NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

EMERSON ELECTRIC CO.,

Appellant

v.

SIPCO, LLC,

Cross-Appellant

______________________

2019-1301, 2019-1490

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2017-

00359.

______________________

Decided: September 30, 2020

______________________

DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP, 

Washington, DC, for appellant. Also represented by JAMES 

RICHARD BATCHELDER, JAMES LAWRENCE DAVIS, JR.,

DANIEL W. RICHARDS, East Palo Alto, CA; STEVEN PEPE, 

New York, NY. 

 GREGORY J. GONSALVES, Gonsalves Law Firm, Falls 

Church, VA, for cross-appellant. 

 ______________________

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2 EMERSON ELECTRIC CO. v. SIPCO, LLC

Before LOURIE, MOORE, and O’MALLEY, Circuit Judges.

O’MALLEY, Circuit Judge.

This is an appeal from an inter partes review proceeding requested by Emerson Electric Co. (“Emerson”). The 

U.S. Patent Trial and Appeal Board (the “Board”) concluded that claims 32, 34, 37–38, 55–57 and 59 (the 

“Ground 3 claims”) of U.S. Patent No. 6,437,692 (“the ’692

patent”) are unpatentable because they are anticipated, or 

would have been obvious over the Cunningham reference. 

J.A. 33–51. 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. J.A. 51. Emerson appeals the 

Board’s findings of patentability with respect to the

Ground 2 claims. Patent Owner SIPCO, LLC (“SIPCO”) 

cross-appeals the Board’s invalidity findings with respect 

to the Ground 3 claims. Because we agree with the Board’s 

claim construction of the “low-power radio frequency signal” limitations and conclude that substantial evidence 

supports the Boards underlying factual findings, we affirm. 

I. BACKGROUND

A. The ’692 Patent

The ’692 patent, entitled “System and Method for Monitoring and Controlling Remote Devices,” relates to a computerized remotely operated system for monitoring, 

reporting on, and controlling remote systems. ’692 patent, 

col. 1, ll. 26–28. At the time of the invention, existing monitoring and controlling systems typically implemented a local network of hard-wired sensors and actuators, and a

local controller. Id., col. 2, ll. 18–21. According to the patent, however, these prior art systems were costly to operate. Id. They involved expenses associated with

developing and installing local components, as well as operational expenses associated with connecting functional 

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EMERSON ELECTRIC CO. v. SIPCO, LLC 3

sensors and controllers with the local controller. Id., col. 2, 

ll. 22–24. These systems were also susceptible to a single 

point of failure because of their reliance on local controllers. Id., col. 5, ll. 39–40. The claimed invention of the ’692 

patent does not require a local controller, and transfers system information from the remote system to a wide area network (“WAN”) gateway interface with integrated software 

applications to process that information. Id., col. 2, ll. 47–

51.

As relevant to Emerson’s appeal of Ground 2, independent claims 24, 42, 49, and 60 recite a method and system for controlling remote devices and control systems 

implementing the above-recited system information transfer. Claims 24, 42, 49 and 60 all contain 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 (the “control signal” limitation). J.A. 23. Independent claim 24 is illustrative and recites:

24. A method for controlling a system comprising:

remotely collecting data from at least one sensor;

processing the data into a radio-frequency (RF) 

signal;

transmitting the RF signal, via a relatively lowpower RF transceiver, to a gateway;

translating the data in the RF signal into a network transfer protocol;

sending the translated data to a computer, 

wherein the computer is configured to appropriately respond to the data generated by the at 

least one sensor by generating an appropriate 

control signal;

sending the control signal via the network to the 

gateway;

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4 EMERSON ELECTRIC CO. v. SIPCO, LLC

translating the control signal from a network 

transfer protocol into an RF control signal;

transmitting the RF control signal;

receiving the RF control signal;

translating the received RF control signal into an 

analog signal; and

applying the analog signal to an actuator to effect 

the desired system response.

’692 patent, col. 20, ll. 43–63 (emphasis added). All of the 

Ground 2 claims include the control signal limitation. 

