Copeland Comfort Control LP v. Ollnova Technologies Ltd

1. Case Identification

• Case #: IPR2023-00624
• Patent #: 8,224,282
• Filed: March 6, 2023
• Petitioner(s): Emerson Electric Co.
• Patent Owner(s): Ollnova Technologies Ltd.
• Challenged Claims: 1-5, 7-11, 13-16, and 20-21

2. Patent Overview

• Title: Wireless Communication in Building Automation Systems
• Brief Description: The ’282 patent discloses wireless automation components for building automation systems. The components comprise a "multi-sensor package," a processor, and a wireless communications component to report sensor data to a second automation component in response to received control information or status data.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over McFarland - Claims 1-5, 7-11, and 20-21 are anticipated or obvious over McFarland.

• Prior Art Relied Upon: McFarland (Application # 2007/0242688).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that McFarland discloses every element of the challenged claims. McFarland teaches a wireless automation device for an HVAC system that includes a "combination" temperature and humidity sensor, which Petitioner asserted constitutes the claimed "multi-sensor package" that was key to allowance during prosecution. The device also includes a processor, memory, and a wireless transceiver. It is programmed to identify when sensed values change beyond a threshold, set a flag, and wirelessly report sensor data. Further, McFarland’s device receives "control instructions" from a second component (a controller), such as a "report instruction," and communicates sensor data back to that controller, satisfying the core functionality of independent claims 1, 7, and 20.
  • Motivation to Combine (for §103 grounds): To the extent any teachings in McFarland are considered distinct embodiments, a person of ordinary skill in the art (POSITA) would combine them as they are taught as part of the same integrated system and would have a reasonable expectation of success.

Ground 2: Obviousness over McFarland and Kates-089 - Claims 13-16 are obvious over McFarland in view of Kates-089.

• Prior Art Relied Upon: McFarland (Application # 2007/0242688) and Kates-089 (Application # 2006/0071089).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that McFarland teaches the base system of claim 13, including a device that enters a "standby or sleep mode" between reporting intervals. However, it does not explicitly disclose receiving distinct "wake-up" and "power-down" commands as required by claim 13. Kates-089, which discloses a zoned HVAC control system with wireless vents, explicitly teaches a central system instructing a vent to "wake up" to perform a task and to "go to a standby mode" (a power-down command) to conserve power.
  • Motivation to Combine: A POSITA would combine Kates-089's explicit power management commands with McFarland’s wireless sensor system to improve power conservation. McFarland's system already used sleep modes, and implementing specific commands for wake-up and standby was a well-known and logical improvement to extend the battery life of wireless devices, a problem addressed in both references.
  • Expectation of Success: A POSITA would have a high expectation of success, as both references operate in the same field (HVAC control), and implementing power-saving command protocols in wireless devices was a common and straightforward practice.

Ground 3: Obviousness over McFarland and Stoner - Claims 1-5, 7-11, and 20-21 are obvious over McFarland in view of Stoner.

• Prior Art Relied Upon: McFarland (Application # 2007/0242688) and Stoner (Patent 8,276,829).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that to the extent McFarland does not fully teach receiving certain control information, Stoner provides the missing elements. Stoner discloses an HVAC system with a main controller and a portable remote controller, each with its own sensors. The system can switch control between the fixed sensor and the portable one. Crucially, Stoner’s main controller communicates "operational information" (status data) to the remote unit, indicating which sensor is currently in control of the system. This directly teaches receiving "status data related to sensor data in control at a second automation component," as recited in claim 7.
  • Motivation to Combine: A POSITA would be motivated to modify McFarland’s system of fixed sensors with Stoner’s teachings to improve system accuracy and user convenience. Stoner explicitly teaches that using a portable remote controller allows for sensing temperature at the occupant's actual location, which is superior to fixed wall-mounted sensors like those in McFarland.
  • Expectation of Success: Success would be reasonably expected because the components in McFarland and Stoner are functionally similar (wireless sensors, controllers), and the combination represents the integration of a known feature (portable remote control) into a known system type (wireless HVAC monitoring) to achieve a predictable benefit.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Ahmed-629 (Application # 2005/0268629), which was cited to provide further evidence of a "multi-sensor package" in the form of a "MEMS sensor suite" on a single substrate.

4. Key Claim Construction Positions

• "a multi-sensor package": Petitioner agreed with the Patent Owner's position that this term means "a single packaged sensor device, not a group of individual sensors." Petitioner argued that McFarland’s disclosure of a combination temperature/humidity sensor meets this construction, directly addressing the feature that led to allowance over prior art during prosecution.
• "identification flag for each identified sensor value": Petitioner argued that the prior art discloses this limitation under any reasonable interpretation, as McFarland describes setting flags when a change in a sensed condition exceeds a limit and associating timing data with stored sensor values.
• "power-down command": Petitioner agreed with the Patent Owner that this term encompasses a command that turns a device off or returns it to a low-power state, arguing the combination of McFarland and Kates-089 discloses this feature.

5. Arguments Regarding Discretionary Denial

• §325(d): Petitioner argued against discretionary denial because the current petition’s grounds are not the same or substantially the same as those raised during prosecution. The Examiner previously considered the Petite patent, which disclosed individual sensors, but never considered the asserted art (McFarland, Kates-089, Stoner, Ahmed-629), which allegedly discloses the key "multi-sensor package" limitation upon which the patent was granted. Therefore, the Examiner materially erred in allowing the claims by not considering prior art that taught the supposedly novel feature.
• §314(a) (Fintiv): Petitioner contended that denial under Fintiv is not warranted. Key factors weigh against denial because: (1) Petitioner intends to seek a stay in the parallel district court litigation; (2) the court’s median time to trial (665 days) is approximately four months after the expected Final Written Decision in the IPR; and (3) the court has not yet issued any substantive orders or claim construction rulings.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 7-11, 13-16, and 20-21 of the ’282 patent as unpatentable.