       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                     SIPCO, LLC,
                       Appellant

                           v.

             EMERSON ELECTRIC CO.,
                      Appellee
               ______________________

                      2018-1856
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
01895.
                 ______________________

              Decided: December 20, 2019
                ______________________

    JAMES R. BARNEY, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, argued for ap-
pellant. Also represented by CONSTANTINE GREGORY
GRAMENOPOULOS, KELLY HORN; GREGORY J. GONSALVES,
Gonsalves Law Firm, Falls Church, VA.

   DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP,
Washington, DC, argued for appellee. Also represented by
JAMES RICHARD BATCHELDER, JAMES LAWRENCE DAVIS, JR.,
East Palo Alto, CA.
2                        SIPCO, LLC v. EMERSON ELECTRIC CO.




                 ______________________

    Before LOURIE, MOORE, and TARANTO, Circuit Judges.
MOORE, Circuit Judge.
    SIPCO, LLC appeals the Patent Trial and Appeal
Board’s final written decision holding claims 1–3, 6, 8–11,
13–21, and 25 of U.S. Patent No. 7,697,492 unpatentable
under 35 U.S.C. §§ 102 and 103. SIPCO does not challenge
the Board’s holding with respect to claims 8–9, 11, and 13.
Because the Board erred in its construction of the claim
term “scalable address” as used in claims 1–3, 6, 14–21,
and 25, and because the Board’s findings that claim 10
would have been unpatentable based on Johnson were also
based on that erroneous construction, we vacate and re-
mand.
                       BACKGROUND
    The ’492 patent is directed to a system and method for
monitoring, controlling, and reporting on remote devices
using radio-frequency transmissions. Specifically, the sys-
tem monitors and controls remote devices “by transmitting
data between the remote systems and a gateway interface
via a packet message protocol system.” ’492 patent at 2:32–
34.
    The control system described in the ’492 patent may
contain one or more transceivers for transmitting and re-
ceiving messages between remote devices such as sensors
or actuators. And those transceivers may be either stand-
alone or integrated with the sensors or actuators. See ’492
patent at 3:22–41, 4:5–10. Each transceiver may have “a
unique transceiver identification that uniquely identifies
the [] transceiver.” Id. at 6:10–12. The unique transceiver
identification, or transceiver address, is preferably a six-
byte address but can vary in length as necessary. Id. at
6:10–12, 24–26.
     The ’492 patent also describes a standard packet
SIPCO, LLC v. EMERSON ELECTRIC CO.                         3



protocol for messages sent to and from the remote devices.
Id. at 9:49–53. Messages transmitted in the system include
a “to” address, indicating the intended recipient of the mes-
sage, a “from” address, indicating the origin of the message,
and other information such as packet number, packet
length, a command number, and data. See id. at 9:53–60,
10:5–10. The ’492 patent includes claims covering the sys-
tem for and the method of monitoring and controlling the
remote devices. Claim 1 is illustrative:
        1. In a communication system to communicate
        command and sensed data between remote de-
        vices, the system comprising:
        a receiver address comprising a scalable ad-
        dress of at least one remote device;
        a command indicator comprising a command
        code;
        a data value comprising a scalable message;
        and
        a controller associated with a remote wireless
        device comprising a transceiver configured to
        send and receive wireless signals, the remote
        device configured to send a preformatted mes-
        sage comprising the receiver address, a com-
        mand indicator, and the data value via the
        transceiver to at least one other remote device.
’492 patent at Claim 1.
     Emerson Electric Co. petitioned for inter partes review
of claims 1–4, 6, 8–11, 13–21, and 25 of the ’492 patent, and
the Board instituted review of all of the claims other than
claim 4. In its petition, Emerson identified the term “scal-
able address” as a term that needed construction and prof-
fered that the term should be construed as “an address that
has a variable size based on the size and complexity of the
system.” J.A. 173. In support of its proposed construction,
4                         SIPCO, LLC v. EMERSON ELECTRIC CO.




Emerson pointed to text in the specification explaining that
the “to” address, which “corresponds to the claimed re-
ceiver address,” J.A. 174, is “scalable from one to six bytes
based upon the size and complexity of the system.” ’492
patent at 9:60–61. Emerson further argued that the spec-
ification supported its construction where it explained that
a unique transceiver address “can be varied as necessary
given individual design constraints.” Id. at 6:25–26.
SIPCO did not offer a competing construction for the term
scalable address in its preliminary patent owner response.
Instead, it argued that the prior art did not disclose a scal-
able address even under Emerson’s proposed construction.
J.A. 282. In its institution decision, the Board construed
the term “scalable address” to mean “an address that has a
variable size based on the size and complexity of the sys-
tem” and “that varies in the size that the address occupies
within a packet.” J.A. 323.
    SIPCO proposed a construction of the term “a receiver
address comprising a scalable address of at least one re-
mote device” in its patent owner response. It argued that
the “receiver address includes not only an address identi-
fying the intended receiving remote device/transceiver, but
also additional data” and “the address of at least one of the
intended receiving [transceivers/remote devices] must be
scalable.” J.A. 391. SIPCO specifically requested that the
Board construe the limitation “to require the address of the
remote device (which is within the ‘receiver address’) to be
scalable.” J.A. 394.
    Emerson argued in reply that requiring the address of
the remote device to be scalable is inconsistent with the
claims, specification, and knowledge of a person of ordinary
skill in the art. J.A. 464. It argued the scalable address
could pertain to more than one remote device and is not
limited “to being the unique address of each intended re-
cipient.” Id. In its final written decision, the Board again
construed the term “scalable address” as “one that varies
in the size that the address occupies within a packet.” J.A.
SIPCO, LLC v. EMERSON ELECTRIC CO.                            5



