U.S. Patent No. 8,224,282
`IPR2023-00624
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`EMERSON ELECTRIC CO.
`
`Petitioner,
`
`v.
`
`OLLNOVA TECHNOLOGIES LTD.
`
`Patent Owner.
`
`____________
`
`Case IPR2023-00624
`
`U.S. Patent No. 8,224,282
`
`____________
`
`DECLARATION OF DEAN P. NEIKIRK IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,224,282
`
`Emerson Exhibit 1002
`Emerson Electric v. Ollnova
`IPR2023-00624
`Page 00001
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`U.S. Patent No. 8,224,282
`IPR2023-00624
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`
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`TABLE OF CONTENTS
`
`Page
`I.
`INTRODUCTION ........................................................................................... 1
`QUALIFICATIONS ........................................................................................ 4
`II.
`III. LEGAL UNDERSTANDING ......................................................................... 7
`A. My Understanding of Claim Construction ............................................ 7
`B. My Understanding of Anticipation ....................................................... 9
`C. My Understanding of the Doctrine of Equivalents .............................11
`D. My Understanding of Obviousness .....................................................12
`IV. BACKGROUND OF THE TECHNOLOGY ................................................17
`V.
`THE ’282 PATENT .......................................................................................19
`A.
`’282 Patent Overview ..........................................................................19
`B.
`Prosecution History of the ’282 Patent ...............................................22
`VI. THE ’282 PATENT PRIORITY DATE ........................................................23
`VII. LEVEL OF ORDINARY SKILL IN THE ART ...........................................24
`VIII. CLAIM CONSTRUCTION ..........................................................................26
`A.
`Preambles ([1.pre], [7.pre], [13.pre], [20.pre]) ...................................27
`B.
`“a multi-sensor package” ([1.a], [7.a], [13.a], [20.a]) .........................27
`C.
`“identification flag for each identified sensor value” ([4], [10],
`[16]) .....................................................................................................27
`“power-down command” ([13.g]) .......................................................28
`D.
`Third-Party Constructions ...................................................................28
`E.
`IX. GROUNDS OF UNPATENTABILITY ........................................................30
`A. Ground 1: McFarland (Claims 1-5, 7-11, 20-21) ................................32
`1.
`U.S. 2007/0242688 (“McFarland”) Overview ..........................32
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`B.
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`C.
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`U.S. Patent No. 8,224,282
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`2.
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`Invalidity of Claims 1-5, 7-11, and 20-21 Over
`McFarland .................................................................................37
`(a)
`Element [1.pre] .............................................................. 37
`(b)
`Element [1.a] .................................................................. 41
`(c)
`Element [1.b] ................................................................. 46
`(d)
`Element [1.c] .................................................................. 47
`(e)
`Element [1.d] ................................................................. 52
`(f)
`Element [1.e] .................................................................. 56
`(g)
`Element [1.f] .................................................................. 64
`(h) Claim [2] ........................................................................ 70
`(i)
`Claim [3] ........................................................................ 72
`(j)
`Claim [4] ........................................................................ 77
`(k) Claim [5] ........................................................................ 81
`(l)
`Elements [7.pre]-[7.d]. ................................................... 86
`(m) Element [7.e] .................................................................. 87
`(n)
`Element [7.f] .................................................................. 96
`(o)
`Element [7.g] ............................................................... 101
`(p) Claims [8]-[10] ............................................................ 103
`(q) Claim [11] .................................................................... 103
`(r)
`Element [20.pre] .......................................................... 108
`(s)
`Element [20.a] .............................................................. 110
`(t)
`Element [20.b] ............................................................. 115
`(u)
`Element [20.c] .............................................................. 119
`(v)
`Element [20.d] ............................................................. 123
`(w) Claim [21] .................................................................... 127
`Ground 2: McFarland in view of Kates-089 (Claims 13-16) ............131
`1.
`Overview of U.S. 2006/0071089 (“Kates-089”) and
`Motivation to Modify McFarland with Kates-089’s
`Teachings ................................................................................131
`Invalidity of Claims 13-16 ......................................................141
`(a)
`Elements [13.pre]-[13.d] .............................................. 141
`(b)
`Element [13.e] .............................................................. 141
`(c)
`Element [13.f] .............................................................. 143
`(d)
`Element [13.g] ............................................................. 144
`(e) Claims [14]-[16] .......................................................... 148
`Grounds 3-4: McFarland in view of Stoner (Claims 1-5, 7-11,
`and 20-21) and Kates-089 (Claims 13-16) ........................................148
`ii
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`2.