As relevant to SIPCO’s cross-appeal of Ground 3, independent claims 32 and 55 recite a system for monitoring 

remote devices and a method for collecting information and 

providing data services, respectively. Independent claim 

32 recites:

32. A system for monitoring remote devices comprising:

at least one sensor adapted to generate an electrical signal in response to a physical condition;

at least one wireless transmitter configured to 

encode the electrical signal, the wireless transmitter further configured to transmit the encoded electrical signal and transmitter 

identification information in a low-power radiofrequency (RF) signal;

at least one gateway connected a wide area network (WAN) configured to receive and translate 

the RF signal, the gateway further configured to 

deliver the encoded electrical signal and transmitter identification information to a computer 

on the WAN; and

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a computer configured to execute at least one 

computer program that formats and stores select 

information responsive to the electrical signal for 

retrieval upon demand from a remotely located 

device.

’692 patent, col. 21, ll. 19–36 (emphasis added). Claims 34, 

36, 37, and 38 depend from claim 32. Independent claim 55 

recites:

55. A method for collecting information and 

providing data services comprising:

adaptively configuring a data translator at the 

output of a local controller, wherein the data 

translator converts the output data stream into 

an information signal consisting of a transmitter 

code and an information field;

adaptively configuring at least one transmitter 

with the data translator, wherein the transmitter 

converts the information signal into a low-power 

RF signal;

placing a plurality of relatively low-power radio

frequency (RF) transceivers dispersed geographically wherein the low-power RF signal is received and repeated as required to communicate 

the information signal to a gateway, the gateway 

providing access to a WAN;

translating the low-power RF signal within the 

gateway into a WAN compatible data transfer 

protocol;

transferring the translated low-power RF signal 

via the WAN to a computer wherein the computer 

is configured to manipulate and store data provided in said signal; and

granting client access to the computer.

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’692 patent, col. 23 l. 43–col. 24 l. 5 (emphasis added).

Claims 56–57, and 59 depend from claim 55. 

B. Cunningham

U.S. Patent No. 6,124,806 (“Cunningham”), entitled 

“Wide Area Remote Telemetry,” issued on September 26, 

2000. Cunningham relates to “the fields of automatic meter reading of electric, gas, water meters and other systems,” including systems that can communicate with data 

collection modules via wireless transmission. J.A. 1045, 

col. 1 ll. 15–18; J.A. 1047, col. 6 ll. 11–50. The reference

discloses a remote-device monitoring system that uses a 

sensor interface module, a data collection module, commercially available information transmission systems, and a 

host module. J.A. 1046, col. 4 ll. 51–53. 

According to Cunningham, the monitoring system operates as follows: (1) the sensor interface modules gather 

customer demand and usage information; (2) the sensor interface modules transmit the information to the data collection module over unlicensed radio frequency bands;

(3) the data collection module transmits information to the 

host module over commercially available information 

transmission systems; (4) the host module gathers, stores,

and processes the information; and (5) the host module 

communicates the processed information as needed to appropriate consumers using commercially available information transmission systems. J.A. 1046, col. 4, ll. 54–67.

Cunningham asserts that the above-described system allows for near real-time information processing that is simplified relative to then-existing systems. J.A. 1046, col. 4, 

ll. 42–46. 

C. Procedural History

On November 30, 2016, Emerson filed a petition requesting inter partes review of claims 1, 3–8, and 11–14,

24–32, 34, 36–38, 42, 43, 46–49, 51–57, and 59–64, presenting three grounds of unpatentability. J.A. 2, 93. On June 

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1, 2017, the Board determined that Emerson had a reasonable likelihood of prevailing on Ground 3 but not Grounds

1 and 2. J.A. 3. Accordingly, the Board instituted an inter 

partes review on the Ground 3 claims, but did not institute 

review on the claims challenged under Grounds 1 and 2.

Id. The Board held an oral hearing on January 24, 2018.

Id.

After the Supreme Court issued its decision in SAS Institute v. Iancu, 138 S. Ct. 1348 (2018), the Board modified 

its institution decision to include all challenged claims on 

all grounds presented in Emerson’s petition. J.A. 597. The 

Board denied Emerson’s request to obtain and file additional evidence, but authorized the parties to file additional 

briefing with respect to the newly instituted grounds. J.A. 

608. The Board held a supplemental oral hearing on September 27, 2018. J.A. 718–759.

On November 28, 2018, the Board issued its Final 

Written Decision. J.A. 1–52. The Board determined that

Emerson failed to prove, by a preponderance of the evidence, that the Ground 1 and Ground 2 claims are unpatentable. J.A. 19–33. The Board, however, concluded

that the Ground 3 claims are unpatentable because they 

are anticipated or would have been obvious in light of Cunningham. J.A. 33–51. In reaching this determination, the 

Board held that the “low-power radio frequency (RF) signal” and “low-power RF signal” terms (the “low-power RF

signal” limitations) should be given their “plain and ordinary meaning,” or “construed to encompass transmitters/transceivers that transmit low power signals.” J.A. 

