SIPCO, LLC

Patent Trials and Appeals Board

Aug 27, 2020

IPR2019-00547 (P.T.A.B. Aug. 27, 2020)

Trials@uspto.gov Paper 35
571-272-7822 Entered: August 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EMERSON ELECTRIC CO.,
Petitioner,

v.

SIPCO, LLC,
Patent Owner.
____________

IPR2019-00547
Patent 8,964,708 B2

____________

Before JONI Y. CHANG, BRYAN F. MOORE, and CHRISTA P. ZADO,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C § 318(a)

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I. INTRODUCTION
Emerson Electric Co. (“Petitioner”) filed a Petition (“Pet.,” Paper 1)
pursuant to 35 U.S.C. § 311 to institute an inter partes review of claims 1–
24 of U.S. Patent No. 8,964,708 B2 (“the ’708 patent,” Ex. 1101). The
Petition is supported by the Declaration of Vijay K. Madisetti Ph.D. (Ex.
1103). SIPCO, LLC (“Patent Owner”) filed a preliminary response. Paper 9
(“Prelim. Resp.”). In an August 30, 2019 Institution Decision, we
determined that Petitioner had a reasonable likelihood of prevailing as to at
least one of the challenged claims of the ’708 patent. Paper 15 (“Inst.
Dec.”). Accordingly, we instituted an inter partes review pursuant to 37
C.F.R. § 42.108. Inst. Dec. 46.
Patent Owner filed a Patent Owner Response (Paper 19, “PO Resp.”)
to which Petitioner filed a Reply (Paper 22, “Reply”). Patent Owner also
filed a Sur-Reply. Paper 24. Patent Owner relies on the testimony of Dr.
Ghobad Heidari. Ex. 2004.
Both parties requested a hearing for oral argument (Papers 26 and 28),
and a hearing was held May 29, 2020. See Paper 34 (“Tr.”).
A. Related Matters
Petitioner advises us that several district court lawsuits may affect or
be affected by this proceeding. Pet. 3–4.1 The ’708 patent is the subject of
co-pending IPR2019-00545.

1 The Petition’s Table of Contents is labeled with pages 1–6 and then the
Petition starts again at page 1 for the body of the Petition. Citations herein
are to the body of the Petition.
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B. The ’708 Patent
The ’708 patent is directed to a system and method for remotely
operated systems and, more particularly to a system for monitoring,
controlling, and reporting on remote systems utilizing radio frequency (RF)
transmissions. Ex. 1001, Abstract.
C. Illustrative Claim
Challenged claims 1, 11, 16, and 22 are independent claims.
Challenged claims 2–10, 12–15, 17–21, 23, and 24 depend from claims 1,
11, 16, or 22. Claim 1, reproduced below, is illustrative.
1. A wireless communication device for use in a wireless
communication system configured to communicate command
and sensed data within the wireless communication systems, the
wireless communication device comprising:
a transceiver configured to send and receive
wireless communications;
and a controller configured to communicate with at
least one other remote wireless device via the transceiver
with a preformatted message, the controller further
configured to format a message comprising a receiver
address comprising an address of at least one remote
wireless device; a command indicator comprising a
command code; a data value comprising a message,
wherein the controller is configured to receive a
preformatted message from another wireless
communication device, and based on a command code
provided in the preformatted message, implement a certain
function corresponding to the command code.
Ex. 1101, 14:6–23.

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D. Prior Art Relied Upon
Petitioner relies upon the following prior art references:
Johnson US 5,673,252 Sept. 30, 19972 (Ex. 1106)
Cunningham US 6,124,806 Sept. 26, 20003 (Ex. 1107)
Ardalan US 6,396,839 B1 May. 28, 20024 (Ex. 1108)
Lee US 5,477,216 Dec. 19, 1995 5 (Ex. 1109)
Lyons US 6,208,266 B1 Mar. 27, 20016 (Ex. 1110)
Ehlers US 5,696,695 Dec. 9, 19977 (Ex. 1111)

2 Filed May 26, 1995.
3 Filed Sept. 11, 1998.
4 Filed February 12, 1998.
5 Filed October 30, 1992.
6 Filed April 28, 1997.
7 Filed June 7, 1995.
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E. Instituted Grounds of Unpatentability
Petitioner contends that claims 1–24 are unpatentable based on the
following grounds (Pet. 5–6):
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–2, 5–8, 10–13, 15–
20, 22, 24 103 Johnson
3–4, 9, 14, 16–24 103 Johnson and Cunningham
10, 24 103 Johnson and Lyons
3–4, 14, 21 103 Johnson and Ardalan
11–13, 15 103 Johnson and Ehlers
5, 19 103 Johnson and Lee
14, 19, 24 103
Johnson in view of Cunningham
or Ardalan and in further view of
Lyons, Ehlers, or Lee

II. DISCUSSION
A. Relevant Law
1. Evidentiary Burden
Petitioner bears the burden of proving unpatentability of the
challenged claims, and the burden of persuasion never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). To prevail in its challenges, Petitioner must
demonstrate by a preponderance of the evidence that the challenged claims
are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
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2. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and, (4) where in evidence, objective indicia of non-
obviousness (i.e., so-called secondary considerations), including commercial
success, long-felt but unsolved needs, failure of others, and unexpected
results.8 Graham v. John Deere Co., 383 U.S. 1, 17−18 (1966).
3. Level of Skill
The level of ordinary skill in the art usually is evidenced by the
references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For an obviousness analysis,
prior art references must be “considered together with the knowledge of one
of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
Moreover, “it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would

8 Patent Owner does not put forth evidence it alleges tends to show
secondary considerations of non-obviousness in its Patent Owner Response.
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reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968). That is because an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
Petitioner contends a person of ordinary skill in the art of the subject
matter of the ’708 patent would have had
a minimum of a bachelor’s degree in electrical engineering,
computer engineering, computer science, or a related field, and
two or more years of experience in the development or design of
wireless communication systems, or the equivalent. Additional
graduate education could substitute for professional experience,
or significant experience in the field could substitute for formal
education. A person having this background would have
understood how to design and build wireless, multi-hop
communications systems for monitoring and controlling remote
devices.

Pet. 8–9 (citing Ex. 1103 ¶¶ 26–30). Patent Owner does not offer a
proposed level of skill in its Patent Owner Response and does not address
Petitioner’s assertions regarding the education or experience of an ordinarily
skilled artisan at the time of the invention. See generally PO Resp. We
adopt Petitioner’s articulation of the level of skill and acknowledge that the
level of ordinary skill in the art is also reflected by the prior art of record.
See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579 (Fed. Cir.
1995); Oelrich, 579 F.2d at 91.
B. Claim Construction
In an inter partes review, we interpret claims in the same manner used
in a civil action under 35 U.S.C. § 282(b). See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
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the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
Patent Owner argues that the preamble of the independent claims are
limiting. PO Resp. 12. Specifically, Patent Owner argues the phrase
“configured to communicate command and sensed data within the wireless
communication system,” recited in the preamble of claim 1, limits the body
of the claim to a system in which
[e]ach transceiver can . . . (1) send command data to another
transceiver; (2) receive command data from a transceiver; (3)
send sensed data to another transceiver; and (4) receive sensed
data from a transceiver . . . [i.e., ] multiple paths at its disposal
for sending and receiving messages between each integrated
transceiver and each local gateway.

Id. at 17. In other words, Patent Owner argues the preamble limits the claim
to bidirectional multipath communication of both command and sensed data
between each integrated transceiver and each local gateway.9 We determine
that the preambles are not limiting and, if they were limiting, we would
determine that they do not limit the claim in the way Patent Owner suggests.
In support of its argument, Patent Owner argues the preamble
“provides antecedent basis for the ‘another wireless communication device’
recited later in the body of the claim” and argues “being ‘configured to
communicate command and sensed data’ is not merely an intended use, but
instead is an important characteristic of the claimed invention that

9 Although Patent Owner does not specifically use the term “bidirectional
multipath communication,” we use if here to succinctly describe their
position on claim construction.
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distinguishes it from the asserted references. Id. at 12–13 (internal citation
omitted).
Petitioner, on the other hand, contends that the preambles are not
limiting because the full preamble phrase, “for use in a wireless
communication system configured to communicate command and sensed
data within the wireless communication systems,” is an intended use,
because the claim body recites a “structurally complete invention” and
because Patent Owner conceded in a related ITC proceeding that the
preamble is not limiting. Reply 1–3. We are persuaded by Petitioner’s
contention in this regard.
In general, a preamble limits the invention if it recites essential
structure or steps or if it is “‘necessary to give life, meaning, and vitality’ to
the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not
limiting where the claim body defines a structurally complete invention and
the preamble only states a purpose or intended use for the invention. Id.
The body of independent claim 1 recites a wireless communication
device that comprises a “controller” configured to “format a message
comprising . . . a command code . . . [and] a data value,” and to “receive” a
message including a “command code” from “another wireless
communication device.” Reply 3. Thus, command and other data values are
specifically and structurally recited in the body of the claim. The body of
claim 1 recites a structurally complete invention. Accordingly, we
determine that the preamble of claim 1 does not recite any essential structure
not already recited in the bodies of these claims.
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Additionally, the phrase “[a] wireless communication device for use
in a wireless communication system configured to communicate command
and sensed data within the wireless communication systems,” indicates that
the wireless communication system is configured to communicate, not that
the wireless communication device is so configured, because a modifier (in
this case “configured”) in a sentence generally modifies the word that comes
closest to it.
Patent Owner suggests the phrase “configured to communicate
command and sensed data within the wireless communication systems” is a
“different portion” of the preamble. PO Resp. 12 n. 2; see Bell Commc’ns
Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 621 (Fed. Cir.
1995) (holding a portion of the preamble can be limiting on the claimed
invention). We determine that, although a portion of a preamble can be
limiting, here, the portion to which Patent Owner points is not separate but is
a part of the “use” indicated for the system. See Bell Commc’ns Research,
Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 621 (Fed. Cir. 1995) (holding
a portion of the preamble can be limiting on the claimed invention).
As to antecedent basis, again the preamble phrase does not refer to the
configuration of the wireless device but rather the configuration of a
“wireless communication system” within wireless communication systems.
Thus, the only structural language in the preamble that could provide
antecedent basis for “another wireless communication device” is simply the
recitation of “wireless communication device.” The fact that “wireless
communication device” may provide antecedent basis for “another wireless
communication device” does not mean that the rest of the preamble, which
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describes an intended use, is limiting. See Cochlear Bone Anchored Sols.
AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020).
Additionally, if a preamble appears to contain an “antecedent basis”
for a term mentioned in the body of a claim, that is no guarantee that the
preamble is limiting. The preamble language must still supply some
additional, vital information that is missing from the body of the claim for
that particular guideline to apply. See, e.g., TomTom, Inc. v. Adolph, 790
F.3d 1315, 1322–24 (Fed. Cir. 2015) (ruling that certain preamble terms
were not limiting because these terms were merely duplicative of the terms
in the body of the claim, even though the preamble did provide an
antecedent basis for another term in the body of the claim) (citations
omitted); see also Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359
(Fed. Cir. 2010) (“We have held that the preamble has no separate limiting
effect if, for example, ‘the preamble merely gives a descriptive name to the
set of limitations in the body of the claim that completely set forth the
invention.’” (quoting IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d
1422, 1434–35 (Fed. Cir. 2000))).
Additionally, the use of the indefinite adjective “another” does not
suggest that it is the same wireless communication device in the preamble or
that it has the same properties as the device in the preamble (or the device in
the body of the claim). The word “another” may simply suggest that it is a
different wireless communication device than the one described earlier. The
Patent Owner could have said “another one of said (or the)” wireless
communication device using a definite article rather than “another” which is
analogous to the indefinite article “a.” Predicate Logic, Inc. v. Distributive
Software, Inc., 544 F.3d 1298, 1305 (Fed. Cir. 2008) (finding another does
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not require antecedent basis—“the ‘comparing’ step does not compare data
sets linked to ‘an instantiated index’ with data sets linked to
‘another instantiated index’; it compares data sets linked to ‘one
of said instantiated indexes’ with data sets linked to
‘another of said instantiated indexes.’ The ‘said instantiated indexes’ must
be instantiated indexes with an antecedent basis elsewhere in the claim.”)
Patent Owner also argues that “communicating command and sense
data,” as interpreted by Patent Owner is an “important” aspect of the
invention which reinforces it being considered a limitation of the claim. PO
Resp. 13 (citing Poly-America, L.P. v. GSE Lining Tech., Inc., 383 F.3d
1303, 1310 (Fed. Cir. 2004) (“Poly-America I) and Proveris Sci. Corp. v.
Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014)).
As an initial matter, we note that Poly-America I relied on the fact
that, in that case, “[t]he specification [was] replete with references to the
invention as a ‘blown-film’ liner, including the title of the patent itself and
the ‘Summary of the Invention’ . . . [and it was] used repeatedly to describe
the preferred embodiments.” Poly America, L.P., 383 F.3d at 1310.
Additionally, Proveris relies on repeated recitation of the phrase or versions
of the phrase “sequential set of images of a spray plume” from the preamble
in the specification. Proveris Sci. Corp., 739 F.3d at 1373. Here, Patent
Owner does not point to repeated recitation of “communication of command
and sensed data,” rather as explained below, Patent Owner relies on one
figure in the patent and one statement in the specification to derive the
meaning it assigns to the preamble. Thus, we do not determine that this is an
“important” aspect of the invention that reinforces it being considered a
limitation of the claim as in the Poly-America I and Proveris cases.
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As such, Patent Owner argues based on Figure 2 of the ’708 Patent
and testimony of its declarant that “communicate” in the preamble means
bidirectional multipath communication of both command and sensed data.
See PO Resp. 13–19 (citing Ex. 1001, Fig. 2; Ex. 2004 ¶¶ 28–31). Patent
Owner’s two annotated versions of Figure 2 outlining its position are
reproduced below. PO Resp. 15–16.

