Decision Denying Institution Based Upon Failure to Show Disclosure of Each Element IPR2015-00663


Takeaway: To obtain institution of its petition, a petitioner must adequately explain how features in the prior art correspond and meet each and every element of the claims. Merely pointing to features in the prior art without full explanation of the correspondence to the claim elements is not sufficient.

In its Decision, the Board denied institution of inter partes review of claims 1-4, 6-11, 27-47, and 51-64 of the ’511 patent, as amended by ex parte reexamination certificate, because Petitioner had failed to demonstrate a reasonable likelihood of prevailing in showing unpatentability of any of the challenged claims. The ’511 patent “relates to controlling a plurality of remote devices via a host computer connected to a wide area network (WAN). 

Petitioner challenged the claims based on a single obviousness ground based on Kantronics, AX.25 Protocol, and Ultrix. Petitioner argued that the remote TNC 600 and the local TNC 700 in Kantronics teach “the plurality of wireless transceivers;” that the remote TNC 600 in Kantronics receives a sensor data signal from a tank sensor and transmits an original data message; and that the local TNC 700 in Kantronics teaches the claimed “site controller.” However, for each argument the Board found that the Petition failed to provide a specific explanation or identify specific evidence showing all of the requirements of those terms in claim 1.

FieldComm Group v. Sipco, LLC, IPR2015-00663
Paper 11: Decision Denying Institution of Inter Partes Review
Dated: June 23, 2015
Patents: 7,103,511
Before: Bryan F. Moore, Michael J. Fitzpatrick, and Robert J. Weinschenk
Written by: Weinschenk
Related proceedings: several co-pending district court cases; IPR2015-00659 (US 7,697,492 B2); and IPR2015-00668 (US 6,437,692 B1)