U.S. Patent No. 7,746,887
`IPR2023-00626
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`EMERSON ELECTRIC CO.
`
`Petitioner,
`
`v.
`
`OLLNOVA TECHNOLOGIES LTD.
`
`Patent Owner.
`
`____________
`
`Case IPR2023-00626
`
`U.S. Patent No. 7,746,887
`
`____________
`
`DECLARATION OF DEAN P. NEIKIRK IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,746,887
`
`Emerson Exhibit 1002
`Emerson Electric v. Ollnova
`IPR2023-00626
`Page 00001
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`

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`U.S. Patent No. 6,792,887
`IPR2023-00626
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`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`Page
`INTRODUCTION ........................................................................................... 1
`QUALIFICATIONS ........................................................................................ 4
`LEGAL UNDERSTANDING ......................................................................... 7
`A. My Understanding of Claim Construction ............................................ 7
`B. My Understanding of Obviousness ....................................................... 9
`C. My Understanding of the Doctrine of Equivalents .............................14
`IV. BACKGROUND OF THE TECHNOLOGY ................................................15
`V.
`THE ’887 PATENT .......................................................................................17
`A.
`’887 Patent Overview ..........................................................................17
`B.
`Prosecution History of the ’887 Patent ...............................................20
`THE ’887 PATENT PRIORITY DATE ........................................................22
`VI.
`VII. LEVEL OF ORDINARY SKILL IN THE ART ...........................................22
`VIII. CLAIM CONSTRUCTION ..........................................................................24
`A.
`Preambles ............................................................................................24
`“information associated reading of the indicator” (claim limitation
`B.
`[1.c]) ....................................................................................................25
`Third-Party Constructions ...................................................................25
`C.
`IX. GROUNDS OF UNPATENTABILITY ........................................................29
`A.
`Ground 1: Kates-711 (Claims 1, 3-8, and 18) .....................................32
`1.
`U.S. 7,528,711 (“Kates-711”) Overview ..................................32
`2.
`Invalidity of Claims 1, 3-8, and 18 Over Kates-711 .................38
`(a) Element [1.pre] ...................................................... 38
`(b) Element [1.a] .......................................................... 43
`(c) Element [1.b] ......................................................... 47
`(d) Element [1.c] .......................................................... 51
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`U.S. Patent No. 7,746,887
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`2.
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`(e) Element [1.d] ......................................................... 58
`(f) Element [1.e] .......................................................... 62
`(g) Claim [3] ................................................................ 70
`(h) Claim [4] ................................................................ 74
`(i) Claim [5] ................................................................ 75
`(j) Claim [6] ................................................................ 77
`(k) Claim [7] ................................................................ 78
`(l) Claim [8] ................................................................ 79
`(m) Claim [18] .............................................................. 82
`Ground 2: Kates-711 in view of Hitt (Claims 1, 3-8, and 18) ............83
`Overview of Hitt and Motivation to Modify Kates-711 with
`1.
`Hitt’s Teachings ........................................................................83
`Invalidity of Claims 1, 3-8, and 18 Over Kates-711 in view of
`Hitt.............................................................................................89
`(a) Element [1.d] ......................................................... 89
`(b) Element [1.e] .......................................................... 92
`(c) Claims [5] and [8] .................................................. 95
`Grounds 3-4: Kates-711 in view of Littrell and Kates-711 in view of
`Hitt and Littrell (Claims 1, 3-8, 14-15, and 18) ..................................96
`Overview of Littrell and Motivation to Modify Kates-711 (and
`1.
`Kates-711 in view of Hitt) with Littrell’s Teachings ................96
`Littrell’s Further Disclosures of “Information Associated
`Reading of the Indicator” in Element [1.e] (Claims 1, 3-8, and
`18) ...........................................................................................108
`Littrell’s Further Disclosures both that “An Upper Limit and a
`Lower Limit of the Predetermined Range May Be Varied” and
`of a “Band Limit” (Claims 3-7) ..............................................112
`Claim [14] ...............................................................................117
`4.
