Case: 21-1881 Document: 47 Page: 1 Filed: 05/17/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
EMERSON ELECTRIC CO.,
Appellant
v.
SIPCO, LLC,
Appellee
______________________
2021-1881
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
01895.
______________________
Decided: May 17, 2022
______________________
JAMES LAWRENCE DAVIS, JR., Ropes & Gray LLP, East
Palo Alto, CA, argued for appellant. Also represented by
JAMES RICHARD BATCHELDER, DANIEL W. RICHARDS;
DOUGLAS HALLWARD-DRIEMEIER, Washington, DC.
GREGORY J. GONSALVES, Gonsalves Law Firm, Falls
Church, VA, argued for appellee.
______________________
Case: 21-1881 Document: 47 Page: 2 Filed: 05/17/2022
2 EMERSON ELECTRIC CO. v. SIPCO, LLC
Before MOORE, Chief Judge, LOURIE and BRYSON, Circuit
Judges.
MOORE, Chief Judge.
Emerson Electric Company appeals the Patent Trial
and Appeal Board’s final written decision determining
claims 1–3, 6, 10, 14, 16, and 18 of U.S. Patent No.
7,697,492 are not unpatentable. 1 Because the Board erro-
neously construed “scalable address” of claims 1–3, 6, 14,
16, and 18 and “scalable address field” of claim 10, and be-
cause the Board premised its patentability determinations
on its erroneous constructions, we vacate and remand.
BACKGROUND
This is the second time this case has come before us. In
SIPCO, LLC v. Emerson Electric Co., SIPCO appealed the
Board’s final written decision determining certain claims
of the ’492 patent were anticipated by or would have been
obvious over U.S. Patent No. 5,673,252 (Johnson). 794 F.
App’x 946, 947 (Fed. Cir. 2019) (non-precedential). 2 In that
early case, SIPCO argued that the Board based its deter-
minations on an erroneous construction of the “scalable ad-
dress” limitation. Specifically, it argued the Board’s
construction improperly included the full “to” address of a
disclosed packet message protocol. Id. at 949. We agreed
the Board’s construction was erroneous. Id. We held the
claim language requires two distinct, albeit overlapping,
addresses—a receiver address and a scalable address—and
that the receiver address, not the scalable address, corre-
sponds to the “to” address described in the ’492 patent’s
written description. Id. We further held that the scalable
1 Emerson does not appeal the Board’s decision as to
claims 15, 17, 19–21, or 25.
2 A summary of the ’492 patent, as well as the proce-
dural history underlying SIPCO’s appeal, are set forth in
our prior decision. See SIPCO, 794 F. App’x at 947–48.
Case: 21-1881 Document: 47 Page: 3 Filed: 05/17/2022
EMERSON ELECTRIC CO. v. SIPCO, LLC 3
address corresponds only to the “portion of the receiver ad-
dress that identifies the unique recipient or recipients” of a
given message and that the Board erred in giving the term
a broader scope. Id. at 950. Because the Board relied upon
its erroneous construction in determining that Johnson
discloses the “scalable address” and “scalable address field”
limitations, we vacated and remanded. Id. at 950–51.
On remand, the Board found that Johnson does not dis-
close the “scalable address” limitations. Emerson Electric
Co. v. SIPCO, LLC, No. IPR2016-01895, 2021 WL 626446,
at *6–9 (P.T.A.B. Feb. 17, 2021). It reasoned that John-
son’s destination address could not be a scalable address
because it comprises a device type code (i.e., a code identi-
fying the destination device type), which the Board under-
stood our decision in SIPCO to not allow. Id. at *7.
Emerson appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s claim construction de novo ex-
cept for necessary underlying facts based on extrinsic evi-
dence, which we review for substantial evidence.
Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d
765, 769 (Fed. Cir. 2018). For inter partes review petitions
filed before November 13, 2018, as is the case here, the
Board construes claim terms to have their “broadest rea-
sonable interpretation consistent with the specification.”
PPC Broadband, Inc. v. Corning Optical Commc’ns RF,
LLC, 815 F.3d 734, 742 (Fed. Cir. 2016).
