Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 36
`Entered: October 10, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ITRON, INC.,
`Petitioner,
`
`v.
`
`SMART METER TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01199
`Patent 7,058,524 B2
`____________
`
`
`Before BRYAN F. MOORE, BARBARA A. BENOIT, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`

`

`IPR2017-01199
`Patent 7,058,524 B2
`
`I.
`
`INTRODUCTION
`
`This inter partes review, instituted pursuant to 35 U.S.C. § 314,
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`challenges the patentability of claims 17–22 (“the challenged claims”) of
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`U.S. Patent No. 7,058,524 B2 (“the ’524 patent,” Ex. 1001), owned by
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`Smart Meter Technologies, Inc. (“Patent Owner”). We have jurisdiction
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`under 35 U.S.C. § 6. This Final Written Decision is entered pursuant to
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`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons discussed herein, Itron, Inc. (“Petitioner”) has shown
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`by a preponderance of the evidence that the challenged claims of the ’524
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`patent are unpatentable.
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`II. BACKGROUND
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`A. Procedural History
`
`On March 30, 2017, Petitioner filed a Petition requesting inter partes
`
`review of the challenged claims of the ’524 patent. Paper 2 (“Pet.”). The
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`Petition is supported by the Declaration of Dr. Robert Akl, D.Sc. (“Akl
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`Decl.,” Ex. 1003). Patent Owner filed a Preliminary Response. Paper 7.
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`On October 11, 2017, we instituted inter partes review of all of the
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`challenged claims of the ’524 patent, but only on one of three asserted
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`grounds. Paper 8 (“Inst. Dec.”), 17, 20. On January 15, 2018, Patent Owner
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`filed a Response to the Petition. Paper 17 (“PO Resp.”). The Patent Owner
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`Response is supported by the Declaration of Thomas L. Blackburn
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`(“Blackburn Decl.,” Ex. 2001) and the Supplemental Declaration of Thomas
`
`L. Blackburn (“Suppl. Blackburn Decl.,” Ex. 2002). On May 3, 2018,
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`Petitioner filed a Reply to Patent Owner’s Response. Paper 21 (“Pet.
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`Reply”).
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`
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`Patent 7,058,524 B2
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`
`On April 24, 2018, the Supreme Court held that a decision on
`
`institution under 35 U.S.C. § 314 may not institute on less than all claims
`
`presented in a petition. SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1358
`
`(2018). In addition, according to the “Guidance on the impact of SAS on
`
`AIA trial proceedings” posted to the U.S. Patent and Trademark Office’s
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`website on April 26, 2018,1 a decision granting institution will institute on
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`all of the grounds set forth in the petition. The Federal Circuit has since
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`endorsed this policy. Adidas AG v. Nike, Inc., 894 F.3d 1256, 1258 (Fed.
`
`Cir. 2018). In light of SAS and this Guidance, we modified our Institution
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`Decision to institute trial on the two additional grounds that were presented
`
`in the Petition, but for which trial was not instituted. Paper 22, 2. On May
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`10, 2018, with our authorization, the parties filed a Joint Motion to Limit the
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`Petition to the sole ground for which we instituted trial in our Institution
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`Decision, removing the two additional grounds added after the SAS decision.
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`Paper 23, 1–2. We granted this motion on May 24, 2018. Paper 28, 3.
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`On May 10, 2018, Patent Owner filed Observations on certain cross-
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`examination testimony of Petitioner’s declarant, Dr. Akl, and certain
`
`testimony of Patent Owner’s declarant, Mr. Blackburn. Paper 26 (“Obs.”).
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`Petitioner filed a Response (Paper 27) (“Obs. Resp.”). We have considered
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`these observations and responses in rendering this Decision, and we have
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`accorded the cited testimony appropriate weight, as explained herein.
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`An oral hearing was held on June 7, 2018. A transcript of the oral
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`hearing is included in the record. Paper 35 (“Tr.”).
`
`
`
` 1
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` www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial.html.
