SIPCO, LLC, Appellant v. EMERSON ELECTRIC CO., Appellee ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor
2018-1635
United States Court of Appeals for the Federal Circuit
Decided: November 17, 2020
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. CBM2016-00095.
GREGORY J. GONSALVES, Gonsalves Law Firm, Falls Church, VA, for appellant.
DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP, Washington, DC, for appellee. Also represented by SAMUEL LAWRENCE BRENNER, Boston, MA; JAMES RICHARD BATCHELDER, JAMES LAWRENCE DAVIS, JR., East Palo Alto, CA.
KAKOLI CAPRIHAN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for intervenor. Also represented by THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED, MOLLY R. SILFEN.
Before O‘MALLEY, REYNA, and CHEN, Circuit Judges.
This appeal has returned to us on remand from the Suрreme Court of the United States. In its prior appearance in this court, SIPCO appealed from a final written decision of the Patent Trial and Appeal Board (Board) in a covered business
In determining that the ‘842 patent qualifies for CBM review, the Board found that the patent is not excluded from review under the statutory “technological invention” exception. See
We reversed the Board‘s finding that the ‘842 patent does not satisfy the second part of the regulation defining “technological invention.” SIPCO, LLC v. Emerson Elec. Co., 939 F.3d 1301, 1313 (Fed. Cir. 2019), judgment vacated, 207 L. Ed. 2d 1049 (June 15, 2020). We then vacated and remanded for the Board to consider the applicability of
Emerson petitioned for rehearing en banc, which this court denied. Emerson then filed a petition for a writ of certiorari in the Supreme Court presenting the following question:
Whether
35 U.S.C. [§] 324(e) permits review on appeal of the Director‘s threshold determination, as part of the decision to institute CBM review, that the challenged patent qualifies as a CBM patent.
Petition for a Writ of Certiorari at I, Emerson Elec. Co. v. SIPCO, LLC, 2020 WL 550758 (Jan. 30, 2020) (No. 19-966). The Supreme Court granted the petition, vacated our prior opinion, and remanded “for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020).” Emerson Elec. Co. v. SIPCO, LLC, 207 L. Ed. 2d 1049 (June 15, 2020).
Following remand, we recalled our mandate, reopenеd this appeal, and ordered supplemental briefing on July 21, 2020. Both parties responded with supplemental briefing addressing the effect of Thryv on this appeal. The Director of the Patent Office moved to intervene on September 4, 2020, and we granted the motion on September 28, 2020.
The Supreme Court‘s decision in Thryv, we hold, makes clear that the threshold determination that SIPCO‘s ‘842 patent qualifies for CBM review is a decision that is non-appealable under
BACKGROUND
The ‘842 patent describes a two-step communication path in which a remote device first communicates through a low-power wireless connection tо an intermediate node, which in turn connects to a central location. ‘842 patent at claim 1. For example, a user may wish to replace the bank and credit cards he or she carries with a remote transmitting unit, similar to
Claims 1 and 17 are representative for the purposes of SIPCO‘s challenge to the Board‘s obviousness ruling. Claim 1 recites the following:
1. A device for communicating information, the device comprising:
a low-power transceiver configured to wirelessly transmit a signal comprising instruction data for delivery to a network of addressable devices;
an interface circuit for communicating with a central location; and
a controller coupled to the interface circuit and to the low-power transceiver, the controller configured to establish a communication link between at least one device in the network of addressable devices and thе central location using an address included in the signal, the communication link comprising one or more devices in the network of addressable device[s], the controller further configured to receive one or more signals via the low-power transceiver and communicate information contained within the signals to the central location.
Id. at claim 1 (emphases added). Claim 17 is similar to claim 1, but instead of a low-power trаnsceiver that wirelessly transmits a signal to a network of addressable devices, claim 17 recites “a low-power transceiver that is configured to wirelessly receive a signal including an instruction data from a remote device.” Id. at claim 17 (emphasis added).
In its final written decision, the Board determined that claims 1 and 17 would have been obvious to a skilled artisan in view of Tymes. Three claim limitations are relevant to this appeal. First, the Board construed “low-powеr transceiver” as “encompass[ing],” but not limited to, a device that “transmits and receives signals having a limited transmission range.” Emerson Electric Co. v. Sipco, No. CBM2016-00095, 2018 WL 446681, at *19 (P.T.A.B. Jan. 16, 2018). At the same time, however, the Board determined the claims would have been obvious even under SIPCO‘s proposed construction of “low power” as requiring a limited transmission range. Id.
