Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: July 10, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRICKLESTAR LLC,
`Petitioner,
`
`v.
`
`EMBERTEC PTY LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00839
`Patent 9,106,099 B2
`____________
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review and
`Denying Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 10, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRICKLESTAR LLC,
`Petitioner,
`
`v.
`
`EMBERTEC PTY LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00839
`Patent 9,106,099 B2
`____________
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review and
`Denying Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`I. INTRODUCTION
`TrickleStar LLC (“Petitioner”) filed a Petition for inter partes review
`of claims 8 and 10–16 of U.S. Patent No. 9,106,099 B2 (Ex. 1001, “the
`’099 patent”). Paper 2 (“Pet.”). Embertec Pty Ltd. (“Patent Owner”) filed a
`Preliminary Response. Paper 10 (“Prelim. Resp.”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition and the Preliminary Response, we
`conclude that the information presented shows that there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`claims 8 and 10–16 of the ’099 patent.
`Petitioner also filed a Motion for Joinder (Paper 3) and Patent Owner
`filed an Opposition to Petitioner’s Motion for Joinder (Paper 9). As
`explained below, we deny Petitioner’s Motion for Joinder.
`
`A. Related Matters
`The parties identify one related proceeding that involves the
`’099 patent: IPR2016-01336 (currently pending). See Pet. 1; Paper 7, 1.
`
`B. The ’099 Patent
`The ’099 patent is directed to a system that monitors the electrical
`power supply to electrical equipment to reduce unnecessary power
`consumption. Ex. 1001, 1:14–18. The patent explains that “[m]onitoring
`can have many advantages, especially in detecting abnormal usage, faults
`and theft.” Id. at 2:60–61. For example, according to the ’099 patent, the
`system may detect excessive power consumption in an office due to use of a
`
`2
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`portable heater and alert supervisory personnel to the abnormal energy
`usage. Id. at 2:62–67. The patent also describes alerting a user to cessation
`of power consumption, such as that caused by breakdown of a refrigerator or
`freezer. Id. at 3:1–4.
`Figure 1 of the ’099 patent, below, shows the components of energy
`saving device 12:
`
`
`As illustrated in Figure 1 above, energy saving device 12 includes one
`or more continually powered mains outlets 14 and two or more switched
`mains outlets 16. Id. at 5:58–60. According to the patent, electrical devices
`(not shown) are plugged into mains outlets 14 and switched mains outlets 16
`as required. Id. at 5:60–62. Energy saving device 12 also includes mains
`power plug 18 for connection to a mains power supply (not shown). Id. at
`
`3
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`5:63–64. Microcomputer 50 implements energy saving algorithms and
`includes flash and/or EEPROM non-volatile memory 52 for storing energy
`saving configuration parameters. Id. at 6:56–64. User interface 70 includes
`LCD or LED indicators 64, beeper 66, and pushbuttons and keypad 68. Id.
`at 7:20–21. Sensor interface 72 provides an interface for an external sensor
`module (not shown) that includes a remote control infrared (IR) sensor for
`sensing IR remote control activity. Id. at 7:35–38.
`
`C. Illustrative Claims
`Among the challenged claims, claims 10 and 12 are independent.
`Claims 8, 10, and 12, along with claim 1 from which claim 8 depends, are
`illustrative of the challenged claims and read as follows:
`1.
` An energy saving device for reducing power
`consumption of an external electrical device, comprising:
`an input connectable to an external power supply;
`an output connectable to the external electrical device for
`selectively providing operating power thereto;
`a processor for controlling when power is supplied to the
`external electrical device via the output; and
`a sensor for monitoring wireless output signals of a remote
`control device that control functions of the external electrical
`device or another electrical device associated with the external
`electrical device, said sensor being coupled to the processor, and
`wherein the processor operates to terminate the power supplied
`to the external electrical device based upon the absence of the
`detection of the wireless output signals of the remote control
`device by the sensor.
`8. The energy saving device of claim 1, further
`comprising a power sensor configured
`to sense power
`consumption of the external electrical device, the processor
`being further configured to determine an operational state of the
`external electrical device from the sensed power consumption
`
`4
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`and to terminate the power supplied to the external electrical
`device when the external electrical device is determined to be in
`a selected state.
`10. An energy saving device including
`an electrical plug configured for connecting to a mains
`power supply;
`an electrical socket configured for connecting to an
`electrical device;
`a switch configured to control electrical connection
`between said electrical plug and said electrical socket;
`a sensor configured to wirelessly sense activity of a user-
`operated remote control device, the activity configured to control
`said electrical device;
`a control module configured to monitor the sensor to
`determine a first length of time during which said activity has not
`been detected and to operate said switch to disconnect electrical
`connection between the electrical plug and the electrical socket
`when said first length of time exceeds a threshold value to
`prevent the electrical device from drawing power during at least
`some times when no user is present and using the electrical
`device.
