TASco Inc v. Pagnani David

1. Case Identification

• Case #: IPR2013-00103
• Patent #: 8,018,348
• Filed: January 3, 2013
• Petitioner(s): Tasco, Inc.
• Patent Owner(s): David Pagnani
• Challenged Claims: 1-12

2. Patent Overview

• Title: Apparatus For Identifying A Circuit Breaker Feeding A Remotely Disposed Electrical Outlet And Method Of Using The Apparatus
• Brief Description: The ’348 patent discloses a circuit tracing system comprising a signal generating test apparatus and a signal receiving apparatus. The generator connects simultaneously to multiple branch circuits of a circuit breaker, with each output providing a uniquely identifiable signal, allowing the receiver to identify a specific circuit when connected to a corresponding electrical outlet.

3. Grounds for Unpatentability

Ground 1: Anticipation by Blades - Claims 1-6 and 8-12 are anticipated by Blades under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Blades (Application # 2005/0212526A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Blades discloses every element of the challenged claims. Blades teaches a system with a Load Center Interface (LCI) that functions as the claimed signal generating apparatus and a Portable Circuit Analyzer (PCA) that functions as the claimed signal receiving apparatus. The LCI connects to multiple circuits at a load center and communicates unique signals to the PCA, which connects to an outlet to identify and trace the circuits. Petitioner asserted the PCA and its associated PDA display meet the limitations for a receiving apparatus with a display.
  • Key Aspects: For dependent claims, Petitioner contended that Blades inherently or explicitly discloses the required features. The use of RF communications like Bluetooth implies analog signals (claim 2), the ability to work on energized circuits inherently includes the capability to work on deenergized circuits (claim 3), and the system's "SafeWire" name suggests inherent safety features (claim 4).

Ground 2: Anticipation by Johnson - Claims 1-6 and 8-12 are anticipated by Johnson under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Johnson (WO 2008/052223).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Johnson discloses a circuit locator that fully encompasses the ’348 patent's claims. Johnson’s system includes a processor (signal generating apparatus) coupled to multiple breaker nodes in a breaker box and a computer or mobile device (signal receiving apparatus) that identifies and displays the identity of each node location via a network or wireless communication. Petitioner asserted that Johnson's disclosure of simultaneous communication to multiple phases meets the requirement for uniquely identifiable signals.
  • Key Aspects: Petitioner argued that since Johnson’s system operates on energized circuits and involves a processor, it inherently discloses digital signals (claim 2), the ability to work on deenergized circuits (claim 3), inherent safety (claim 4), and sufficient outputs to meet the requirements of claims 11 and 12.

Ground 3: Obviousness over Earle and Blades - Claims 4-6, 10, and 12 are obvious over Earle in view of Blades under 35 U.S.C. §103.

• Prior Art Relied Upon: Earle (Patent 5,422,564) and Blades (Application # 2005/0212526A1).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Earle discloses a circuit tracing apparatus with a plurality of transmitters that generate distinctive signature signals, but it transmits from outlets to a receiver at the breaker box. Petitioner contended that reversing this configuration to match the ’348 patent is a trivial design choice. For claims not fully met by Earle, Petitioner combined it with Blades. Blades was cited to teach a "safety circuit" (claim 4) through its "SafeWire" system, operation on energized circuits (claim 5), and a digital readout (claim 10).
  • Motivation to Combine: A POSITA would combine Blades with Earle because Earle's system would be improved by Blades' safety features and its ability to operate on energized circuits. This would create a more commercially advantageous system, particularly for environments requiring uninterrupted power.
  • Expectation of Success: Petitioner implicitly argued for a high expectation of success, as the combination involved integrating known features from systems in the same field of endeavor to achieve predictable results.

• Additional Grounds: Petitioner asserted numerous additional grounds, including:

  • Obviousness of claims 1-3, 6, and 8-11 over Earle alone.
  • Obviousness of claims 6, 10, and 12 over Earle in view of Johnson.
  • Obviousness of claim 7 over Earle, Blades, or Johnson in view of Applicant Admitted Prior Art (AAPA) related to the X10 protocol.
  • Obviousness of various claims over Coia (Patent 6,154,032) alone or in combination with Blades, Johnson, or AAPA. These arguments relied on similar rationales of combining known circuit tracing components and communication protocols.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of Patent 8,018,348 as unpatentable.