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`1.
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`2.
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`Overview of U.S. 8,276,829 (“Stoner”) and Motivation to
`Modify McFarland (and McFarland in view of Kates-
`089) with Stoner’s Teachings .................................................148
`Invalidity of Claims 7-11 Over McFarland in view of
`Stoner ......................................................................................159
`(a)
`Elements [7.pre]-[7.d] .................................................. 159
`(b)
`Element [7.e] ................................................................ 160
`(c)
`Element [7.f] ................................................................ 167
`(d)
`Element [7.g] ............................................................... 171
`(e) Claims [8]-[10] ............................................................ 174
`(f)
`Claim [11] .................................................................... 175
`Stoner’s Further Disclosures of Claims 1-5, 13-16, 20-21 .....177
`3.
`D. Grounds 5-8: McFarland (Claims 1-5, 7-11, 20-21) and
`McFarland in View of Stoner (Claims 1-5, 7-11, 20-21), Kates-
`089 (Claims 13-16), and Stoner and Kates-089 (Claims 1-5, 7-
`11, 20-21), further in view of Ahmed-629 (All Challenged
`Claims) ..............................................................................................179
`Ground 9: Kates-089 in View of Ahmed-629 ...................................185
`(a)
`Element [20.pre] .......................................................... 185
`(b)
`Element [20.a] .............................................................. 193
`(c)
`Element [20.b] ............................................................. 201
`(d)
`Element [20.c] .............................................................. 202
`(e)
`Element [20.d] ............................................................. 207
`(f)
`Claim [21] .................................................................... 211
`SECONDARY CONSIDERATIONS .........................................................213
`X.
`XI. CONCLUSION ............................................................................................214
`
`
`
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`E.
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`
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`U.S. Patent No. 8,224,282
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`I.
`
`INTRODUCTION
`I have been retained by Emerson Electric Co. (“Emerson” or
`1.
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`“Petitioner”) to provide my opinions on certain issues related to U.S. Patent No.
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`8,224,282 (the “’282 patent,” which I understand has been designated as Exhibit
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`1001) in connection with the above-captioned inter partes review (IPR) proceeding.
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`In particular, I have been asked to provide my insights, analysis, and opinions
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`regarding whether claims 1-5, 7-11, 13-16, and 20-21 of the ’282 patent
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`(“Challenged Claims”) are anticipated and/or obvious over the prior art references
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`identified below and as to whether persons interested and ordinarily skilled in the
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`subject matter or art exercising reasonable diligence could have located these
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`references.
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`2.
`
`I understand the ’282 patent is titled “Dynamic Value Reporting for
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`Wireless Automated Systems,” identifies as its named inventor Norman R.
`
`McFarland, and is currently owned by Ollnova Technologies Ltd. I have considered
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`the ’282 patent.
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`3.
`
`I understand that the file history of the ’282 patent has been designated
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`as Exhibit 1003. I have considered this file history, and I will refer to it as the “’282
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`File History” or by its exhibit number.
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`4.
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`I understand that the ’282 patent was filed as U.S. Patent Application
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`11/402,743 on April 12, 2006.
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`
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`1
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`5.
`
`I have considered the prior art cited in my declaration, including:
`
`1.
`
`U.S. Patent Application Publication No. 2007/0242688
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`to McFarland (“McFarland”), titled “Dynamic Value
`
`Reporting for Wireless Automated Systems,” filed April
`
`12, 2006 and published October 18, 2007. I understand
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`that a copy of this patent has been designated as Exhibit
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`1027.
`
`2.
`
`U.S. Patent Application Publication No. 2006/0071089
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`to Kates-089 (“Kates-089”), titled “Zone Thermostat for
`
`Zone Heating and Cooling,” filed on October 6, 2004,
`
`and published April 6, 2006. I understand that a copy of
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`this publication has been designated as Exhibit 1029.
`
`3.
`
`U.S. Patent No. 8,276,829 to Stoner (“Stoner”), titled
`
`“Building Control System with Control Unit and
`
`Methods of Operation,” filed on November 30, 2007, and
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`issued on October 2, 2012. I understand that a copy of
`
`this publication has been designated as Exhibit 1030.