`12. A system for monitoring power consumption of and
`controlling power supply to a plurality of electrical devices, the
`system including:
`communication apparatus for communicating with an
`energy saving device, the energy saving device having:
`a single electrical inlet configured to connect to a mains
`supply electrical outlet; and
`a plurality of controlled electrical outlets for selectively
`supplying electrical power to the electrical devices; and
`a power sensor for monitoring power consumption of at
`least one of the electrical devices connected to the controlled
`electrical outlets;
`a processor configured to control the connection of
`electrical supply from the mains supply electrical outlet to each
`
`5
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`of the controlled electrical outlets in response to a sensed power
`consumption state of at least one of the electrical devices
`a device sensor for monitoring output of a remote control
`device, said device sensor being coupled to the device processor,
`and wherein the device processor operates to terminate the power
`supplied to the external electrical device based upon the absence
`of the detection of output of the remote control device by the
`sensor.1
`
`Id. at 15:5–19, 15:44–51, 16:1–16, 16:26–48 (emphasis added to disputed
`limitations).
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 8 and 10–16 of the ’099 patent are
`unpatentable based on the following specific grounds (Pet. 3, 8–67):
`
`
`1 Patent Owner argues that the indentations used in claim 12 of the printed
`patent are erroneous and should not affect the meaning of the claim. See
`Prelim. Resp. 41–42. We do not consider this argument in reaching our
`decision as to whether to institute. We note that the text indentations used
`here for claim 12 do not reflect any intention of accepting Patent Owner’s
`argument, even preliminarily.
`
`6
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`References
`EP ’3792 and the ’707
`patent3
`EP ’379, the ’707 patent,
`and EP ’7524
`
`Basis
`
`Challenged Claim(s)
`
`35 U.S.C. § 103(a)
`
`10
`
`35 U.S.C. § 103(a)
`
`8 and 11–16
`
`In its analysis, Petitioner relies on the declaration testimony of Thomas A.
`Gafford (Ex. 1006).
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`
`
`2 EP 2 051 379 A1, filed Oct. 16, 2008, published Apr. 22, 2009 (Ex. 1002,
`“EP ’379”).
`3 U.S. Patent No. 7,034,707, issued Apr. 25, 2006 (Ex. 1007, “the ’707
`patent”).
`4 EP 1 223 752 A2, filed Nov. 30, 2001, published July 17, 2002 (Ex. 1003,
`“EP ’752”).
`
`7
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner notes that, in the decision to institute inter partes review in
`IPR2016-01336, the Board previously construed “electrical plug.” Pet. 8.
`Petitioner does not propose a different construction for “electrical plug” and
`does not propose an express construction for any other claim term. Id. at 7–
`8. Patent Owner asserts that each claim term should be given its plain and
`ordinary meaning, and specifically proposes constructions for “connectable”
`and “communication apparatus.” Prelim. Resp. 30–42. For purposes of this
`decision, we determine that “electrical plug” and “connectable” require
`express construction, as explained below. We also address the scope of the
`claimed “communication apparatus” in connection with our analysis of
`Petitioner’s proposed ground of unpatentability of claim 12. See infra
`Section II.C.2.c.
`
`1. “Electrical plug”
`Claim 10 recites “an electrical plug configured for connecting to a
`mains power supply.” Petitioner notes that “[t]he Board previously
`construed ‘electrical plug’ to mean ‘the half of a connector that is normally
`movable and is generally attached to a cable or removable subassembly, and
`that is inserted in a jack, outlet, receptacle, or socket.’” Pet. 8 (citing
`IPR2016-01336, Paper 7, 7–9). Petitioner does not advocate for a different
`construction. Id. Nor does Patent Owner propose a construction of
`“electrical plug.” See Prelim. Resp. 30–42.
`The construction of “electrical plug” in IPR2016-01336 was based on
`the current record in that proceeding and for institution purposes. See
`IPR2016-01336, Paper 7, 7–9, 23. For purposes of institution in the instant
`
`8
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`proceeding, we likewise construe “electrical plug” to mean “the half of a
`connector that is normally movable and is generally attached to a cable or
`removable subassembly, and that is inserted in a jack, outlet, receptacle, or
`socket.” The plain and ordinary meaning of “plug” in the electrical sense is
`the half of a connector that is normally movable and is generally attached to
`a cable or removable subassembly, and that is inserted in a jack, outlet,
`receptacle, or socket. Ex. 3001 (MCGRAW-HILL DICTIONARY OF SCIENTIFIC
`AND TECHNICAL TERMS 1619 (6th ed. 2003) (defining “plug [ELEC]”)). The
`’099 patent specification does not provide a meaning for “electrical plug”
`that is different from its ordinary meaning, such as by defining it more
`broadly to be any power or electrical line for connecting a power supply to
`the energy saving device.
