format so that each device in the system can
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understand the message. Id. at 10:22–25. Figure 7 of the patent sets forth an
exemplary format of a data packet protocol. Id.

As shown in Figure 7, each message using the protocol contains, inter alia,
“to” address 700 that indicates the intended recipient of a packet, “from”
address 710 that indicates either the address of a controller requesting data
or a transceiver sending a response, command byte 760 that requests data
from the receiving device, data section 770 that may contain data requested
by a specific command, and checksum sections 780, 790 used to detect
errors in transmission. Id. at 10:25–26, 10:31–50, 10:65–66, 11:11–12,
11:22–23.
D. Challenged Claims of the ’893 Patent
Claims 1 and 37 are independent, and claims 2 and 10 depend directly
from claim 1. Claims 1 and 2 are reproduced below:
1. A system for communicating commands and sensed data
between remote devices, the system comprising:
a plurality of transceivers, each transceiver being in
communication with at least one other of the plurality of
transceivers, wherein each transceiver has a unique address,
wherein the unique address identi[f]ies an individual transceiver,
wherein each transceiver is geographically remote from the other
of the plurality of transceivers, wherein each transceiver
communicates with each of the other transceivers via preformatted
messages;
a controller, connected to one of the plurality of transceivers, the
controller being in communications with each of the plurality of
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transceivers via a controller transceiver, the controller
communicating via preformatted messages;
wherein the preformatted messages comprises at least one packet,
wherein the packet comprises:
a receiver address comprising a scalable address of the at
least one of the intended receiving transceivers;
sender address comprising the unique address of the
sending transceiver;
a command indicator comprising a command code;
at least one data value comprising a scalable message; and
an error detector comprising a redundancy check error
detector; and
wherein the controller sends preformatted command messages via
the controller transceiver, and the plurality of transceivers send
preformatted response messages.
2. The system of claim 1, wherein the plurality of transceivers
further comprise at least one integrated transceiver, wherein the
integrated transceiver comprises:
one of the plurality of transceivers; and
a sensor detecting a condition and outputting a sensed data signal
to the transceiver.

Ex. 1001, 14:50–15:18.
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E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1, 2, 10, and 37 of the
’893 patent based on the following grounds:
Challenged
Claims
Basis References
1, 2, 10, 37 § 102(b) Kahn
1

1, 2, 10, 37 § 102(b) Kantronics
2

10 § 103(a) Kahn in view of Kantronics and Admitted
Prior Art

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their “broadest reasonable construction in light of
the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b);
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015)
(“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
PTO regulation.”). Applying that standard, we interpret the claim terms
according to their ordinary and customary meaning in the context of the
patent’s written description. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Petitioner proposes interpretations for the following claim terms of the
’893 patent: “scalable address” (Pet. 6); “scalable message” (Pet. 7);