We hold the Board erred in construing “scalable ad-
dress” and “scalable address field” to categorically exclude
type codes. Neither the claim language nor the written de-
scription supports such a negative limitation. The claims
are silent as to the inclusion or exclusion of type codes, and
although the written description discusses the use of type
codes in certain embodiments, see, e.g., ’492 patent at 9:64–
Case: 21-1881 Document: 47 Page: 4 Filed: 05/17/2022
4 EMERSON ELECTRIC CO. v. SIPCO, LLC
66, it does not contain any clear disclaimer or lexicography
categorically excluding type codes from the scalable ad-
dress or scalable address field. Indeed, SIPCO does not ar-
gue otherwise. The intrinsic record does not support the
Board’s importation of a negative limitation, particularly
under the broadest-reasonable-interpretation standard.
See Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1323
(Fed. Cir. 2003) (holding that negative limitations must
find support either in “the words of the claim” or through
an “express disclaimer or independent lexicography in the
written description that would justify adding that negative
limitation.” (citing CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366–67 (Fed. Cir. 2002))).
The Board incorrectly read our decision in SIPCO to
impose such a limitation. We identified the scalable ad-
dress by its function—it is the “portion of the receiver ad-
dress that identifies the unique recipient or recipients” of a
message. SIPCO, 794 F. App’x at 950 (emphasis added).
Thus, whether a particular portion of an address is nomi-
nally classified as a type code is irrelevant; what matters
is the function that portion performs. If Johnson’s type
code is necessary to identify the unique recipient(s) of a
message, it may form part of the scalable address. That
some type codes may not satisfy this criterion is no basis to
categorically exclude all type codes from the claimed “scal-
able address” or “scalable address field.” The Board erred
in interpreting SIPCO to hold otherwise.
It appears the Board’s error arose from our discussion
of particular kinds of type codes disclosed in an embodi-
ment in the ’492 patent. See Emerson, 2021 WL 626446, at
*4 (citing SIPCO, 794 F. App’x at 949–50 as “contrasting
the ‘identification base’ bytes (type byte) with the ‘unique
transceiver address’”); id. at *9 (same). In the cited pas-
sage, we discussed an embodiment in which the “to” ad-
dress of a message consists of six bytes, including a type
byte, identification base bytes, and bytes that can be used
for the unique transceiver address(es). SIPCO, 794 F.
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EMERSON ELECTRIC CO. v. SIPCO, LLC 5
App’x at 949–50 (citing ’492 patent at 9:64–66). That dis-
cussion addressed the question before us at the time:
whether the scalable address corresponds to the full “to”
address, as the Board stated, or only the unique trans-
ceiver addresses identifying the remote devices. Id. In an-
swering that question, we did indeed contrast the type and
identification base bytes with bytes identifying the unique
transceiver address because in that embodiment the type
bytes did not identify the unique recipient. We did not
hold, however, that type bytes can never form part of the
scalable address, even if necessary to identify the unique
transceiver recipients. That question was neither before
us on appeal nor pertinent because the type bytes we dis-
cussed were those described in the ’492 patent, not type
bytes in general. As such, to the extent the Board inter-
preted this discussion to categorically exclude type codes
from the claimed “scalable address” limitations, that inter-
pretation was erroneous.
Because the Board erred in its construction of “scalable
address” and “scalable address field,” we vacate its deter-
mination that Johnson does not anticipate and would not
have rendered obvious these limitations and remand for
further proceedings consistent with this opinion. 3
CONCLUSION
The Board erred in construing “scalable address” and
“scalable address field” to categorically exclude type codes.
We therefore vacate its findings based on its erroneous con-
struction and remand.
3 Emerson urges us to reverse rather than vacate
and remand. This would require us, however, to resolve
factual disputes, such as whether Johnson’s destination
address has a uniform number of bits and thus is not scal-
able. We decline to do so.
Case: 21-1881 Document: 47 Page: 6 Filed: 05/17/2022
6 EMERSON ELECTRIC CO. v. SIPCO, LLC
VACATED AND REMANDED
COSTS
No costs.