throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`United States Patent No: 6,160,359
`Inventor: Marc Werner Fleischmann
`Formerly Application No.: 09/016,205
`Issue Date: December 12, 2000
`Filing Date: January 30, 1998
`Former Group Art Unit: 2821
`Former Examiner: David H. Vu
`Patent Owner: Intuitive Building Controls,
`Inc.
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`§
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`Attorney Docket No.:
`111496-0007-653
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`Customer No.: 28120
`Petitioner: AMX LLC
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`
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`For: APPARATUS FOR COMMUNICATING WITH A REMOTE COMPUTER
`TO CONTROL AN ASSIGNED LIGHTING LOAD
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 6,160,359
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`TABLE OF CONTENTS
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`INTRODUCTION AND BACKGROUND IN THE ART ............................. 1
`I.
`II. MANDATORY NOTICES UNDER § 42.8 ................................................... 6
`III. PETITIONER HAS STANDING .................................................................... 7
`IV. SUMMARY OF THE ’359 PATENT ............................................................. 8
`V.
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM .............. 8
`A.
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ........................... 9
`B.
`Level of Ordinary Skill in the Art and State of the Art ....................... 12
`C. Ground 1: Claims 1-3 and 6-14 are obvious under § 103 over
`Smith; Ground 2: Claim 2 is obvious under § 103 over Smith in
`view of Kittirutsunetorn; Ground 3: Claims 3 and 9-14 are
`obvious under § 103 over Smith in view of Yabe ............................... 13
`1.
`Overview of Smith .................................................................... 13
`2.
`Overview of Yabe ..................................................................... 14
`3. Motivation to combine Smith with Yabe .................................. 15
`4.
`Overview of Kittirutsunetorn .................................................... 16
`5. Motivation to combine Smith with Kittirutsunetorn ................ 17
`6.
`Claim Charts for Grounds 1, 2 and 3 ........................................ 18
`VI. CONCLUSION .............................................................................................. 59 
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`TABLE OF AUTHORITIES
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`CASES
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 9
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`Page(s)
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`STATUTES
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`35 U.S.C. § 103 ........................................................................................ 1, 6, 7, 8, 13
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`35 U.S.C. §§ 311-319 ................................................................................................ 1
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`37 C.F.R. § 1.33 ....................................................................................................... 59
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`37 C.F.R. § 42.1 ......................................................................................................... 1
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`37 C.F.R. § 42.8 ......................................................................................................... 6
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`37 C.F.R. § 42.22 ....................................................................................................... 7
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`37 C.F.R. § 42.100 ............................................................................................... 9, 59
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`37 C.F.R. § 42.104 ................................................................................................. 7, 9
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`OTHER AUTHORITIES
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`MPEP § 2111 ............................................................................................................. 9
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`Vibrant Media, Inc. v. Gen. Elec. Co., IPR2013-00170 ............................................ 9
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`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
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`Ex. 1004
`Ex. 1005
`Ex. 1006
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`Ex. 1007
`Ex. 1008
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`Ex. 1009
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`Ex. 1010
`Ex. 1011
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`LIST OF EXHIBITS
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`Description
`U.S. Patent No. 6,160,359
`U.S. Patent No. 6,160,359 File History
`Declaration of John D. Green, P.E. In Support of the Petition for
`an Inter Partes Review of United States Patent No. 6,160,359
`U.S. Patent No. 6,192,282 to Smith et al. (“Smith”)
`U.S. Patent No. 5,132,681 to Yabe et al. (“Yabe”)
`U.S. Patent No. 5,051,720 to Kittirutsunetorn (“Kit-
`tirutsunetorn”)
`U.S. Patent No. 5,769,527 to Taylor et al. (“Taylor”)
`Excerpts from Microsoft Computer Dictionary, 4th Ed. (Mi-
`crosoft Press) (1999)
`Declaration of Michael P. Duffey in Support of Petition for In-
`ter Partes Review of U.S. Patent No. 6,160,359 Pursuant to 35
`U.S.C. §§ 311-319, 37 C.F.R. § 42.104
`U.S. Patent No. 4,628,230 to Krokaugger (“Krokaugger”)
`U.S. Patent No. 7,551,071 to Bennett et al. (“Bennett”)
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`Pursuant to §§ 311-319 and Rule § 42.1,1 the undersigned, on behalf of and
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`acting in a representative capacity for AMX LLC (“AMX” or “Petitioner”) hereby
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`petitions for inter partes review (“IPR”) of claims 1-3 and 6-14 (the “Challenged
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`Claims”) of U.S. Patent No. 6,160,359 (“the ’359 Patent”), originally issued to
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`Hewlett-Packard Company and, according to USPTO records, now assigned to In-
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`tuitive Building Controls, Inc. (“IBC” or “patent owner”). Petitioner hereby asserts
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`that there is a reasonable likelihood that at least one of the challenged claims is un-
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`patentable for the reasons set forth herein and respectfully request review of, and
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`judgment against, claims 1-3 and 6-14 as unpatentable under § 103.
