PTAB

IPR2018-01592

Primewire & Cable, Inc. v. Cantigny Lighting Control, LLC

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1. Case Identification

2. Patent Overview

  • Title: Programmable Light Timer
  • Brief Description: The ’122 patent relates to a programmable light timer for implementing timing patterns for electrical appliances. The timer includes a user interface with a display and specific buttons that can be programmed for custom on/off times or can be used to 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 6,295,996), Miller (Patent 6,963,799).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Brundisini, a patent for a sprinkler timer, disclosed every element of independent claims 1 and 15 except for its application to "lights." Brundisini taught a programmable timer with an interface, actuator buttons for setting time, a display, a control circuit, a first button programmable for an "on time" ("start time"), and a second button programmable for an "off time" ("run time"). The dependent claims were also allegedly taught by Brundisini’s disclosure of additional programmable buttons and override switches.
    • Motivation to Combine: Petitioner contended the only difference between the claimed invention and Brundisini was the end use (lights vs. sprinklers). Miller explicitly taught that a general-purpose irrigation controller could be used to operate outdoor lighting by connecting a switching relay device instead of an irrigation valve. A person of ordinary skill in the art (POSITA) would have been motivated to apply the well-understood technology of a sprinkler timer, like Brundisini's, to the analogous field of light control as suggested by Miller to achieve a predictable result.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because Miller provided a clear roadmap for modifying a sprinkler timer for lighting control. The modification involved a simple and well-known electrical substitution, and the basic timing and control functions would operate identically for either a sprinkler or a light.

Ground 2: Anticipation over JASCO's Publications - Claims 1, 6-14, 15, and 20 are anticipated under §102 by JASCO’s publications due to an improper priority claim.

  • Prior Art Relied Upon: JASCO's Published Instruction Manuals, Instructional YouTube videos, and a Design Patent for its "myTouchSmart" timer, along with Patent Owner's admissions.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the ’122 patent was not entitled to its claimed 2013 priority date. The patent was filed as a "divisional" but allegedly contained significant new matter not present in the parent application, added in November 2015 specifically to encompass the features of JASCO's timer. Petitioner argued this made the ’122 patent a de facto continuation-in-part with an effective filing date of November 18, 2015. Since JASCO’s instruction manuals and YouTube videos were published before this date (June 2015), they constituted invalidating prior art. Petitioner then mapped features of the JASCO timer—including its actuator buttons (up/down arrows), display, "my on time" button, "my off time" button, and pre-set "evening" and "morning" buttons—directly to the limitations of the challenged claims.
    • Key Aspects: A central part of this argument relied on infringement contentions that Patent Owner CANTIGNY had previously served on JASCO. Petitioner argued these contentions were admissions that JASCO's timer met every limitation of the claims, and since the timer was prior art, these admissions confirmed anticipation.

Ground 3: Anticipation over Hatemata - Claims 1-2, 7-8, 14-17, and 20 are anticipated under §102(a)(1) by Hatemata.

  • Prior Art Relied Upon: Hatemata (Patent 7,339,481).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Hatemata, a prior art light timer, disclosed all elements of the challenged claims. Hatemata described a programmable timer with an interface, actuator buttons, a display, a control circuit, and buttons programmable for on/off times and for selecting pre-stored timing patterns. Petitioner mapped Hatemata’s various keys (e.g., K7 for ON, K8 for OFF) and override switches (K9, K10) to the corresponding limitations in the independent and dependent claims.
    • Key Aspects: The argument was significantly bolstered by citing the prosecution history of a "child" application of the ’122 patent. In that related case, a USPTO Examiner rejected claims as being anticipated by Hatemata. The Examiner also found those same child claims to be "not patentably distinct" from the claims of the ’122 patent, asserting they were merely "reworded to recite the same limitation." Petitioner leveraged this finding to argue that if the child claims were anticipated by Hatemata, and those claims were patentably indistinct from the ’122 patent's claims, then the ’122 patent's claims must also be anticipated by Hatemata.

  • Additional Grounds: Petitioner asserted additional anticipation challenges against claims 1-2, 5, 7, 15, 19, and 20 based on Stack (a two-outlet digital timer) and against claims 1, 6, 7, 15, and 20 based on Kamii (a lighting device). Further obviousness grounds were raised, including combining Lavoie (another sprinkler timer) with Miller, and Simon (a third sprinkler timer) with Miller, which relied on similar design modification theories.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 9,320,122 as unpatentable.