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Patent Owner’s two annotated version of Figure 2 are reproduced
above. First annotated Figure 2, above, shows Sensor/Actuators 214 and
216 connected to each other and individually connected to Transceivers 213
and 215 by a symbol representing wireless data transfer, the Transceivers
213 and 215 are connected to each other by that symbol, and with the
Transceiver 215 connected by a Local Gateway 210 by that symbol.
Additionally, a red arrow representing command data goes from Local
Gateway 210 though Transceiver 215 to Sensor/Actuator 216 and a blue
arrow representing sensed data goes from Sensor/Actuator 216 to
Sensor/Actuator 214 to Transceiver 213 Transceiver 215 and then to Local
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Gateway 210. The second annotated version of Figure 1 above is the same
as the first except the red arrows and blue arrows are interchanged and
reversed in direction. Patent Owner argues this figure shows bidirectional
and multipath communication from Sensor 216 to Local Gateway 210. Id. at
22–23.
Patent Owner argues that “[t]he importance of the ability to
communicate both command and sensed data [in the way Patent Owner
describes] is evident throughout the ’708 patent, including Figure 2.” PO
Resp. 13. Patent Owner contrasts Figure 2 with Figure 1 (prior art), which
shows sensors/actuators with a single path to the controller and could only
receive command data and send sensed data. Patent Owner’s annotated
Figure 1 outlining its position is reproduced below. PO Resp. 18.
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Patent Owner’s annotated version of Figure 1 is reproduced above.
Annotated Figure 1, above, shows Sensor/Actuators 111–117 in green
connected to Local Controller 110 with red arrows representing command
data pointing from the local Controller 110 to the Sensor/Actuators 111–117
and a blue arrow representing sensed data pointing from the
Sensor/Actuators 111–117 to the Local Controller. The specification states
“prior art control systems [such as shown in Figure 1] often are susceptible
to a single point of failure if the local controller 110 goes out of service.”
Ex. 1001, 2:30–32. Patent Owner argues this figure shows unidirectional
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and single path communication from Sensor/Actuators 111–117 to Local
Controller 110.
In sum, Patent Owner contends that the language “configured to
communicate command and sensed data within the wireless communication
system” imports a limitation of bidirectional multipath communication of
command and sensed data to avoid a single point of failure problem in the
prior art. We determine even if the preamble were limiting in some way,
there is no support for importing “bidirectional multipath communication”
into the claims.
Although the specification may have an embodiment or all
embodiments allowing bidirectional communication of both command and
sensed data, Patent Owner did not use the word “bidirectional multipath
communication” in its claims and instead chose the broader term
“communication.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a
claim from the preferred embodiment described in the specification, even if
it is the only embodiment described, absent clear disclaimer in the
specification.”). The fact that a limitation in the specification may define
over the prior art does not justify importing that limitation into the claims
unless a term is expressly defined such that the Patentee becomes his own
lexicographer or there is an express disavowal of that claim scope. See GE
Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308-9 (Fed. Cir.
2014).
There is no evidence of an express definition here. As to disavowal,
the Federal Circuit has explained that the standard for disavowal is
particularly exacting:
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Mere criticism of a particular embodiment encompassed in the
plain meaning of a claim term is not sufficient to rise to the level
of clear disavowal. Epistar Corp. v. Int'l Trade Comm’n, 566
F.3d 1321, 1335 (Fed.Cir.2009) (holding that even a direct
criticism of a particular technique did not rise to the level of clear
disavowal). In Spine Solutions, Inc. v. Medtronic Sofamor Danek
USA, Inc., we explained that even where a particular structure
makes it “particularly difficult” to obtain certain benefits of the
claimed invention, this does not rise to the level of disavowal of
the structure. 620 F.3d 1305, 1315 (Fed.Cir.2010). It is likewise
not enough that the only embodiments, or all of the
embodiments, contain a particular limitation. We do not read
limitations from the specification into claims; we do not redefine
words. Only the patentee can do that. To constitute disclaimer,
there must be a clear and unmistakable disclaimer.

Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366–67
(Fed. Cir. 2012).
The statement in the specification that “prior art control systems often
are susceptible to a single point of failure” is not a sufficiently express
disavowal of unidirectional single-path communication. Although, “[a]n
inventor may also disavow claim scope ‘by distinguishing the claimed
invention over the prior art.’” Techtronic Indus. Co. v. Int’l Trade Comm’n,
944 F.3d 901, 907 (Fed. Cir. 2019) (quoting Ekchian v. Home Depot, Inc.,
104 F.3d 1299, 1304 (Fed. Cir. 1997)). The disavowal generally must be
express. Ekchian, 104 F.3d at 1304 (finding no disavowal because “[the
patent owner] did refer generally to the benefits of using a solid insulator
instead of a liquid insulator as a dielectric. However, [the patent owner] did
not characterize the specific liquid used in the prior art device . . .). Here,
Petitioner does not sufficiently show an express disavowal, rather simply a
criticism of the prior art.
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Nevertheless, disavowal can be found implicitly. “[W]hen the scope
of the invention is clearly stated in the specification, and is described as the
advantage and distinction of the invention, it is not necessary to disavow
explicitly a different scope.” On Demand Mach. Corp. v. Ingram Indus.,
Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006). “[A]n inventor may [also]
disavow claims lacking a particular feature when the specification describes
‘the present invention’ as having that feature.” Poly-America, L.P. v. API
Industries, Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016).
Here the statement relied on by the Patent Owner does not assert that
the “present invention” is characterized by “bidirectional multipath
communication,” nor does it clearly describe the feature of the invention that
the prior art is lacking. Although Patent Owner argues “[t]he importance of
the ability to communicate both command and sensed data is evident
throughout the ’708 patent,” Patent Owner cites only to Figure 2 and its
declarant for the proposition that “bidirectional multipath communication” is
the feature to which the claims are being limited. PO Resp. 13–18; Sur-
Reply 4. Patent Owner has not shown that the criticism of “single point of
failure” is tied to a clearly expressed inventive feature of “bidirectional
multipath communication.”
Petitioner, for its part, shows that Figure 2 of the specification of the
’708 patent may be read to show devices that have a single point of failure.
Reply 4. Patent Owner response
that
[t]here is always the possibility that wireless devices will
not be within communication range of one another or that there
will not be enough devices to form redundant paths in all
instances . . . [b]ut these facts do not alter that the claimed
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technology enables networks to minimize or avoid the prior art
single-point-of-failure problems.

Sur-Reply 4. Nevertheless, Patent Owner’s assertion that single point of
failure problems should be “minimized” does not suggest the clear
disavowal required by the law. Thus, we do not limit the plain meaning of
“communication” to bidirectional multipath communication of command
and sense data.
Accordingly, Patent Owner has not shown that “configured to
communicate command and sensed data” means bidirectional multipath
communication of command and sense data, nor has Patent Owner shown
that bidirectional multipath communication is an important aspect of the
invention such that it limits the claim.
Patent Owner also argues that the preambles of claims 11, 16, and 22
are limiting. PO Resp. 51, 58–59, 63–64. Claim 11 recites “a method of
communicating command and sensed data between remote wireless devices”
with steps that do not require bidirectional communications over multiple
paths. Patent Owner refers to its claim 1 argument that bidirectional
multipath communication was an “important” distinction over the prior art.
PO Resp. 51. Patent Owner also admits that the body of the claim provided
structure for command data. Id. As discussed above, this tends to show that
the body recites a structurally complete invention. Thus, we are not
convinced by Patent Owner’s argument and do not determine that the
preamble of claim 11 is limiting.
Claim 16’s preamble recites “[i]n a communication system to
communicate command and sensed data between remote devices.” Patent
Owner refers to its claim 1 argument that bidirectional multipath
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communication was an “important” distinction over the prior art. PO Resp.
58–59. Patent Owner also suggests that the preamble provides antecedent
basis for the terms “first wireless remote device” and “second wireless
remote device” in the body of the claim; nevertheless, the body of the claim
uses the indefinite article “a” to introduce “a first wireless remote device,”
“a second wireless remote device,” and “at least one other remote device” in
the body of the claim which suggests those terms do not need antecedent
basis. Id. Thus, we are not convinced by Patent Owner’s argument and do
not determine that the preamble of claim 16 is limiting.
Claim 22 recites a “wireless communication device for use in a
system to communicate to communicate commands and sensed data between
remote wireless communication devices.” Patent Owner refers to its claim 1
argument that bidirectional multipath communication was an “important”
distinction over the prior art. PO Resp. 63–64. Patent Owner also suggests
that the preamble phrase “remote wireless communication devices” provides
antecedent basis for the terms “remote wireless device[s]” in the body of the
claim; nevertheless, the body of the claim uses the indefinite adjectives
“one” and “other” to introduce “at least one remote wireless device” and “at
least one other remote wireless device” in the body of the claim which
suggest those terms do not need antecedent basis. Id. Thus, we are not
convinced by Patent Owner’s argument and do not determine that the
preamble of claim 22 is limiting.
We determine that it is not necessary to provide an express
interpretation of any other term of the claims. Vivid Techs., Inc. v. Am. Sci.
& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in
controversy need to be construed, and only to the extent necessary to resolve
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the controversy); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context
of an inter partes review).
A. Obviousness of Claims over Johnson
Petitioner contends that claims 1, 2, 5–8, 10–13, 15–20, 22, and 24 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Johnson. Pet. 6. To
support its contentions, Petitioner provides explanations as to how the prior
art allegedly teaches each claim limitation. Id. at 21–34, 36–44, 47–78, 85–
90, 92–94. For convenience, all references cited in the grounds of the
Petition are summarized below.
1. Johnson (Ex. 1106)
Johnson discloses a system in which a wide area communications
network collects network service module (NSM) data generated by a
plurality of physical devices within a geographical area. Ex. 1106, 9:47–51.
The wide area communications network includes a plurality of network
service modules 110, a plurality of remote cell nodes 112, a plurality of
intermediate data terminals 114, and a central data terminal 120. Id. at 9:51–
56, Fig. 1. The physical devices may be, for example, a utility meter for
electricity, gas, or water. Id. at 9:57–58.
2. Cunningham (Ex. 1107)
Cunningham was filed September 11, 1998, and issued September 26,
2000. Ex. 1107, at [22], [45]. On the record presented, it is prior art to the
challenged claims under 35 U.S.C. § 102(e).
Cunningham discloses a “wide-area remote telemetry system which
monitors and controls remote devices by means of an information control
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system.” Id. at [57] (Abstract). Figure 1 of Cunningham is reproduced
below.

Figure 1 shows a block diagram of a wide-area remote telemetry
system. Id. at 6:6–8. Multiple sensor interface modules 102 act as data
gathering equipment. Id. at 6:9–11. The sensor interface modules attach to
gas, electric and water meters, and other types of monitored equipment and
include an appropriate hardware sensor for the device being monitored and a
transmitter for communicating sensor data to data collection modules using
low-power radio-frequency transmissions. Id. at 7:30–44. Cunningham
discloses that the sensor interface modules can be configured to
communicate with data collection modules 112 and 114 via hardwire or
wireless transmission (id. at 6:12–14), but it is the wireless embodiment
teaching that Petitioner asserts against the challenged claims. See, e.g., Pet.
81 (asserting the wireless embodiment teaching of Cunningham against
independent claim 32).
The data collection modules transmit the information received from
the sensor interface modules to network system 118, which “forwards the
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transmitted information over a network connection 120 to a host module 122
where the information is stored or processed.” Id. at 7:19–24. “The stored
or processed information may then be transmitted from the host module 122
through a host connection 124 to the customer interface 126.” Id. at 7:24–
27.
“If the data collection module is used in remote areas, access to
network connections to the host may be few and far between.” Id. at 33:16–
18. “Thus, it may be necessary for the data collection module to receive
information from both sensor interface modules and from other data
collection modules and transmit this information towards a data collection
module which is connected to the host module through a network system.”
Id. at 33:18–23. “When the data collection module is used in this manner it
is also called a data repeater module.” Id. at 33:24–25.
3. Ehlers (Ex. 1111)
Ehlers teaches how to structure software on a first microcomputer
operating as a gateway between two networks—e.g., an external network
and a LAN. Ex. 1111, 8:10–17.
4. Lyons (Ex. 1110)
Lyons teaches a network of wireless data acquisition devices that
periodically “ping” other devices to verify that they are “functioning
properly.” Ex. 1110, 36:65–37:21, 37:44–48.
5. Lee (Ex. 1109)
Lee discloses that CEBUS packets can include multiple commands in
a packet along with separators. Ex. 1009, Fig. 4:34–49, Fig. 7A.
6. Ardalan (Ex. 1108)
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Ardalan discloses assigning individual and broadcast TCP/IP
addresses to each meter on a CEBUS LAN connected, through a gateway, to
a TCP/IP wide area network (“WAN”). Ex. 1108, 1:29–38, 2:34–67. Each
meter processes TCP/IP information using TCP/IP interface software. Id. at,
3:14–18, 3:28–31
7. Analysis
a. Claim 1
i. “A wireless communication device . . .”
Petitioner contends that Johnson teaches a “wireless communication
device for use in a wireless communication system configured to
communicate command and sensed data within the wireless communication
systems, the wireless communication device,” as recited in claim 1. Pet. 21–
23; Ex. 1106, 5:15−17, 9:47–58, 10:10–23, 10:36–56, 10:62–11:10, 11:17–
20, 14:46–56; 18:3–46, 20:40–65, 31:20–43, 39:20–46, 55:30–59, Fig. 1;
Ex. 1103 ¶¶ 386–89.10, 11 As explained above, we determined that the
preamble is not limiting but we rely on Petitioner’s contentions cited above
as a predicate of the contentions below, so they are listed here. Patent

10 A similar limitation was found to be met by the same references in the
Final Written Decision in IPR2016-01895. IPR2016-01895, Paper 31 at 40
(PTAB Mar. 21, 2018). We have considered the similarity of other
limitations in this case to limitations in IPR2016-01895, we make an
independent Judgement on the merits here. Additionally, for brevity, we
will not refer to any other limitation’s similarity to limitations in IPR2016-
01895 outside of this footnote.
11 We have reviewed Petitioner’s arguments and the underlying evidence
cited in support and are persuaded Petitioner sufficiently establishes
unpatentability by a preponderance of the evidence, as cited here and
throughout this Decision, unless we specifically state that we do not rely on,
or are not persuaded by a particular contention.
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Owner’s arguments regarding the preamble are not commensurate with the
scope of the invention as properly construed. See PO Resp. 19–23.
ii. “a transceiver configured to send and receive
wireless communications”