17–18. And, in response to the parties’ arguments, it clar-
ified that the “‘address’ that is ‘scalable’ is not limited to a
single scalable unique address.” J.A. 18.
    Accordingly, the Board determined claims 1–3, 6, 8–11,
13, 14, 16, and 18 were both anticipated by and would have
been obvious in view of U.S. Patent No. 5,673,252 (John-
son). J.A. 59. The Board also determined claims 14, 15,
17, 19–21, and 25 would have been obvious over the combi-
nation of U.S. Patent No. 6,100,817 (Mason), EIA Standard
EIA-709.1, Control Network Protocol Specification (Mar.
1998) (EIA-709.1), U.S. Patent No. 5,874,903 (Shuey); and
Protocol Specification for ANSI Type 2 Optical Port,
NEMA, ANSI C12.18-1996 (1996). SIPCO timely ap-
pealed.      We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
                         DISCUSSION
                  1. CLAIM CONSTRUCTION
     SIPCO challenges the Board’s construction of the term
“a receiver address comprising a scalable address of at
least one remote device.” 1 We review the Board’s claim
construction de novo except for necessary subsidiary facts
based on extrinsic evidence, which we review for substan-
tial evidence. Acceleration Bay, LLC v. Activision Blizzard
Inc., 908 F.3d 765, 769 (Fed. Cir. 2018). We hold that the


    1   Claim 1 and its dependent claims contain the chal-
lenged limitation. Independent claims 14, 19 and 25, and
their respective dependent claims, contain similar limita-
tions with slight variations. Claims 14 and 25 require, “a
receiver address comprising a scalable address of at least
one remote wireless device.” ’492 patent at Claims 14, 25.
Claim 19 requires, “a receiver address comprising a scala-
ble address of the at least one of the intended receiving
transceivers.” Id. at Claim 19. The differences in the claim
limitations do not change the claim construction on appeal.
6                         SIPCO, LLC v. EMERSON ELECTRIC CO.




Board incorrectly construed the claim limitation, “a scala-
ble address of the at least one remote device.” Because the
Board’s improper construction impacts claims 1–3, 6, 14–
21, and 25, we vacate and remand for the Board to recon-
sider validity under the proper construction.
     The parties do not dispute the Board’s construction of
“scalable address” as “one that varies in the size that the
address occupies within a packet.” J.A. 17–18. Instead,
they dispute the Board’s clarifications of its construction.
In its final written decision, the Board clarified its con-
struction by explaining that it “decline[d] to construe ‘scal-
able address’ as including” a requirement that “the address
of the remote device (which is within the ‘receiver address’)
[] be scalable.” J.A. 10. The Board found that “the ‘scalable
address’ reads on the ‘to’ address described in the Specifi-
cation,” and disagreed with SIPCO’s arguments that “the
scalable address excludes all information except the unique
address.” J.A. 14. According to the Board, the phrase “at
least one remote device” indicates that the scalable address
“may include multiple intended addresses,” but does not
mean each remote device’s unique address must be scala-
ble. J.A. 16; see J.A. 18.
    The Board erred by construing the “scalable address”
as reading on the “to” address in the specification. SIPCO
argues that construction combines the terms “receiver ad-
dress” and “scalable address,” eliminating the separate re-
quirement of a “scalable address of at least one remote
device.” Appellant’s Br. at 43. The claim language clearly
requires two separate addresses: the “receiver address”
and the “scalable address.” Because the patentee chose to
use different terms to define the “receiver address” and the
“scalable address,” we presume that those two terms have
different meanings. Chicago Bd. Options Exch., Inc. v. Int’l
Securities Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012).
Claim 1 requires a preformatted message comprising the
“receiver address,” as well as a command indicator and
data value. ’492 patent at Claim 1. Consistent with the
SIPCO, LLC v. EMERSON ELECTRIC CO.                            7



message protocol described in the specification, the “re-
ceiver address” refers to the “to” address in any message
sent within the described system. See id. at 9:53–58.
     The specification explains that the “to” address is scal-
able from one to six bytes, and may contain a byte that in-
dicates the type of transceiver to which the message is
directed, i.e. whether the message is broadcasted to all
transceivers, some transceivers, or only one transceiver.
Id. at 9:64–66. 2 The “to” address may also contain bytes
that can be an identification base. And a range of bytes,
e.g. bytes three through six in the “to” address “can be used
for the unique transceiver address.” Id. at 9:67–10:1. The
specification explains that the unique transceiver address
is scalable as it “can be varied as necessary given individ-
ual design constraints.” Id. at 6:24–26. We conclude it is
this transceiver address which corresponds to the claimed
“scalable address of at least one remote device.”
     The Board also erred by “declin[ing] to construe ‘scal-
able address’ as including” a requirement that “the address
of the remote device (which is within the ‘receiver address’)
[] be scalable,” J.A. 10, in so far as the Board did not require
the portion of the “to” address that contains the address of
at least one remote device, e.g. bytes three through six, to
be scalable. The claim language explicitly contains such a