1
Robert E. Kahn, et al., Advances in Radio Packet Technology,
PROCEEDINGS OF THE IEEE, 1468 (Nov. 1978) (Ex. 1002) (“Kahn”).
2
KPC-3 PLUS USERS GUIDE: INTRODUCTION, GETTING STARTED, MODES OF
OPERATION, COMMAND REFERENCE, AND HARDWARE SPECIFICATIONS (1997)
(Ex. 1003) (“Kantronics”).
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“sensor” (Pet. 7–8); “actuator” (Pet. 8); and “integrated” (Pet. 9–10). Patent
Owner does not set forth any proposed interpretations for claim terms.
Prelim. Resp. 14. Claim terms need only be interpreted to the extent
necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the purposes of this Decision,
it is only necessary to interpret the term “a receiver address comprising a
scalable address of the at least one of the intended receiving transceivers” as
recited in claim 1, and the similarly recited term in claim 37, “a receiver
address comprising a scalable address of the at least one of the intended
remote devices.” Ex. 1001, 15:1–2, 19:15–16.
Petitioner proposes to construe the term “scalable address” to mean
“an address that has a variable size based on the size and complexity of the
system.” Pet. 6. The ’893 Specification supports an interpretation of
“scalable” to mean having “a variable size.” “The ‘to’ address 700 indicates
the intended recipient,” and “can be scalable from one to six bytes based
upon the size and complexity of the system.” Ex. 1001, 10:31–33. Central
to our Decision, however, is not what “scalable” means, but rather what is
meant by a “receiver address” comprising a “scalable address.”
Claims 1 and 37 recite that the “receiver address” comprises “a
scalable address of the at least one of the intended receiving
[transceivers/remote devices].” Ex. 1001, 15: 1–2, 19:15–16. The language
of claims 1 and 37, however, does not preclude the “receiver address” from
including additional data beyond the address of an intended receiving
transceiver/remote device. This is consistent with the ’893 Specification,
which refers to a variable-byte length “to” address that comprises both a
“unique transceiver address” that uniquely identifies an intended transceiver
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(id. at Figs. 7 and 8, 6:38–40, 6:53–55, 10:40–41, 12:11–13), and additional
bytes that may comprise, for example, transceiver/device type, identification
base, manufacturer/owner identification, devices a message is intended for,
or particular codes (id. at Figs. 7 and 8, 10:31–44; 12:3–11). The ’893
Specification more broadly states that “[i]t would have been obvious to one
of ordinary skill in the art that modification of the ‘to’ address can be made
within the scope of this invention based upon individual design constraints.”
Ex. 1001, 11:66–12:3.
We conclude, therefore, that the claimed “receiver address” is not
limited to including only an address identifying the intended receiving
transceiver/remote device. The “receiver address” may also include
additional data.
As recited in claims 1 and 37, the “address of the at least one of the
intended receiving [transceivers/remote devices]” must be “scalable.”
Ex. 1001, 15:1–2, 19:15–16. The ’893 Specification supports this
interpretation. The ’893 Specification discloses a “unique transceiver
identification” or “unique transceiver address” that uniquely identifies an RF
transceiver. Id. at 6:39–41, 6:53–56. As we discussed above, the ’893
Specification provides that the unique transceiver address is part of the “to”
address, i.e., the “to” address comprises a unique transceiver address. The
‘893 Specification further provides that the unique transceiver address is
scalable: “[w]hile the unique transceiver address can be varied within the
scope of the invention, it preferably can be a six-byte address. The length of
the address can be varied as necessary given individual design constraints.”
Id. at 6:53–56.
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We conclude, therefore, that the “address of the at least one of the
intended receiving [transceivers/remote devices]” must be scalable.
B. Asserted Anticipation of Claims 1, 2, 10, and 37 Based on Kahn or
Based on Kantronics
Petitioner asserts claims 1, 2, 10, and 37 of the ’893 patent are
anticipated by Kahn, or alternatively, by Kantronics. Central to our
Decision is whether Petitioner has made a sufficient showing that either
Kahn or Kantronics discloses “a receiver address comprising a scalable
address of the at least one of the intended receiving [transceivers/remote
devices],” as recited in independent claims 1 and 37, respectively. Based on
the current record, we determine Petitioner has not demonstrated a
reasonable likelihood that it would prevail with respect to at least one
challenged claim of the ’893 patent.
1. Kahn
Kahn discloses wireless packet-switched communications between
geographically distributed packet radios. Ex. 1002, 1477, 1479. Kahn
further discloses the operation of a packet radio in which a transmitted
packet has the structure shown in Figure 8:

