CopELand ComFort Control LP v. OllnOva Technologies Ltd

1. Case Identification

• Case #: IPR2023-00626
• Patent #: 7,746,887
• Filed: March 6, 2023
• Petitioner(s): Emerson Electric Co.
• Patent Owner(s): Ollnova Technologies Ltd.
• Challenged Claims: 1, 3-8, 14-15, and 18

2. Patent Overview

• Title: Wireless Automation Device for Dynamic Value Reporting
• Brief Description: The ’887 patent discloses a wireless automation device that reduces network communication by selectively transmitting sensor data. The device transmits a sensor reading only when it detects a change in a sensed condition that falls outside a predetermined range, and suspends transmission when the reading is within that range.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kates-711 in view of Hitt - Claims 1, 3-8, and 18 are obvious over Kates-711 in view of Hitt.

• Prior Art Relied Upon: Kates-711 (Patent 7,528,711) and Hitt (Application # 2004/0100394).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kates-711, which discloses a wireless sensor system for monitoring building conditions, teaches nearly all limitations of claim 1. Kates-711’s sensor unit includes a sensor, a controller, and a transceiver, and conserves power by not transmitting data that falls within a normal range. Petitioner contended that Kates-711’s teaching of calculating a time-weighted average based on “recent” and “less recent” sensor readings inherently discloses or renders obvious the use of memory. Hitt was introduced to provide an explicit teaching of including a memory in a similar wireless sensor node for storing sensor data and instructions.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Kates-711 with Hitt to explicitly add memory to the sensor unit. This modification would improve the reliability of Kates-711’s system by providing a dedicated medium for storing the past sensor readings needed for its time-weighted average calculations, a predictable and beneficial result.
  • Expectation of Success: A POSITA would have a high expectation of success, as microcontrollers like those in Kates-711 were well-understood to use memory, and Hitt provides a straightforward implementation of memory within a wireless sensor node for the same purpose of storing sensor data.

Ground 2: Obviousness over Kates-711, Hitt, and Littrell - Claims 1, 3-8, 14-15, and 18 are obvious over Kates-711 in view of Hitt and Littrell.

• Prior Art Relied Upon: Kates-711 (the ’711 patent), Hitt (the ’394 application), and Littrell (Application # 2005/0246593).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Kates-711 and Hitt. Petitioner asserted that Littrell provides additional teachings for the limitations in dependent claims 14 and 15 related to timing data. Littrell discloses a method for indicating an alarm condition that includes time-stamping parameter measurements at the sensor device before transmission. It also discloses specific mathematical formulas for varying upper and lower alarm limits (a "band limit") based on statistical functions of current and prior readings, which maps to the variable range limitations of claims 3-7.
  • Motivation to Combine: A POSITA would be motivated to incorporate Littrell’s teachings into the Kates-711/Hitt system to improve the accuracy and utility of its historical data analysis. Applying Littrell’s time-stamping would provide the precise timing data needed to create the "time history of readings" mentioned in Kates-711. Furthermore, using Littrell's specific formulas for adjusting thresholds would provide a known, effective method for implementing the adjustable threshold feature of Kates-711.
  • Expectation of Success: The combination would be a straightforward application of known techniques, as Kates-711 already performs calculations and uses historical data. Implementing Littrell’s explicit time-stamping and formulas would predictably enhance this known functionality.

Ground 3: Obviousness over Kates-505, Mueller, Hitt, and Littrell - Claims 1, 3-8, 14-15, and 18 are obvious over Kates-505 in view of Mueller, Hitt, and Littrell.

• Prior Art Relied Upon: Kates-505 (Patent 7,102,505), Mueller (Patent 6,513,723), Hitt (’394 application), and Littrell (the ’593 application).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented Kates-505 as an alternative primary reference to Kates-711, noting it shares the same core disclosures but has an earlier priority date. This ground primarily adds Mueller, which teaches a remote temperature sensor that transmits data only when a sensed temperature changes by a predefined amount compared to a previous reading. This rate-of-change trigger was argued to teach the ’887 patent’s core concept of transmitting outside a range and suspending transmission within it.
  • Motivation to Combine: A POSITA would combine Mueller’s rate-of-change transmission trigger with the Kates-505 system to enhance responsiveness to emergency conditions (like fires or leaks, which Kates-505 aims to detect) and improve system reliability by reducing wireless interference. The combination would yield a system using Kates-505's value-based thresholds for normal operation and Mueller’s rate-of-change thresholds for critical events.
  • Expectation of Success: A POSITA would expect success in combining these known thresholding techniques to create a more robust and responsive monitoring system, as both references operate in the same field of wireless sensing to conserve power and report anomalous conditions.
• Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including grounds based on Kates-711 alone, Kates-505 alone, and various other combinations of Kates-711, Kates-505, Hitt, Littrell, and Mueller, all relying on similar arguments and motivations.

4. Key Claim Construction Positions

• Petitioner argued that the term "information associated reading of the indicator" is disputed in parallel litigation but that the prior art discloses the required limitation regardless of the final construction. The cited art, particularly Kates-711, teaches transmitting both the sensor reading itself and associated information (such as a device ID code), thereby satisfying any interpretation of the term.

5. Arguments Regarding Discretionary Denial

• §325(d): Petitioner argued against discretionary denial because the primary prior art references (Kates-711, Kates-505, Hitt, Littrell, Mueller) were never considered by the Examiner during the original prosecution of the ’887 patent. Therefore, the petition raises art and arguments that are not the same or substantially the same as those previously presented to the USPTO.
• §314(a) (Fintiv): Petitioner contended that denial under the Fintiv factors was not warranted. Key arguments included that the median time to trial in the co-pending district court case (E.D. Mo.) is approximately 665 days, placing the trial date well after the statutory deadline for a Final Written Decision in the IPR. Furthermore, at the time of filing, the court had not issued any substantive orders or claim construction rulings.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 3-8, 14-15, and 18 of the ’887 patent as unpatentable under 35 U.S.C. §103.