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`Patent 7,058,524 B2
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`B. Related Proceeding
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`The parties identified Smart Meter Technologies, Inc. v. Duke Energy
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`Corp., Case No. 1:16-cv-00208 (D. Del.), as a judicial matter that would
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`affect or would be affected by a decision in this proceeding. Pet. 1; Paper 4
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`(Patent Owner’s Mandatory Notices), 2.
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`C. The ’524 Patent
`
`The ’524 patent generally relates to a power metering system for
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`measuring electrical power consumption, converting the measurements to
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`Internet Protocol (“IP”) format, and transmitting the IP formatted power
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`consumption information across a network (e.g., a power line network).
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`Ex. 1001, 1:6–11, 1:55–64. Figure 1, shown below, illustrates a power
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`metering system in accordance with the invention of the ’524 patent.
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`Patent 7,058,524 B2
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`Figure 1 illustrates a schematic diagram of power metering system 10
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`installed in dwelling 65. Id. at 2:57–59. Power line 50 connects dwelling
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`65’s circuit breaker 55 to the local power distribution grid. Id. at 2:59–60.
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`Power metering system 10, as installed, can “measure[] power consumption
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`information on power line 50, before circuit breaker 55” (i.e., the power
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`consumed within dwelling 65). Id. at 2:67–3:2. In this embodiment, “power
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`metering system 10 includes . . . processor 20, multichannel transceiver 30,
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`power meter 35, one or more clamp contacts 40, split-core transformer 42,
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`and clamp filter 44, which operate together to provide data acquisition,
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`power measurement, data conversion, and data transmission services.” Id. at
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`3:17–22.
`
`
`
`With respect to this embodiment, “[s]plit-core transformer 42 is
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`inductively coupled with power line 50 and senses fluctuations in current
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`flow in power line 50, the fluctuations being indicative of rising and falling
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`power consumption rates within [] dwelling 65.” Transformer 42’s output is
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`fed to power meter 35, which uses the output “to perform active power
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`measurement from power line 50” and to “produc[e] a serial output signal
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`corresponding to power consumption information.” Id. at 3:23–41. In turn,
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`“[t]he output [(i.e., power consumption information)] from power meter [35]
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`is fed to processor 20 and converted [(i.e., into IP format)] for transmission
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`across a network.” Id. at 3:42–44. More specifically, “multichannel
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`transceiver 30 interfaces with power line 50 via . . . clamp contacts 40, . . .
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`[and] allows [] processor 20 . . . to transmit and receive IP data [(e.g., the
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`power consumption information)] from power line 50 using known power
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`line protocols.” Id. at 3:49–55. For example, power metering system 10 can
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`transmit the “IP-encapsulated power consumption” information over power
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`line 50 to destinations external to dwelling 65 (e.g., to other nearby
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`dwellings) via the distribution grid. Id. at 6:64–7:3, 7:7–9. As illustrated,
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`power metering system 10 “also includes a filter 44 for selectively filtering
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`data transmitted across power line 50.” Id. at 4:9–10. More specifically,
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`“filter 44 prevents undesired . . . IP data extant on power line 50 and
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`originating from a source outside of dwelling 65 from entering the power
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`lines therein” and “prevents selected . . . IP data generated within dwelling
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`65 from exiting power line 50 and being transmitted across the power
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`distribution grid.” Id. at 4:11–16.
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`D. Illustrative Claim
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`Of the challenged claims, claim 17 is an independent claim, and
`
`claims 18–22 depend, directly or indirectly, therefrom. Claim 17 is
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`illustrative of the claimed subject matter and is reproduced below.
`
`17. A method of measuring power consumption information
`on a power line comprising:
`measuring current fluctuations in the power line;
`calculating power consumption information from the
`current fluctuations in a processor;
`converting the power consumption information into
`IP-based power consumption information in the processor; and
`transmitting
`the
`IP-based
`power
`consumption
`information from the processor to a destination autonomously
`in IP format over an external power line network.
`
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`Patent 7,058,524 B2
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`E. Ground of Unpatentability
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`The asserted ground of unpatentability remaining in the trial is that
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`claims 17–22 of the ’524 patent are unpatentable under 35 U.S.C. § 103(a)2
`
`as obvious over Suh et al. (U.S. Patent App. Pub. No. 2002/0161536 A1
`
`(published Oct. 31, 2002) (Ex. 1006, “Suh”)).3 Inst. Dec. 20; Paper 28, 3.
