SIPCO, LLC v. Emerson Electric Co.
Docket Nos. 2018-1856 (IPR2016-01895)
LOURIE, MOORE, TARANTO
December 20, 2019
Brief Summary: IPR invalidity decision vacated and remanded due to erroneous claim construction (e.g., different claim terms “presume[d]” to “have different meanings”).
Summary: SIPCO appeal PTAB IPR final written decision finding certain claims of SIPCO’s US 7,697,492 directed to a communication system unpatentable as anticipated and obvious based on construction of “scalable address” in the limitation “a receiver address comprising a scalable address of at least one remote device” as “an address that has a variable size based on the size and complexity of the system”, “varies in the size that the address occupies within a packet”, and “clarified” that it is “not limited to a single scalable unique address” (“does not mean each remote device’s unique address must be scalable”). The parties disputed “the Board’s clarifications of its construction”, and “SIPCO argued the Board’s construction “combines the terms ‘receiver address’ and ‘scalable address’, eliminating the separate requirement of a ‘scalable address of at least one remote device.’” The FC panel concluded “[t]he Board erred by construing the ‘scalable address’ as reading on the ‘to’ address in the specification…because the patentee chose to use different terms to define the ‘receiver address’ and the ‘scalable address” which are therefore “presume[d]” to “have different meanings” (Chicago Bd. Options Exch., Fed. Cir. 2012), as well as finding the Board’s construction to be inconsistent with the specification. The FC panel also found “[t]he Board…erred by ‘declin[ing] to construe ‘scalable address’ as including’ a requirement that ‘the address of the remote device…be scalable” since “[t]he claim language specifically contains such a requirement” (“The claim language uses the adjective ‘scalable’ to modify the phrase ‘address of at least one remote device.” Citing Appel, FC 2012 (“holding ‘each’ modified the phrase immediately following it”)). The FC panel agreed, however, “with the Board’s clarification that the ‘scalable address’ is not limited to a single unique address” but remanded the Board’s FWD for reconsideration under the correct claim construction.