Petitioner establishes by a preponderance of the evidence that Johnson
teaches “a transceiver configured to send and receive wireless
communications,” as recited in claim 1. Pet. 23–24; Ex. 1106, 18:3–46,
31:39–41; Fig. 1, 9; Ex. 1103 ¶ 390–92.
Patent Owner contends that “Johnson therefore does not render
obvious claim 1 because the RCNs—the alleged ‘wireless communication
devices’—cannot send data in a manner that qualifies them as either ‘[a]
wireless communication device’ or ‘another wireless communication
device.’” PO Resp. 20 (citing Ex. 2004 ¶ 33). This argument is based on
Patent Owner’s construction of the preamble which we did not adopt. See
PO Resp. 19–21. Thus, this argument is not commensurate with the claims
as properly construed.
iii. “a controller configured . . .”
Petitioner establishes by a preponderance of the evidence that Johnson
teaches “a controller configured to communicate with at least one other
remote wireless device via the transceiver with a preformatted message,” as
recited in claim 1. Pet. 25–27; Ex. 1106, 11:2–4, 17:53–59, 18:3–55, 18:67–
19:4, 29:24–34, 39:20–43, 55:49–59, Figs. 9, 43; Ex. 1103 ¶¶ 393–98.
Patent Owner argues that Petitioner fails to explain how Johnson’s
RCN processor is configured to receive a preformatted message from
another wireless communication device and, based on a command code
provided in the preformatted message, implement a certain function
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corresponding to the command code, as claimed. PO Resp. 9–10.
Specifically, Patent Owner argues “Petitioner had not met its obviousness
burden by failing to address several claim limitations in their entireties—
leaving out any allegation, much less an explanation, of how the same
alleged controller performs all of the relevant claimed functions, as the law
requires.” Id. at 26. We are not convinced by Patent Owner’s
characterizations of the Petition.
For example, the Petition explains that the RCN processor “controls
the RCN transmitter 418 and RCN receiver 416,” meaning that the RCN
processor meets the limitation of “configured to receive a preformatted
message from another wireless communication device” by controlling the
communication with other devices such as receiving an “IRH message.” Pet.
25–27, 30–31(qouting Ex. 1106:18:50–51). We determine that no more
level of detail is required to show that the RCN processor receives a
message.
Additionally, as to the limitation of “based on a command code
provided in the preformatted message, implement a certain function
corresponding to the command code,” the Petition explains that an IRH
message (a preformatted message) contains “msgtype,” “SAC enable,” and
“SAC” fields (command codes) that implement specific functions. Pet. 32–
34. For example, the Petition contends that “[b]ased on the “msgtype” code,
the RCN will implement the function of responding and sending to the IDT
the “data being polled for or downloaded.” Id. at 33. As discussed above,
the RCN processor controls the RCN transmitter and thus the sending of
data. The claim only requires that the controller implement a function (such
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as sending a message) based on a code being provided in the preformatted
message.
The Petition contends that based on the “msgtype” code the RCN
sends a message; thus the RCN processor is configured (able to) send a
message when that command is sent. The claim does not require any
particular way of handling the command code besides performing the
function so we do not require an explanation of how the controller processes
the code as long as it performs the function upon receiving a particular code,
i.e. based on the code.
The Federal Circuit informs us that in our decision “the amount of
explanation needed varies from case to case, depending on the complexity of
the matter and the issues raised in the record.” Rovalma, S.A. v. Bohler-
Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1025 (Fed. Cir. 2017) (citing
Personal Web Technologies, 848 F.3d at 991–94; Ariosa Diagnostics v.
Verinata Health, Inc., 805 F.3d 1359, 1364–67 (Fed. Cir. 2015); In re Lee,
277 F.3d 1338, 1342–46 (Fed. Cir. 2002). Here, we do not discern a
complexity in the claims that requires any further level of detail or
explanation to show that the claim limitation is met. Cf., In re Fisher, 427
F.2d 833, 839 (CCPA 1970) (indicating patents in the mechanical or
electrical arts involve predictable factors compared to the more
unpredictable chemical and biological arts).
iv. format a message comprising a receiver address
comprising . . .

Petitioner establishes by a preponderance of the evidence that Johnson
teaches “format a message comprising a receiver address comprising an
address of at least one remote wireless device,” as recited in claim 1. Pet. 27
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(citing Ex. 1106, 29:24–25, 39:28–43, 41:57–59, 42:26–28, 45:63–46:2,
55:30–59, Figs. 25, 31–32, 42–44; Ex. 1103 ¶¶ 399–402). For example,
Petitioner points to Johnson’s RND message which contains an address
field. Id. Patent Owner does not make arguments specific to this claim
limitation.
v. a command indicator comprising a command code
Petitioner establishes by a preponderance of the evidence that Johnson
teaches “a command indicator comprising a command code,” as recited in
claim 1. Pet. 27–29. Petitioner contends that in Johnson, RND messages
contain a control field that has a code for message type. Id.; Ex. 1106, 4:2–
10, 10:36–40, 10:53–61, 18:20–29, 20:40–53, 70:24–33, Figs. 25, 31–32,
37, 43, 44, 61; Ex. 1103 ¶¶ 403–07. Patent Owner does not make arguments
specific to this claim limitation.
vi. a data value comprising a message
Petitioner establishes by a preponderance of the evidence that Johnson
teaches “a data value comprising a message,” as recited in claim 1. Pet. 40–
42. For example, Petitioner relies on Johnson’s information field to show a
data value comprising a message. Pet. 29–30; Ex. 1106, 18:24–28, 55:30–
39, Figs. 43, 61; Ex. 1103 ¶¶ 408–10. Patent Owner does not make
arguments specific to this claim limitation.
vii. the controller is configured to receive a preformatted
message . . .

Petitioner establishes by a preponderance of the evidence that Johnson
teaches “the controller is configured to receive a preformatted message from
another wireless communication device, and based on a command code
provided in the preformatted message, implement a certain function
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corresponding to the command code,” as recited in claim 1. Pet. 30–32; Ex.
1106, 18:42–46, 22:38–55, 39:1–18, 53:38–51, 55:24–28, 56:65–57:42,
57:45–49, 57:65–58:5–43, 61:19–32, Figs. 1, 28, 50, 51; Ex. 1103 ¶¶ 411–
22.
Patent Owner argues “[t]o the extent the Board finds a wireless
communication device only needs to be able to communicate sensed and
command data in a single direction, Petitioner still fails to establish that
‘another wireless communication device’ can communicate both command
and sensed data.” PO Resp. 21. Patent Owner further argues “Petitioner
fails to establish that either the IDT or neighbor RCN is ‘another wireless
communication device’ that can communicate both command and sensed
data.” Id. Patent Owner’s argument still relies on its construction that the
direction of the communication is limited by the claims. We did not limit
the claim to command and sense data travelling in the same direction
between a wireless communication device and another wireless
communication device. Patent Owner again attempts to import into the
claim that the command and sense data must be communicated in a
bidirectional manner between the wireless device and the “another” wireless
device. Thus, this argument is not commensurate with the proper scope of
the claims.
In discussing the limitation of “wherein the controller is configured to
receive a preformatted message from another wireless communication
device,” Petitioner explained with citations that “Johnson discloses [1.f]: the
controller (e.g., “RCN processor”; see [1.b]) is configured to receive a
preformatted message (e.g., “polling signal” formatted as an “IRH
message”) from another wireless communication device (e.g., “IDT,” a
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“neighbor” “RCN”).” Pet. 30. We are persuaded by this contention.
Nevertheless, we do not rely on the “neighbor RCN”; rather, we rely only on
the IDT. Thus, Patent Owner’s arguments regarding neighbor RCN are
moot. See PO Resp. 21–23.
Patent Owner argues Petitioner’s challenge to claim 2–10 is deficient
because of the same argument above; thus, for the same reasons discussed
above we are not convinced.
Claim 2
Claim 2 depends from claim 1. Claim 2 recites “the transceiver
comprises a unique transceiver address to distinguish the transceiver from
other transceivers in the wireless communication system,” which Petitioner
sufficiently shows to be disclosed in Johnson by a preponderance of the
evidence. See Ex. 1106, 26:41–45, 41:29–33, 40–46; Pet. 34–35; Ex. 1103
¶¶ 423–25. Patent Owner does not make arguments specific to this claim.
Claim 5
Claim 5 depends from claim 1. Claim 5 recites “the command code of
the preformatted message [is] concatenated to provide a receiving device
with multiple command codes, the device configured to perform one or more
functions corresponding to the command code in the preformatted message,”
which Petitioner sufficiently shows to be disclosed in Johnson by a
preponderance of the evidence. See Ex. 1106, 10:53–61, 18:20–29, 22:45–
55, 54:40–44, 55:30–67, 57:66–58:5, 58:12–38, 41–43, Fig. 50; Pet. 47–49;
Ex. 1103 ¶¶ 435–42. Patent Owner does not make arguments specific to this
claim.
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Claim 6
Claim 6 depends from claim 1. Claim 6 recites the device of claim 1
wherein “the receiver address is scalable,” which Petitioner sufficiently
shows to be disclosed in Johnson by a preponderance of the evidence.12
See Ex. 1106, 38:38–39, 39:28–44; 41:45–53, 59–67, 42:18–43, 55:41–47,
49–59, Figs. 1, 35, 36, 42, 43; Pet. 40–42; Ex. 1103 ¶¶ 443–46. Patent
Owner does not make arguments specific to this claim.
Claim 7
Claim 7 depends from claim 1. Claim 7 recites “data value comprises
a scalable message,” which Petitioner sufficiently shows to be disclosed in
Johnson by a preponderance of the evidence. See Ex. 1106, 31:53–56,
55:44–55, 56:28–32, 56:57–59; Pet. 42–43; Ex. 1103 ¶¶ 447–450. Patent
Owner does not make arguments specific to this claim.
Claim 8
Claim 8 depends from claim 1. Claim 8 recites “the command code
indicates a data request to the wireless communication device,” which
Petitioner sufficiently shows to be disclosed in Johnson by a preponderance
of the evidence. See Ex. 1106, 4:2–10, 18:23–29, 20:40–49, 55:32–36, Fig.
1, 37, 43; Pet. 43–44; Ex. 1103 ¶¶ 451–56. Patent Owner does not make
arguments specific to this claim.

12 A similar, but different, limitation is at issue in the Federal Circuit appeal.
There, the pertinent claim limitation recites “a receiver address comprising a
scalable address of at least one remote device.” SIPCO, LLC v. Emerson
Elec. Co., (Fed. Cir. 2019) (No. 18-1856).
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Claim 10
Claim 10 depends from claim 1. Claim 10 recites “the command code
indicates a request for a ping response by the wireless communication
device,” which Petitioner does not sufficiently show to be disclosed in
Johnson by a preponderance of the evidence. See Ex. 1106, 18:25–29,
55:32–36, 57:45–49, 55:32–36, 58:25, Fig. 1; Pet. 57–58; Ex. 1103 ¶¶ 464–
69.
Patent Owner asserts a ping, as described in the specification “is well-
understood to be a targeted message, requiring minimal processing, used to
confirm system health or model network performance.” PO Resp. 40 (citing
Ex. 1101, 11:55–12:3; Ex. 2004 ¶ 55.) Petitioner contends that using these
citations would be importing a limitation into the claims. Reply 16. We are
not persuaded that is the case. Rather, Patent Owner reads the specification
to reveal the well-known plain understanding of a ping. Thus, we are
convinced, by these citations, of Patent Owner’s characterization of a ping
response.
Patent Owner argues that Johnson’s “status request,” relied on by the
Petition, requires the NSM to “transmit status or other data” including
“housekeeping data” that is more than a simple ping request. PO Resp. 43.
Petitioner suggest a ping is a “well-known message seeking a status response
from a receiving device.” Reply 16. We agree with Patent Owner that a
ping is known to be minimal in nature and Petitioner’s characterization of a
ping does not include this aspect of a ping and Johnson’s “status request”
also does not have this aspect of a ping. Thus, we are not persuaded that
Petitioner has shown claim 10 would have been obvious over Johnson.
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Claim 11
Independent claim 11 recites in part “determining a location from
which the duplicate message originated,” which Petitioner does not
sufficiently show to be disclosed in Johnson by a preponderance of the
evidence. See Ex. 1106, 20:13–21, 24:22–57, 27:30–54; 28:32–36, 41:44–
52, 52:51–62 53:39–51, Fig. 1; Pet. 54–57; Ex. 1103 ¶¶ 493–96.
Petitioner contends “Johnson teaches RCNs determine when they
receive duplicate copies of an NSM-packet signal from an NSM identified
by the NSM-packet signal’s address field.” Pet. 55–56 (citing Ex. 1106,
20:13–21, 41:44–52, 52:51–62.) Petitioner further contends that this
discloses “determining a location from which the duplicate message
originated” “because NSMs would typically have been in a known, fixed
location (e.g., where a meter or vending machine is located).” Id. at 56.
(citing Ex. 1120, 6:3–5, 10:21–27; Ex. 1103 ¶ 496).
Patent Owner argues that Johnson discards duplicates upon receiving
them and Petitioner has not explained why one of ordinary skill would
correlate the address in the NSM with the actual physical location of the
message. PO Resp. 47–48. We are convinced by Patent Owner’s argument.
Petitioner has not shown sufficiently that Johnson determines the location of
duplicate messages (that it discards) by converting a network address to a
physical location.
Petitioner also contends that “Johnson teaches that RCNs can be
polled either through a neighbor RCN using edge-gather or wider-gather
polling, or directly by the IDT.” Pet. 56. (citing 1106, 53:39–51, Fig. 1).
Petitioner further contends “Johnson further teaches that it is advantageous
to minimize bandwidth consumption because, for example, ‘path loss’ and
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‘path redundancy’ may cause ‘simultaneous message transmissions, or
collisions’ that undermine the network’s reliability.” Id. at 57 (citing Ex.
1106, 24:22–57, 27:30–54; 28:32–36; Ex. 1103 ¶ 496). Because of this
Petitioner contends:
A POSITA would have recognized that identifying the location
of the polling IDT and RCN that transmitted the polling message
would have advantageously allowed a receiving RCN to
determine whether it is closer to the polling IDT or RCN.
Madisetti, ¶496. A POSITA would have recognized that by
identifying the location from which the RCN received duplicate
polling messages, the RCN could advantageously respond to
only the closer polling device (e.g., IDT or RCN)—thereby
reducing the impact on the system from simultaneous messages
transmissions or collisions. Madisetti, ¶496.