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`I.
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`INTRODUCTION AND BACKGROUND IN THE ART
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`The applicant for the ’359 Patent tried to claim, as his exclusive property, a
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`basic apparatus for requesting a remote computer to control a lighting load, which
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`by the time of his earliest application was already well-understood in the art. Well
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`before the earliest possible priority date of the ’359 Patent, January 30, 1998, solu-
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`tions existed for requesting a remote computer to control a lighting load. Indeed,
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`the prior art presented in this Petition demonstrates that apparatuses for requesting
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`a remote computer to control a lighting load were well-known. In fact, by the
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`1980s, computer-controlled lighting systems were already in use in a variety of ap-
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`1 Section cites are to 35 U.S.C. or 37 C.F.R. as the context indicates, and all em-
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`phasis and annotations are added unless noted.
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`plications. For example, U.S. Pat. No. 5,769,527 (Ex. 1007) (“Taylor”) discloses a
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`stage lighting system controlling “hundreds of lamp units” in a theater. Ex. 1007 at
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`1:34-40. Due to the large number of lights it was common that these lamp units
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`used various differing protocols. But, even back then, it was recognized that “lim-
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`ited space and manpower” made it “impractical to utilize separate lighting control-
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`lers” for each of the different types of lighting equipment. Id. at 1:59-65. As a re-
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`sult, Taylor’s system utilized a central computer that could control a large number
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`of lighting loads of different types. See id. at 2:27-41. Taylor’s central computer
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`could be commanded using a “remote control unit.” Id. at Fig. 2. Similar systems
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`were commonplace in other applications, such as factories, airports, stadiums, or
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`convention centers.
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`A control system using a central server is found in U.S. Patent No.
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`6,192,282 (Ex. 1004) (“Smith”), which discloses what Smith calls a “controller 13”
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`(below in red) that can control various forms of lighting (below in blue). See, e.g.,
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`Ex. 1004 at 7:61-65, Figs. 2A-2C (combined and annotated below and attached as
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`Ex. 1009).
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`Inter Partes Review
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`Smith’s “controller” can be accessed remotely, e.g., using an “office PC” to com-
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`mand the controller to control the lights. Id. at 10:21-22, 20:5-7. Smith also dis-
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`closes a “small set of interprocess control commands,” which are used in “high
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`level scripts and control applications.” Id. at Abstract. With these scripts and con-
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`trol applications, user interfaces such as the office PC could remotely identify and
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`instruct the controller to change the state (e.g., on, off, and dim) of specific lighting
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`loads. Id. at 5:4-12, 12:42-13:5, 39:25-27, Fig. 43.
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`Other means of remotely commanding a computer were disclosed in Smith
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`and other art presented here, e.g., U.S. Patent No. 7,551,071 (Ex. 1011) (“Ben-
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`nett”), U.S. Patent No. 5,132,681 (Ex. 1005) (“Yabe”); U.S. Patent No. 5,051,720
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`to (Ex. 1006) (“Kittirutsunetorn”). Similar to Smith, Bennett utilized a central
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`server for processing lighting control instructions from a remote computer. And
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`Yabe discloses an “intelligent switch,” which could present a user of the system
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`with a structured menu where the user could input touch commands to control
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`lighting in a specific area of a building. See, e.g., Ex. 1005 at 5:57-6:7, Figs. 4, 6,
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`9. Like Smith, Yabe included a controller that processed instructions from the in-
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`telligent switch and commanded the change in state of lighting loads. Id. at 4:37-
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`44, Fig. 5. And Kittirutsunetorn discloses a lighting control system that allowed a
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`remote computer to control a lighting load using the X-10 protocol, which was one
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`of many protocols available and included master and slave modules for controlling
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`lighting loads connected to the slave module.
