PrimeWire & Cable Inc v. Cantigny Lighting Control LLC

1. Case Identification

• Case #: IPR2018-01592
• Patent #: 9,320,122
• Filed: August 27, 2018
• Petitioner(s): PRIME Wire & Cable, Inc.
• Patent Owner(s): Cantigny Lighting Control, LLC.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Programmable Light Timer
• Brief Description: The ’122 patent discloses programmable electronic timers for controlling electrical appliances, specifically lights. The timers feature a user interface with a display and buttons that allow a user to program custom on/off times or select pre-stored timing patterns.

3. Grounds for Unpatentability

Ground 1: Obviousness over Brundisini in view of Miller - Claims 1-7 and 15-20 are obvious over Brundisini in view of Miller.

• Prior Art Relied Upon: Brundisini (Patent 6,288,506), Miller (Patent 6,868,311).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Brundisini, which discloses a programmable sprinkler timer, teaches every structural element of the independent claims. Brundisini’s timer includes a user interface with a display, actuator buttons for selecting time, a control circuit, and programmable first and second buttons for setting "start time" (on time) and "run time" (off time/duration). Dependent claims relating to additional programmable buttons and override switches are also allegedly disclosed by Brundisini. The only significant difference is that Brundisini is for controlling sprinklers, not lights.
  • Motivation to Combine: Petitioner contended that Miller provides the explicit motivation to adapt a sprinkler timer for lighting control. Miller teaches that a "given irrigation controller... could, theoretically, be used to operate outdoor lighting... to turn the lights on and off at predetermined times." Petitioner asserted that a person of ordinary skill in the art (POSITA) would find it obvious to apply the known technology of a programmable sprinkler timer, as taught by Brundisini, to the analogous field of programmable light control, as explicitly suggested by Miller.
  • Expectation of Success: A POSITA would have a high expectation of success because the underlying function—controlling the supply of electricity according to a schedule—is identical for both sprinkler valves and lights, making the modification straightforward.

Ground 2: Anticipation over JASCO Publications and Patent Owner Admissions - Claims 1, 6-14, 15, and 20 are anticipated by JASCO’s publications.

• Prior Art Relied Upon: JASCO's Published Instruction Manual, Instructional YouTube videos, and a Design Patent for its "myTouchSmart" timer, in conjunction with Patent Owner’s infringement contentions from related litigation.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner’s core contention for this ground was that the ’122 patent is not entitled to its claimed 2013 priority date. Petitioner alleged that the application for the ’122 patent, filed in November 2015 as a purported "divisional," added new subject matter not present in the parent application. This new matter allegedly tracked the specific user interface and button configuration of JASCO’s existing "myTouchSmart" timer, which was a litigation target. Because the claims rely on this new matter, their effective filing date is November 2015. Consequently, JASCO’s product publications from 2014 and early 2015 qualify as prior art under 35 U.S.C. §102.
  • Key Aspects: Petitioner argued that these JASCO publications disclose every element of the challenged claims, including a programmable light timer with actuators (up/down arrows), a display, and specific buttons for "my on time," "my off time," and pre-stored patterns like "evening." To support this mapping, Petitioner heavily relied on the Patent Owner's own infringement contentions from a prior lawsuit against JASCO, arguing these contentions serve as an admission that the JASCO timer reads on every limitation of the claims.

Ground 3: Anticipation over Hatemata - Claims 1-2, 7, 8, 14-17, and 20 are anticipated by Hatemata.

• Prior Art Relied Upon: Hatemata (Patent 6,975,081).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Hatemata, which predates the ’122 patent by over a decade, discloses a programmable light timer that meets all limitations of the key independent claims (1, 8, and 15). Hatemata’s timer includes an interface with a display, actuator buttons (+/-) for time selection, and programmable buttons for setting on/off times and selecting pre-stored timing patterns.
  • Key Aspects: Petitioner emphasized that in the prosecution of a related "child" application to the ’122 patent, the USPTO Examiner rejected substantively identical claims as being anticipated by this same Hatemata reference. Petitioner argued that this prior rejection demonstrates that the USPTO has already determined that Hatemata teaches the core claimed invention and that the ’122 patent should not have issued over this art.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Lavoie in view of Miller and Simon in view of Miller, relying on similar theories of adapting sprinkler timers. Petitioner also raised anticipation grounds over Stack (a two-outlet digital timer) and Kamii (a lighting device).

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’122 patent as unpatentable.