`
`III. DISCUSSION
`
`A. Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
`
`955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`
`Petitioner asserts a person of ordinary skill in the art at the time of the
`
`invention of the ’524 patent “would have had a bachelor’s degree in
`
`
`
` 2
`
` The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’524
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
`3 Petitioner states that “[w]hile [it] does not rely on the ’524 [patent’s
`Admitted Prior Art (APA)] as an additional reference, its disclosure
`confirms the state of the prior art that would have been part of a [person
`having ordinary skill in the art]’s knowledge.” Pet. 19 (citations omitted);
`see also Tr. 6:3, 6:11–12 (Petitioner stating “Suh alone renders all of these
`claims obvious” and that “[t]he Board does not need to rely on the admitted
`prior art in order to find obviousness for all the claims”). Accordingly, we
`do not rely on the ’524 patent’s disclosure of any purported APA to support
`our decision.
`
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`electrical engineering, computer science, or computer engineering, or a
`
`related field, and 2 years’ experience in the field of communications
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`systems, including experience designing, operating, and/or implementing
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`wired and wireless networks, or equivalent.” Pet. 18 (citing Ex. 1003 ¶ 14).
`
`Petitioner also asserts that “[a]dditional education might substitute for some
`
`of the experience, and substantial experience might substitute for some of
`
`the educational background.” Id.
`
`Patent Owner asserts that a person of ordinary skill in the art at the
`
`time of the invention of the ’524 patent would have had “a bachelor’s or
`
`advanced degree in a discipline such as electrical engineering, computer
`
`engineering, or related disciplines, and having at least two years of practical
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`experience in wired and wireless networks as well as experience in
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`designing power meters (smart meters).”4 Ex. 2001 ¶ 23.
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`Although there are slight differences between these definitions, the
`
`parties agreed that there is no meaningful distinction between them that
`
`would change the analysis as to patentability. Tr. 49–50, 62–63. We agree
`
`with the parties that there is no meaningful distinction between the
`
`definitions that changes our analysis. We also find that both definitions are
`
`consistent with the level of ordinary skill in the art reflected by the prior art
`
`of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`
`GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`In light of the above, we can choose either definition as there is no
`
`meaningful distinction between them. We select Petitioner’s articulation of
`
`
`
` 4
`
` Patent Owner at the hearing incorporated this definition for one of ordinary
`skill in the art into the record, without objection from Petitioner. See Tr.
`50:3–25, 61:18–62:6.
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`the level of ordinary skill in the art because it was set forth in the Petition
`
`(Pet. 18) while Patent Owner’s Response did not include Patent Owner’s
`
`definition or a citation to Mr. Blackburn’s corresponding testimony. Our
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`analysis would not differ, however, if we selected Mr. Blackburn’s
`
`definition.
`
`B. Claim Construction
`
`We interpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[the claims] appear[].” 37 C.F.R. § 42.100(b). Under that standard, claim
`
`terms are presumed to be given their ordinary and customary meaning, as
`
`would be understood by one of ordinary skill in the art, in the context of the
`
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007). Any special definition for a claim term must be set forth with
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). Further, “[t]he [U.S. Patent and Trademark
`
`Office] should also consult the patent’s prosecution history in proceedings in
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`which the patent has been brought back to the agency for a second review.”
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`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015),
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`overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290
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`(Fed. Cir. 2017).
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`In our Institution Decision, based on the claim language and
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`prosecution history, we construed “autonomously” as meaning “without
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`external prompting,” as proposed by Petitioner. Inst. Dec. 6. Neither party
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`has challenged that interpretation during the trial. See PO Resp. 7; Pet.
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`Reply 7. We have further considered that construction in light of the
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`arguments and evidence adduced at trial. In light of the foregoing, and for
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`Patent 7,058,524 B2
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`the reasons stated in our Institution Decision, we maintain that construction
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`based on the full record.
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`We determine that no other term in the challenged claims requires
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`express construction for this Final Written Decision. See Vivid Techs., Inc.
`
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`
`terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy.”); see also Nidec Motor Corp. v.