Id. Thus, Petitioner modifies Johnson by stating one of ordinary skill would
add a function to determine the physical location of the polling IDT and
RCN that transmitted the polling message. This is not a modification of an
existing function in Johnson but is a new function added by attorney
argument and unsupported testimony from Petitioner’s declarant. Whether
or not Petitioner has articulated a rationale for modifying Johnson, Petitioner
improperly fills a gap in its mapping to a claim limitation.
Identifying a limitation by expert testimony and the “ordinary
creativity” of one of skill in the art is improper and tantamount to using
common sense. DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367 (Fed.
Cir. 2018). Common sense in an obviousness analysis is “typically invoked
to provide a known motivation to combine, not to supply a missing claim
limitation.” Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1361–62 (Fed.
Cir. 2016). Although doing so might be permissible when “the limitation in
question [is] unusually simple and the technology particularly
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straightforward” (id. at 1362 (emphasis added); that is not the case here.
While the art is relatively predictable, Petitioner has not shown that
associating a location with duplicates is a well understood function such as
simply sending and receiving messages.
Additionally, under 37 C.F.R. § 42.65(a), “[e]xpert testimony that
does not disclose the underlying facts or data on which the opinion is based
is entitled to little or no weight.” It is within our discretion to assign the
appropriate weight to the testimony offered by Petitioner's declarant. In re
Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations.”).
Thus, we are not persuaded by Petitioner’s alternate contention. For
the reasons above, Petitioner has not shown by a preponderance of the
evidence that claim 11 would have been obvious over Johnson.
Claims 12, 13, 15
Claims 12, 13, and 15 depend from claim 11, and thus, for the reasons
above, Petitioner has not shown by a preponderance of the evidence that
claims 12, 13, and 15 would have been obvious over Johnson.
Claim 16
Claim 16 recites in part “the data packet comprising a receiver address
of the first wireless remote device, a command indicator comprising a
command code, a data value comprising a message,” which Petitioner does
not sufficiently show to be disclosed in the combination of Johnson and
Cunningham by a preponderance of the evidence. See discussion of claims 1
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and 11; Ex. 1106, 39:5–11, 41:1–17, 42:46–61, 60:40–46, Fig. 47; Pet. 64–
65; Ex. 1103 ¶¶ 529–40.
Specifically Petitioner contends:
Johnson teaches two techniques for polling RCNs not directly
accessible to the IDT: “edge-gather” and “wider-gather.” For
both techniques, RCNs poll “neighbor” RCNs that “could not be
polled directly” by the IDT; this “neighbor” polling is done using
packets that a POSITA would have understood or at least found
obvious are structured similarly to IRH packets (because they
serve a similar purpose and are advantageously passing along the
IRH message). Madisetti, ¶526.

Pet. 61. In other words, Petitioner does not rely on an IRH packet but
contends that neighbor polling would be done with “similar” packets
because neighbor polling is “passing along” an IRH packet. Id. Patent
Owner argues Johnson does not state neighbor polling uses IRH packets,
which Petitioner admits. PO Resp. 54; Pet. 61. Patent Owner also
characterizes Petitioner’s contentions as “conclusory” and points out that
Johnson discloses that different messages are send depending on the device
to which and from which the messages are sent using a three-letter labels
formatted as [source][destination][message type]. PO Resp. 54. Patent
Owner has not explained why it is unreasonable that one of skill in the art
would implement messages similar to other messages in the Johnson system
to accomplish the edge-gather function. Additionally, the fact that Johnson
has a naming system for messages does not address whether Johnson would
use messages similar to IRH messages for its edge gather function.
Claim 16 requires the first wireless device to both receive data from a
second wireless device and to be associated with a controller configured to
send a preformatted message to at least one other remote wireless device.
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To show this functionality, Petitioner relies on an annotated version of
Johnson’s Figure 1, reproduced below, to show an RCN that both sends and
receives messages to neighbor RCNs. Pet. 67.

Reproduced above is Petitioner’s annotated version of Figure 1,
showing the text “IRH Polling Command” indicated in purple with purple
arrows going in one direction from the IDT to an RCN, from the original
figure 1, labeled as RCN2 (in yellow) to an additional RCNs labeled RCN 1
(in light blue), and then to a third RNC labeled RCN 3 (in green).
Petitioner cites to Johnson at column 53 lines 38 to 51. Pet. 67 (citing
Ex. 1106, 53:38–51). The text at that citation, however, does not describe
the scenario depicted in the annotated Figure. The cited text recites, for edge
gather, “a remote cell node . . . poll[s] one or more edge neighbors,” and for
wider-gather, “remote cell nodes . . . poll their neighbors in some manner.”
Ex. 1106, 53:38–51. Thus, Johnson does not disclose an RCN receiving and
sending information between 3 RCNs as depicted in the annotated figure.
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Petitioner, in its Reply, contends “[u]sing ‘wider-gather’ polling,
‘messages from 25 [RCNs]’ end up in ‘only four [RCNs]’—meaning that
messages from multiple different RCNs are consolidated into and stored in a
single RCN, which polls the others using the chain shown [in the annotated
Figure 1].” Reply 22–23. We are not persuaded by Petitioner’s contention.
Johnson does not explain how the RCNs receive the 25 messages but
suggest that they are from an RCN’s neighbor not its neighbor’s neighbor.
See Sur-Reply 22. Petitioner maintains that
A POSITA would have understood that this is the point of
‘wider-gather’ polling: to allow polling over a wider area that
IDTs cannot reach. [Ex. 1106, 53:39–51; Ex. 1103 ¶¶ 518–20].A
POSITA likewise would have understood and at least found it
obvious, based on Johnson’s teaching of ‘edge neighbor[s],’ that
neighbors like RCN3 above could be even further removed from
the nearest IDT.

Reply 22–23. This is attorney argument that is not based in disclosures from
Johnson. Johnson simply states that in wider gather an RCN can accumulate
multiple messages from its neighbors. Thus, we are persuaded by Patent
Owner’s argument.
For the reasons above, Petitioner has not shown by a preponderance of
the evidence that claim 16 would have been obvious over Johnson.
Claims 17–20
For the reasons above, Petitioner has not shown by a preponderance of
the evidence that claims 17–20 that depend from claim 16 would have been
obvious over Johnson.
Claims 22, 24
Independent claim 22 recites in part “a function code corresponding to
function status of a device co-located with the transceiver,” which Petitioner
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does not sufficiently show to be disclosed in Johnson by a preponderance of
the evidence. See discussion of claim 19; Ex. 1106, 5:58–67, 16:57–65, Fig.
2; Pet. 89–90; Ex. 1103 ¶¶ 361–66.
The Petitioner contends “Johnson discloses a function code (e.g.,
command code in ‘signalling data’) corresponding to function status (e.g.,
status of ‘load’) of a device (e.g., ‘load,’ ‘thermostat’) co-located with the
transceiver.” Pet. 88 (citing Ex. 1103 ¶¶ 641–42). Patent Owner argues that
Petitioner does not explain or point to disclosure that the thermostat would
be co-located with the transceiver. We are convinced by Patent Owner’s
argument. In its Reply, Petitioner says that the code relates to the status of a
device in the “premises” with the transceiver, quoting a citation in the
Petition that is not explained in the Petition. Reply 25. We determine that
an unexplained reference to a device at the premises with another device is
not sufficient to meet the limitation to co-locate. Thus, Petitioner has not
shown that claim 22 and claim 24 that depends from it would have been
obvious over Johnson.
B. Obviousness of Claims over Johnson and Cunningham
Petitioner contends that claims 3, 4, 9, 14, and 16–24 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Johnson and Cunningham. Pet. 5.
To support its contentions, Petitioner provides explanations as to how the
prior art allegedly teaches each claim limitation. Id. at 35–36, 44–47, 59–94.
On the present record, Petitioner articulates sufficient reasons for combining
Johnson and Cunningham. Id. at 25–26. For example, Petitioner contends
that:
A [person of ordinary skill in the art] would have been
motivated to apply Cunningham’s teachings of (a) an “Internet
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Protocol” address and (b) using DRMs as repeaters interfaced
with devices such as sensors or actuators such as “thermostats”
in implementing Johnson’s system by (a) implementing
Johnson’s addresses using IP addresses; and (b) including
sensors and actuators in Johnson’s RCNs. Madisetti, ¶105.
First, Johnson states that “modifications can be made” to
its teachings. Johnson, 73:54-61. Second, Johnson and
Cunningham are both directed to AMR systems. Johnson, 3:21-
23; Cunningham, 1:15-18. Third, Cunningham explicitly cites
Johnson as prior art, and states that Cunningham’s teachings can
be applied to improve Johnson’s “complicated” teachings by
advantageously reducing the need for “second layer information
retrieval” (e.g., by also allowing RCNs themselves to collect
data) and by “simplif[ying]” the system by, e.g., allowing
devices to repeat information, thereby reducing the number of
IDTs needed in the system; and providing teachings of how to
implement addresses using the advantageously well understood
and common IP address format. Cunningham, 3:29-4:44, 6:11-
13, 6:26-29, 9:66-10:9, 33:45-53, 42:42-51, Figs. 25, 49. A
[person of ordinary skill in the art] also would have recognized
that TCP/IP addressing would have advantageously allowed
Johnson’s system to be more easily capable of communicating
with a “variety of” different types of networked devices because
the addressing scheme would be transparent between different
networks. E.g., Johnson, 25:59-67. Fourth, a [person of ordinary
skill in the art] would have found it straightforward to apply
Cunningham’s teachings relating to DCMs and DRMs in
implementing Johnson’s RCNs because the devices serve similar
purposes in each system using similar structures—namely, by
collecting sensor information from several remote devices . . .
Johnson, Fig. 1, 53:39-51 Cunningham, Fig. 1, 4:56-62[,]
Madisetti, ¶106. Fifth, a [person of ordinary skill in the art]
would have been motivated to look to Cunningham’s teachings
of using the DCM as a repeater for other DCMs for additional
teachings of how to implement Johnson’s “edge-gather” and
“wider gather” polling including, e.g., how to implement
addresses in packets used for these polling techniques to reliably
relay messages between devices. Johnson, 53:39-51;
Cunningham, Figs. 46-47, 41:44-44:11. A [person of ordinary
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skill in the art] further would have recognized this
straightforward/predictable combination (yielding the claimed
features) would have worked as expected. Madisetti, ¶66.

Id. at 15–17.
Claim 3
Claim 3 depends from claim 2. Claim 3 recites “the unique
transceiver address is an Internet Protocol address,” which Petitioner
sufficiently shows to be disclosed in Johnson and Cunningham by a
preponderance of the evidence. See Ex. 1107, 34:66–35:17; Pet. 35; Ex.
1103 ¶¶ 426–29. Patent Owner does not make arguments specific to this
claim.
Claim 4
Claim 4 depends from claim 1. Claim 4 recites “the function code
further comprises an Internet Protocol address,” which Petitioner sufficiently
shows to be disclosed in Johnson and Cunningham by a preponderance of
the evidence. See discussion of claim 3 above; Ex. 1107, 14:41–43, 34:66–
35:23, 36:1–38; 37:47, 37:35–38, 38:8–9; Pet. 35–36; Ex. 1103 ¶¶ 430–32.
Patent Owner does not make arguments specific to this claim.
Claim 9
Claim 9 depends from claim 1. Claim 9 recites “the command code
indicates a change in settings of an actuator associated with the wireless
communication device,” which Petitioner sufficiently shows to be disclosed
in Johnson and Cunningham by a preponderance of the evidence. See Ex.
1106, 10:2–9, 53–56, 58:28–29, 58:35–43, Figs. 4, 51; Ex. 1107, 4:58–62,
6:11–13, 6:26–29, 9:66–10:9, 14:50–56, 19:49–51, 46:64–47:10, Fig. 19;
Pet. 44–47; Ex. 1103 ¶¶ 457–63.
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The Petition states Johnson “teaches that an IRH message includes a
‘SAC command’ that controls actuators such as a ‘load’—e.g., an air
conditioner, heater, or pump—or connects/disconnects service.” Pet. 45.
Patent Owner argues that “[a]ctuators can be standalone devices or
integrated into loads, but either way, they are not the load itself.” PO Resp.
31. Petitioner also states that an actuator is a “switch for service.” Pet. 45.
However, the Petition does not explain what this switch is or how it operates
as an actuator. Nevertheless, the Petition relies on disclosures from
Cunningham as well.
The Petition also relies on an “intelligent thermostat” in
Cunningham’s provisional as the actuator because it can control other
equipment, e.g. “ECMs” (which Cunningham refers to as “device
adjustment modules”) as an “intelligent thermostat” or to “control”—i.e.,
actuate, HVAC and lighting equipment.” Pet. 46 n. 6. Cunningham states
“[t]he present application is related to U.S. Provisional Patent Application
Ser. No. 60/058,978, . . . and U.S. Provisional Patent Application No.
60/094,057, . . . which are incorporated herein by reference.” Ex. 1107, 1:5–
10.
Patent Owner argues Cunningham did not incorporate the entire
provisional citing Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370,
1378 (Fed. Cir. 2007) (“Zenon”). Zenon does not stand for that proposition.
While Zenon states that an incorporation by reference “must identify with
detailed particularity what specific material it incorporates and clearly
indicate where that material is found in the various documents” (id. (quoting
Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir. 2006))), it
does not, however, state that documents cannot be incorporated in their
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entirety—because they can. See Paice LLC v. Ford Motor Co., 881 F.3d
894, 907 (Fed. Cir. 2018) (finding similar language “plainly sufficient to
incorporate [a reference] in its entirety.”). Thus, we are not convinced by
that argument.
Patent Owner also argues “the portions of Cunningham’s provisional
application cited by Petitioner fail to provide any motivation to modify
Johnson to associate an actuator with Johnson’s RCN.” PO Resp. 39–40;
see also Sur- Reply 14 (similar argument). Nevertheless, the Petition states
“Cunningham further teaches using an actuator such as a thermostat instead
of a sensor for a device connected to a SIM (or a DCM).” Pet. 45–46. In a
footnote at the end of that sentence the Petition states that the provisional
uses ECMs as an “intelligent thermostat,” thus it is clear that the “intelligent
thermostat” replaces the thermostat of Cunningham. Id. at 46 n. 6.
No motivation to combine analysis is required because the disclosures
of the provisional are incorporated by reference into Cunningham. “When a
document is ‘incorporated by reference’ into a host document, such as a
patent, the referenced document becomes effectively part of the host
document as if it were explicitly contained therein.” Telemac Cellular Corp.
v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001). Additionally,
as explained below, we are persuaded by Petitioners contention that one of
skill in the art would be motivated to combine Cunningham’s disclosure
with Johnson to associate RCNs with NSMs and thus also with physical
devices such as a thermostat.
Based on the analysis above, we are persuaded that Petitioner has
shown by a preponderance of the evidence that the combination of Johnson
and Cunningham shows an actuator as claimed.
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Patent Owner further argues Johnson discloses network applications
(i.e., software as opposed to a physical actuator like an ON/OFF switch) for
connecting and disconnecting service.” Sur-Reply 12. Patent Owner has not
explained sufficiently why the claim is limited to a physical actuator as
opposed to a software actuator. Thus, we are not persuaded by this
argument.
Patent Owner also argues that “an actuator associated with the
wireless communication device” must be physically located at the wireless
communication device. PO Resp. 31–32. Patent Owner argues the command
signal Petitioner relies on is sent from the RCN to a separate NSM that is
physically located where a device, such as a meter, is located. Id.
Nevertheless, Petitioner relies on Johnson combined with Cunningham. The
Petition states “[i]t would have been obvious to apply these teachings in
implementing Johnson’s RCNs, yielding an RCN directly connected to (and
therefore associated with) an actuator load or service control.” Pet. 46. The
Petition also states “NSMs ‘include meter service modules for electricity,
gas and water, a service disconnect module, a load management module, an
alarm monitoring module.’” Id. (quoting Ex. 1106, 10:2–9).
The Petition states Cunningham discloses a SIM “hard wired” to a
DCM and discloses a thermostat connected to a SIM. Pet. 45. Thus, the
Petition states explicitly the DCM, SIM, and thermostat are connected. Id.
As to the combination of Johnson and Cunningham, the Petition states a
person of ordinary skill in the art “would have found it straightforward to
apply Cunningham’s teachings relating to DCMs and DRMs in
implementing Johnson’s RCNs because the devices serve similar purposes in
each system using similar structures—namely, by collecting sensor
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information from several remote devices.” Pet. 16. The Petition then
illustrates, in side-by-side annotated versions of Figure 1 of Johnson and
Figure 1 of Cunningham, reproduced below, that the SIMs in Cunningham
serve a similar purpose and have a similar structure to the NSMs in Johnson.
Pet. 17.