`
`4.
`
`U.S. Patent Application Publication No. 2005/0268629
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`to Ahmed (“Ahmed-629”), titled “Method and Apparatus
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`2
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`U.S. Patent No. 8,224,282
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`for Controlling Building Component Characteristics,”
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`filed March 25, 2005 and published December 8, 2005. I
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`understand that a copy of this patent has been designated
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`as Exhibit 1036.
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`6.
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`I am being compensated by Emerson at my standard hourly consulting
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`rate of $750 for my time on this matter. My compensation is not dependent on the
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`outcome of this proceeding.
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`7.
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`As set forth herein, I have concluded that each of Challenged Claims is
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`anticipated and/or rendered obvious by the prior art based on the references
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`described below and as explained herein. In forming my opinions, I relied on the
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`documents cited in this declaration and the documents identified in the attached
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`Appendix B. These documents comprise patents, file histories, printed publications,
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`and other related documents. As discussed below, each document is a type that
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`experts in my field would have reasonably relied upon when forming their opinions.
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`Further, experts in my field would have had access to each document either through
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`the applicable patent offices and/or well-known libraries, conferences, or
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`publications in the field. My opinions are also based upon my personal and
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`professional experience.
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`3
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`II. QUALIFICATIONS
`A detailed description of my professional qualifications, including a list
`8.
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`of publications, patents, awards, and professional activities, is contained in my
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`curriculum vitae, a copy of which is attached as Appendix A.
`
`9.
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`I received a B.S. degree in 1979 in physics from Oklahoma State
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`University, and an M.S. degree and a Ph.D. degree in 1981 and 1984 respectively in
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`applied physics from the California Institute of Technology.
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`10. Each of my academic degrees involved significant studies in solid state
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`physics, semiconductor devices, electrical engineering, electronic systems,
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`electromagnetics, optics, radio frequency systems, and antennas. For example,
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`courses relating to these fields that I took include two years of study in
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`electromagnetics and optics, one year of study in solid state and semiconductor
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`physics, as well as four years of graduate research in electronic devices, antenna
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`design, antenna fabrication, microwave systems, and optical systems.
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`11.
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`I am currently a Life Senior Member of the Institute of Electrical and
`
`Electronics Engineers (“IEEE”). From March 1991 to October 1994, I served as an
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`Associate Editor for the IEEE publication called “IEEE Transactions on Education.”
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`I also served as a member of the Editorial Board on the IEEE Transactions on
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`Microwave Theory and Techniques in the 1990-2000 timeframe.
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`
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`4
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`12.
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`I have almost 40 years of experience on the faculty of the University of
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`Texas at Austin. My work as a professor began in 1984, when I joined the University
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`of Texas at Austin as an assistant professor. In 1988, I became an associate professor,
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`and became a full professor in 1992.
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`13. My research over the last forty years has concentrated heavily in the
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`areas of electromagnetics, microwave engineering, microelectronics, semiconductor
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`devices, integrated circuit (IC) fabrication, and new sensors. This research work has
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`been funded by many agencies, focusing on the fabrication and modeling of
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`semiconductor devices, electromagnetic devices and detectors, chemical sensors,
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`temperature sensors, proximity sensors, and pressure sensors, as well as research on
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`the high frequency properties of transmission lines, RF devices, and infrared to
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`terahertz detectors for use in focal plane imaging arrays. My research related to the
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`development of new chemical sensors (an “electronic taste” sensor) was selected for
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`a commercialization venture between The University of Texas and two outside start-
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`up companies.
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`14. Over the years, I have also taught a variety of electrical engineering
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`courses at the University of Texas. These include Integrated Circuit Fabrication,
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`VLSI Fabrication Techniques, Ultra Large Scale Integrated Circuit Fabrication
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`Techniques, Integrated Circuit Nanomanufacturing Techniques, Electromagnetics in
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`
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`5
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`Packaging, Simulation Methods in CAD/VLSI, Micro-Electromechanical Systems,
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`Electromagnetic Engineering, and Microwave and Radio Frequency Engineering. I
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`have also taught several continuing education courses in these fields.
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`15.
