Patent on remote sensor monitoring found partially invalid. EMERSON v. SIPCO

Patent on remote sensor monitoring found partially invalid. EMERSON v. SIPCO

To be granted a patent in the United States an inventor must submit a patent application to United States Patent and Trademark Office (USPTO).  The patent application will be reviewed by an examining attorney at the USPTO.  The examining attorney will review the patent application ensure that the invention described in the patent application meets all the criteria for a patented to be granted.  One of the primary jobs that an examining attorney performs is to review prior art.  Prior art is information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality.

If an invention has been described in the prior art or would have been obvious over what has been described in the prior art, then the examining attorney will give the patent applicant an opportunity to amend the patent application.  If no relevant prior art is discovered or the patent applicant is able to modify the patent application to avoid the prior art to satisfaction of the examining attorney then the patent can be granted.

Once a patent is granted, the patent is not immune from review.  Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.  Institution of an inter partes review is not automatic, a petitioner must demonstrate a likelihood they would prevail with respect to at least one claim challenged.  The evidence that can be submitted is limited to patents or printed publications which would qualify under §§ 102 or 103 and expert testimony to explain those publications.  At the conclusion of an inter partes review the Board may invalidate all, some or none of the claims of the patent.

EMERSON ELECTRIC CO. v. SIPCO, LLC, 2019-1301 (C.A.F.C. 2020) is an example of an inter partes review that didn’t satisfy either party.

This case focuses on U.S. Patent No. 6,437,692 (“the ’692 patent”)  entitled “System and Method for Monitoring and Controlling Remote Devices”.  The patent relates to a computerized remotely operated system for monitoring, reporting on, and controlling remote systems. The patent broadly covers any system that monitors sensors that are connected to the internet.

Petitioner requested inter partes review of the patent on three different grounds.  The primary piece of prior art cited by petitioner was  U.S. Patent No. 6,124,806 (“Cunningham”), entitled “Wide Area Remote Telemetry,” issued on September 26, 2000. Cunningham relates to “the fields of automatic meter reading of electric, gas, water meters and other systems,” including systems that can communicate with data collection modules via wireless transmission.

In 2018, the PTAB determined that Petitioner failed to prove, by a preponderance of the evidence, that the Ground 1 and Ground 2 claims are unpatentable. However, the PTAB concluded that the Ground 3 claims are unpatentable because they are anticipated or would have been obvious in light of Cunningham.  The PTAB held that the “low-power radio frequency (RF) signal” and “low-power RF signal” terms (the “low-power RF signal” limitations) should  be given their “plain and ordinary meaning,” or “construed to encompass transmitters/transceivers that transmit low power signals.” Both parties appealed the decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit reviewed the PTAB’s decision. In its review the Federal Circuit looked at the disclosures made in Cunningham.  The Federal Circuit agreed with the PTAB’s findings on Ground 2, that Cunningham failed to disclose a “control signal” and “translating” limitations, therefore the PTAB’s decision to find that the ’692 patent patentable was supported by substantial evidence.  With respect to Ground 3 respondent argued that “low power transmission” should mean RF transmissions of limited range.  The Federal Circuit found that the PTAB properly construed the “plain and ordinary meaning” of “low power transmission”.  Based on these findings the Federal Circuit held that the PTAB’s decision was supported by substantial evidence and affirmed.

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