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`The ’359 Patent claims the very components that are disclosed and rendered
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`obvious by the teachings of Smith, Yabe and Kittirutsunetorn. Indeed, all of the
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`Challenged Claims are directed to a device that commands a computer to control a
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`specific lighting load. For example, independent Claim 9 of the ’359 Patent, which
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`is challenged here, claims an “[a]pparatus for requesting a computer to control an
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`assigned lighting load.” Ex. 1001 at 12:61-62. The claim requires that the appa-
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`ratus comprises generic components taught by the prior art presented here, includ-
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`ing “a display” (see, e.g., Ex. 1004 at 3:53-54 (“display system status”)), “an I/O
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`device” (see, e.g., id. at 3:51-60 (“[t]he user interface devices are used to receive
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`user input and display system status”)), “a processor” (see, e.g., id. at 15:21-28
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`(“expensive workstations”), 20:5-7 (“office PC”); Ex. 1006 at 13:3-8 (“general
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`purpose computer”), 3:28-39 (“microcomputer”)), and “computer memory” (see,
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`e.g., Ex. 1005 at 3:28-42(“ROM 7,” “RAM 8”)). Claim 9 further requires the com-
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`puter memory to execute instructions “to show on the display an icon that indicates
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`status of the assigned lighting load” and “further instructed to show a control panel
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`that prompts a user to enter a lighting load state via the I/O device.” Ex. 1001 at
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`12:67-13:5. This known feature is taught by, e.g., Yabe in Fig. 9 (annotated be-
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`low), which depicts a display that allows the user to control lighting state by select-
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`ing “on” or “off” on the display. Ex. 1005 at 4:37-44 (“ON/OFF status of the light-
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`ing is displayed on the liquid crystal display plate of the intelligent switch and the
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`user performs ON/OFF operation of the lighting while watching the screen with
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`the layout display”).
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`Claim 9 further requires “generate a lighting control command when a lighting
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`load state is entered via the I/O device and send the lighting control command to
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`the computer.” Ex. 1001 at 13:6-8. But this too is taught by the prior art. See, e.g.,
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`Ex. 1004 at 8:8-24, 9:24-29, 13:19-23, 20:5-7, 20:35-44, 39:25-27. Thus, the fea-
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`tures of the ’359 Patent were known (or at minimum rendered obvious) in the prior
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`art.
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`As demonstrated in this Petition, each and every element of the Challenged
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`Claims is disclosed in the prior art and the Challenged Claims are at best nothing
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`more than a routine and predictable combination of these well-known elements.
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`Thus, Petitioner respectfully requests that the Board institute trial and find each of
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`the Challenged Claims unpatentable under § 103.
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`II. MANDATORY NOTICES UNDER § 42.8
`Harman and AMX are the Real Parties in Interest Under § 42.8(b)(1).
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`The real parties-in-interest are Petitioner AMX LLC and Harman International In-
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`dustries Inc.
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`Related Matter Under Rule § 42.8(b)(2). Intuitive Building Controls has
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`asserted claims 1-3 and 6-14 of the ’359 Patent against Petitioner in Intuitive Build-
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`ing Controls, Inc. v. AMX LLC, Case No. 2:15-cv-00500 (E.D.T.X.). The ’359 Pa-
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`tent is also the subject of Intuitive Building Controls, Inc. v. Crestron Elecs., Inc.,
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`Case No. 2:15-cv-00502 (E.D.T.X.) and Intuitive Building Controls, Inc. v. Con-
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`trol4 Corp., Case No. 2:15-cv-00503 (E.D.T.X.), to which AMX is not a party.
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`Crestron Electronics, Inc. in IPR2015-01460, which is pending an institution deci-
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`sion, has challenged the validity of the ’359 Patent. Lead and backup counsel, and
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`service information are designated in the signature block.
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`U.S. Pat. Nos. 5,945,993 (“the ‘993 Patent”) and 6,118,230 (“the ‘230 Pa-
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`tent”), which share similar specifications, inventor, original assignee, and filing
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`Inter Partes Review
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`date, are also being challenged by Petitioner. Crestron Electronics, Inc. in
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`IPR2015-01379, which is pending an institution decision, has challenged the valid-
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`ity of the ’993 Patent. Moreover, a request for ex parte reexamination of the ’230
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`Patent was filed as App. No. 90/013,537.