14–15. Applying this construction, the Board found that 

the Cunningham reference discloses “low power, radio frequency transmissions.” J.A. 14. 

Emerson timely appeals the Board’s Final Written Decision with respect to the Ground 2 claims. SIPCO crossappeals the Board’s final decision with respect to the 

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8 EMERSON ELECTRIC CO. v. SIPCO, LLC

Ground 3 claims. We have jurisdiction pursuant to 28 

U.S.C. § 1295(a)(4)(A).

II. DISCUSSION

Emerson appeals the Board’s determination with respect to the Ground 2 claims. It challenges the Board’s (1) 

factual findings that Cunningham does not disclose the

“control signal” limitation and that the prior art does not 

disclose a “translating” limitation and (2) refusal to grant 

Emerson’s request to submit new evidence. Appellant Br. 

25–27. SIPCO cross-appeals the Board’s obviousness determination with respect to the Ground 3 claims. It objects 

to the Board’s (1) claim construction of the “low-power RF 

signal” limitations and (2) factual findings that Cunningham discloses relatively “low-power” transceivers and a 

gateway that delivers an “encoded electrical signal” to a 

computer on the WAN. Appellee Br. 25–26. We address 

each issue in turn.

A. Substantial Evidence Supports the Board’s Findings

that Cunningham Does Not Disclose the “Control Signal”

or “Translating” Limitations of the Ground 2 Claims

We review the Board’s legal determination of obviousness de novo, and its underlying factual findings for substantial evidence. PPC Broadband, Inc. v. Corning Optical 

Commc’ns RF, LLC, 815 F.3d 747, 751 (Fed. Cir. 2016). 

Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 

2000).

In its Final Written Decision, the Board found that the 

Ground 2 claims were not obvious, because, inter alia, Cunningham does not satisfy the “control signal” or “translating” limitations. J.A. 24–29. Per the language of the 

claims, the “control signal” must be capable of being “translated” into an analog signal so that it can control a device. 

See, e.g., ’692 patent, col. 20 ll. 54–63; id., col. 22 ll. 24–37; 

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id., col. 23 ll. 8–27. Cunningham’s “controlling information,” however, refers to “varying utility prices,” and the 

Board determined that these utility prices do not constitute 

a “control signal” because they “do not cause a controlling 

action to be done to the device.” J.A. 27. The Board also 

concluded that Emerson failed to establish how these utility prices could be “translated” from a network transfer 

protocol into an RF control signal, and then from an RF 

control into an analog signal. J.A. 27–28. Emerson argues 

that the Board’s factual findings are erroneous because 

they are unsupported by substantial evidence. 

We disagree. Cunningham discloses a device adjustment module (“DAM”) that monitors and controls the operation of various devices and applications. J.A. 1067, col. 46 

ll. 64–67. The reference explains, as an example, that a 

DAM can be used to control a thermostat, and that by receiving “controlling information,” i.e., “varying utility 

prices,” from a host module, the DAM can “adjust the operation usage to stay below increased billing increment costs 

for energy supply and usage.” J.A. 1067–68, col. 46 l. 64–

col. 47, l. 10. The disclosed “utility prices,” however, only 

serve as information, not control signals. In the context of 

the thermostat example, “some calculation must be done on 

those prices outside of the HVAC device to determine 

whether a change to a device setting should be made.” J.A. 

27 (quoting J.A. 1067–68, col. 46 l. 62–col. 47 l. 10). “While 

‘utility prices’ may be information related to controlling the 

device or even used in determining whether to control the 

device[,] they do not cause a controlling action to be done 

to the device.” J.A. 27. Thus, substantial evidence supports the Board’s finding that the “controlling information” 

in Cunningham is not a “control signal.”

Emerson posits that, even if the Cunningham reference 

is deficient, the missing limitation is satisfied by U.S. Provisional Application No. 60/058,978 (the “’978 provisional”), 

which is incorporated to Cunningham. Appellant Br. 49. 

Emerson maintains that the Board improperly 

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“disregard[ed] the disclosures of the ’978 [p]rovisional,” and 

accordingly, its conclusions are unsupported by substantial 

evidence. 