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`In 1985, I established the Microelectronics Fabrication Teaching
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`Laboratory at The University of Texas at Austin, which continues to this day to
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`provide undergraduate and graduate students with hands-on experience in integrated
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`circuit fabrication. I have taught many courses in integrated-circuit fabrication,
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`microwave devices, integrated circuit packaging, electromagnetics, computer aided
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`design methods for circuit simulation, sensors of all sorts, and micro-
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`electromechanical systems.
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`16.
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`I conducted research with students and research scientists in the
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`Microelectromagnetics Research Group in the Microelectronics Research Center at
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`The University of Texas at Austin for 37 years. For over ten years, I also served as
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`the Graduate Advisor of the Department of Electrical and Computer Engineering at
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`the University of Texas at Austin, as well as serving for over five years as an
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`Associate Chairman of the Electrical and Computer Engineering Department at The
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`University of Texas at Austin. I also served as Associate Dean of Graduate Studies
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`from 2014 to 2021.
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`
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`17. Please see my CV, attached hereto as Appendix A, for further
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`information.
`III. LEGAL UNDERSTANDING
`In formulating my opinions, I have been informed of certain legal
`18.
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`understandings relevant to my opinions. In formulating my opinions, I have relied
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`on the legal understandings I have been provided with as set forth in this declaration.
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`19.
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`I have been informed that in inter partes review proceedings, invalidity
`
`must be shown under a preponderance of the evidence standard.
`
`A. My Understanding of Claim Construction
`I have been informed that patent claims are construed from the
`20.
`
`viewpoint of a person having ordinary skill in the art of the patent at the time of the
`
`invention. I have been informed that patent claims generally should be interpreted
`
`consistent with their plain and ordinary meaning as understood by a person having
`
`ordinary skill in the art in the relevant time period (i.e., at the time of the purported
`
`invention, or the so called “effective filing date” of the patent application), after
`
`reviewing the patent claim language, the specification, and the prosecution history
`
`(i.e., the intrinsic record).
`
`21.
`
`I have further been informed that a person having ordinary skill in the
`
`art must read the claim terms in the context of the claim itself, as well as in the
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`context of the entire patent specification. I understand that in the specification and
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`prosecution history, the patentee may specifically define a claim term in a way that
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`differs from the plain and ordinary meaning. I understand that the prosecution
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`history of the patent is a record of the proceedings before the U.S. Patent and
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`Trademark Office, and may contain explicit representations or definitions made
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`during prosecution that affect the scope of the patent claims. I understand that an
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`applicant may, during the course of prosecuting the patent application, limit the
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`scope of the claims to overcome prior art or to overcome an examiner’s rejection, by
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`clearly and unambiguously arguing to overcome or distinguish a prior art reference,
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`or clearly and unambiguously disavowing claim coverage.
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`22.
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`In interpreting the meaning of the claim language, I understand that a
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`person having ordinary skill in the art may also consider “extrinsic” evidence,
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`including expert testimony, inventor testimony, dictionaries, technical treatises,
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`other patents, and scholarly publications. I understand this evidence is considered to
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`ensure that a claim is construed in a way that is consistent with the understanding of
`
`those of ordinary skill in the art at the time of the claimed invention. For example,
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`this can be useful for a technical term whose meaning may differ from its ordinary
`
`English meaning. I understand that extrinsic evidence may not be relied on if it
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`contradicts or varies the meaning of claim language provided by the intrinsic
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`evidence, particularly if the applicant has explicitly defined a term in the intrinsic
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`record.
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`23.
`
`I understand that certain claim terms may be interpreted to be “means-
`
`plus-function” terms. For these terms, I understand that there must be a
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`corresponding structure disclosed in the specification in a way that a person of
`
`ordinary skill in the art would understand what structure would perform the claimed
`
`function. I understand the disclosure may be implicit in the specification if it would
`
`have been clear to a person of ordinary skill in the art what structure corresponds to
`
`the claimed function. With respect to a computer-implemented function, an
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`algorithm must be disclosed in the specification.
`
`B. My Understanding of Anticipation
`I have been informed that if each and every element or step of a claim
`
`24.
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`is disclosed within the “four corners” of a prior art reference, that claim is said to be
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`“anticipated” by that single prior art reference and is invalid under 35 U.S.C. §102
`
`because the alleged invention is not, in fact, new or novel. I have been informed that
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`the standard for anticipation in an inter partes review proceeding is by a
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`preponderance of the evidence.
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`25.