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`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
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`(quoting Vivid Techs, 200 F.3d at 803).
`
`C. Law for Demonstrating Obviousness
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`To prevail in challenging Patent Owner’s claims, Petitioner must
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`demonstrate by a preponderance of the evidence that the claims are
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`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`
`review], the petitioner has the burden from the onset to show with
`
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`
`particularity . . . the evidence that supports the grounds for the challenge to
`
`each claim”)). This burden of persuasion never shifts to Patent Owner. See
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
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`1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
`
`partes review).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obvious at the time of the invention to a
`
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`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`
`of underlying factual determinations including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`
`of non-obviousness, if present.5 Graham v. John Deere Co., 383 U.S. 1, 17–
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`18 (1966).
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`IV. OBVIOUSNESS OVER SUH
`
`Petitioner contends claims 17–22 of the ’524 patent are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Suh. Pet. 3, 14–16, 18–47; Pet.
`
`Reply 6–21. Petitioner provides detailed analysis, which is supported by
`
`citations to Suh and the testimony of Dr. Akl, explaining how Suh teaches
`
`the limitations of the challenged claims.
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`Patent Owner opposes (see PO Resp. 8–17), arguing that Suh does not
`
`teach all of the elements of independent claim 17. Patent Owner’s
`
`arguments are supported by the testimony of Mr. Blackburn.6
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`
`
` 5
`
` Patent Owner does not present arguments or evidence of such objective
`evidence of non-obviousness in its Response. See generally PO Resp. 8–17.
`6 Petitioner argues that Patent Owner inappropriately attempts to incorporate
`by reference the entirety of Mr. Blackburn’s Declaration (Ex. 2001) and
`Supplemental Declaration (Ex. 2002). Pet. Reply 4 (citing PO Resp. 12).
`We agree that such incorporation is not permitted. See 37
`C.F.R. § 42.6(a)(3) (“Incorporation by reference; combined documents.
`Arguments must not be incorporated by reference from one document into
`another document. Combined motions, oppositions, replies, or other
`combined documents are not permitted.”). Accordingly, we only address
`specific citations by Patent Owner to Mr. Blackburn’s declarations.
`
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`
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`We have reviewed the parties’ arguments and the evidence of record.
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`For the reasons that follow, we determine that Petitioner has shown by a
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`preponderance of the evidence that the subject matter of claims 17–22 would
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`have been obvious over Suh.
`
`A. Summary of Suh
`
`Suh describes “[a]n [I]nternet ready electronic power meter with
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`automatic reporting capabilities, the electronic power meter recording
`
`electrical power usage and other utility usage, and periodically transmitting
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`utility usage reports to a remote site using [I]nternet and conventional
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`protocols of the public or private computer network.” Ex. 1006, Abstract;
`
`see also id. ¶ 11 (“In the invented [I]nternet ready electronic meter an
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`automated meter reading module is coupled with a communications module
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`to read, record and transmit data to a remote site.”). Suh’s Figure 1 is
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`reproduced below.
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`
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`Figure 1 illustrates a perspective view of Suh’s electronic power meter
`
`in a cylindrical housing. Id. ¶ 15. Suh’s “meter . . . incorporates a
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`communication component that enables the electronic meter to communicate
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`in a dedicated local area network (LAN) or wide area network (WAN)
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`including a public or private network, such as the [I]nternet.” Id. ¶ 8. More
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`specifically, Suh’s meter “includes the communication components
`
`necessary to communicate by telephone line, power line or wireless
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`communication systems to periodically transfer collected data to a remote
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`site.” Id. (emphasis added). For example, Suh’s meter can include a modem
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`“connected to the international computer network 70 via communication
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`lines 72, power line 73 using developed data transmission overlay
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`technologies or, using a transceiver 74 via airway transmissions through an
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`antenna 76.” Id. ¶ 30 (emphases added); see also id. ¶ 8 (stating that the
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`Internet is “also called the world wide international computer network”).
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`“In the customary system, multiple meters . . . communicate with a remote
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`host 176 typically through a dial up modem pool 178 through one or more of
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`the multiple communication pathways 72, 73 or 76 shown with reference to
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`F[igure] 1.” Id. ¶ 51.