Reading Emerson’s opening brief, one might be led to 

believe that the Board’s consideration of the ’978 provisional was cursory. But a review of the Board’s Final Written Decision establishes the opposite—that the Board did

consider the reference and, over five pages, explained why 

the disclosure was lacking. See J.A. 28–33. As the Board 

recognized, the ’978 provisional discloses “routines to reduce the amount of energy used by monitoring and controlling HVAC and lighting usage,” J.A. 1435, but it does not 

disclose sending any control signals from the computer to 

the actuator, as required by the claims. J.A. 30. And even 

if we assume that the disclosed “Williams Network Control 

Center” creates control signals, the reference does not disclose how those signals are translated from network transfer protocol to RF signals, and then from RF signals to an 

analog signal. See J.A. 14. We also find that substantial 

evidence supports the Board’s finding that a POSA would 

not have been motivated to combine the ’978 provisional 

embodiment with Cunningham’s “utility prices” embodiment, such that the host module sends “control signals” instead of mere “controlling information.” As the Board 

noted, “in Cunningham, the [DAM]—which is not on the 

network but rather on the other side of the asserted gateway—uses the price information, along with locally-obtained energy usage information, to generate control 

signals.” J.A. 32–33. Thus, substantial evidence supports 

the Board’s findings that Cunningham does not disclose 

the “control signal” limitation.

Because substantial evidence supports the Board’s 

findings that Cunningham fails to disclose a “control signal,” Emerson’s arguments with respect to the “translating” limitation necessarily fail. The Ground 2 claims recite 

“translating the control signal from a network transfer protocol into an RF control signal” and “translating the 

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received RF control signal into an analog signal.” ’692 patent, col. 20 ll. 54–63 (emphasis added); see also id., col. 22 

ll. 24–37; id., col. 23 ll. 8–27. Thus, if the prior art reference 

fails to disclose a “control signal,” the “translating” limitation cannot be met. Emerson argues that the Board failed 

to consider other references, such as McGowan and Mason, 

that allegedly teach “translating control signals from a network transfer protocol into an RF control signal” and from 

an “RF control signal into an analog signal.” Appellant Br. 

54–59. But these references only teach the translating process—they do not disclose the “control signal” itself. See, 

e.g., J.A. 991, col. 1 ll. 10–13 (“The present invention provides a method and system by which a fixed network radio 

frequency (RF) communication system is made compliant 

with the standard CEBus protocol.”); J.A. 1069 (disclosing 

the digital to analog conversion). Indeed, Emerson’s petition relied on these references, not for their disclosure of a 

“control signal,” but for their teachings directed to the 

translating a signal into an RF signal, and from an RF signal to an analog signal. Compare J.A. 150 (citing to Cunningham for its alleged disclosure of “generating an 

appropriate control signal”), with J.A. 152–53 (“To the extent that the Board does not believe that Cunningham’s 

gateway (data collection module) performs the claimed 

translating and transmitting of claim elements [24h] and 

[24i], it would have been obvious to do so . . . Alternatively, 

Mason discloses that a gateway (node 18) translates a control signal from a network transfer protocol (TCP/IP) into 

a RF control signal (CEBUS RF protocol signal), which is 

thereafter transmitted to the appropriate meter.”) and J.A. 

154–55 (“Cunningham, however, does not explicitly disclose translating the received RF control signal into an analog signal and thereafter applying the analog signal to an 

actuator to effect the desired system response. McGowan 

teaches this concept.”). 

Accordingly, we conclude that the Board’s factual findings that Cunningham failed to disclose the “control signal” 

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12 EMERSON ELECTRIC CO. v. SIPCO, LLC

and “translating” limitations are supported by substantial 

evidence. 

B. The Board Did Not Abuse its Discretion in Denying

Emerson’s Expert Declaration

“We review the Board’s evidentiary ruling for abuse of 

discretion which may be found if the Board violated governing law.” Belden Inc. v. BerkTek LLC, 805 F.3d 1064, 

1077-78 (Fed. Cir. 2015). “An abuse of discretion is found 

if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) 

rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Bilstad v. Wakalopulos, 386 

F.3d 1116, 1121 (Fed. Cir. 2004). 