Side-by-side, annotated versions of Figure 1 of Johnson and Figure 1
of Cunningham reproduced above, show Johnson Figure 1 with RCNs in
yellow connected to multiple NSMs in green and Cunningham Figure 1 with
DCMs in yellow connected to multiple SIMs in green. Thus, although it is
not explicitly stated in the Petition that the NSM is connected to the RCN,
we determine that it was sufficiently apparent from the part of the Petition
cited above that, in the combination of Johnson and Cunningham, the SIM
replaces the NSM in order to have a “RCN directly connected to (and
therefore associated with) an actuator.” Id. at 46. Thus, the Petition
proposes directly connecting the physical device to the RCN which would
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result in the NSM also being physically connected to the RCN. Reply 14.13
In its Reply, Petitioner explains sufficiently how this is shown in the
Petition. Reply 11–15. Patent Owner does not respond to this explanation
in its Sur-Reply, rather simply argues “Johnson discloses that its alleged
actuators are only associated with NSMs, not RCNs, so Petitioner has not
carried its burden. (PO[Response] 30-33.).” Sur-Reply 13. We are not
convinced by this argument.
We do not rely, however, on Petitioner’s assertion in the Reply that
“[t]he actuator is ‘associated with’ the RCN because the IDT sends SAC
commands used to control an actuator through its associated RCN,” thus
suggesting that the actuator need not be physically located at the RCN.
Reply 12. Thus, Patent Owner’s arguments regarding this contention are
moot. PO Resp. 12–13.
Petitioner argues that “Cunningham explicitly cites Johnson as prior
art, and states that Cunningham’s teachings can be applied to improve
Johnson’s ‘complicated’ teachings by advantageously reducing the need for
‘second layer information retrieval’ (e.g., by also allowing RCNs themselves
to collect data).” Pet. 15–16. Patent Owner argues the entire quote from
Cunningham recites “Cunningham states that “[t]he prior art as evidenced by
the described patents suffers from excessive duplicate information
transmission, required polling for second layer information retrieval, being

13 Patent Owner admits that the portion of Johnson cited in the Petition states
“Johnson explains that “[e]ach network service module [NSM] is coupled to
a respective physical device.” PO Resp. 32 (quoting Ex. 1106, 14:3–4). We
determine that this fact would tend to support the Petition but we do not rely
on this portion of Johnson to support Petitioner’s contention because it was
not cited in the Petition.
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overly complicated, and having excessive parts which are susceptible to
failure.” PO Resp. 34 (quoting Ex. 1107, 4:34–38.) Based on this, Patent
Owner argues polling was the problem addressed by Cunningham not the
separation between RCNs and NSMs. Id. Patent Owner further argues
“Cunningham focuses on using data collection modules 110 [DCMs] to
collect information from a plurality of different sensor modules [SIMs].” Id.
at 35. Nevertheless, the Petition cites to a part of Cunningham that suggests
directly connecting SIMs to a DCM, i.e. “Cunningham teaches associating a
device with a DCM by either hard-wiring a dedicated SIM to that DCM, or
directly connecting the device to the DCM.” Pet. 45 (citing Ex. 1107, 6:11–
13, 6:26–29, 9:66–10:9.
Patent Owner also argues through its declarant that “the industry”
preferred the one RCN to many NSMs approach in Johnson and
Cunningham suggests that same approach. PO Resp. 35–36. Patent Owner
is essentially arguing that there is a teaching away from Petitioner’s
combination. Patent Owner does not cite any authority to support that
general industry preference that is not recited in the cited references on
which an obviousness challenge is predicated can teach away from a
proposed obviousness combination.
“Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant’s invention. A statement that a
particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination.” Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted).
Additionally, the “mere disclosure of alternative designs does not teach
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away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also
Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A
reference that ‘merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into’ the claimed invention does not teach away.” (quoting
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)).
Rather, teaching away requires “clear discouragement” from implementing a
technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
Here, Cunningham seems to present both configurations at issue; Johnson
does not criticize associating RCNs with NSMs, and the industry preference
is, at best, just that, a preference. Thus, we are not convinced by this
argument by Patent Owner.
We acknowledge even if a reference is not found to teach away, its
statements regarding preferences are relevant to a finding regarding whether
a skilled artisan would be motivated to combine that reference with another
reference. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15
(Fed. Cir. 2016) (en banc) (noting that, even if a reference “does not teach
away, its statements regarding users preferring other forms of switches are
relevant to a finding regarding whether a skilled artisan would be motivated
to combine the slider toggle in” that reference with the invention of a second
reference). As such, in determining motivation to combine “the benefits,
both lost and gained, should be weighed against one another.” Winner Int’l
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)
(“Winner”).
Here, on the other side of the scale, Petitioner argues there were many
motivations recited in the Petition, such as Johnson teaching making
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“modifications” to its system; both references are directed to similarly-
structured AMR systems, and applying Cunningham’s teachings would
simplify the system. Reply 15. Patent Owner discounts these motivations
because they are not directed to the specific modification Petitioner is
proposing. Sur-Reply 13–14. Nevertheless, Petitioner argues “[a]pplying
Cunningham’s teachings of integrating sensors directly with RCNs also
simplifies the system by reducing the number of discrete NSMs in the
system, which also reduces the amount of “required polling” of NSMs.
Reply 15 (citing Ex. 1107, 4:34–38; Pet. 15–17. Ex. 1176 ¶ 35. Weighing
all the evidence above, we are persuaded that Petitioner has shown sufficient
motivation to combine Johnson and Cunningham. Thus, for the reasons
above, Petitioner has shown by a preponderance of the evidence that claim 9
would have been obvious over the combination of Johnson and
Cunningham.
Claim 14
Claim 14 depends from claim 13, which, as explained above,
Petitioner does not sufficiently show to be disclosed in Johnson by a
preponderance of the evidence. Petitioner does not rely on Cunningham to
make up any deficiency as to the limitations of claim 13. Thus, Petitioner
has not shown claim 14 is disclosed in the combination Johnson and
Cunningham by a preponderance of the evidence.
Claim 16
Independent claim 16 recites “a communication system to
communicate command and sensed data between remote devices, the system
comprising,” which Petitioner contends is disclosed in the combination of
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Johnson and Cunningham. See discussion of preamble associated with claim
1; Pet. 60; Ex. 1103 ¶¶ 521–22.
As explained above, we determined that the preamble is not limiting
but we rely on Petitioner’s contentions cited above as a predicate of the
contentions below, so they are listed here. Patent Owner’s arguments
regarding the preamble are not commensurate with the scope of the
invention as properly construed. See PO Resp. 58–59.
Claim 16 further recites “a receiver associated with a first wireless
remote device the receiver configured to receive a data packet transmitted by
a second wireless remote device,” which Petitioner sufficiently shows to be
disclosed in Johnson by a preponderance of the evidence. See discussion of
claim 1; Pet. 60–64; Ex. 1103 ¶¶ 523–28.
Claim 16 further recites “the data packet comprising a receiver
address of the first wireless remote device, a command indicator comprising
a command code, a data value comprising a message,” which Petitioner
sufficiently shows to be disclosed in the combination of Johnson and
Cunningham by a preponderance of the evidence. See discussion of claim 1
and 11; Ex. 1106, 39:5–11, 41:1–17, 42:46–61, 60:40–46, Fig. 47; Pet. 64–
65; Ex. 1103 ¶¶ 529–40.
Specifically Petitioner contends:
Johnson teaches two techniques for polling RCNs not directly
accessible to the IDT: “edge-gather” and “wider-gather.” For
both techniques, RCNs poll “neighbor” RCNs that “could not be
polled directly” by the IDT; this “neighbor” polling is done using
packets that a POSITA would have understood or at least found
obvious are structured similarly to IRH packets (because they
serve a similar purpose and are advantageously passing along the
IRH message). Madisetti, ¶526.

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Pet. 61. In other words, Petitioner does not rely on an IRH packet but
contends that neighbor polling would be done with “similar” packets
because neighbor polling is “passing along” an IRH packet.
Claim 16 requires the first wireless device to both receive data from a
second wireless device and to be associated with a controller configured to
send a preformatted message to at least one other remote wireless device.
To show this functionality Petitioner relies on an annotated version of
Johnson’s Figure 1, reproduced below, to show an RCN that both sends and
receives messages to neighbor RCNs. Pet. 67.

Reproduced above is Petitioner’s annotated version of Figure 1,
showing the text “IRH Polling Command” indicated in purple with purple
arrows going in one direction from the IDT to an RCN, from the original
figure 1, labeled as RCN2 (in yellow), to an additional RCN labeled RCN 1
(in light blue), and then to a third RCN labeled RCN 3 (in green). Petitioner
cites to Johnson at column 53 lines 38 to 51. Pet. 67 (citing Ex. 1106,
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53:38–51). The text at that citation, however, does not describe the scenario
depicted in the annotated Figure. The cited text recites, for edge gather, “a
remote cell node . . . poll[s] one or more edge neighbors,” and for wider-
gather, “remote cell nodes . . . poll their neighbors in some manner.” Ex.
1106, 53:38–51. Thus, Johnson does not disclose an RCN receiving and
sending information between three RCNs as depicted in the annotated figure.
Nevertheless, Petitioner relies on Cunningham to show the message
structure in the annotated figure. Specifically, Petitioner contends
Cunningham teaches that data collection modules (DCMs),
which operate similarly to Johnson’s RCNs, are wireless remote
devices that include a receiver and can send and receive packets
to other DCMs by acting as ‘data repeater module’ (‘DRM’)
repeaters. Pet. 63–64 (citing Ex. 1107, 33:45–53, 42:34–51,
Figs. 25, 49). For example, Cunningham recites “data repeater
system . . . was designed for bi-directional communication
between [DCM] processors.