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`III. PETITIONER HAS STANDING
`Grounds for Standing Under Rule § 42.104(a): Petitioner certifies, pursu-
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`ant to § 42.104(a), that the ’359 Patent is eligible for IPR and Petitioner is not
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`barred or estopped from requesting IPR. Petitioner was served with Complaints as-
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`serting infringement of the ’359 Patent on April 20, 2015. Neither Petitioner nor
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`any other real party-in-interest or privy of Petitioner was served with a complaint
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`before that date, or has initiated a civil action challenging the validity of the ’359
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`Patent.
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`Claims and Statutory Grounds Under Rules § 42.22 and § 42.104(b): Pe-
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`titioner requests IPR of claims 1-3 and 6-14 and assert that the claims are un-
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`patentable based on one or more grounds under § 103: Ground 1: Claims 1-3 and
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`6-14 are obvious under § 103 over Smith; Ground 2: Claim 2 is obvious under
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`§ 103 over Smith in view of Kittirutsunetorn; Ground 3: Claims 3 and 9-14 are
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`obvious under § 103 over Smith in view of Yabe. None of these grounds has been
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`previously before the Patent Office. Section V.C.4 below provides claim charts
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`specifying how the relied upon prior art renders obvious the challenged claims. In
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`further support of the proposed grounds of rejection, the Declaration of technical
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`expert John Green, P.E. is attached as Ex. 1003.
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`IV. SUMMARY OF THE ’359 PATENT
`The specification of the ’359 Patent generally describes a “lighting control
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`system [that] allows distributed elements or Network Appliances connected to a
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`computer network to control a plurality of lighting loads.” Ex. 1001 at 2:56-59.
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`The specification of the ’359 Patent describes Network Appliances, such as a Vir-
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`tual Light Switch and a web browser, that send light control requests to a server,
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`which responds by generating commands that are used to control lighting loads. Id.
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`at 3:12-31, Figs. 1, 5, 6, 7. “A lighting load can include a single light or multiple
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`lights.” Id. at 1:26. The Challenged Claims are directed to, inter alia, an apparatus
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`for requesting a remote computer to control an assigned lighting load. Id. at Ab-
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`stract; see, e.g., id. at cls. 1, 9, 11. But all of the elements of the Challenged Claims
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`were well-known long before the earliest claimed January 30, 1998 priority date.
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`Indeed, as explained above, Smith discloses such an apparatus.
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`V.
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`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM
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`Petitioner submits there is at least a reasonable likelihood that Petitioner will
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`prevail with respect to at least one of the claims challenged in this Petition.
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`§ 314(a). Indeed, all of the Challenged Claims of the ’359 Patent are obvious under
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`§ 103 in light of the teachings of the prior art, as explained below.
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`A. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`For purposes of this review, the claim language is construed such that it is
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`“given its broadest reasonable construction in light of the specification of the pa-
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`tent in which it appears.” 37 C.F.R. § 42.100(b). Under this standard, while an in-
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`ventor may rebut that presumption by providing a definition of the term in the
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`specification with reasonable clarity, deliberateness, and precision, claim terms are
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`presumed to be given their ordinary and customary meaning as would be under-
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`stood by one of ordinary skill in the art at the time of the invention. E.g., Vibrant
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`Media, Inc. v. Gen. Elec. Co., IPR2013-00170, Paper No. 14 at 5 (PTAB July 29,
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`2013). For terms not specifically listed and construed below, Petitioner interprets
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`them for purposes of this review in accordance with their plain and ordinary mean-
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`ing under the required broadest reasonable interpretation consistent with the speci-
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`fication. Because the standard for claim construction at the PTO is different than
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`that used in litigation, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364,
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`1369 (Fed. Cir. 2004); MPEP § 2111, Petitioner expressly reserves the right to ar-
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`gue in litigation constructions for any term, as appropriate to that proceeding.2
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`For review purposes, the term “lighting load” (claims 1, 2, 8-11, 14) should
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`be construed to mean “a single light or multiple lights.” This definition is con-
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`2 Petitioner further reserves the right to assert in litigation that any term is indefi-
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`nite.
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`sistent with the specification. Ex. 1001 at 1:26.