After the Board amended its institution decision to include all challenged claims on all grounds presented in Emerson’s petition, the petitioner indicated that, in addition 

to supplemental briefing, it would like “to obtain and submit additional evidence.” J.A. 605. The Board authorized 

Emerson to submit supplemental briefing, but denied its 

request to obtain and file additional evidence. J.A. 608. 

Citing to 37 C.F.R. § 42.23(b), the Board explained that a 

petitioner is generally “limited to the petition and associated evidence with regard to the ground, and may not submit a reply or additional evidence.” J.A. 606. It also noted 

that Emerson’s reliance on cases such as Genzyme Therapeutic Products v. Biomarin Pharm. Inc., 825 F.3d 1360 

(Fed. Cir. 2016) was inapposite, because those cases considered whether the introduction of new evidence prejudiced the patent owner, not whether the Board was 

required to allow the petitioner to introduce new evidence. 

J.A. 606. Emerson now argues on appeal that the Board’s 

refusal to allow Emerson to submit new evidence “violated 

the APA and Due Process,” and speculates that the Board 

“would almost certainly not have repeated its erroneous 

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reading of Cunningham’s disclosures.” Appellant Br. 31, 

61.

We find that the Board acted within its discretion. As 

we explained in Intelligent Bio-Systems, Inc. v. Illumina 

Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016), “[i]t is of 

the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition 

identify ‘with particularity’ the ‘evidence that supports the 

grounds for the challenge to each claim.’” Id. at 1369 (quoting 35 U.S.C. § 312(a)(3)). “All arguments for the relief requested in a motion must be made in the motion. A reply 

may only respond to arguments raised in the corresponding 

opposition, patent owner preliminary response, or patent 

owner response.” 37 C.F.R. § 42.23(b). Accordingly, Emerson’s failure to present evidence regarding “new claim construction proposals relevant to the [originally-denied 

grounds],” cannot be cured by the Board’s modified institution decision. As the Board noted, “Petitioner did not propose an express construction for any limitation in its 

Petition.” J.A. 606. Thus, this is not the type of case in 

which the evidence is allowable because it “is a legitimate 

reply to evidence introduced by the patent owner.” Anacor 

Pharm., Inc. v. Iancu, 889 F.3d 1372, 1381 (Fed. Cir. 

2018).1

1 We also note that, while the Board refused to allow 

Emerson to submit new evidence, it allowed the petitioner 

“to comment on the sufficiency of the Petition, [the Board’s] 

determination in the original Institution Decision, and any 

impact caused by the amended Institution Decision and 

subsequent proceedings.” J.A. 607. It then allowed the petitioner to submit a 10-page supplemental brief, as well as 

a reply to the patent owner’s response, and it afforded the 

parties another oral hearing on these newly instituted 

grounds. J.A. 607–609. 

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We conclude that the Board did not abuse its discretion 

in denying Emerson’s request to submit new evidence.

C. The Board Did Not Err in its Construction of the “LowPower Radio Frequency (RF) Signal” Limitations

This court reviews the ultimate construction of a claim 

de novo, with subsidiary factual findings involving extrinsic evidence reviewed for substantial evidence. Knowles 

Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d 1358, 1361–62 

(Fed. Cir. 2018). Once a patent expires, the Board must 

apply the claim construction standard set forth in Phillips 

v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). In re CSBSys. Int’l, Inc., 832 F.3d 1335, 1342 (Fed. Cir. 2016). That 

is, the words of a claim “are generally given their ordinary 

and customary meaning,” as the term would have been understood by a person of ordinary skill in the art at the time 

of the invention. Phillips, 415 F.3d at 1312–1313.

In its cross-appeal, SIPCO contends that the Board’s 

invalidity findings with respect to Ground 3 are erroneous 

because, inter alia, the Board (1) improperly construed the 

“low-power radio frequency (RF) signal” limitations under 

the “broadest reasonable interpretation” (BRI) standard; 

and (2) based on this standard, adopted an erroneous construction. Appellee Br. 25, 61. 

We disagree. We do not believe the Board applied the 

wrong standard. In construing the “low-power radio frequency[/RF] signal” limitations, the Board agreed with 

Emerson that these terms “should be given their plain and 

ordinary meaning.” J.A. 14. It rejected SIPCO’s proposed 

construction of “low power” to mean “signals having a ‘limited transmission range,’” explaining that the text of the 

claim language says nothing of “transmission range.” J.A. 