`Claim [15] ...............................................................................121
`5.
`Grounds 5-8: Kates-505 (Claims 1, 3-8, and 18), Kates-505 in view of
`Hitt (Claims 1, 3-8, and 18), Kates-505 in view of Littrell (Claims 1,
`3-8, 14-15, and 18), and Kates-505 in view of Hitt and Littrell (Claims
`1, 3-8, 14-15, and 18) ........................................................................122
`
`2.
`
`3.
`
`B.
`
`C.
`
`D.
`
`ii
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`U.S. Patent No. 7,746,887
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`1.
`
`2.
`
`E.
`
`Kates-505 Contains Substantially Similar Disclosures to Kates-
`711 ...........................................................................................122
`Chart Comparing Kates-711 with Kates-505..........................125
`2.
`Grounds 9-12: Kates-505 in View of Mueller (Claims 1, 3-8, and 18),
`Kates-505 in View of Mueller and Hitt (Claims 1, 3-8, and 18), Kates-
`505 in View of Mueller and Littrell (Claims 1, 3-8, 14-15, and 18),
`and Kates-505 in View of Mueller, Hitt, and Littrell (Claims 1, 3-8,
`14-15, and 18) ....................................................................................131
`1.
`Overview of Mueller and Motivation to Modify Kates-505 (and
`Kates-505 in view of Hitt and/or Littrell) with Mueller’s
`Teachings ................................................................................131
`Mueller’s further disclosures of “transmit[ting] a most recent
`reading … in response to detecting a change in the sensed
`condition outside a predetermined range and … [suspending
`transmission] in response to detecting a change in the sensed
`condition within the predetermined range” ([1.e]) (Claim 1) and
`a “band limit” (Claim 5) .........................................................136
`SECONDARY CONSIDERATIONS .........................................................141
`X.
`XI. CONCLUSION ............................................................................................141
`
`iii
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`U.S. Patent No. 7,746,887
`IPR2023-00626
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`I.
`
`INTRODUCTION
`1.
`I have been retained by Emerson Electric Co. (“Emerson” or
`
`“Petitioner”) to provide my opinions on certain issues related to U.S. Patent No.
`
`7,746,887 (the “’887 patent,” which I understand has been designated as Exhibit
`
`1001) in connection with the above-captioned inter partes review (IPR) proceeding.
`
`In particular, I have been asked to provide my insights, analysis, and opinions
`
`regarding whether claims 1, 3-8, 14-15, and 18 of the ’887 patent (“Challenged
`
`Claims”) are obvious over the prior art references identified below and as to whether
`
`persons interested and ordinarily skilled in the subject matter or art exercising
`
`reasonable diligence could have located these references.
`
`2.
`
`I understand the ’887 patent is titled “Dynamic Value Reporting for
`
`Wireless Automated Systems,” identifies as its named inventor Norman R.
`
`McFarland, and is currently owned by Ollnova Technologies Ltd. I have considered
`
`the ’887 patent.
`
`3.
`
`I understand that the file history of the ’887 patent has been designated
`
`as Exhibit 1003. I have considered this file history, and I will refer to it as the “’887
`
`File History” or by its exhibit number.
`
`4.
`
`I understand that the ’887 patent was filed as U.S. Patent Application
`
`11/402,743 on April 12, 2006.
`
`5.
`
`I have considered the prior art cited in my declaration, including:
`
`1
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`1.
`
`U.S. Patent No. 7,528,711 to Kates (“Kates-711”), titled
`
`“Portable Monitoring Unit,” filed December 19, 2005
`
`and issued May 5, 2009. I understand that a copy of this
`
`patent has been designated as Exhibit 1004.
`
`2.
`
`U.S. Patent Publication No. 2004/0100394 to Hitt
`
`(“Hitt”), titled “Distributed Environmental Control in a
`
`Wireless Sensor,” filed on October 24, 2003, and
`
`published May 27, 2004. I understand that a copy of this
`
`publication has been designated as Exhibit 1005.
`
`3.