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`Inter Partes Review
`United States Patent No. 6,160,359
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`For review purposes, the term “remote computer” (claims 1, 2, 6-8) should
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`be construed to mean “a computer located in another place (e.g., room, building, or
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`city) and accessible through some type of cable or communications link.” This def-
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`inition is consistent with the specification (Ex. 1001 at Abstract, 3:24-26 (“The
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`server 26, which might or might not be located in the same building as the lighting
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`loads 12”), 9:26-28, Cl. 8), and the term’s plain and ordinary meaning (Ex. 1008 at
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`382 (defining “remote” as “Not in the immediate vicinity, as a computer or other
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`device located in another place (room, building, or city) and accessible through
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`some type of cable or communications link.”)).
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`For review purposes, the term “lighting daemon” (claims 1, 7, 11, 12)
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`should be construed to mean “a lighting control program.” This definition is con-
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`sistent with the specification (Ex. 1001 at 10:46-48 (“the lighting daemon 42 is a
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`lighting control program that can be adapted for any operating system”)).
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`For review purposes, the term “server” (claims 6, 8, 10) should be construed
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`to mean “a computer or program that responds to commands from a client.” This
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`definition is consistent with the specification (id. at 10:57-11:23), and the terms
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`plain and ordinary meaning (Ex. 1008 at 403-04 (defining “server” as “On the In-
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`ternet or other network, a computer or program that responds to commands from a
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`client.”)).
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`The term “means for storing an identifier for the assigned lighting load
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`and for generating a lighting control request in response to the input device,
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`the lighting control request indicating the identifier for the assigned lighting
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`load and a lighting state for the assigned lighting load” (claim 1) should be con-
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`strued pursuant to 35 U.S.C. § 112(6). The function is underlined above. The struc-
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`ture is personal computers, personal digital assistants, cellular telephones, calcula-
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`tors, information appliances, touchpads, voice-responsive controls, and equiva-
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`lents. Ex. 1001 at 3:19-24, 3:62-4:3 (“The first lighting control requests LR1 are
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`generated by Network Appliances such as the Virtual Light Switch 20…. As dis-
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`cussed below, the second lighting control requests LR2 are generated by Network
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`Appliances such as the web browser 22.”), 4:31-39, 5:47-50, 6:12-13 (“The Virtual
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`Light Switch 20 can be preconfigured with the identifier for its assigned lighting
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`load 12.”), 10:51-11:12 (“The Network Appliances are not limited to Virtual Light
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`Switches 20 and web browsers 22 based on personal computers. Network Appli-
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`ances found around the home could include personal digital assistants (PDAs),
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`cellular telephones, calculators and information appliances such as smart toast-
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`ers…. the server 500 could receive lighting control requests LRl and LR2 from
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`any device that can speak a computer network protocol and that can be connected
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`to the backbone 502. Any device including a means 514 (e.g., a touchpad, a voice-
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`responsive control) for accepting a manual input, a circuit 516 for generating first
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`lighting control requests LRl in response to the manual input; and means 518 in-
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`cluding an inexpensive Ethernet chip for communicating over the computer net-
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`work could function as a Virtual Light Switch….”).
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`The term “network means for establishing communications with a sec-
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`ond computer” (claim 11) should be construed pursuant to 35 U.S.C. § 112(6).
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`The function is underlined above. The structure is a network card, Ethernet chip,
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`modem, ISDN line, and equivalents. See, e.g., Ex. 1001 at 4:31-34, 5:46-50, 9:27-
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`34, 10:61-65, 11:6-7.
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`Level of Ordinary Skill in the Art and State of the Art
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`B.
`The applicable person of ordinary skill in the art (“POSITA”) would have a
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`minimum of a Bachelor’s degree in Electrical or Electronics Engineering or Com-
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`puter Science, or related field; and two or more years of experience with building
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`automation and control systems. Additional graduate education could substitute for
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`professional experience, or significant experience in the field could substitute for
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`formal education. Ex. 1003 ¶9. A POSITA is presumed to have knowledge of all
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`relevant prior art, and would thus have been familiar with each of the references
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`cited herein, as well as the background knowledge in the art discussed in § I supra,
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`and the full range of teachings they contain.