`
`B. Independent Claim 17
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`Petitioner provides detailed analysis explaining how Suh teaches the
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`limitations recited in independent claim 17, and providing a rationale for
`
`why a person having ordinary skill in the art would have combined the
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`relevant features of Suh’s embodiments. Pet. 18–47. Patent Owner disputes
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`that Suh teaches the last element of claim 17 (i.e., “transmitting the IP-based
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`power consumption information from the processor to a destination
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`autonomously in IP format over an external power line network”), arguing
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`that a person having ordinary skill in the art would not have combined the
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`features of Suh’s embodiments as needed to teach the last element. PO
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`Resp. 8–17. Patent Owner also argues that Suh would not have enabled such
`
`a combined embodiment. Id. at 1, 9–12.
`
`1. Preamble
`
`
`
`The preamble of claim 17 is “[a] method of measuring power
`
`consumption information on a power line.” Ex. 1001, 10:48–49. The
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`parties do not address whether the preamble is limiting, although Petitioner
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`does provide argument and detailed citations showing that the preamble is
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`taught by Suh. Pet. 18–19 (citing Ex. 1006 ¶¶ 2, 26). Patent Owner does
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`not dispute this showing.
`
`
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`Suh describes a meter that periodically reads its meter chip that is
`
`connected to a power supply and measures voltage and current of the power
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`supply. Ex. 1006 ¶ 2 (“This invention relates to a power supply meter . . .
`
`that records the rate of electronic power usage . . . .”), ¶ 26 (“The
`
`microprocessor 36 coordinates periodic readings of the meter chip 42
`
`connected to the power supply 24 to generate digital representations of the
`
`voltage 44 and current 46, as schematically illustrated.”).
`
`
`
`Based on the disclosures from Suh, we find that Suh teaches
`
`measuring power consumption information on a power line. Our finding is
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`further supported by Dr. Akl’s declaration testimony that concludes these
`
`passages from Suh teach that “the meter 10 is connected to the power supply
`
`(i.e., the power line 73) and records the rate of electronic power usage by
`
`reading the commercially available AC meter chip, which itself measures the
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`voltage and current on the AC power supply.” Ex. 1003 ¶ 127 (citing Ex.
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`1006 ¶¶ 2, 26); see also Pet. 18–19 (quoting Ex. 1003 ¶ 1277).
`
`
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`As we find that Suh teaches the preamble, we need not determine
`
`whether the preamble is limiting.
`
`2. Measuring Current Fluctuations
`
`Claim 17 recites “measuring current fluctuations in the power line.”
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`Ex. 1001, 10:51. We agree with Petitioner that Suh teaches this limitation.
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`Figure 2,8 shown below, illustrates a power meter, in accordance with Suh’s
`
`invention.
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`
`
`
`
` 7
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` Petitioner quotes Exhibit 1003, paragraph 127 but cites to paragraph 126.
`Pet. 18–19.
`8 This annotated version of Figure 2 was taken from the Petition. Pet. 22.
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`“F[igure] 2 is a schematic block diagram of [Suh’s] electronic power
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`meter showing data collection and communication circuits.” Ex. 1006 ¶ 16.
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`The data collection circuits include “meter chip 42 [which is] connected to
`
`the power supply 24 [(not shown)] to generate digital representations of the
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`voltage 44 and current 46.” Id. ¶ 26; see also Pet. 21–22 (citing Ex. 1006
`
`¶ 26, Fig. 2). Suh also teaches that “microprocessor 36 coordinates periodic
`
`readings of the meter chip 42 . . . [via] data lines 50 and 52 [which] feed[]
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`data to the microprocessor 36.” Ex. 1006 ¶ 26. “[M]icroprocessor 36 . . .
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`[also acquires] the time . . . when reading the current power usage data
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`generated by the meter chip 42.” Id. ¶ 31; see also Pet. 21–22 (citing Ex.
`
`1006 ¶ 31).
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`
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`In addition, Dr. Akl testified in his declaration that “meter chip 42
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`measures the current fluctuations of the AC power line, where AC stands for
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`alternating current, to determine the amount of power consumed,” and that a
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`person having ordinary skill in the art “would have understood that
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`measuring current over time constitutes measuring current fluctuations (i.e.,
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`the alternating current waveform) to generate power usage information.”