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Id. at 1478–79. Figure 8 depicts a packet comprising, in pertinent part, a
variable length header. The variable length header in Kahn includes a
destination identifier (also referred to as a “selector”) that identifies the final
destination of a packet, and also may include selectors identifying repeaters
in the route between sender and destination. Id. at 1479.
Petitioner reads the portion of Kahn’s packet header that includes
selectors for both the packet’s final destination and the intermediate
repeaters on the claimed “scalable address.” Pet. 20. Petitioner asserts this
“address” is scalable because the number of intermediate repeaters in the
route can vary. Id. Patent Owner argues this portion of the packet header is
not the claimed address of a receiving transceiver, but rather is a “point-to-
point route” composed of multiple addresses, namely a source transceiver
address, a destination transceiver address, and the address of each repeater in
between. Prelim. Resp. 23 (citing Ex. 1002, 1497).
Applying our above claim interpretation, the “receiver address” may
include data in addition to the address of the destination transceiver. As we
discussed above, however, “scalable address” in claims 1 and 37 refers to
the address of “at least one of the intended receiving [transceivers/remote
devices].” Accordingly, claims 1 and 37 require the address of the
destination transceiver to be scalable. Petitioner neither asserts nor shows
the address of the destination transceiver is scalable. Pet. 20. Petitioner
instead argues the combination of the destination transceiver address and
intermediate repeater addresses is scalable. Id.
Therefore, on the record before us, we are not persuaded Petitioner
has demonstrated a reasonable likelihood that it will prevail in showing
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independent claims 1 and 37 of the ’893 patent are anticipated by Kahn, and
that claims 2 and 10, which depend from claim 1, are anticipated by Kahn.
2. Kantronics
Kantronics is a user’s guide for KPC-3 Plus packet radio stations
(Ex. 1003, 11), and discloses techniques for sending messages between
packet radio stations using packets that are formatted according to a standard
protocol known as AX.25 (id. at 27).
3
The figure on page 27 of Kantronics
depicts an AX.25 packet:

Ex. 1003, 27. As shown in the figure above, an AX.25 packet includes, in
pertinent part, an “address” field comprising the address of the destination
station, source station, and up to eight intermediate stations.

3
We refer to page numbers of the Kantronics user’s guide, rather than the
exhibit page numbers added by Petitioner.
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Similar to its arguments with respect to Kahn, Petitioner asserts the
“address” field in Kantronics’s AX.25 packet is “scalable” because it can list
up to eight intermediate stations. Pet. 44. Petitioner explains:
If the network only has four stations, there only can be a
maximum of two intermediate stations. Whereas, if the
network has 10 stations, there could be a maximum of eight
intermediate stations. Thus, the aforementioned scalable
address varies depending on the size and complexity of the
network.
Id. For reasons we discussed above, however, claims 1 and 37 require the
address of the destination station to be scalable. Petitioner neither asserts
nor shows the address of the destination station is scalable. Id. Petitioner
instead asserts the address section comprising the destination station and up
to eight intermediate stations is scalable. Id.
Therefore, on the record before us, we are not persuaded Petitioner
has demonstrated a reasonable likelihood that it will prevail in showing
independent claims 1 and 37 of the ’893 patent are anticipated by
Kantronics, and that claims 2 and 10, which depend from claim 1, are
anticipated by Kantronics.
C. Asserted Obviousness of Claim 10
Petitioner asserts claim 10 of the ’893 patent would have been
obvious over Kahn in view of Kantronics and the admitted prior art. Pet. 36.
For reasons similar to those we discussed above, we are not persuaded
Petitioner has demonstrated a reasonable likelihood that either Kahn or
Kantronics teaches “scalable address” as recited in independent claim 1,
from which claim 10 depends, and Petitioner does not show how combining
Kahn with Kantronics and the admitted prior art overcomes this deficiency.
Id. at 36–38.
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Therefore, on the record before us, we are not persuaded Petitioner
has demonstrated a reasonable likelihood it will prevail in showing that
claim 10 of the ’893 patent would have been obvious over Kahn in view of
Kantronics and the admitted prior art.
III. CONCLUSION
For the foregoing reasons, the information presented in the Petition
and accompanying evidence does not establish that there is a reasonable
likelihood Petitioner would prevail in showing the unpatentability of any one
of the challenged claims, 1, 2, 10, and 37, of the ’893 patent.
IV. ORDER
Accordingly, it is
ORDERED that Petitioner’s request for an inter partes review of
claims 1, 2, 10, and 37 of the ’893 patent is denied.

PETITIONER:

Don Jackson
Walter Davis
Davidson Berquist Jackson & Gowdey, LLP,
djackson@dbjg.com
wdavis@dbjg.com

PATENT OWNER:

Gregory Gonsalves
gonsalves@gonsalveslawfirm.com

James E. Schutz
Troutman Sanders LLP
james.schutz@troutmansanders.com