Second, the Board construed “instruction data” as “items of information that allow[] a computer system to identify a function or an instruсtion to be performed.” Id. Based on that construction, the Board concluded that Tymes discloses a low-power transceiver that “wirelessly transmit[s] a signal comprising instruction data for delivery to a network of addressable devices” as recited in claim 1, and also discloses “a low-power transceiver that is configured to wirelessly receive a signal including an instruction data from a remote device” as recited in claim 17. Id. at *23-24.
Finally, the Board found that Tymes disclosed a “controller configured to establish a communication link between at least one device in the network of addressable devices and the central location using an address included in the signal.” Id. at *24.
DISCUSSION
I. The Board‘s Decision to Institute CBM Review
In Thryv, the Supreme Court held that the Patent Office‘s decision as to whether earlier litigation bars institution of inter
Our court has recently considered Thryv‘s application to the petition requirement in
Covered business method patent review is subject to a similar, materially identical “No Appeal” provision in
Although SIPCO urges that the Board exceeded its authority in conducting a CBM review for a patent that SIPCO contends is not a CBM patent, Thryv held that the “No Appeal” provision barred judicial review of the threshold decision to institute inter partes review despite the argument that the Board exceeded its statutory authority in doing so. See 140 S. Ct. at 1380 (Gorsuch, J., dissenting) (arguing that the holding in Thryv permits the аgency to “act in defiance of plain congressional limits on its authority“). We also note that, contrary to SIPCO‘s argument that judicial review is necessary to “[e]nsure that post grant review ‘proceeds in accordance with the law‘s demand,‘” Appellant‘s Supplemental Br. at 10, and in
II. Obviousness
Obviousness “is a question of law based on underlying findings of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). We review the Board‘s findings regarding the scope and content of the prior art for substantial evidеnce. Rambus Inc. v. Rea, 731 F.3d 1248, 1251-52 (Fed. Cir. 2013).
The Board correctly applied Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc), rather than the broadest reasonable interpretation standard, when construing terms of this expired patent. Emerson Electric Co., 2018 WL 446681, at *7; see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). We review factual determinations concerning extrinsic evidence underlying the Board‘s claim construction for substantial evidence and the ultimate construction de novo. AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1365 (Fed. Cir. 2019).
SIPCO‘s challenge to the Board‘s obviousness ruling focuses on claim limitations relating to “low power transceiver,” “instruction data,” and “еstablishing a communication link.” We address each in turn.
a. Low Power Transceiver
SIPCO argues that the Board should have construed “low power transceiver” to require “a device that transmits and receives signals having a limited transmission range.” Appellant‘s Br. at 20. But the Board determined that the claimed “low power transceiver” would have been obvious over Tymes regardless of whether “low power” restricts the transceiver to having limited transmission range. We conclude thаt the Board‘s obviousness determination was supported by substantial evidence even under SIPCO‘s proposed construction.2
As the Board correctly noted, Tymes itself emphasizеs that its network of remote units, base stations, and a central computer is a low power network:
It is an object of the present invention to provide an improved, low-cost, low-power, data communication network in which a number of remote terminal units are able to send packets of data to a central station, and, in most cases, to receive acknowledge signals and data from the central station, preferably a network using an RF link.
Tymes at cоl. 2 ll. 36-41 (emphasis added). Tymes further explains that its system “may be needed in a commercial facility (usually indoor),” which the Board found to indicate that the transceivers need only transmit over the limited distances within a building. Id. at col. 2 ll. 44-49. As Tymes explains, the range of its wireless communications “is about 500 feet, in a commercial environment, at a power of about one watt.” Id. at col. 16 ll. 55-58. Moreover, Tymes discloses that it employs wireless links that are unlicensed. Id. at col. 3 ll. 55-59 (“A particular advantage of this type of RF data link is that a band may be used which does not require site licensing by the F.C.C.“). SIPCO does not dispute that such unlicensed communications must operate at less than or equal to one watt of power. See Emerson Electric Co., 2018 WL 446681, at *21. The Board further credited the petitioner‘s expert, Mr. Geier, who explained that a skilled artisan would have understood such transmissions to be both low-power and limited-range. Seе id.; J.A. 1321-22.3 In view of the express disclosure in Tymes and Mr. Geier‘s testimony, the Board was supported by substantial evidence in concluding that it would have been obvious to use low-power transceivers having limited range in Tymes‘s base station.