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`Inter Partes Review
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`United States Patent No. 6,160,359
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`C. Ground 1: Claims 1-3 and 6-14 are obvious under § 103 over
`Smith; Ground 2: Claim 2 is obvious under § 103 over Smith in
`view of Kittirutsunetorn; Ground 3: Claims 3 and 9-14 are obvi-
`ous under § 103 over Smith in view of Yabe
`1. Overview of Smith
`Smith, “Method and Apparatus for Improved Building Automation,” was
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`filed September 30, 1997—claiming priority to October 1 and 11, 1996 provisional
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`applications—and issued February 20, 2001, making it prior art under at least
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`§ 102(e) with an effective filing date of October 1, 1996. Smith is directed to “[a]n
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`improved building automation system [] which is modular in design thus minimiz-
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`ing the amount of instruction necessary to affect control of a particular building
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`system.” Ex. 1004 at Abstract. One of the advantages of Smith’s modular design is
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`the ability to control “a number of lighting systems which are incompatible with
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`one another, and which are responsive to a different control protocols.” Id. at 4:16-
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`22. To this end, Smith discloses an interprocess communication (“IPC”) protocol
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`that “provides a generic message capability between the software tasks,” and “al-
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`lows for communication between discrete and stand alone tasks.” See id. at 12:42-
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`45. Each IPC message contains a “message header,” “which contains routing in-
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`formation (what process sent it, what subsystems it’s meant for, where to send sta-
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`tus, user interface device ID, etc.)” and a “subheader, containing the subsystem and
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`command IDs.” Id. at 12:53-58.
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`Smith’s system includes a “controller 13[, which] maintains in memory a
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`plurality of computer programs which can be utilized to control a variety of build-
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`ing systems, including… a lighting and low voltage device system 21.” Id. at 7:61-
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`65. “A user interface system 15 is utilized to allow the human operator to interact
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`with controller 13 in order to exert control over [the] building systems.” Id. at
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`7:67–8:2. The user interface can include a variety of devices, such as “display key-
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`board 33, touch screen 35,” “workstations and touchpanels,” as well as “remote ac-
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`cess to the controller 13 through industry standard, commercially available proto-
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`cols” using, e.g., “car phone[s] or office PC[s].” Id. at 8:14-18, 15:13-28, 19:66–
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`20:7. The IPC messages can be sent, for example, between “office PC” and “con-
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`troller 13.” Id. at 13:19-22, 15:13-28, 19:66-20:44, 35:48-37:54, 39:25-27, Figs.
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`20, 43.
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`2. Overview of Yabe
`Yabe, titled “Intelligent Switch System,” issued July 21, 1992, making it
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`prior art under at least § 102(b). Yabe is directed to “intelligent switches” that have
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`a “display unit with touch panel on the front” for “displaying and outputting the
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`selection menu and the information from the display screen.” Ex. 1005 at Abstract.
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`Yabe further discloses displaying a “top menu” having “icons” that a user can
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`touch to select. Id. at 3:63-65, 8:14-16, Fig. 4. For example, by selecting the
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`“LIGHTING CONTROL” text or the accompanying icon from the top menu, a us-
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`er is presented with a “development screen” that includes a “floor layout” and
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`“controlled area” that can be used to adjust the lighting in a particular area. Id. at
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`3:63–4:5, 5:57–6:7, Fig. 9. The lighting state can be adjusted by selecting “ON” or
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`“OFF” from the control panel and by touching the portion of the pictograph repre-
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`senting the floor area that the user wishes to adjust. See, e.g., id. at 3:6-42, 5:57–
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`6:7, 8:25-29, Fig. 9.
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`3. Motivation to combine Smith with Yabe
`It would have been obvious to a POSITA to combine the teachings of Smith
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`and Yabe, and in particular to employ Yabe’s teachings of an advantageous intelli-
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`gent switch in implementing a building automation system as taught in Smith—
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`enabling a user to adjust, e.g., lighting by means of an easily controlled floor lay-
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`out interface. Ex. 1003 ¶46; Ex. 1005 at 2:40-43. Smith and Yabe are in the same
`
`field, and endeavor to simplify building control systems. Indeed, Smith teaches a
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`solution for providing centralized control over a plurality of building automation
`
`systems (Ex. 1004 at 1:39-41, 2:40-44) and Yabe teaches an apparatus for control-
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`ling multiple building systems, e.g., lighting and air-conditioning, from a single
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`device (Ex. 1005 at 1:61-65). And both teach the use of touch screens for interfac-
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`ing with the various systems within a building. Ex. 1004 at 8:14-18; Ex. 1005 at
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`3:43-46. Moreover, both teach the use of a layered menu structure for providing
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`controls to a user. Ex. 1004 at 23:54-24:6, Fig. 12; Ex. 1005 at 2:23-28, Fig. 6. A
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`POSITA would have been motivated to combine the teachings of Smith and Yabe
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`by the similarities in their problems solved and solutions presented. Ex. 1003 ¶46.