Ex. 1107, 33:45–53.
Patent Owner argues “nowhere does Petitioner propose modifying
Johnson’s disclosure of neighbor polling to allow polling of more than one
RCN.” PO Resp. 58 (citing Ex. 2004 ¶ 80.) However, Petitioner contends
that Cunningham provides “implementation details for implementing this
polling,” which refer to Johnson’s polling. Pet. 62 see Petition at 67–68; Ex.
2004 ¶ 80. PO Resp. 58. Additionally, we discern that Petitioner’s
contentions regarding claim 16 contends that the DCMs of Cunningham
would be RCN1, RCN2, RCN3. Pet. 63–64, 67–68. Petitioner contends in
its Reply, that “Cunningham discloses DCMs repeating information from
one to another, and describes including the DCM addresses as additional
information in the packet to allow the message to be repeated to a network-
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connected DCM.” Reply 23; Pet. 62–64; Ex. 1107, 33:17–25, 33:45–53 Fig.
47; Ex. 1176 ¶ 48. We are persuaded by this argument.
Besides the argument above, Patent Owner does not specifically argue
in its Patent Owner Response that the Petition fails to provide a motivation
to combine Johnson and Cunningham with regard to the limitations of claim
16. For the first time in its Sur-Reply, Patent Owner makes further
arguments that “teaching that particular elements from Cunningham could
be beneficial in Johnson does not supply a rationale for Petitioner to modify
Johnson using unrelated Cunningham features.” Sur-Reply 23. Patent
Owner cites to its discussion of motivation to combine with regard to the
actuator in claim 9 at pages 34–35 of the Patent Owner Response to justify
these new arguments regarding claim 16 appearing in the Sur-Reply. We are
not convinced that the arguments regarding claim 9 were associated in any
way with claim 16 in the Patent Owner Response, thus those arguments are
waived. See Practice Guide Update at 15.
Claim 16 further recites “a controller associated with the first wireless
remote device comprising a transceiver configured to send and receive
wireless signals,” which Petitioner sufficiently shows to be disclosed in
Johnson by a preponderance of the evidence. See discussion of claim 1;
Pet. 65; Ex. 1103 ¶¶ 542–45.
Patent Owner argues Petitioner’s challenge to claim 16 is deficient
because of the same argument above with regard to tying specific functions
to Johnson’s controller (PO Resp. 59–60; thus, for the same reason discussed
above, including that Patent Owner request more detail than is required,
given the technology at issue, we are not convinced by that argument.
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Claim 16 further recites “the first wireless remote device configured
to send a preformatted message comprising the receiver address, a command
indicator, and the data value via the transceiver to at least one other remote
device,” which Petitioner sufficiently shows to be disclosed in Johnson by a
preponderance of the evidence. See discussion of claim 1; Pet. 66–69; Ex.
1103 ¶¶ 546–54. Patent Owner does not make arguments specific to this
claim limitation.
Claim 16 further recites “the controller is configured to implement a
certain function corresponding to the command code in the data packet,”
which Petitioner sufficiently shows to be disclosed in Johnson by a
preponderance of the evidence. See discussion of claim 1; Pet. 69; Ex. 1103
¶¶ 556–57. Patent Owner does not make arguments specific to this claim
limitation.
Claim 17
Claim 17 depends from claim 16. Claim 17 recites “a plurality of
transceivers each having a unique address, the transceiver being one of the
plurality of transceivers,” which Petitioner sufficiently shows to be disclosed
in Johnson by a preponderance of the evidence. See discussion of claims 1
and 2; Ex. 1106, 22:20–51, Fig. 10; Pet. 69–70; Ex. 1103 ¶¶ 558–60. Patent
Owner does not make arguments specific to this claim limitation.
Claim 17 further recites “a plurality of controllers associated with at
least one of the transceivers, the controller being in communication with at
least one other transceiver with a preformatted message,” which Petitioner
sufficiently shows to be disclosed in Johnson by a preponderance of the
evidence. See discussion of claims 1 and 16; Ex. 1106, 10:10–11:4, 18:3–
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46, 22:21–23:3, Figs. 1–2, 9–10; Pet. 70–71; Ex. 1103 ¶¶ 561–64. Patent
Owner does not make arguments specific to this claim limitation.
Claim 17 further recites “at least one sensor associated with at least
one of the transceivers to detect a condition and output a data signal to the
transceiver,” which Petitioner sufficiently shows to be disclosed in Johnson
by a preponderance of the evidence. See discussion of claim 12; Ex. 1106,
9:66–10:6, 10:29–33, 11:4–16, 11:27–30, 54:50–55:30, Figs. 1–2; Pet. 70–
72; Ex. 1103 ¶¶ 565–68. Patent Owner does not make arguments specific to
this claim limitation.
Claim 17 further recites “at least one actuator associated with at least
one of the transceivers to activate a device,” which Petitioner sufficiently
shows to be disclosed in Johnson by a preponderance of the evidence.
See discussion of claim 9; Ex. 1106, 10:31–33, 14:50–56, 58:35–43, Fig. 1–
2; Pet. 73; Ex. 1103 ¶¶ 569–72. Patent Owner does not make arguments
specific to this claim limitation.
Claim 18
Claim 18 depends from claim 16. Claim 18 recites “the controller
sends the preformatted message via an associated transceiver,” which
Petitioner sufficiently shows to be disclosed in Johnson by a preponderance
of the evidence. See discussion of claims 1 and 16; Pet. 73; Ex. 1103 ¶¶
573–75. Patent Owner does not make arguments specific to this claim
limitation.
Claim 18 further recites “at least one transceiver sends the
preformatted response message,” which Petitioner sufficiently shows to be
disclosed in Johnson, by a preponderance of the evidence. See discussion of
claims 1 and 16; Ex. 1106, 11:49–52, 29:24–34, Figs. 1, 40; Pet. 73–74; Ex.
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1103 ¶¶ 576–79. Patent Owner does not make arguments specific to this
claim limitation.
Claim 19
Claim 19 depends from claim 16. Claim 19 recites “the preformatted
message is concatenated with function codes to provide the receiving device
with multiple function codes, the device configured to perform the functions
in the preformatted message,” which Petitioner sufficiently shows to be
disclosed in the combination of Johnson and Cunningham, by a
preponderance of the evidence. See discussion of claims 5 and 16; Pet. 75–
77; Ex. 1103 ¶¶ 380–84. Patent Owner does not make arguments specific to
this claim.
Claim 20
Claim 20 depends from claim 16. Claim 20 recites “at least one
transceiver receives the preformatted message requesting sensed data,”
which Petitioner sufficiently shows to be disclosed in Johnson by a
preponderance of the evidence. See discussion of claims 1 and 16; Ex. 1106,
4:32–39, 22:45–55, 57:45–49, Fig. 1; Pet. 78–79; Ex. 1103 ¶¶ 588–91.
Patent Owner does not make arguments specific to this claim limitation.
Claim 20 further recites “confirms the receiver address as its own
unique address,” which Petitioner sufficiently shows to be disclosed in
Johnson and Cunningham by a preponderance of the evidence. Ex. 1106,
36:15–16, 35:65–66, 42:39–43, 42:3–4; Pet. 79–80; Ex. 1103 ¶¶ 592–95, 98.
Patent Owner does not make arguments specific to this claim limitation.
Claim 20 further recites “receives a sensed data signal,” which
Petitioner sufficiently shows to be disclosed in Johnson by a preponderance
of the evidence. See discussion of claims 11 and 17; Pet. 80; Ex. 1103
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¶¶ 599–601. Patent Owner does not make arguments specific to this claim
limitation.
Claim 20 further recites “formats the sensed data signal into scalable
byte segments,” which Petitioner sufficiently shows to be disclosed in
Johnson by a preponderance of the evidence. See discussion of claim 16;
Ex. 1106, 56:65–57:11, 56:51–57:11, Fig. 1, 46–49; Pet. 80–82; Ex. 1103
¶¶ 602–05. Patent Owner does not make arguments specific to this claim
limitation.
Claim 20 recites “determines the number of segments required to
contain the sensed data signal,” which Petitioner sufficiently shows to be
disclosed in Johnson by a preponderance of the evidence. Ex. 1106, 56:40–
41, 57:4, 15–17, Fig. 46–48; Pet. 82–83; Ex. 1103 ¶¶ 606–09. Patent Owner
does not make arguments specific to this claim limitation.
Claim 20 further recites “generates and transmits the preformatted
response message comprising at least one packet,” which Petitioner
sufficiently shows to be disclosed in Johnson by a preponderance of the
evidence. See discussion of claim 18; Ex. 1106, 56:35–57:11; Figs. 1, 46;
Pet. 83–84; Ex. 1103 ¶¶ 610–14. Patent Owner does not make arguments
specific to this claim limitation.
Claim 21
Claim 21 depends from claim 16. Claim 21 recites “wherein the
unique address of at least one receiver is an Internet Protocol address,”
which Petitioner sufficiently shows to be disclosed in Johnson by a
preponderance of the evidence. See discussion of claim 3; Pet. 84; Ex. 1103
¶¶ 615–17. Patent Owner does not make arguments specific to this claim.
Claim 22
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Independent claim 22 recites “[a] wireless communication device for
use in a communication system to communicate commands and sensed data
between remote wireless communication devices, the wireless
communication device comprising,” which Petitioner contends is disclosed
in Johnson and Cunningham. See discussion of claim 1; Pet. 87; Ex. 1103
¶¶ 339–41.
As explained above, we determined that the preamble is not limiting
but we rely on Petitioner’s contentions cited above as a predicate of the
contentions below, so they are listed here. Patent Owner’s arguments
regarding the preamble are not commensurate with the scope of the
invention as properly construed. See PO Resp. 63–64.
Claim 22 further recites “a transceiver configured to send and receive
wireless communications,” which Petitioner sufficiently shows to be
disclosed in Johnson and Cunningham by a preponderance of the evidence.
See discussion of claim 1; Pet. 87; Ex. 1103 ¶¶ 342–44. Patent Owner does
not make arguments specific to this claim limitation.
Claim 22 further recites “a controller, operatively coupled to the
transceiver, configured to communicate with at least one other remote
wireless device via the transceiver with a preformatted message,” which
Petitioner sufficiently shows to be disclosed in Johnson and Cunningham by
a preponderance of the evidence. See discussion of claim 1; Ex. 1106, 5:59–
64, Fig. 2; Ex. 1005, 4:42–57, Fig. 4; Pet. 87–88; Ex. 1103 ¶¶ 345–47.
Patent Owner does not make arguments specific to this claim limitation.
Claim 22 further recites “the controller further configured to receive
and format data messages,” which Petitioner sufficiently shows to be
disclosed in Johnson by a preponderance of the evidence. See discussion of
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claim 1; Pet. 88; Ex. 1103 ¶¶ 348–50. Patent Owner does not make
arguments specific to this claim limitation.
Claim 22 further recites “wherein data messages comprising a
receiver address comprising an address of at least one remote wireless
device,” which Petitioner sufficiently shows to be disclosed in Johnson by a
preponderance of the evidence. See discussion of claims 1 and 16; Ex. 1106,
6:44–54, 10:1–11, 10:35–40; Pet. 88–89; Ex. 1103 ¶¶ 351–54. Patent
Owner does not make arguments specific to this claim limitation.
Claim 22 further recites “a command indicator comprising a
command code,” which Petitioner sufficiently shows to be disclosed in
Johnson by a preponderance of the evidence. See discussion of claim 1; Pet.
89; Ex. 1103 ¶¶ 355–57. Patent Owner does not make arguments specific to
this claim limitation.
Claim 22 further recites “a data value comprising a scalable message,”
which Petitioner sufficiently shows to be disclosed in Johnson by a
preponderance of the evidence. See discussion of claim 7; Pet. 89; Ex. 1103
¶¶ 358–60. Patent Owner does not make arguments specific to this claim
limitation.
Claim 22 further recites “a function code corresponding to function
status of a device co-located with the transceiver,” which Petitioner
sufficiently shows to be disclosed in Johnson and Cunningham by a
preponderance of the evidence. See discussion of claim 9; Ex. 1106, 5:58–
67, 16:57–65, Fig. 2; Pet. 89–90; Ex. 1103 ¶¶ 361–66.
Petitioner refers to the discussion of claim 9 in the Petition to support
the co-located” limitation of claim 22. We also refer to our discussion of
claim 9. For the reasons discussed there regarding “associated with,” we
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determine that Petitioner has sufficiently shown “co-located” which is met
by a device physically connected to the transceiver as found regarding claim
9. Patent Owner’s argument at pages 62–63 of its Patent Owner Response
do not acknowledge the Petition’s cross-reference to claim 9, so we are not
convinced by those arguments. In the Sur-Reply, Patent Owner simply
refers to the arguments regarding claim 9, so we are not convinced by those
arguments for the reasons above.
Claim 23
Claim 23 depends from claim 22. For claim 23, Petitioner relies on its
contentions from ground 1 except that it also relies on the contentions from
this ground as to Cunningham. That is, claim 23 recites “wherein the device
co-located with the transceiver is a sensor operatively coupled to the
controller and wherein the controller is configured to format the data value
with data sensed by the sensor,” which Petitioner sufficiently shows to be
disclosed in Johnson and Cunningham by a preponderance of the evidence.
See discussion of claims 9 and 22; Ex. 1106, 4:32–39, 57:1–3, Figs. 1, 46;
Ex. 1111, 6:11–13, 6:26–29, 9:66–10:9, 36:40–47, 37:35–39, 42, 61–64,
Figs. 1; Pet. 90–92; Ex. 1103 ¶¶ 646–53. Patent Owner does not make
arguments specific to this claim.
Claim 24
Claim 24 depends from claim 22. Claim 24 recites “wherein the
command code comprises at least one of a device-specific code or a
non-device-specific code,” which Petitioner sufficiently shows to be
disclosed in Johnson and Cunningham by a preponderance of the evidence.
See discussion of claims 1, 9, and 10; Pet. 92–93; Ex. 1103 ¶¶ 654–59.
Patent Owner does not make arguments specific to this claim limitation.
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Claim 24 recites “the device-specific code commands change of a
setting of an actuator co-located with the transceiver,” which Petitioner
sufficiently shows to be disclosed in Johnson and Cunningham by a
preponderance of the evidence. See discussion of claims 9 and 22; Pet. 93–
94; Ex. 1103 ¶¶ 660–62. Patent Owner does not make arguments specific to
this claim limitation.
Claim 24 recites “the non-device-specific code includes network
status/diagnostic commands,” which Petitioner sufficiently shows to be
disclosed in Johnson and Cunningham by a preponderance of the evidence.
See Ex. 1106, 18:25–26, 57:45–49; Pet. 94; Ex. 1103 ¶¶ 663–65. Patent
Owner does not make arguments specific to this claim limitation.
C. Obviousness of Claims over Johnson and Lyons
Petitioner contends that claims 10 and 24 are unpatentable under
35 U.S.C. § 103(a) as obvious over Johnson and Lyons. Pet. 5. To support
its contentions, Petitioner provides explanations as to how the prior art
allegedly teaches each claim limitation. Id. at 47–49, 92–94. On the entire
trial record, Petitioner articulates sufficient reasons for combining Johnson
and Lyons. Id. at 19. For example, Petitioner contends that:
A [person of ordinary skill in the art] would have been
motivated to apply Lyons’s teachings of a “ping” in
implementing Johnson. First, Johnson states that “modifications
can be made” to its teachings. Johnson, 73:54-61. Second, “ping”
commands, as taught by Lyons, were well-understood and
commonly used. Madisetti, ¶108. Third, Lyons, like Johnson, is
directed to collecting information from remote meters. Lyons,
1:11-16. Fourth, a [person of ordinary skill in the art] reviewing
Johnson would have recognized the importance of maintaining a
stable and reliable network to, e.g., advantageously allow the
system to be used for some control applications (see Johnson,
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3:28-32, 26:16-23, 35:34-42), and would have been motivated to
look to Lyons for, e.g., its advantageous teachings on how to
maintain integrity and reliability of networks by, e.g., issuing
“ping” and similar commands to verify the network is
“functioning properly.” Lyons, 36:59-64; Madisetti, ¶108. A
[person of ordinary skill in the art] further would have recognized
this straightforward/predictable combination (yielding the
claimed features) would have worked as expected. Madisetti,
¶108.