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`I have also been informed that a prior art reference can disclose a claim
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`feature if that feature is expressly described by that reference, or inherent from its
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`disclosure. I have been informed that something is inherent from a prior art
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`reference, if the missing descriptive matter must necessarily be present, and it would
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`be so recognized by a person of ordinary skill in the art. I also have been informed
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`that inherency cannot be established by probabilities or possibilities, and that the
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`mere fact that something may result from a given set of circumstances is not
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`sufficient to show inherency.
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`26.
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`I have further been informed that where a reference discloses multiple
`
`embodiments, the reference should not be limited to a preferred embodiment.
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`Instead, each disclosed embodiment may anticipate.
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`27. Moreover, I have been informed that as part of an anticipation analysis,
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`it is proper to take into account not only specific teachings of the reference, but also
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`the inferences that one skilled in the art would reasonably be expected to draw
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`therefrom. A reference can anticipate a claim even if it does not expressly spell out
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`all the limitations arranged or combined as in the claim, if a person of skill in the art,
`
`reading the reference, would at once envisage the claimed arrangement or
`
`combination.
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`28.
`
`I have been informed that a prior art document can disclose a claim
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`feature, and anticipate an alleged invention, if that feature is described in another
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`document that has been incorporated by reference. I have also been informed that,
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`to incorporate by reference, the host document must identify with detailed
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`particularity what specific material it incorporates, and clearly indicate where that
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`material is found in the incorporated document. I have also been informed that, in
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`making the determination of the extent to which material is incorporated into a host
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`document, the standard of a person of ordinary skill in the art should be used to
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`determine whether the host document describes the material to be incorporated by
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`reference with sufficient particularity.
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`C. My Understanding of the Doctrine of Equivalents
`I have been informed that there is a “doctrine of equivalents” that
`29.
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`supports a finding of invalidity if a prior art element is equivalent to a claimed
`
`element, even if the prior art element is not identical to the claimed element.
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`Equivalence may be established if the prior art element performs the identical
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`function specified in the claim in substantially the same way and produces
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`substantially the same result.
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`30.
`
`I also understand that insubstantial differences between a prior art
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`element and a claimed element—as understood in light of its specification—will not
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`preclude a finding of invalidity. For example, a difference in a number of parts in a
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`prior art element and the corresponding element disclosed in the patent specification
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`may be an insubstantial difference. Similarly, if a prior art element lacks several
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`
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`components of an overall structure corresponding to a claimed function, that
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`difference may be insubstantial. And, potential advantages of a structure that do not
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`relate to a claimed function should not be considered in an equivalents
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`determination.
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`31.
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`I understand that the structures, materials, and acts to be considered
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`equivalent or non-equivalent may be described in a patent’s specification. A
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`specification may therefore establish a narrow or broad range of equivalents,
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`although an applicant also need not exhaustively describe the full range of
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`equivalents.
`
`D. My Understanding of Obviousness
`I understand that a claim may be invalid if the subject matter described
`32.
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`by the claim as a whole would have been obvious to a hypothetical person of
`
`ordinary skill in the art in view of a prior art reference or in view of a combination
`
`of references at the time the claimed invention was made. Therefore, I understand
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`that obviousness is determined from the perspective of a hypothetical person of
`
`ordinary skill in the art and that the asserted claims of the patent should be read from
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`the point of view of such a person at the time the claimed invention was made. I
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`further understand that a hypothetical person of ordinary skill in the art is assumed
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`to know and to have all relevant prior art in the field of endeavor covered by the
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`patent in suit.
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`33.
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`I have been informed that there are two criteria for determining whether
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`prior art is analogous and thus can be considered prior art: (1) whether the art is from
`
`the same field of endeavor, regardless of the problem addressed, and (2) if the
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`reference is not within the field of the patentee’s endeavor, whether the reference
`
`still is reasonably pertinent to the particular problem with which the patentee is
`
`involved. I have also been informed that the field of endeavor of a patent is not
`
`limited to the specific point of novelty, the narrowest possible conception of the
`
`field, or the particular focus within a given field. I have also been informed that a
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`reference is reasonably pertinent if, even though it may be in a different field from
`
`that of the patentee’s endeavor, it is one which, because of the matter with which it
`
`deals, logically would have commended itself to a patentee’s attention in considering
`
`their problem.
`
`34.
