SIPCO, LLC

Patent Trials and Appeals Board

Aug 14, 2020

IPR2019-00548 (P.T.A.B. Aug. 14, 2020)

Trials@uspto.gov Paper 18
571-272-7822 Entered: August 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EMERSON ELECTRIC CO.,
Petitioner,

v.

SIPCO, LLC,
Patent Owner.
____________

Case IPR2019-00548
Patent 9,439,126 B2
____________

Before JONI Y. CHANG, LYNNE E. PETTIGREW, and
CHRISTA P. ZADO, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Petitioner, Emerson Electric Co., filed a Request for Rehearing under
37 C.F.R. §§ 42.71(c) and (d). Paper 17 (“Req. Reh’g”). In the Request,
Petitioner seeks reconsideration of our Decision (Paper 16, “Dec.”) denying
institution of inter partes review of claims 1–14 of U.S. Patent No.
9,439,126 B2 (Ex. 1001, “the ’126 patent”). Req. Reh’g 1. For the reasons
explained below, we deny the Request for Rehearing and decline to change
our Decision not to institute an inter partes review.
II. DISCUSSION
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d)
(2019). A request for rehearing “must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where
each matter was previously addressed.” Id.
In our Decision, we determined that the Petition failed to show
sufficiently that Jubin1 discloses, teaches, or suggests the limitations of
claim 1 of the ’126 patent directed to determining a first communication
path and selecting a second communication path. Dec. 18–19. For example,
limitation [1.b] recites, in relevant part, “the first remote device being
configured to determine a first communication path between the first remote
device and the site controller when transmitting to the site controller.”
Ex. 1001, 20:53–57. As set forth in our Decision, the Petition argued that
Jubin discloses limitation [1.b] in the context of Petitioner’s annotated
version of Jubin’s Figure 6:

1 John Jubin & Janet D. Tornow, The DARPA Packet Radio Network
Protocols, 75 PROCEEDINGS OF THE IEEE 21–32 (1987) (Ex. 1005).
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When [packet radio] PR M attempts to transmit a packet
to PR L, but the direct path from PR M to PR L is “bad,” Jubin
discloses that the first remote device PR M selects a first
communication path to the site controller (PR L together with
Device 1) by “cho[osing]” “a new next PR” (e.g., PR Q) that is
at “tier 1” and thus “one radio hop away” from the site
controller. PR M thus selects a path consisting of the hop from
PR M to PR Q and the hop from PR Q to the site controller,
when transmitting to the site controller.
Dec. 15 (quoting Pet. 32 (citing Ex. 1005, 24; Ex. 1003 ¶¶ 187–189)).
Petitioner’s annotated version of Figure 6 illustrating this scenario is
reproduced below:

Pet. 32 (annotated Figure 6 illustrating selection of path consisting of hops
from PR M to PR Q and from PR Q to PR L when the link between PR M
and PR L is “bad”).
In its Request for Rehearing, Petitioner asserts that our Decision
properly summarized the limitations of claim 1, including limitation [1.b].
Req. Reh’g 4 (citing Dec. 15–17). Petitioner also agrees with the Decision’s
explanation that the portion of Jubin relied on in the Petition for disclosing
limitation [1.b] describes updating a PR’s tier table:
[A]s the Board recognizes: “[Jubin] describes updating a PR’s
tier table when the link quality between the PR and a
neighboring PR becomes bad. When that occurs, as explained
above in the overview of Jubin, the PR’s tier table is updated
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with a ‘new next PR . . . chosen’ from the neighbor table for all
routes that have the neighboring PR as the ‘Next-PR in Route’
in the tier table.”
Id. at 7 (quoting Dec. 18 (citing Ex. 1005, 24)). Petitioner, however, asserts
that we misapprehended Petitioner’s arguments when we concluded that
“Petitioner seemingly contends that the cited passage of Jubin describes
determining a first communication path and selecting a second
communication path by choosing a new next PR for a packet being
transmitted (i.e., updating the ‘Next PR ID’ in the packet routing header).”
Id. (quoting Dec. 18 (citing Pet. 32, 31 (citing Ex. 1005, 25–26))). Petitioner
contends it did not make such an argument because claim 1 does not require
the packet being transmitted to be “rerouted” using the first communication
path between the first remote device and the site controller determined
according to limitation [1.b]. Id. at 7–8.
We agree with Petitioner that claim 1 does not expressly require a
packet being “transmitt[ed] to the site controller” in limitation [1.b] to be
transmitted via the “first communication path” determined in limitation
[1.b]. In our Decision, based on the Petition’s argument that “[w]hen PR M
attempts to transmit a packet to PR L, but the direct path from PR M to PR L
is ‘bad,’ . . . the first remote device PR M selects a first communication path
to the site controller . . . by ‘cho[osing]’ ‘a new next PR,’” and the Petition’s
discussion of routing information in Jubin’s packet header in its analysis of
limitation [1.b], we understood Petitioner’s position to be that Jubin meets
limitation [1.b] by choosing a new next PR for a packet that PR M is
attempting to transmit to PR L. Dec. 18–19 (quoting Pet. 32) (citing
Pet. 31). In its Request, Petitioner now clarifies two points that were not
apparent based on our earlier reading of the Petition. First, Petitioner
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explicitly states that it is mapping Jubin’s process for updating a PR’s tier
table to the recitation in limitation [1.b] of “determin[ing] a first
communication path between the first remote device and the site controller.”
Req. Reh’g 7 (“By updating the tier table when transmitting a packet, the
remote device determines a first communication path from PR M to PR L
through PR Q.”). Second, Petitioner asserts that the new path in Jubin’s tier
table from PR M to PR L through PR Q (i.e., the claimed “first
communication path” in limitation [1.b]) is “not used until the next packet
needs to be transmitted.” Id. at 7–8.
We have reconsidered our Decision in view of the arguments in the
Request, but we do not reach a different result. As Petitioner admits, claim 1
requires that “determin[ing] a first communication path” in limitation [1.b]
be performed by the first remote device “when transmitting to the site
controller.” Ex. 1001, 20:56–57; see Req. Reh’g 8. According to Petitioner,
Jubin’s first remote device (PR M in Petitioner’s example) selects a “first
communication path” by updating its tier table with a new next PR (e.g.,
PR Q) for destination PR L when the direct path from PR M to PR L is
“bad.” Pet. 32 (citing Ex. 1005, 24); see Req. Reh’g 4–5. Petitioner further
asserts that updating the tier table occurs “[w]hen PR M attempts to transmit
a packet to PR L,” i.e., “when transmitting to the site controller.” Pet. 32
(citing Ex. 1005, 24); Req. Reh’g 7–8.
On the record before us, Petitioner does not show sufficiently that
Jubin discloses “determin[ing] a first communication path between the first
remote device and the site controller” by updating the tier table “when
transmitting to the controller” as required by the claim language in limitation
[1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a
neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s
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tier table is updated with a new next PR for each route in the tier table for
which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference
to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device)
updates its tier table for destination PR L (the claimed site controller) when
it becomes aware that the quality of the link from PR M to PR L has become
bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its
tier table (i.e., determines a first communication path) when PR M is
transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a
specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005,
24. Rather, Jubin discloses using Packet Radio Organization Packets
(PROPs), which are broadcast by each PR every 7.5 seconds to announce
information about the network, to determine link quality (“good” vs. “bad”)
and to communicate link quality and “news of bad tier data” among PRs.
Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not
contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting
to the site controller” language in limitation [1.b]. See Pet. 32. Nor does
Petitioner explain adequately how Jubin discloses that PR M in Figure 6
updates its tier table for destination PR L (i.e., “determine[s] a first
communication path between the first remote device and the site controller”)
when PR M is attempting to transmit a packet to PR L (i.e., “when
transmitting to the site controller”) based on information that the link
between PR M and PR L is “bad.” See id.
Our determination is consistent with the Final Written Decision in
Emerson Electric Co. v. IP Co., LLC, IPR2017-00252, Paper 37 (PTAB
May 30, 2018) (“the ’314 FWD”), in which Petitioner challenged claims of
U.S. Patent No. 8,000,314 (“the ’314 patent”), owned by Patent Owner’s
sister company, for obviousness over Jubin in combination with other
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references. See Pet. 8–9. In the ’314 FWD, the Board addressed the use of
Jubin’s PROPs to determine link quality and update a PR’s tables:
Jubin’s PROP packets communicate the current status of
a link. . . . PRs continue to use the PROP packets to evaluate
the quality of the links listed in their neighbor tables. . . . The
PRs update their tables based on the information received in
these PROP packets and take actions such as replacing a bad
route with a new good route.
Emerson, IPR2017-00252, Paper 37 at 22–23. Petitioner contends that the
’314 FWD confirmed Jubin’s disclosures as relied on in the Petition for
disclosing the limitations of the challenged claims of the ’126 patent.
Pet. 8–9, 15; Req. Reh’g 2 n.4. But Petitioner’s quotations from the
’314 FWD omit the language indicating that PROPs provide information for
updating tier tables to replace bad routes with new good routes. Pet. 15
(quoting Emerson, IPR2017-00252, Paper 37 at 22 (“PRs continue . . . to
evaluate the quality of the links listed in their neighbor tables.”), 23 (“PRs
update their tables based on the information received . . . and take actions
such as replacing a bad route with a new good route.”)); Req. Reh’g 2 n.4
(providing identical quotes from the ’314 FWD). Thus, to the extent
Petitioner contends that the ’314 FWD supports its position that Jubin
discloses a PR (i.e., a first remote device) updating its tier table (i.e.,
determining a first communication path) when it is transmitting a packet to
another PR (i.e., a site controller), Petitioner’s argument is unpersuasive.
See Pet. 15, 32; Req. Reh’g 2 n.4.
III. CONCLUSION
We have reconsidered our Decision in view of Petitioner’s arguments
in the Request, but we remain persuaded that Petitioner fails to make a
sufficient showing that Jubin discloses or teaches limitation [1.b].
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Therefore, we maintain our determination that the information presented
does not show a reasonable likelihood that Petitioner would prevail in
showing that at least one of the challenged claims of the ’126 patent is
unpatentable on the grounds asserted in the Petition, and we decline to
institute an inter partes review.
IV. ORDER
Accordingly, it is
ORDERED that Petitioner’s Request for Rehearing is denied; and
FURTHER ORDERED that the Petition is denied, and no inter partes
review is instituted.

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Patent 9,439,126 B2
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PETITIONER:

James L. Davis, Jr.
Carolyn Redding
Matthew R. Shapiro
ROPES & GRAY LLP
james.l.davis@ropesgray.com
carolyn.redding@ropesgray.com
matthew.shapiro@ropesgray.com

PATENT OWNER:

Jason Stach
Cory Bell
Benjamin Saidman
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
jason.stach@finnegan.com
cory.bell@finnegan.com
benjamin.saidman@finnegan.com

Gregory J. Gonsalves
gonsalves@gonsalveslawfirm.com