Id. at 19.
Claim 10
Claim 10 depends from claim 1. Claim 10 recites “the command code
indicates a request for a ping response by the wireless communication
device,” which Petitioner sufficiently shows to be disclosed in the
combination of Johnson and Lyons by a preponderance of the evidence.
See Ex. 1106, 18:25–29, 55:32–36, 57:45–49, 55:32–36, 58:25, Fig. 1; Ex.
1110, 36:65–37:3–21, 37:44–48; Pet. 57–58; Ex. 1103 ¶¶ 464–69.
Petitioner states that “[i]t would have been obvious to apply this
teaching to advantageously implement a well-understood ‘ping’ as
Johnson’s . . . command codes to, e.g., improve network stability.” Pet. 19,
49. Petition also states Johnson invites modifications, Johnson and Lyons
are directed toward communication with remote devices, and that it would
be a predictable combination. Id. at 19. Patent Owner contends that
Johnson’s status request function is redundant of Lyons ping request and, for
that reason, one of ordinary skill would not be motivated to add Lyons
functionality to Johnson. PO Resp. 43.
To support their position about the non-obviousness of adding Lyons
ping response, Patent Owner cites Kinetic Concepts, Inc. v. Smith &
Nephew, Inc., 688 F.3d 1342, 1370–71 (Fed. Cir. 2012).
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In Kinetic, the issue was whether to combine publications which “both
. . . independently accomplish similar functions, namely, draining fluids.”
Kinetic Concepts, Inc., 688 F.3d at 1369. One set of publications involved
negative pressure to drain wounds. Id. at 1362-1363. The other set of
publications disclosed a different type of wound drainage system. Id. at
1365. The obviousness rejection was predicated on combining the two sets
of publications to meet a limitation in the claim of using negative pressure to
treat a wound. However, wound treatment was not described in the negative
pressure publications. Id. at 1361, 1363. Because each publication was
complete in teaching a wound drainage method, and there was no teaching
that negative pressure could be used to treat wounds, the court found “a
person having ordinary skill in the art, who was merely seeking to create a
better device to drain fluids from a wound, would have no reason to combine
the features of both devices into a single device.” Id. at 1369.
The facts presented in this Petition are distinguishable. The ping
response is not being combined for some new previously unknown purpose
but rather for its well-known purpose. Pet. 19.
Patent Owner also cites to Winner Int’l Royalty Corp., 202 F.3d at
1349. Winner found no motivation to combine based on teaching away and
“there was no apparent disadvantage to the dead-bolt mechanism of Johnson,
and therefore the motivation to combine would not stem from the ‘nature of
the problem’ facing one of ordinary skill in the art, because no ‘problem’
was perceived.” Id. However, the reason there was “no” motivation was
that “district court . . . [found] that one of ordinary skill in the art would not
have reasonably elected trading the benefit of security for that of
convenience.” Id.. Winner is also distinguishable. Here, there is no alleged
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teaching away. Additionally, there is no suggestion using a ping response
involves a trade off the one of ordinary skill would not make.
Also, if the ping response would further improve network stability,
even if the Johnson status request function also improves network security,
adding another function is a tradeoff one of ordinary skill is allowed to make
in combining references. “[T]he benefits, both lost and gained, should be
weighed against one another.” Winner, 202 F.3d at 1349 n.8. Additionally,
“when a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR,
550 F.3d at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282, 96
S.Ct. 1532 (1976)).
Thus, for the reasons above, we are not convinced by Patent Owner’s
argument.
Claim 24
Claim 24 depends from claim 22 which Petitioner does not
sufficiently show to be disclosed in Johnson by a preponderance of the
evidence. The Petition does not rely on Lyons to make up for any deficiency
as to the limitations of claim 22. Thus, Petitioner has not shown claim 24 to
be disclosed in Johnson and Lyons by a preponderance of the evidence.
D. Obviousness of Claims over Johnson and Ardalan
Petitioner contends that claims 3, 4, 14, and 21 are unpatentable under
35 U.S.C. § 103(a) as obvious over Johnson and Ardalan. Pet. 5. To
support its contentions, Petitioner provides explanations as to how the prior
art allegedly teaches each claim limitation. Id. at 34–35, 59, 84–85. On the
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present record, Petitioner articulates sufficient reasons for combining
Johnson and Ardalan. Id. at 25–26. For example, Petitioner contends that:
It would have been obvious to apply Ardalan’s TCP/IP
teachings in implementing Johnson’s addresses for wireless
devices. First, Johnson states that “modifications can be made”
to its teachings. Johnson, 73:54-61. Second, it was well-
understood before 1998 that TCP/IP was commonly used to
communicate between devices in a network, such as Johnson’s
“wide area communications network,” as well as between
different types of networks, such as Johnson’s RF network of
NSMs, RCNs, and IDTs, and wide area networks used between
Johnson’s IDTs and CDTs. . . . Johnson, Fig. 1, 23:45-24:11;
Madisetti, ¶107. Third, a [person of ordinary skill in the art]
would have recognized that using TCP/IP addressing would have
advantageously allowed Johnson’s system to be more easily
capable of communicating with a “variety of” different types of
networked devices, permitting the networks to each use the same
types of addresses. E.g., Johnson, 25:59-67. A [person of
ordinary skill in the art] further would have recognized this
straightforward/predictable combination (yielding the claimed
features) would have worked as expected. Madisetti, ¶107.

Id. at 17–18
Claim 3
Claim 3 depends from claim 2. Claim 3 recites “the unique
transceiver address is an Internet Protocol address,” which Petitioner
sufficiently shows to be disclosed in Johnson and Ardalan by a
preponderance of the evidence. See Ex. 1108, 2:45–47, 2:55–59, 3:14–18,
3:32–58; Pet. 35; Ex. 1103 ¶¶ 426–29. Patent Owner does not make
arguments specific to this claim.
Claim 4
Claim 4 depends from claim 1. Claim 4 recites “the function code
further comprises an Internet Protocol address,” which Petitioner sufficiently
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shows to be disclosed in Johnson and Ardalan by a preponderance of the
evidence. See discussion of claim 3 above; Pet. 35–36; Ex. 1103 ¶¶ 433–34.
Patent Owner does not make arguments specific to this claim.
Claim 14
Claim 14 depends indirectly from claim 11 which Petitioner does not
sufficiently show to be disclosed in Johnson by a preponderance of the
evidence. The Petition does not rely on Ardalan to make up for any
deficiency as to the limitations of claim 11. Thus, Petitioner has not shown
claim 14 to be disclosed in Johnson and Ardalan by a preponderance of the
evidence.
Claim 21
Claim 21 depends from claim 16. For the reasons above, Petitioner
has not shown by a preponderance of the evidence that claims 16 would
have been obvious over Johnson. Ardalan does not overcome the deficiency
in the showing regarding claim 16; therefore, Petitioner has not shown that
claim 21 would have been obvious over Johnson and Ardalan.
E. Obviousness of Claims over Johnson and Ehlers
Petitioner contends that claims 11–13 and 15 are unpatentable under
35 U.S.C. § 103(a) as obvious over Johnson and Ehlers. Pet. 5. To support
its contentions, Petitioner provides explanations as to how the prior art
allegedly teaches each claim limitation. Id. at 47–59. On the present record,
Petitioner articulates sufficient reasons for combining Johnson and Ehlers.
Id. at 19–20. For example, Petitioner contends that:
A [person of ordinary skill in the art] would have been
motivated to apply Ehlers’ teachings of how to track nodes in a
LAN when implementing Johnson. First, Johnson states that
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“modifications can be made” to its teachings. Johnson, 73:54-61.
Second, both Johnson and Ehlers are directed to automatic meter
reading systems. Johnson, 3:21-23; Ehlers, 1:7-12. Third,
Johnson recognizes the need for “path redundancy” by making
sure an appropriate number of NSMs and RCNs are deployed
without over-deploying nodes such that there are “collisions” in
communications. Johnson, 24:22-57, 27:30-54; 28:32-36. A
[person of ordinary skill in the art] would have recognized that
allowing Johnson’s RCNs to track locations of individual
devices would advantageously simplify the ability for the system
to know where devices were located, allowing for easier
troubleshooting and improvement of the system’s stability.
Madisetti, ¶109. Third, Johnson’s RCNs and NSMs are
organized similarly to Ehlers’s customer premises external unit
(CPEU) 12 containing its first micro-computer and the devices
that communicate with that CPEU, respectively . . . Johnson, Fig.
1; Ehlers, Fig. 1; Madisetti, ¶109. A [person of ordinary skill in
the art] further would have recognized this
straightforward/predictable combination (yielding the claimed
features) would have worked as expected. Madisetti, ¶109.

Id. at 19–20.
Claim 11
Independent Claim 11 recites “[a] method of communicating
command and sensed data between remote wireless devices,” which
Petitioner contends is shown to be disclosed in Johnson. See Pet. 49; Ex.
1103 ¶¶ 470–72.
As explained above, we determined that the preamble is not limiting
but we rely on Petitioner’s contentions cited above as a predicate of the
contentions below, so they are listed here. Patent Owner’s arguments
regarding the preamble are not commensurate with the scope of the
invention as properly construed. See PO Resp. 51.
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Claim 11 further recites “providing a receiver to receive at least one
message; wherein the message has a packet that comprises a receiver
address, a command indicator comprising a command code, a variable data
value comprising a message, and a redundancy check error detector,” which
Petitioner has shown by a preponderance of the evidence to be disclosed in
Johnson. See Ex. 1106, 11:36–39, 35:65–36:16; Pet. 49–53; Ex. 1103
¶¶ 487–88. Patent Owner does not make arguments specific to this claim
limitation.
Claim 11 further recites “a controller to determine if at least one
received message is a duplicate message,” which Petitioner sufficiently
shows to be disclosed in Johnson by a preponderance of the evidence.
See Ex. 1106, 18:46–49, 19:15–20, 26:29–53, 27:31–54, 49:37–45; Pet. 53–
54; Ex. 1103 ¶¶ 473–92. Patent Owner does not make arguments specific to
this claim limitation.
Patent Owner argues Petitioner’s challenge to claim 11 is deficient
because of the same argument above with regard to tying specific functions
to Johnson’s controller (PO Resp. 49–51); thus, for the same reasons
discussed above including that Patent Owner request more detail than is
required given the technology at issue, we are not convinced by that
argument. For example, Petitioner explains that “[t]he RCN
processor . . . identifies duplicates of NSM packet signals.” Pet. 53–54
(citing Ex. 1106, 18:46–49).
Claim 11 further recites “determining a location from which the
duplicate message originated,” which Petitioner has shown to be disclosed in
Johnson and Ehlers by a preponderance of the evidence. See Ex. 1111,
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10:8–40, 10:52–62, 12:17–50, Figs. 1, 11–14; Pet. 54–57; Ex. 1103 ¶¶ 493–
96. Patent Owner does not make arguments specific to this claim limitation.
Petitioner contends “Ehlers discloses determining a location (e.g.,
using “char location” in “DEVICES”) from which the duplicate message
(e.g., reading response) originated.” Pet. 54 (emphasis added). Ehlers does
not identify duplicates and Petitioner does not cite to disclosure in Ehlers
indicating that a reading response is a duplicate message; Johnson performs
that function. Petitioner states “Johnson teaches RCNs determine when they
receive duplicate copies of an NSM-packet signal from an NSM identified
by the NSM-packet signal’s address field.” Pet. 55–56 (citing 1106, 20:13–
21, 41:44–52, 52:51–62). With that predicate, Petitioner contends Johnson’s
RCN receives a duplicate message, the RCN identifies the source of the
message—including its location—because [in this combination] the RCN
uses the DEVICE entry that includes the device’s location to identify the
sending device.” Id. at 55. Petitioner further contends it would have been
obvious to “apply Ehlers’ teaching of using a data structure to track the
location of every device in the network, such that the device (e.g., Johnson’s
RCN) receiving the duplicate message can advantageously determine the
message’s origin in order to, e.g., locate and resolve faults in the system.”
Id. at 63.
Patent Owner argues that “Petitioner provides no explanation for how
one of ordinary skill would have incorporated Ehlers’s data structure. (Ex.
2004 ¶ 62.) While Petitioner contends that Johnson’s RCNs and NSMs are
generally organized similarly to Ehlers’s customer premises external unit
(Petition at 20), Petitioner never explains whether Ehlers’s data structure is
complementary to Johnson’s data structure, whether it would replace aspects
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of Johnson’s data structure, or whether some other modification would be
needed to accommodate both.” PO Resp. 44–45. Patent Owner asserts this
argument is not requiring Petitioner to bodily incorporate the references, but
rather Petitioner still must explain “how specific references could be
combined, which combination(s) of elements in specific references would
yield a predictable result, or how any specific combination would operate.”
Sur-Reply 19 (citing ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
694 F.3d 1312, 1327 (Fed. Cir. 2012)). We are not convinced by this
argument.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference,” In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Mouttet, 686
F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d at 425), but
rather whether “a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention,”
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).
“Combining the teachings of references does not involve an ability to
combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA
1973).
Petitioner further argues:
applying the teaching of a ‘location’ field in a data structure that
is stored at a first microcomputer, and which is used to track
individual devices in implementing Johnson’s RCN, is
compatible with Johnson’s teachings, and further would have
been obvious because the systems are similarly-structured and
these devices serve similar purposes.

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Reply 19–20. Petitioner’s declarant reaffirms that the field to identify the
location of a device is compatible with the data structure of Johnson. Ex.
1176 ¶ 42. Thus, we are not convinced by Patent Owner’s argument.
Patent Owner also argues that because Johnson’s meters are in fixed
physical locations there is no need to determine their locations. PO Resp.
45–46. Patent Owner contrasts this with the specification of the ’708 patent
that describes mobile devices; finding the location of device which can move
around requires triangulation. Id. Patent Owner has not shown sufficiently
that the claims require mobile devices as opposed to stationary ones, nor has
Patent Owner shown that a limitation to mobile devices should be imported
into the claims.
To the contrary, Petitioner explains that
The ’268 patent to which the ’708 claims priority and which is
incorporated by reference into the ’708 (’708 at 1:25–38) states
that providing an identification code of a fixed-location
transceiver will “inform the central station . . . of the particular
vending machine . . . and thus its location.”