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`I have also been advised that an analysis of whether a claimed invention
`
`would have been obvious should be considered in light of the scope and content of
`
`the prior art, the differences (if any) between the prior art and the claimed invention,
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`and the level of ordinary skill in the pertinent art involved. I understand as well that
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`a prior art reference should be viewed as a whole.
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`35.
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`I have also been advised that in considering whether a claimed
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`invention could be obvious over a combination of prior art references, I may assess
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`whether there are apparent reasons to combine known elements in the prior art in the
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`manner claimed in view of interrelated teachings of multiple prior art references, the
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`effects of demands known to the design community or present in the marketplace,
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`and/or the background knowledge possessed by a person having ordinary skill in the
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`art. I understand that other principles may be relied on in evaluating whether a
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`claimed invention would have been obvious, and that these principles include the
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`following:
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`• A combination of familiar elements according to known methods is
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`likely to be obvious when it does no more than yield predictable results;
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`• When a device or technology is available in one field of endeavor,
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`design incentives and other market forces can prompt variations of it,
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`either in the same field or in a different one, so that if a person having
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`ordinary skill can implement a predictable variation, the variation is
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`likely obvious;
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`• If a technique has been used to improve one device, and a person having
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`ordinary skill in the art would recognize that it would improve similar
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`devices in the same way, using the technique is obvious unless its actual
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`application is beyond their skill;
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`• An explicit or implicit teaching, suggestion, or motivation to combine
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`two prior art references to form the claimed combination may
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`demonstrate obviousness, but proof of obviousness does not depend on
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`or require showing a teaching, suggestion, or motivation to combine;
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`• Market demand, rather than scientific literature, can drive design trends
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`and may show obviousness;
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`• In determining whether the subject matter of a patent claim would have
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`been obvious, neither the particular motivation nor the avowed purpose
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`of the named inventor controls whether the claim is obvious;
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`• One of the ways in which a patent’s subject can be proved obvious is
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`by noting that there existed at the time of invention a known problem
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`for which there was an obvious solution encompassed by the patent’s
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`claims;
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`• Any need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent can provide a reason for
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`combining the elements in the manner claimed;
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`• “Common sense” teaches that familiar items may have obvious uses
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`beyond their primary purposes, and in many cases a person having
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`ordinary skill will be able to fit the teachings of multiple patents
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`together like pieces of a puzzle;
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`• A person having ordinary skill in the art is also a person having ordinary
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`creativity, and is not an automaton;
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`• A patent claim can be proved obvious by showing that the claimed
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`combination of elements was “obvious to try,” particularly when there
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`is a design need or market pressure to solve a problem and there are a
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`finite number of identified, predictable solutions such that a person
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`having ordinary skill in the art would have had good reason to pursue
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`the known options within his or her technical grasp; and
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`• One should be cautious of using hindsight in evaluating whether a
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`claimed invention would have been obvious.
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`36.
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`I further understand that, in making a determination as to whether the
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`claimed invention would have been obvious to a person having ordinary skill, the
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`Board may consider certain objective factors if they are present, such as: commercial
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`success of products practicing the claimed invention; long-felt but unsolved need;
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`teaching away; unexpected results; copying; and praise by others in the field. These
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`factors are generally referred to as “secondary considerations” or “objective indicia”
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`of nonobviousness. I understand, however, that for such objective evidence to be
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`relevant to the obviousness of a claim, there must be a causal relationship (called a
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`“nexus”) between the claim and the evidence and that this nexus must be based on a
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`novel element of the claim rather than something in the prior art. I also understand
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`that even when they are present, secondary considerations may be unable to
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`overcome primary evidence of obviousness (such as motivation to combine with
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`predictable results) that is sufficiently strong.
`IV. BACKGROUND OF THE TECHNOLOGY
`37. As discussed in Section V, the purported invention of the ’282 patent is
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`a wireless automation device that wirelessly reports sensor readings corresponding
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`to received control information, sensor data in control at another automation
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`component, or a received communication to other parts of a building automation
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`system. For example, claim 1 of the ’282 Patent recites “[a]n automation component
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`configured for wireless communication” that includes “a multi-sensor package
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`configured to detect a plurality of variables and generate sensor data for each
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`detected variable.” The wireless automation device is configured to store this sensor
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`data in memory, and upon receipt of sensor control information from another
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`component of the building system, “communicate[s] a portion of the stored sensor
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`data corresponding to the received sensor control information.”
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`38. During the prosecution of the