    2   Although the specification describes the “to” ad-
dress as scalable, the claim language does not require that
the “receiver address” be scalable. There is no such modi-
fier applied to the term “receiver address.” And while the
claim term requires that the “receiver address” comprise
an address that is scalable, it does not follow that the “re-
ceiver address” must necessarily be scalable. We note,
however, that the claims likewise do not preclude a “re-
ceiver address” that is also scalable.
8                          SIPCO, LLC v. EMERSON ELECTRIC CO.




requirement. The claim language uses the adjective “scal-
able” to modify the phrase “address of at least one remote
device.” See Apple Inc. v. Samsung Elecs. Co., 695 F.3d
1370, 1378 (Fed. Cir. 2012) (holding “each” modified the
phrase immediately following it).
    The Board erred by determining that the “scalable ad-
dress” was not limited to the unique address of at least one
remote device. We agree, however, with the Board’s clari-
fication that the “scalable address” is not limited to a single
unique address. SIPCO argues that the claim limitation
requires that an individual remote device’s address must
be scalable. It argues the “scalable address” cannot include
multiple intended addresses because “a scalable address”
is singular. Emerson argues the Board correctly deter-
mined that the language “at least one remote device” indi-
cates that the scalable address may include addresses of
more than one remote device, and is not limited to the ad-
dress of one intended recipient. It argues that claim 10’s
recitation that “the packet further comprises at least one
scalable address field to contain the unique address for at
least one device” confirms that the scalable address is not
limited to the unique address. The claim language does not
limit the “scalable address” to a single unique address of a
remote device. The claim language does, however, limit the
scalable address of at least one remote device to the portion
of the receiver address that identifies the unique recipient
or recipients. But it only requires that the portion of the
receiver address that identifies the specific intended recip-
ient or recipients of the message be scalable and include
the address of at least one remote device, not that the
unique address of a single remote device must be scalable.
The address of at least one remote device may include mul-
tiple addresses of multiple remote devices all of which are
intended recipients of the message. The scalability refers
to the ability of that portion of the receiver address to vary
based on the size and complexity of the system.
SIPCO, LLC v. EMERSON ELECTRIC CO.                         9



     We express no opinion as to whether Johnson, Mason,
EIA-709.1 or the other references at issue may anticipate
or render obvious this limitation in claims 1–3, 6, 14–21,
and 25 in view of our construction of the “scalable address”
term. We leave these determinations for the Board in the
first instance on remand.
                        2. CLAIM 10
    SIPCO separately challenges the Board’s decision
holding claim 10 invalid as anticipated or obvious based on
Johnson. Claim 10 depends from claim 8, and states:
       8. A method of communicating command and
       sensed data between remote wireless devices,
       the method comprising:
       providing a receiver to receive at least one mes-
       sage;
       wherein the message has a packet that com-
       prises a command indicator comprising a com-
       mand code, a scalable data value comprising a
       scalable message, and an error detector that is
       a redundancy check error detector; and
       providing a controller to determine if at least
       one received message is a duplicate message
       and determining a location from which the du-
       plicate message originated.
       10. The method of claim 8, further comprising
       providing at least one remote wireless commu-
       nication device, wherein at least one of the de-
       vices has a unique address and the packet
       further comprises at least one scalable address
       field to contain the unique address for at least
       one device.
’492 patent at Claim 10 (emphasis added). The Board held
that the claim limitation, a “scalable address field to con-
tain the unique address for at least one device,” is “open
10                       SIPCO, LLC v. EMERSON ELECTRIC CO.




ended and can include a type field.” J.A. 35. Although
SIPCO did not challenge the Board’s construction of “scal-
able address field” on appeal, the Board found, under its
construction, that Johnson disclosed the scalable address
field limitation “in the same way it meets the ‘scalable ad-
dress’ in claim 1.” Id. Because the Board’s finding is based
on an erroneous construction, we vacate and remand the
Board’s decision as to claim 10.
                       CONCLUSION
    Because the Board erred in its construction of the claim
term “scalable address” as used in claims 1–3, 6, 14–21,
and 25, and because the Board’s findings that claim 10
would have been unpatentable based on Johnson were also
based on that erroneous construction, we vacate and re-
mand.
                 VACATED AND REMANDED
                          COSTS
     No costs.