Reply 18. Thus, the record suggests that location in the claims is broad
enough to apply to stationary devices. Thus, we are not convinced by Patent
Owner’s argument.
Next, Patent Owner argues that Petitioner has not provided sufficient
motivation to combine Johnson and Ehlers because “if a wireless transceiver
is faulty, it is far more likely to transmit no messages at all as opposed to
issuing a message that duplicates a message it previously sent or that was
also sent from another meter.” PO Resp. 47 (citing Ex. 2004 ¶ 65). In
response, Petitioner points to the other motivations discussed in the Petition,
specifically, that “knowing the physical locations of devices can help
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minimize ‘simultaneous message transmissions, or collisions’ that
undermine the network’s reliability.” Reply 19 (citing Ex. 1106, 24:22–57,
27:30–54; 28:32–36, 52:33–37; Ex. 1003 ¶ 496); Pet. 20. Thus, Petitioners
motivation ties knowledge of location to collisions which is separate from
Patent Owner’s focus on whether the sender of a duplicate message is faulty.
This motivation combined with the fact that the RCN identifies duplicate
messages provides further motivation to combine the references that would
result in the limitation in the claim. Based on the discussion above, we
determine that Petitioner has provided a reasonable rationale for combining
Johnson and Ehlers.
Patent Owner argues, for the first time in the Sur-Reply, that Johnson
discloses methods of solving the collision problem and that Johnson
discloses the collision problem is “minimal” and is “resolved” by several
techniques. Sur-Reply 18.14 This argument was also not discussed in the

14 Patent Owner discusses “collisions” only once in its Patent Owner
Response. PO Resp. 48–49. The discussion relates to Patent Owner’s
argument the Petition has not shown that “identifying the location of the
polling IDT and RCN would allow the receiving RCN to determine whether
it is closer to the polling IDT or RCN.” Id. at 48. In support of that
argument Petitioner stated knowing the location of device would “reduc[e]
the impact on the system from simultaneous messages transmissions or
collisions.” Pet. 57. In response to that argument Patent Owner states:
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declaration of Dr. Ghobad Heidari. See Ex. 2004. At the time of filing its
Patent Owner Response, Patent Owner knew Petitioner was relying on
collisions as a motivation because it was discussed in the Petition. See Pet.
20, 55–57. Thus, Patent Owner cannot raise a new argument regarding
collisions for the first time in a Sur-Reply. Arguments not presented in the
Patent Owner Response “will be deemed waived.” Update to the Trial
Practice Guide (83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of
the updated “Trial Practice Guide” and its accessibility through the USPTO
website: https://go.usa.gov/xU7GP) ) (“Practice Guide Update”) at 15 (A
“sur-reply that raises a new issue or belatedly presents evidence may not be
considered”; a sur-reply may “respond” to arguments “raised” in the reply
but “respond . . . does not mean embark in a new direction with a new

[T]his argument is also problematic because Petitioner fails to
demonstrate a correlation between the need to “minimize
bandwidth consumption” and determining a location of a polling
RCN or IDT. (Ex. 2004 ¶¶ 67-68.) Many factors can affect
bandwidth consumption, and Petitioner fails to demonstrate that
responding to a closer polling device in terms of physical
location necessarily results in minimizing bandwidth
consumption. (Ex. 2004 ¶ 68.) In the co-pending IPR2019-
00545, Petitioner made similar arguments, and the Board
preliminarily found that “this appears to be hindsight attorney
argument that is not sufficiently supported [by the asserted
reference].” Emerson Elec. Co. v. SIPCO LLC, IPR2019- 00545,
Paper 16 at 30 (P.T.A.B. Aug. 30, 2019). The Board should reach
the same conclusion here.

Id. at 48–49. Thus, in its Patent Owner Response’s discussion of collisions,
Patent Owner did not cite to Johnson nor state that Johnson discloses that the
impact of collisions is “minimal” or “resolved.”
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approach as compared to positions taken in a prior filing.”). We decline to
consider this argument.
Although we determine this argument is new and we don’t rely on it,
if we were to rely on it, it would not change this Decision as we discuss
below. We note that Johnson states that the problem is “resolved” but then
subsequently states that the problem is minimal and states the “the
probability of receiving a packet any time during the day is maintained at
exceptionally high levels.”
Thus, Johnson does not state that there is no problem with collisions
rather that the problem is “resolved” to the extent that there is a high
probability of receiving a packet. Ex. 1106, 52–57. Additionally, Patent
Owner has not addressed whether there remains a benefit to adding a
redundant feature for additional protection against collisions. Even if
Johnson states the problem is solved, it is unnecessary for Petitioner to show
that collisions were a known problem in Johnson’s particular system to
support the argument that an ordinarily skilled artisan would have been
motivated to seek to apply Ehler’s teachings regarding locating physical
devices in a wireless system. See Unwired Planet, LLC v. Google Inc., 841
F.3d 995, 1002–04 (Fed. Cir. 2016) (“Google also argues that it does
not need to show that there was a known problem with the prior art system
in order to articulate the required rational underpinning for the proposed
combination. We agree.”).
For the reasons above, even if we accepted Patent Owner’s evidence
of the limited benefit, we would decrease the weight of Petitioner’s evidence
of a rationale to combine the teachings only slightly. Overall, we would find
that Petitioner has shown an adequate rationale to modify Johnson with the
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teachings of Ehlers. Nevertheless, because this argument was raised for the
first time in the Sur-Reply, we are not convinced by Patent Owner’s
argument.
Patent Owner argues Petitioner’s contentions regarding claims 12, 13,
and 15 should be rejected for the same reasons discussed above. PO Resp.
52. We are not convinced by this argument for the reasons discussed above.
Claim 12
Claim 12 depends from claim 11. Claim 12 recites “providing one or
more remote wireless communication devices,” which Petitioner sufficiently
shows to be disclosed in Johnson and Ehlers by a preponderance of the
evidence. See discussion of remote devices associated with claim 1; Pet. 57;
Ex. 1103 ¶¶ 497–99. Patent Owner does not make arguments specific to this
claim limitation.
Claim 12 further recites “geographically remote transceivers adapted
to transmit and receive the at least one message,” which Petitioner
sufficiently shows to be disclosed in Johnson by a preponderance of the
evidence. See discussion of remote devices associated with claim 1; Ex.
1106, 10:24–61, Figs. 1–2; Pet. 64; Ex. 1103 ¶¶ 500–02. Patent Owner does
not make arguments specific to this claim limitation.
Claim 12 further recites “transmission is accomplished by radio
frequency or internet protocol,” which Petitioner sufficiently shows to be
disclosed in Johnson by a preponderance of the evidence. See discussion of
RF associated with claim 1; Pet. 58; Ex. 1103 ¶¶ 503–05. Patent Owner
does not make arguments specific to this claim limitation.
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Claim 13
Claim 13 depends from claim 11. Claim 13 recites “providing at least
one remote wireless communication device,” which Petitioner sufficiently
shows to be disclosed in Johnson and Ehlers by a preponderance of the
evidence. See discussion of remote devices associated with claim 1; Pet. 58;
Ex. 1103 ¶¶ 506–08. Patent Owner does not make arguments specific to this
claim limitation.
Claim 13 further recites “at least one of the devices has a unique
address and the packet further comprises at least one address field to contain
the unique address for at least one device,” which Petitioner sufficiently
shows to be disclosed in Johnson and Ehlers by a preponderance of the
evidence. See discussion of unique address associated with claims 2 and 11;
Pet. 58–59; Ex. 1103 ¶¶ 509–11. Patent Owner does not make arguments
specific to this claim limitation.
Claim 15
Claim 15 depends from claim 11. Claim 15 recites “determining if an
error exists in a packet of the at least one message,” which Petitioner
sufficiently shows to be disclosed in Johnson by a preponderance of the
evidence. See Ex. 1106, 35:65–36:2, 40:1–15, 40:31–38; Pet. 59; Ex. 1103
¶¶ 515–17. Patent Owner does not make arguments specific to this claim.
F. Obviousness of Claims over Johnson and Lee
Petitioner contends that claims 5 and 19 are unpatentable under 35
U.S.C. § 103(a) as obvious over Johnson and Lee. Pet. 6. On the present
record, Petitioner articulates sufficient reasons for combining Johnson and
Lee. Id. at 36–40, 75–78. For example, Petitioner contends that:
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It would have been obvious to apply Lee’s teachings to
specify multiple commands in a packet—e.g., concatenating
multiple “msgtype” or “signaling data” codes to, e.g., poll
multiple types of data and also issue other commands. First,
Johnson states that “modifications can be made” to its teachings.
Johnson, 73:54-61. Second, Johnson and Lee are directed to
similar purposes of collecting meter information; Lee discloses
that its teachings can be applied “in many other contexts such as
a direct radio communication[] between a meter and a central
radio interrogation unit.” Lee, 1:11-15, 7:31-36. Third, Johnson
teaches it is advantageous to efficiently use bandwidth, and
recognizes multiple benefits to such efficient use that would have
been realized by sending multiple commands in a single packet
or allowing services to “share[]” bandwidth with other services.
Johnson, 27:30-28:31. A [person of ordinary skill in the art]
further would have recognized this straightforward/predictable
combination (yielding the claimed features) would have worked
as expected. Madisetti, ¶110. . . .
Further, a [person of ordinary skill in the art] would have
been motivated to combine Johnson’s teachings with one or more
of the above references as set forth in §IV for the same reasons
explained above in §§VI.E.1-VI.E.4. Madisetti, 111, 91–104

Id. at 20–21
Claim 5
Claim 5 depends from claim 1. Claim 5 recites “the command code of
the preformatted message are concatenated to provide a receiving device
with multiple command codes, the device configured to perform one or more
functions corresponding to the command code in the preformatted message,”
which Petitioner sufficiently shows to be disclosed in Johnson and Lee by a
preponderance of the evidence. Ex. 1009, 4:50–57, Fig. 7A; Pet. 39; Ex.
1103 ¶¶ 441–442. Patent Owner does not make arguments specific to this
claim.
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Claim 19
Claim 19 depends from claim 16 which Petitioner does not
sufficiently shows to be disclosed in Johnson by a preponderance of the
evidence. The Petition does not rely on Lee to make up for any deficiency
as to the limitations of claim 16. Thus, Petitioner has not shown claim 19 to
be disclosed in Johnson and Lee by a preponderance of the evidence. Patent
Owner does not make arguments specific to this claim.
G. Obviousness of Claims over Johnson in view of Cunningham or
Ardalan and in further view of Lyons, Ehlers, or Lee
Petitioner contends that claims 14, 19, and 24 are unpatentable under
35 U.S.C. § 103(a) as obvious over Johnson in view of Cunningham or
Ardalan and in further view of Lyons, Ehlers, or Lee. Pet. 6. To support its
contentions, Petitioner provides explanations as to how the prior art
allegedly teaches each claim limitation. Id. at 58–66.
This ground combines contentions from the previous grounds
including the ground with Johnson alone, and the grounds that add
Cunningham, Ardalan, Lyons, Ehlers, and Lee.
This ground is the only ground that challenges claim 14 based on
Johnson and Ehlers, thus we discuss that combination below. Claim 14
depends from claim 13. Claims 13 depends from independent claim 11. As
explained above, both claims 11 and 13 have been shown to have been
obvious over the combination of Johnson and Ehlers. Claim 14 recites “the
unique address of at least one remote wireless communication device is an
Internet Protocol address,” which Petitioner sufficiently shows to be
disclosed in Johnson and Ehlers (and thus, Johnson, Cunningham, Ardalan,
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Lyons, Ehlers, and Lee) by a preponderance of the evidence. See discussion
of IP address associated with claim 3; Pet. 59; Ex. 1103 ¶¶ 512–14.
This ground challenges claim 19 based on Johnson and Cunningham
among other references. As discussed above, we determine that Petitioner
shows sufficiently claim 19 is disclosed in the combination of Johnson and
Cunningham, thus it is also disclosed in Johnson, Cunningham, Ardalan,
Lyons, Ehlers, and Lee by a preponderance of the evidence. See discussion
of claim 5 and 16; Pet. 75–78; Ex. 1103 ¶¶ 380–84, 585–87.
This ground challenges claim 24 based on Johnson and Cunningham
among other references. As discussed above, we determine that Petitioner
shows sufficiently claim 24 is disclosed in the combination of Johnson and
Cunningham, thus it is also disclosed in Johnson, Cunningham, Ardalan,
Lyons, Ehlers, and Lee by a preponderance of the evidence.
IV. CONCLUSION
For the foregoing reasons, we determine Petitioner has demonstrated,
by a preponderance of the evidence, the unpatentability of claims 1–24 of
the ’708 patent.15

15 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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V. ORDER
Accordingly, it is
ORDERED that claims 1–24 of U.S. Patent No. 8,964,708 B2 are
unpatentable;
FURTHER ORDERED that claims 1–24 of U.S. Patent No. 8,964,708
B2 are not shown to be unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.
In summary:
Claim(s) 35 U.S.C. §
Reference(s)/
Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1–2, 5–8,
10–13,
15–20, 22,
24
103(a) Johnson 1–2, 5–8 10–13, 15, 16–
20, 22, 24
3–4, 9, 14,
16–24
103(a) Johnson and
Cunningham
3–4, 9, 16–24 14
10, 24 103(a) Johnson and
Lyons
10 24
3–4, 14,21 103(a) Johnson and
Ardalan
3, 4 14, 21
11–13, 15 103(a) Johnson and
Ehlers
11–13, 15
5, 19 103(a) Johnson and
Lee
5 19
14, 19,24 103(a) Johnson,
Cunningham,
Ardalan,
Lyons, Ehlers,
or Lee
14, 19, 24
Overall
Outcome
1–24
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For PETITIONER:
James L. Davis, Jr.
Daniel Richards
ROPES & GRAY LLP
james.l.davis@ropesgray.com
daniel.richards@ropesgray.com

For 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 Gonsalves
gonsalves@gonsalveslawfirm.com