`
`U.S. Patent Publication No. 2005/0246593 to Littrell
`
`(“Littrell”), titled “Methods and Apparatus for Providing
`
`Alarm Notification,” filed on April 19, 2004, and
`
`published on November 3, 2005. I understand that a copy
`
`of this publication has been designated as Exhibit 1006.
`
`4.
`
`U.S. Patent No. 7,102,505 to Kates (“Kates-505”), titled
`
`“Wireless Sensor System,” filed May 27, 2004 and
`
`issued September 5, 2006. I understand that a copy of
`
`this patent has been designated as Exhibit 1022.
`
`5. U.S. Patent No. 6,513,723 to Mueller (“Mueller”), titled
`
`“Method and apparatus for automatically transmitting
`
`
`
`2
`
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`U.S. Patent No. 7,746,887
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`temperature information to a thermostat,” filed
`
`September 28, 2000 and issued on February 4, 2003. I
`
`understand that this patent has been designated as Exhibit
`
`1031.
`
`6.
`
`I am being compensated by Emerson at my standard hourly consulting
`
`rate of $750 for my time on this matter. My compensation is not dependent on the
`
`outcome of this proceeding.
`
`7.
`
`As set forth herein, I have concluded that each of Challenged Claims is
`
`rendered obvious by the prior art based on the references described below and as
`
`explained herein. In forming my opinions, I relied on the documents cited in this
`
`declaration and the documents identified in the attached Appendix B. These
`
`documents comprise patents, file histories, printed publications, and other related
`
`documents. As discussed below, each document is a type that experts in my field
`
`would have reasonably relied upon when forming their opinions. Further, experts in
`
`my field would have had access to each document either through the applicable
`
`patent offices and/or well-known libraries, conferences, or publications in the field.
`
`My opinions are also based upon my personal and professional experience.
`
`
`
`3
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`II. QUALIFICATIONS
`A detailed description of my professional qualifications, including a list
`8.
`
`of publications, patents, awards, and professional activities, is contained in my
`
`curriculum vitae, a copy of which is attached as Appendix A.
`
`9.
`
`I received a B.S. degree in 1979 in physics from Oklahoma State
`
`University, and an M.S. degree and a Ph.D. degree in 1981 and 1984 respectively in
`
`applied physics from the California Institute of Technology.
`
`10. Each of my academic degrees involved significant studies in solid state
`
`physics, semiconductor devices, electrical engineering, electronic systems,
`
`electromagnetics, optics, radio frequency systems, and antennas. For example,
`
`courses relating to these fields that I took include two years of study in
`
`electromagnetics and optics, one year of study in solid state and semiconductor
`
`physics, as well as four years of graduate research in electronic devices, antenna
`
`design, antenna fabrication, microwave systems, and optical systems.
`
`11.
`
`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
`
`Associate Editor for the IEEE publication called “IEEE Transactions on Education.”
`
`I also served as a member of the Editorial Board on the IEEE Transactions on
`
`Microwave Theory and Techniques in the 1990-2000 timeframe.
`
`
`
`4
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`U.S. Patent No. 7,746,887
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`12.
`
`I have almost 40 years of experience on the faculty of the University of
`
`Texas at Austin. My work as a professor began in 1984, when I joined the University
`
`of Texas at Austin as an assistant professor. In 1988, I became an associate
`
`professor, and became a full professor in 1992.
`
`13. My research over the last forty years has concentrated heavily in the
`
`areas of electromagnetics, microwave engineering, microelectronics, semiconductor
`
`devices, integrated circuit (IC) fabrication, and new sensors. This research work has
`
`been funded by many agencies, focusing on the fabrication and modeling of
`
`semiconductor devices, electromagnetic devices and detectors, chemical sensors,
`
`temperature sensors, proximity sensors, and pressure sensors, as well as research on
`
`the high frequency properties of transmission lines, RF devices, and infrared to
`
`terahertz detectors for use in focal plane imaging arrays. My research related to the
`
`development of new chemical sensors (an “electronic taste” sensor) was selected for
`
`a commercialization venture between The University of Texas and two outside start-
`
`up companies.