14–15. It did not do so because that construction was not 

the broadest reasonable one. While the Board acknowledged that the ’692 patent specification describes a relationship between power and transmission range, the Board 

pointed out that “the specification does not equate these 

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two distinct transmission properties.” J.A. 14. Accordingly, the Board concluded that, consistent with their 

“plain and ordinary meaning,” the disputed limitations 

“encompass transmitters/transceivers that transmit low 

power signals.” J.A. 14–15. That language and conclusion 

are consistent with the framework set forth in Phillips. 

Phillips, 415 F.3d at 1312–15 (“We have frequently stated 

that the words of a claim ‘are generally given their ordinary 

and customary meaning.”), not BRI. See also In re CSBSys., 832 F.3d at 1340 (“Typically, claims in issued patents 

are construed using the framework set forth in Phillips v. 

AWH Corp., which emphasizes considering the plain meaning of the claim terms themselves in light of the intrinsic 

record.”).

We acknowledge that the Board’s Final Written Decision contains certain inconsistencies. For example, in reciting the legal standard for claim construction, the Board 

stated that “[a] claim in an unexpired patent that will not 

expire before a final written decision is issued shall be 

given its broadest reasonable construction in light of the 

specification of the patent in which it appears.” J.A. 10 

(quoting 37 C.F.R. § 42.100(b) (2016)). The parties also do 

not dispute that the Board mistakenly declared that the 

’692 patent claims priority to August 2, 1999, as opposed to 

June 22, 1998. J.A. 4; Appellant Br. 62–63; Appellee Br. 

46. But the Board’s reference to the “broadest reasonable 

construction” does not clearly establish that it applied the 

wrong standard. Indeed, it was in that same paragraph

that the Board explained that “we generally give claim 

terms their ordinary and customary meaning.” J.A. 10. 

Thus, despite the Board’s apparent confusion as to the ’692 

patent’s priority date, the fact remains that the Board construed the “low-power RF signal” limitations according to 

their “plain and ordinary meaning.” Accordingly, we conclude that these statements, while flawed, were harmless. 

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We also conclude that the Board’s claim construction of 

the “low power RF signal” limitation is not erroneous under 

the Phillips framework. 

First, the claim language does not support SIPCO’s 

narrowly proposed construction of “low-power RF signal” to 

have “a limited transmission range.” Appellee Br. 63. For 

example, independent claim 32 recites “at least one wireless transmitter . . . configured to transmit the encoded 

electrical signal and transmitter identification information 

in a low-power radio-frequency (RF) signal.” ’692 patent, 

col. 21 ll. 27–32. It does not, however, mention the signal’s 

range, let alone disclose a “limited transmission range.” 

Similarly, independent claim 55 discloses “a low-power RF 

signal” and a plurality of low-power RF transceivers “dispersed geographically wherein the low-power RF signal is 

received and repeated,” but it does not characterize the 

transmission range of this signal. ’692 patent, col. 23 l. 50–

col. 24 l. 4. The “claim language upon which [SIPCO] relies 

does not mention transmission range;” rather, the claim 

limitations refer only to “power.” J.A. 13. Accordingly, the 

claims, which “define the metes and bounds of the patentee’s invention,” do not suggest a restriction on the 

transmission range of the claimed “low-power RF signal.” 

Thorner v. Sony Comput. Entertainment Am. LLC, 669 

F.3d 1362, 1367 (Fed. Cir. 2012) (citing Phillips, 415 F.3d 

at 1313).

The written description also does not support SIPCO’s 

proposed construction. As the Board recognized, the written description describes a relationship between power and 

transmission range, but it “does not equate these two distinct transmission properties.” J.A. 13. For example, in 

describing a preferred embodiment, the ’692 patent states 

that the control system’s transceivers “are relatively small 

in size and transmit a relatively low power RF signal. As

a result, in some applications, the transmission range of a 

given transceiver may be relatively limited.” ’692 patent, 

col. 5 ll. 50–54 (emphasis added). The written description 

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also states that, when stand-alone transceivers are dispersed so that only one transceiver picks up a transmission 

from a given integrated transceiver, this is “due in part to 

the low power transmission nature of each transmitter.” 