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`Ex. 1003 ¶¶ 129–130; see also Pet. 22 (citing Ex. 1003 ¶¶ 129–130). Dr.
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`Akl’s deposition testimony also supports that Suh teaches the limitation. Ex.
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`2003, 39:11–17 (referring to Suh’s Figure 2, “the meter that chip is
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`measuring fluctuations of the current and voltage and producing digital
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`representations of those values. That’s what the meter chip is doing.”).
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`Based on the disclosures from Suh and Dr. Akl’s testimony, we find
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`that Suh teaches “measuring current fluctuations in the power line.”
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`3. Calculating Power Consumption Information
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`Claim 17 also recites “calculating power consumption information
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`from the current fluctuations in a processor.” Ex. 1001, 10:52–53. We
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`agree with Petitioner that Suh teaches this limitation. Suh teaches that
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`microprocessor 36 periodically reads “meter chip 42 connected to power
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`supply 24 to generate digital representations of the voltage 44 and current
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`46.” Ex. 1006 ¶ 26, Fig. 2; see also Pet. 21–23 (citing Ex. 1006 ¶ 26, Fig.
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`2). More specifically, Suh describes reading “energy pulses” from the meter
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`chip. Ex. 1006 ¶ 44, Fig. 5 (labeling block 122 with “read energy pulses
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`from meter chip”) (capitalization omitted); see also Pet. 23 (citing Ex. 1006
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`¶ 41, Fig. 5). Suh teaches that these energy pulses are used to calculate the
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`measured kWh. E.g., Ex. 1006 ¶¶ 26, 41–43, Fig. 5 (block 128, “PREPARE
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`DATA []KW/H”).
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`In addition, Dr. Akl opines that a person having ordinary skill in the
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`art “would have understood that the microprocessor 36 would use the
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`measured current and voltage information to generate the rate of power
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`usage.” Ex. 1003 ¶ 133; see also Pet. 23–24 (citing Ex. 1003 ¶ 133). We
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`credit Dr. Akl’s testimony as it is consistent with Suh’s disclosure of
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`“microprocessor 36 . . . handl[ing] the operations and tasks of the meter.”
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`Ex. 1006 ¶ 26. Suh further teaches that “microprocessor 36 . . . ha[s] . . . a
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`fixed memory 39 for programmed control instructions and a random
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`memory 40 for data storage[, of] . . . the meter readings and other
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`information used in creating data records or specialty features of the
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`electronic power meter 10.” Id.
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`Based on the disclosures from Suh and Dr. Akl’s testimony, we find
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`that Suh teaches generating (i.e., calculating) in the meter’s microprocessor
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`the rate of power usage (i.e., power consumption information) using the
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`measured current fluctuations. See id. ¶ 26, Figs. 2, 5; Ex. 1003 ¶ 133; see
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`also Section IV(B)(2) supra (describing measuring the current fluctuations).
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`In other words, we find that Suh teaches “calculating power consumption
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`information from the current fluctuations in a processor.”
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`4. Converting Into IP-Based Power Consumption Information
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`Claim 17 also recites “converting the power consumption information
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`into IP-based power consumption information in the processor.” Ex. 1001,
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`10:54–55. We agree with Petitioner that Suh teaches this limitation. Suh
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`teaches that the “electronic power meter [sends] . . . data records including
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`the kilowatt hour usage rate . . . as an e-mail . . . using standard international
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`computer network protocols.” Ex. 1006 ¶ 35 (emphasis added); see also Pet.
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`26 (citing Ex. 1006 ¶¶ 35–36, Fig. 4). Figure 4,9 shown below, illustrates
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`Suh’s power meter as a client/sender of the data records. Ex. 1006 ¶ 35.
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`
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` This annotated version of Figure 4 was taken from the Petition. Pet. 26.