b. Instruction Data
Two “instruction data” limitations are disputed by the parties. Claim 17 requires the low-power transceiver to “receive a signal including an instruction data from a remote device,” whereas claim 1 requires the transceiver to “transmit a signal comprising instruction data for delivery
to a network of addressable devices.” ‘842 patent at claims 1, 17 (emphases added). The Board found that these
Tymes‘s remote unit is assigned to a particular base station through which the remote unit can communicate with the central station. Tymes at col. 20 ll. 56-59. These remote units (e.g., barcode readers) are mobile аnd each base station only covers a limited transmission range. When a remote unit moves outside the range of its assigned base station, it broadcasts a distress call from each of its two antennas. Any base station that receives the distress call then communicates with the currently assigned base station to reassign the remote unit, i.e., “pass the baton.” Id. at col. 21 ll. 40-45. The newly assigned base station then transmits a “response packet” to the remote unit. Id. at col. 21 ll. 45-47.
The Board found that receiving the distress call at a base station was equivalent to “receiv[ing] a signal including an instruction data from a remote device” as recited in claim 17, because the distress call instructs the base station to communicate with the currently assigned base station to determine how to reassign the remote unit. Emerson Electric Co., 2018 WL 446681, at *23. The Board also found that transmission of the response packet by the newly assigned base station disсlosed claim 1‘s “transmit[ting] a signal comprising instruction data for delivery to a network of addressable devices,” because the response packet instructed Tymes‘s remote unit to cease broadcasting the distress call and use a particular antenna for communications with the newly assigned base station. Id. at *23-24.
SIPCO argues that the Board erred in construing “instruction data” as “items of information that allow[] a computer system to identify a functiоn or an instruction to be performed.” Id. at *10-11. SIPCO urges that the term should be construed as “code identifying a function to be performed or identifying a status that triggers a function to be performed.” Appellant‘s Br. at 32. In SIPCO‘s view, Tymes‘s distress call and response packet do not contain any “code” that can be “decoded.” Id. We disagree.
The claims recite “instruction data,” not instruction code. See ‘842 patent at claims 1, 17. The Board correctly rejeсted SIPCO‘s attempt to further restrict the plain meaning of the claim language. Although SIPCO identifies examples in the specification of “instruction code[s]” that map to specific combinations of bits, the Board did not err in declining to import exemplary embodiments of “instruction code” from the specification into the broader claim term “instruction data.” See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.“).
Even if we were to accept SIPCO‘s construction, the Board was supported by substantial evidence in finding that Tymes‘s distress call and response packet contain “code identifying a function to be performed.” Emerson Electric Co., 2018 WL 446681, at *23. As the Board observed, Tymes‘s distress call is “a short packet consisting of the standard synchronization signal and its serial number.” Id.; see also Tymes at col. 21 ll. 29-45. Contrary to SIPCO‘s assertion that “the Board did not identify any code within the distress call that identifies a function to be performed,” Appellant‘s Br. at 41, the Board reasonably found that combination of information represents a “code” instructing listening base stations to perform the necessary steps for reassigning the remote unit, Emerson Electric Co., 2018 WL 446681, at *23.
c. Establishing a Communication Link
Claim 1 requires a “controller configured to establish a communication link between at least one device in the network of addressable devices and the central location using an address included in the signal.” ‘842 patent at claim 1. SIPCO argues that the Board should have construed “еstablishing a communication link” to mean “to set up a communication link that did not previously exist.” Appellant‘s Br. at 42. But, as the Board explained, when Tymes‘s remote unit moves outside the range of its base station and is subsequently reassigned, the new base station establishes a communication link between the remote unit and the central host computer. Emerson Electric Co., 2018 WL 446681, at *24. This communications link through the new base station did not previously exist. Thus, even under SIPCO‘s construction, substantiаl evidence supports the Board‘s finding that Tymes discloses “establishing a communication link” as claimed.
SIPCO also suggests that the new base station does not establish this new communication link “using an address” as required by claim 1. But the Board found that device identification 74, which the remote unit includes in its distress call, functions as an “address” that is used to establish this new communication link. Id. SIPCO does not offer any reason why device identification 74 does not meet the “addrеss” limitation, and we see none.
Finally, to the extent that SIPCO argues that the new base station does not “establish” a communications link because Tymes‘s remote unit first sends a distress call before the new base station establishes a communications link with the remote unit, we agree with the Board that nothing in the claims “require[s] the controller to initiate the data transmission.” Id. SIPCO does not point to anything in the claims or specification suggesting that a communications link cannot be established after the device receives a signal from remote units.
CONCLUSION
For the reasons stated above, we affirm the Board‘s determination that the claims at issue would have been obvious in view of Tymes. We have considered SIPCO‘s remaining arguments and find them unpersuasive.
AFFIRMED