’692 patent, col. 6, l. 67–col. 7 l. 4 (emphasis added). But 

neither of these statements suggest that that low power RF 

signals necessarily have a limited range. That a low power 

RF signal may have a limited transmission range in “some 

applications” does not mean that it always has this characteristic. ’692 patent, col. 5 ll. 53–54 (emphasis added). The 

Board correctly recognized this distinction, concluding that 

limited transmission range does “not necessarily correlate 

with low power, but instead may depend on multiple factors beyond power, such as frequency, hardware design, 

and environment.” J.A. 13–14. In this context, descriptions of embodiments comprising transceivers of a “relatively limited transmission range” say little about the plain 

and ordinary meaning of a “low-power RF signal.” See ’692 

patent, col. ll. 50–57. And in any event, “it is . . . not 

enough that the only embodiments, or all of the embodiments contain a particular limitation to limit a claim term 

beyond its ordinary meaning.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). See also 

Innova/Pure Water, Inc. v. Safar Water Filtration Sys., 

Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (“[E]ven where a 

patent describes only a single embodiment, claims will not 

be read restrictively unless the patentee has demonstrated 

a clear intention to limit the claim scope.” (internal quotation omitted)).

SIPCO also argues that the Board’s construction is erroneous because it is inconsistent with this court’s claim 

construction in SIPCO, LLC v. Emerson Electric Co., 939 

F.3d 1301 (Fed. Cir. 2019), which involved similar subject 

matter, but a different patent—U.S. Patent No. 8,908,842 

(the “’842 patent”). Appellee Br. 54. In that case, we construed the term “low-power” in “low-power transceiver” to 

correlate with “limited transmission range.” See SIPCO,

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18 EMERSON ELECTRIC CO. v. SIPCO, LLC

939 F.3d at 1308. Pointing to our prior holding, SIPCO argues that the “low-power RF signal” limitations in the ’692 

patent must correlate with a “limited transmission range.” 

Id.

From the outset, we are not bound by our prior construction because that decision has been vacated on other 

grounds. See Emerson Elec. Co. v. SIPCO, LLC, 207 L.Ed. 

2d 1049 (U.S. June 15, 2020). But even if that decision had

not been vacated, it offers little support for SIPCO’s position with respect to the ’692 patent. As we have frequently 

explained, claim construction issues presented in patent 

cases are highly fact and case-specific because they rely on 

the intrinsic evidence: the claim language, the written description, and the prosecution history. Phillips, 415 F.3d 

at 1312–1317. Accordingly, the construction of a particular 

term in one patent will not necessarily bear on the interpretation of the same term in a subsequent patent because 

the factual context is different. The term may be identical, 

but the intrinsic evidence is not. See also Phillips, 415 F.3d 

at 1319 (“In sum, extrinsic evidence may be useful to the 

court, but it is unlikely to result in a reliable interpretation 

of patent claim scope unless considered in the context of 

the intrinsic evidence.”). Accordingly, in a case such as the 

one before us—where the two patents are unrelated and do 

not share any intrinsic evidence—our prior holding in 

SIPCO is neither controlling nor afforded substantial 

weight.

Even if we were to consider our prior construction of 

“low power” in the prior proceeding, moreover, the inferences we drew in that earlier proceeding cannot be imputed 

to the current appeal. The written descriptions of the ’842 

patent and the ’692 patent differ, and the ’692 patent does 

not contain the disclosures that we relied on to construe the 

claims of the ’842 patent. In SIPCO, we construed “lowpower transceiver” to mean “a device that transmits and 

receives signals at a power level corresponding to limited 

transmission range” because the ’842 patent “repeatedly 

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ties” the device to this characteristic. Id. For example, the

’842 patent written description states that, in the context 

of “an extremely low power transmitter,” the user “will 

have to be in close proximity, (e.g., several feet) to the receiver,” ’842 patent, col. 5, l. 67–col. 6 l. 3, and that the 

invention’s “extremely low-power operation also helps to 

prevent the unlawful interception of the electromagnetic 

signals.” Id., col. 6 ll. 4–11. The patent also states that “it 

may be desirable to use a cellular transmitter, instead of a 

low-power RF transmitter . . . because the automobile may 

break down a relatively significant distance from the nearest pay-type telephone (e.g., location of the nearest transceiver).” Id., col. 14 ll. 15–21. We determined that these 

repeated references to “distance” were significant, and that 

these disclosures supported our conclusion that a lowpower transmitter, as opposed to a cellular transmitter, 

has a limited transmission range. SIPCO, 939 F.3d at 

1308–09. 