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`Figure 4 “is a schematic block diagram of the communication
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`protocol of the electronic power meter for communicating data to a remote
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`site” using a telephone line. Id. ¶ 18, Fig. 4. As part of that process, and as
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`shown in Figure 4, a “TCP (Transmission Control Protocol) header” (block
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`100) and “a IP (Internet Protocol)” header (block 102) are added to
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`encapsulate the email, forming an “IP datagram[, which] . . . includ[es] the
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`IP header, the TCP header[,] and the data,” e.g., kWh (block 98). Id. ¶¶ 35–
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`36, Fig. 4. Suh also teaches that microprocessor 36 has fixed memory 39
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`that contains “the [I]nternet protocols such as TCP/IP.” Id. ¶ 26.
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`In addition, Dr. Akl testified that Suh teaches “microprocessor 36
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`converts the power consumption information (for example, the kilowatt hour
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`usage) it receives from meter chip 42 into IP-based power consumption
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`information by adding the IP (Internet Protocol) header to the data itself.”
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`Ex. 1003 ¶ 140 (citing Ex. 1006 ¶ 35, Fig. 4); see also Pet. 25 (citing Ex.
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`1003 ¶ 140). We credit Dr. Akl’s testimony, as it is consistent with Suh’s
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`teachings discussed above.
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`Based on the disclosures from Suh and Dr. Akl’s testimony, we find
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`that Suh teaches “converting the power consumption information into
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`IP-based power consumption information in the processor.”
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`5. Transmitting Autonomously in IP Format Over an External
`Power Line Network
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`Claim 17 recites “transmitting the IP-based power consumption
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`information from the processor to a destination autonomously in IP format
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`over an external power line network.” Ex. 1001, 10:57–59 (emphases
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`added). Petitioner argues that Suh discloses this limitation by combining
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`features of Suh’s embodiment that uses a telephone line to communicate
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`with Suh’s teaching of using a power line to communicate. Pet. 27–32.
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`Patent Owner argues that Suh (i) teaches away from combining features of
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`Suh’s telephone line and power line embodiments as needed to teach the
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`limitation, and (ii) would not have enabled the combined embodiment. See
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`PO Resp. 8–17.
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`We address below how Suh teaches combining the relevant features of
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`its embodiments to teach transmitting the IP-based power consumption
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`information, where (i) the power consumption information is in IP format,
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`(ii) the transmission occurs autonomously, and (iii) the transmission is over
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`an external power line network. We also address Patent Owner’s argument,
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`with which we disagree, that Suh would not have enabled the combined
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`embodiment.
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`i.
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`IP Format
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`We agree with Petitioner that Suh teaches transmitting IP-based
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`power consumption information from the processor to a destination in IP
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`format over an external network. Pet. 27–31; Pet. Reply 6. Suh’s “invention
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`relates to . . . an [I]nternet ready electronic power meter for residential or
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`commercial use that records the rate of electronic power usage and
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`communicates the usage rate to a remote site.” Ex. 1006 ¶ 2. Suh also
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`teaches that its “[I]nternet ready electronic power meter . . . incorporates a
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`communication component that enables the electronic meter to communicate
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`in a . . . wide area network (WAN) . . . such as the [I]nternet.” Id. ¶ 8. In
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`addition, Dr. Akl testified that a person having ordinary skill in the art
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`“would have understood [that the Internet] is an IP-based network.” Ex.
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`1003 ¶ 154; see also Pet 31 (citing Ex. 1006 ¶¶ 2, 8; Ex. 1003 ¶ 154).
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`Hence, we find that Suh teaches that power consumption information (e.g.,
`
`“rate of electronic power usage”) is in IP format because it is being sent over
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`the Internet, which is an IP-based network. Suh also teaches that the
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`transmission is over an external network as the Internet is external to (i.e., on
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`the distribution grid side of) the meter and dwelling.
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`Furthermore, a second way Suh teaches IP format is via Suh’s
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`teaching of transmitting “data records including the kWh usage rate” (i.e.,
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`power consumption information) as an IP datagram (encapsulating an e-
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`mail) over a telephone line to a host Internet Service Provider (“ISP”). Ex.
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`1006, ¶¶ 35–36, Fig. 4; see also Pet. 28 (citing Fig. 4). Suh also teaches that
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`its “power meter includes the communication components necessary to
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`communicate . . . to . . . transfer collected data to a remote si