`
`14. Over the years, I have also taught a variety of electrical engineering
`
`courses at the University of Texas. These include Integrated Circuit Fabrication,
`
`VLSI Fabrication Techniques, Ultra Large Scale Integrated Circuit Fabrication
`
`Techniques, Integrated Circuit Nanomanufacturing Techniques, Electromagnetics in
`
`Packaging, Simulation Methods in CAD/VLSI, Micro-Electromechanical Systems,
`
`
`
`5
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`U.S. Patent No. 7,746,887
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`Electromagnetic Engineering, and Microwave and Radio Frequency Engineering. I
`
`have also taught several continuing education courses in these fields.
`
`15.
`
`In 1985, I established the Microelectronics Fabrication Teaching
`
`Laboratory at The University of Texas at Austin, which continues to this day to
`
`provide undergraduate and graduate students with hands-on experience in integrated
`
`circuit fabrication. I have taught many courses in integrated-circuit fabrication,
`
`microwave devices, integrated circuit packaging, electromagnetics, computer aided
`
`design methods for circuit simulation, sensors of all sorts, and micro-
`
`electromechanical systems.
`
`16.
`
`I conducted research with students and research scientists in the
`
`Microelectromagnetics Research Group in the Microelectronics Research Center at
`
`The University of Texas at Austin for 37 years. For over ten years, I also served as
`
`the Graduate Advisor of the Department of Electrical and Computer Engineering at
`
`the University of Texas at Austin, as well as serving for over five years as an
`
`Associate Chairman of the Electrical and Computer Engineering Department at The
`
`University of Texas at Austin. I also served as Associate Dean of Graduate Studies
`
`from 2014 to 2021.
`
`17. Please see my CV, attached hereto as Appendix A, for further
`
`information.
`
`
`
`6
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`III. LEGAL UNDERSTANDING
`In formulating my opinions, I have been informed of certain legal
`18.
`
`understandings relevant to my opinions. In formulating my opinions, I have relied
`
`on the legal understandings I have been provided with as set forth in this declaration.
`
`19.
`
`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
`
`context of the entire patent specification. I understand that in the specification and
`
`prosecution history, the patentee may specifically define a claim term in a way that
`
`differs from the plain and ordinary meaning. I understand that the prosecution
`
`
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`U.S. Patent No. 7,746,887
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`history of the patent is a record of the proceedings before the U.S. Patent and
`
`Trademark Office, and may contain explicit representations or definitions made
`
`during prosecution that affect the scope of the patent claims. I understand that an
`
`applicant may, during the course of prosecuting the patent application, limit the
`
`scope of the claims to overcome prior art or to overcome an examiner’s rejection, by
`
`clearly and unambiguously arguing to overcome or distinguish a prior art reference,
`
`or clearly and unambiguously disavowing claim coverage.
`
`22.
`
`In interpreting the meaning of the claim language, I understand that a
`
`person having ordinary skill in the art may also consider “extrinsic” evidence,
`
`including expert testimony, inventor testimony, dictionaries, technical treatises,
`
`other patents, and scholarly publications. I understand this evidence is considered to
`
`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,
`
`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
`
`contradicts or varies the meaning of claim language provided by the intrinsic
`
`evidence, particularly if the applicant has explicitly defined a term in the intrinsic
`
`record.
`
`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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`U.S. Patent No. 7,746,887
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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
`
`algorithm must be disclosed in the specification.
`
`B. My Understanding of Obviousness
`I understand that a claim may be invalid if the subject matter described
`24.
`
`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
`
`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
`
`the point of view of such a person at the time the claimed invention was made. I
`
`further understand that a hypothetical person of ordinary skill in the art is assumed
`
`to know and to have all relevant prior art in the field of endeavor covered by the
`
`patent in suit.
`
`25.
`
`I have been informed that there are two criteria for determining whether
`
`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
`
`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.
`
`26.
`
`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,
`
`and the level of ordinary skill in the pertinent art involved. I understand as well that
`
`a prior art reference should be viewed as a whole.
