By Pamela C. Maloney, J.D.
Substantial evidence supported the PTAB’s inter partes review decision declaring a system that monitors and controls remote devices unpatentable as obvious.
The U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding that a computer system for monitoring and controlling remote devices was unpatentable. The Federal Circuit found that the Board’s decision with regard to the system’s control signal limitations was supported by sufficient evidence and that the system’s methods for collecting information and providing data services were obvious in light of a prior art patent (Emerson Electric Co. v. Sipco, LLC, September 30, 2020, O’Malley, K.).
U.S. Patent No. 6,437,692 (the ’692 patent), which relates to a computerized, remotely operated system for monitoring, reporting on, and controlling remote systems, was designed to address several issues with existing monitoring and controlling systems that typically implemented a local network of hard-wired sensors and actuators, and a local controller. According to the ’692 patent specifications, these prior art systems were costly to operate and were susceptible to a single point of failure. The invention described in the ’692 patent did not require a local controller, and transferred system information from the remote system to a wide area network (WAN) gateway interface with integrated software applications to process that information.
The Board determined that claims 32, 34, 37–38, 55–57 and 59 (the "Ground 3 claims") of the ’692 patent were unpatentable because they were anticipated or would have been obvious in light of U.S. Patent No. 6,124,806 (Cunningham). The Cunningham reference relates to a remote-device monitoring system that used a sensor interface module, a data collection module, commercially available information transmission systems and a host module that allowed for near real-time information processing that was simplified relative to then-existing systems. The Board concluded, however, that Emerson failed to establish, by a preponderance of the evidence, that claims 1, 3–8, and 11–14 (the "Ground 1 claims") and claims 24–31, 42, 43, 46–49, 51–54 and 60–64 (the "Ground 2 claims") are unpatentable.
Emerson Electric Co. challenged the Board’s findings that it had failed to establish by a preponderance of the evidence that the Ground 2 claims, which related to control signal limitations, were unpatentable. SIPCO, LLC, the patent owner, filed a cross-appealed challenging the Board’s decision that the Ground 3 claims, which related to the method for collecting information and providing data services claims were unpatentable because they were anticipated or would have been obvious in light of Cunningham.
Control signal limitation. The Ground 2 claims recited the ’692 patent’s method and system for controlling remote devices and control systems, and contained limitations directed to a computer on a WAN issuing a control signal in response to data originating from a sensor on the side of a gateway. As such, the language of the ’692 patent required translating the control signal from a network transfer protocol into a radio frequency (RF) control signal and translating the received RF control signal into an analog signal. According to the Board, the Ground 2 claims were not obvious because Cunningham did not disclose the "control signal" limitation and the prior art did not disclose a translating limitation.
The Federal Circuit found that, per the language of the Ground 2 claims, the "control signal" must be capable of being "translated" into an analog signal so it could control a device. Cunningham’s "controlling information" referred to varying utility prices, which did not constitute a control signal because they did not cause a controlling action to be done by the device. Emerson failed to establish how this controlling information, i.e., the utility prices, could be translated from a network transfer protocol into an analog signal. According to the court, the utility prices only served as information, not as control signals, and therefore, the Board’s finding that the controlling information in Cunningham was not a control signal was supported by substantial evidence.
Furthermore, the finding that Cunningham failed to disclose a controlling signal defeated Emerson’s argument with respect to the transmitting limitation. If the prior art reference failed to disclose a control signal, the translating limitation if the ’692 patent could not be satisfied. Emerson’s references to sources that allegedly taught that translating control signals from a network transfer protocol into an RF control signal and from an RF control signal into an analog signal did not disclose the control signal itself and, therefore, were not relevant in satisfying the translating limitations requirement.
Construction of low-power RF signal limitations. In its cross-appeal, SIPCO argued that the Board had improperly construed the "low-power RF signals limitations" using the broadest reasonable interpretation of the term instead of SIPCO’s proposed construction of "low power" to mean signals having a limited transmission range. The Board properly applied the broadest construction to the meaning of low-power RF signal limitations because even though the ’692 patent described a relationship between power and transmission range, the specifications did not equate these two distinct transmission properties. In examining the claim language cited by SIPCO to support its construction, the Federal Circuit found that the Board correctly recognized that the ’692 patent references to limited transmission range did not necessarily correlate to low power, but instead depended on multiple factors beyond power, such as frequency, hardware design, and environment. In addition, the written descriptions in the ’692 patent did not state that low-power RF signals had limited transmission range, nor did the descriptions include any proximity language that would limit construction of the term to mean a limited transmission range.
Based on its agreement that the term "low-power RF signal" should be given the broadest possible construction, the Federal Circuit concluded that Board’s finding that Cunningham disclosed the low-power RF limitations was supported by substantial evidence. The Federal Circuit also found that substantial evidence supported the Board’s finding that Cunningham disclosed a gateway that delivered an encoded electrical signal and transmitter identification information to the computer on the WAN, thereby rendering the Ground 3 claims unpatentable because they would have been obvious as a matter of law.
This case is No. 19-1301.
Attorneys: Douglas Hallward-Driemeier (Ropes & Gray LLP) for Emerson Electric Co. Gregory J. Gonsalves (Gonsalves Law Firm) for Sipco, LLC.
Companies: Emerson Electric Co.; Sipco, LLC
MainStory: TopStory Patent GCNNews FedCirNews
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