The ’692 patent written description does not contain 

any similar language. It does not state that low-power RF 

signals have “limited transmission range,” or include any 

of the proximity language that was significant to our determination in the prior appeal. In describing a preferred embodiment, the specification acknowledges that “in some 

applications, the transmission range of a given transceiver 

may be relatively limited,” ’692 patent, col. 5 ll. 53–54, but 

it also states that in other instances, the low-power RF signal may be sufficient. Id., col. 7 ll. 5–6 (“However, in certain instances two, or even more, stand-alone transceivers 

may pick up a single transmission.”). Without more, we see 

no reason to depart from the plain and ordinary meaning 

of the term. Phillips, 415 F.3d at 1312. Accordingly, we 

determine that the intrinsic evidence does not limit the 

term such that the “low-power RF signal” limitations 

should be construed to have a “limited transmission 

range.” We conclude that the Board’s construction of the 

“low-power RF signal” limitations in accordance with their 

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20 EMERSON ELECTRIC CO. v. SIPCO, LLC

plain and ordinary meaning, “to encompass transmitters/transceivers that transmit low power signals,” is correct. 

D. Substantial Evidence Supports the Board’s Factual

Findings that Cunningham Discloses the “Low-Power RF

Signal” and “Encoded Electrical Signal” Limitations of the

Ground 3 Claims

In light of our claim construction determination above, 

we conclude that substantial evidence supports the Board’s 

factual findings that Cunningham discloses the “low-power 

RF signal” limitation because: (1) Cunningham discloses 

wireless transmitters; (2) the wireless transmitters can be 

configured to transmit a “low-power RF signal” according 

to the correct claim; and (3) the wireless transmitters can 

alternatively be configured to transmit a low-power transmission over a limited range according to SIPCO’s proposed construction. J.A. 35–36.

Cunningham discloses a sensor interface module 

(“SIM”) that “communicate[s] with data collection modules 

110 through a hardwire or wireless transmission 108.” J.A.

1047 col. 6, ll. 11–13. The Federal Communications Commission (“FCC”) Bulletin, which SIPCO relies upon, defines 

a “low power transmitter” as one which complies with the 

FCC regulations. J.A. 2486. Cunningham identifies that 

“the preferred embodiment communicates by using a frequency-hopping spread-spectrum transmission in an unlicensed range, such as 902–928 MHz.” J.A. 1047 col. 6, ll. 

16–18. The FCC regulations state, that for a transmitter 

in this frequency range, the maximum power output for a 

“low-power transmitter” is 1 Watt. J.A. 2502. Cunningham discloses the transmission power for the SIM is 100 

mW, significantly below the FCC maximum. J.A. 1053 col. 

18, ll. 56–62. Cunningham also appreciates that the SIM 

could operate with a transceiver that is both low-power and 

limited range. J.A. 1047 col. 6, ll. 13–16 (“various types of 

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EMERSON ELECTRIC CO. v. SIPCO, LLC 21

known, low-power, radio-frequency transmissions may be 

utilized”). 

We also conclude that substantial evidence supports 

the Board’s findings that Cunningham discloses a gateway 

that delivers an “encoded electrical signal” and transmitter 

identification information to a computer on the WAN (the 

“encoded electrical signal” limitation). J.A. 35–36. As the 

Board noted, Cunningham’s data collection module 

(“DCM”): (1) receives an encoded cumulative sensor reading; and (2) sends the reading and transmitter identification information identifying the SIM to the host computer, 

J.A. 1048, col. 7, ll. 19–21 (“The data collection modules 110 

transmit the information received from the sensor interface modules 102 over a data module connection 116 to a 

network system 118.”); J.A. 1060, col. 31, ll. 6–8 (“Information from the sensor interface module 102 is decoded 

and processed in the data collection module 110 and prepared for transmission to the host module 122”). Cunningham also discloses that this transmission is in the form of 

an internet protocol signal. J.A. 1067, col. 45, ll. 60–67 

(“The data collection module will send and receiv[e] information to and from the host module as an Internet protocol 

(TCP/IP) signal.”). J.A. 36.

Because the Board’s factual findings with respect to the 

“low-power RF signal” and “encoded electrical signal” limitations are supported by substantial evidence, we agree 

that the Ground 3 claims are unpatentable because they 

would have been obvious as a matter of law.

III. CONCLUSION

For the foregoing reasons, we affirm the Board’s determinations.

AFFIRMED

COSTS

No costs.

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