`
`27.
`
`I have also been advised that in considering whether a claimed
`
`invention could be obvious over a combination of prior art references, I may assess
`
`whether there are apparent reasons to combine known elements in the prior art in the
`
`manner claimed in view of interrelated teachings of multiple prior art references, the
`
`effects of demands known to the design community or present in the marketplace,
`
`and/or the background knowledge possessed by a person having ordinary skill in the
`
`
`
`10
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`art. I understand that other principles may be relied on in evaluating whether a
`
`claimed invention would have been obvious, and that these principles include the
`
`following:
`
`• A combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield
`
`predictable results;
`
`• When a device or technology is available in one field of
`
`endeavor, design incentives and other market forces can
`
`prompt variations of it, either in the same field or in a different
`
`one, so that if a person having ordinary skill can implement a
`
`predictable variation, the variation is likely obvious;
`
`• If a technique has been used to improve one device, and a
`
`person having ordinary skill in the art would recognize that it
`
`would improve similar devices in the same way, using the
`
`technique is obvious unless its actual application is beyond
`
`their skill;
`
`• An explicit or implicit teaching, suggestion, or motivation to
`
`combine two prior art references to form the claimed
`
`combination may demonstrate obviousness, but proof of
`
`
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`U.S. Patent No. 7,746,887
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`obviousness does not depend on or require showing a teaching,
`
`suggestion, or motivation to combine;
`
`• Market demand, rather than scientific literature, can drive
`
`design trends and may show obviousness;
`
`• In determining whether the subject matter of a patent claim
`
`would have been obvious, neither the particular motivation nor
`
`the avowed purpose of the named inventor controls whether the
`
`claim is obvious;
`
`• One of the ways in which a patent’s subject can be proved
`
`obvious is by noting that there existed at the time of invention
`
`a known problem for which there was an obvious solution
`
`encompassed by the patent’s claims;
`
`• Any need or problem known in the field of endeavor at the time
`
`of invention and addressed by the patent can provide a reason
`
`for combining the elements in the manner claimed;
`
`• “Common sense” teaches that familiar items may have obvious
`
`uses beyond their primary purposes, and in many cases a person
`
`having ordinary skill will be able to fit the teachings of multiple
`
`patents together like pieces of a puzzle;
`
`
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`U.S. Patent No. 7,746,887
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`• A person having ordinary skill in the art is also a person having
`
`ordinary creativity, and is not an automaton;
`
`• A patent claim can be proved obvious by showing that the
`
`claimed combination of elements was “obvious to try,”
`
`particularly when there is a design need or market pressure to
`
`solve a problem and there are a finite number of identified,
`
`predictable solutions such that a person having ordinary skill in
`
`the art would have had good reason to pursue the known
`
`options within his or her technical grasp; and
`
`• One should be cautious of using hindsight in evaluating
`
`whether a claimed invention would have been obvious.
`
`28.
`
`I further understand that, in making a determination as to whether the
`
`claimed invention would have been obvious to a person having ordinary skill, the
`
`Board may consider certain objective factors if they are present, such as: commercial
`
`success of products practicing the claimed invention; long-felt but unsolved need;
`
`teaching away; unexpected results; copying; and praise by others in the field. These
`
`factors are generally referred to as “secondary considerations” or “objective indicia”
`
`of nonobviousness. I understand, however, that for such objective evidence to be
`
`relevant to the obviousness of a claim, there must be a causal relationship (called a
`
`“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
`
`that even when they are present, secondary considerations may be unable to
`
`overcome primary evidence of obviousness (such as motivation to combine with
`
`predictable results) that is sufficiently strong.
`
`C. My Understanding of the Doctrine of Equivalents
`I have been informed that there is a “doctrine of equivalents” in patent
`29.
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`law that supports a finding of invalidity if a prior art element is equivalent to a
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`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.
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`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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`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.