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`Moreover, Smith’s controller is capable of communicating with an unlimited
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`variety and type of user interfaces, including “touchpanels,” making it “possible to
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`initiate any controllable operation or series of operations based on any input from
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`any device attached to the controller.” Ex. 1004 at 10:19-20, 15:8-20. Accordingly,
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`a POSITA would have found it obvious and straightforward to use Yabe’s teach-
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`ings of an advantageous intelligent switch with Smith’s building automation sys-
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`tem, and would have recognized that this combination would work as expected.
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`Ex. 1003 ¶47.
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`4. Overview of Kittirutsunetorn
`Kittirutsunetorn, titled “Remote Control System Using Power Line of Re-
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`mote Site,” issued September 24, 1991, making it prior art under at least § 102(b).
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`Kittirutsunetorn is directed to “a low cost and flexible system for controlling power
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`to computerized equipment and/or other electrical devices at a remote site.”
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`Ex. 1006 at 1:60-62. Kittirutsunetorn discloses controlling power at a remote cite
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`using a two channel modem, where the first channel transmits power controlling
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`messages to power control modules and the second channel transmits data messag-
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`es to computerized equipment. Id. at Abstract. Using a master control module and
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`one or more slave modules, “[a] user located at a site distant from the remote site
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`may turn power on, off or dim the power to any of a plurality of appliances which
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`are coupled to the remote power line by way of slave power control units.” Id. One
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`type of appliance disclosed in Kittirutsunetorn is “lighting.” Id. at 5:29-43, Fig. 1.
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`Kittirutsunetorn further discloses the control system can include master/slave com-
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`ponents of an “X-10” system, which is “one of many different through-the-power-
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`line control systems available.” Id. at 3:40-4:26, Fig. 1.
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`5. Motivation to combine Smith with Kittirutsunetorn
`It would have been obvious to a POSITA to combine the teachings of Smith
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`and Kittirutsunetorn, and in particular to employ Kittirutsunetorn’s teachings of an
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`advantageous dedicated power control channel using the X-10 protocol in imple-
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`menting a building automation system as taught in Smith—enabling reliable power
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`control by avoid unintended action by the master power-control unit. Ex. 1003 ¶48;
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`Ex. 1006 at 1:63-2:11. Smith and Kittirutsunetorn are in the same field, and en-
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`deavor to simplify building control systems and enable remote control of lighting
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`devices. Indeed, Smith teaches a solution for providing centralized control over a
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`plurality of building automation systems, including lighting, using remote access
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`(Ex. 1004 at 1:39-41, 2:40-44, 20:5-7), and Kittirutsunetorn teaches a system for
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`remote control of various electronics, including lighting devices (Ex. 1006 at 3:21-
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`27, 5:29-43, 16:17-30). And both teach using an X-10 protocol to control lighting
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`within the system. Ex. 1004 at 10:43-45, 19:12-17, 46:8-16; Ex. 1006 at 3:21-27,
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`5:29-43, Fig. 1. Given Smith’s goals of increasing functionality of centralized au-
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`tomation (Ex. 1004 at 2:31-39) and reducing costs (id.), and Smith’s disclosure of
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`remotely controlling the central controller, a POSITA would have looked to Kit-
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`tirutsunetorn’s “low cost and flexible system” (Ex. 1006 at 1:59-61) for remotely
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`controlling lighting loads. A POSITA would thus have been motivated to combine
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`the teachings of Smith and Kittirutsunetorn by the similarities in their problems
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`solved and solutions presented. Ex. 1003 ¶48.
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`Moreover, Smith’s controller can support a variety of subsystems, including
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`X-10, “without modification.” Ex. 1004 at 19:12-17. Accordingly, a POSITA
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`would have found it obvious and straightforward to use Kittirutsunetorn’s teach-
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`ings of an advantageous dedicated power control channel with Smith’s building au-
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`tomation system, and would have recognized that this combination would work as
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`expected. Ex. 1003 ¶49.
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`6.
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`Claim Charts for Grounds 1, 2 and 3
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`Claim 1
`[1.pre]3
`Apparatus
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`Smith
`Smith discloses an apparatus (e.g., “office PC”) for requesting a
`remote computer

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