`IV. BACKGROUND OF THE TECHNOLOGY
`32. As discussed in Section V, the purported invention of the ’887 patent is
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`a wireless automation device that transmits a sensor reading when a change in a
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`sensed condition is outside a predetermined range. Specifically, claim 1, which is
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`the only independent claim in the ’887 Patent, from which each of the other
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`Challenged Claims depends, recites that the wireless automation device includes a
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`“sensor operable to generate a[n] indicator for a sensed condition.” “[I]n response
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`to detecting a change in the sensed condition outside of a predetermined range,” the
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`wireless automation device utilizes a “transceiver” to “transmit a most recent reading
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`of the indicator stored in memory.” If no such change is detected, then “transmission
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`… is suspended.”
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`33. Based on my experience in the field, however, the functionalities of the
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`’887 patent were well-known in the art prior to the ’887 patent’s priority date. One
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`example of such prior art is U.S. Patent No. 7,528,711 (“Kates-711”), which
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`identifies Kates as its inventor. I understand that a copy of Kates-711 has been
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`designated as Exhibit 1004. Kates-711 discloses “a sensor in a … sensor system for
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`monitoring potentially dangerous or costly conditions … in a building, or complex.”
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`Kates-711, 1:5-9. The sensor is part of a “sensor system that provides sensor
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`information … for alerting building or complex management, or other responsible
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`parties, to a potential problem detected by the sensor system.” Kates-711, 1:65-2:2.
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`Such a potential problem occurs when the sensor data is found to be outside a
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`threshold, e.g., “outside an inner range threshold.” Kates-711, 13:19-23. Kates-711
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`provides that its disclosed sensor system “can operate for an extended period of
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`operability without maintenance or recalibration” by utilizing “an adjustable
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`threshold [that] allows the sensors to adjust to ambient conditions, aging of
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`components, and other operational variations while still providing a relatively
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`sensitive detection capability for hazardous conditions.” Kates-711, 3:62-67.
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`34. Another relevant prior art reference is U.S. Patent App. No.
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`2004/0100394, which identifies Hitt as its inventor. I understand that a copy of Hitt
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`has been designated as Exhibit 1005. Hitt discloses a sensor node used to achieve
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`“environmental monitoring and control” where each sensor node includes “a
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`wireless transceiver, a processor, and … a sensor device.” Hitt, Abstract.
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`As explained in greater detail below in Section IX.B.1, a person having ordinary
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`skill in the art would have been motivated to modify Kates-711 with Hitt’s teachings
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`to advantageously utilize a memory component in a sensor unit to store data
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`collected by the sensor unit about the sensed condition. Applying Hitt’s teachings to
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`Kates-711 yields a system in which recent data about sensed conditions is available
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`in the memory of a sensor unit for further processing and transmission in the
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`environmental monitoring context. None of the features recited in the Challenged
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`Claims of the ’887 patent was novel at the time of the alleged invention, and there
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`was nothing novel as to the manner in which the ’887 patent combined those
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`features.
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`35. As I discuss below, the Challenged Claims are obvious over the prior
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`art. Further, there were no technological barriers to combining these elements to
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`form the claimed invention and a person having ordinary skill in the art would have
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`been motivated to combine these elements and would have understood that the
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`combination would have yielded predictable results.
`V. THE ’887 PATENT
`’887 Patent Overview
`A.
`36. The Challenged Claims are generally directed to a wireless automation
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`device that transmits a sensor reading in response to a sensed condition being outside
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`a predetermined range. ’887 patent, Abstract, Claim 1. An embodiment of the
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`wireless automation device described by the Challenged Claims is shown in Figure
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`2 below (emphasis added):
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`’887 patent, 6:58-65, Fig. 2. As can be seen in the above figure, the wireless
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`automation device comprises several components, including a “transceiver,” a
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`“sensor,” a “processor,” and a “memory.” ’887, Fig. 2. The sensor can include
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`different devices that “sense conditions, parameters, and/or events … in a
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`building.” ’887, 8:46-48. For example, such a sensor may detect the building’s
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`temperature, humidity, or both, and can detect other parameters as well. ’887, 8:46-
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`65. The sensor then provides the data it has co