`The written description does not use the term “electrical plug,” but
`describes and illustrates a “power plug” for connecting the power saving
`device to the main power supply. Ex. 1001, 5:63–64, 6:4–9, 8:13–16, 9:8–
`14, Figs. 1–5. The ’099 patent describes an embodiment that seemingly
`would not have an electrical plug for connecting the energy saving device to
`the external power supply. In that embodiment, electrical devices are
`permanently wired to mains electrical power and “the energy saving device
`could be incorporated into the mains wiring infrastructure or incorporated as
`an integral part of the mains powered equipment.” Ex. 1001, 4:23–29. The
`patent does not describe that embodiment as having an electrical plug
`configured for connecting the energy saving device to the external power
`supply, whereas the patent describes other embodiments as having a power
`plug to connect to the main power supply. Id. at 4:23–29, 5:63–64, 6:4–9,
`8:13–16, 9:8–14; Prelim. Resp. 16. Moreover, other claims of the ’099
`
`9
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`patent use different terms such as “input” (claim 1) or “electrical input”
`(claim 9) to more broadly cover a variety of connections to the external
`power supply. Ex. 1001, 15:7, 15:51–52.
`
`2. “Connectable”
`Claim 1 requires “an input connectable to an external power supply”
`and “an output connectable to the external electrical device for selectively
`providing operating power thereto.” Patent Owner asserts that
`“connectable” means “can be both connected and disconnected.” Prelim.
`Resp. 32. Patent Owner argues that the ’099 patent states that the disclosed
`systems are preferably used in connection with plug-in devices and may also
`be used with electrical devices that are permanently wired to mains electrical
`power. Id. Patent Owner argues that “a person having ordinary skill would
`refer to [an energy saving device that uses an electrical plug] as an electrical
`device adapted ‘to connect’ or an electrical device ‘connectable’ to an
`external power supply.” Id. Patent Owner argues that “a person having
`ordinary skill would refer to [an energy saving device that is permanently
`wired to mains electrical power] as an electrical device ‘connected’ to the
`mains electrical power but not an electrical device ‘connectable’ to the
`mains electrical power.” Id. (citing Ex. 1001, 9:8–13).
`On the current record and for purposes of institution, we determine
`that Patent Owner’s proposed construction is too narrow and is not the
`broadest reasonable interpretation of “connectable” in light of the
`’099 patent specification. Patent Owner seeks to exclude from the scope of
`the term a device that is permanently wired to mains electrical power. Id.
`Patent Owner’s only support for this narrow reading is the following passage
`from the ’099 patent:
`
`10
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`As with the other embodiments, universal wall plug 10a is
`connected to mains power through mains power plug 18, this
`connection providing mains power to wall plug 12b and devices
`connected to outlets 14 and 16, as well as connection to the mains
`power line carrier system 38.
`
`See id. (citing Ex. 1001, 9:8–13). The above passage describes the
`embodiment illustrated in Figure 3, which, like the embodiments illustrated
`in Figures 1 and 2, includes mains power plug 18. Compare Ex. 1001, Fig.
`3, with id. at Figs. 1, 2. The above passage does not use the word
`“connectable” or limit the scope of “connectable.” Nor does the above
`passage describe an embodiment in which the device is permanently wired.
`The passage in the ’099 patent that describes devices permanently wired to
`mains electrical power is the following:
`The energy saving device may take any desired form but
`preferably is a power board, a general power outlet (GPO), a wall
`plug or an energy centre. It is preferred that the system or method
`of the invention are used in connection with “plug-in” electrical
`devices, but the system or method may also be used with
`electrical devices which are permanently wired to mains
`electrical power. In the latter case, the energy saving device
`could be incorporated into the mains wiring infrastructure or
`incorporated as an integral part of mains powered equipment.
`
`Id. at 4:21–29. Patent Owner does not point to any statement in the above
`passage that excludes an input “connectable” to an external power supply.
`See Prelim. Resp. 30–32. Patent Owner’s argument in its Preliminary
`Response regarding how a person of ordinary skill in the art would refer to
`such a wired connection is thus unsupported. See Prelim. Resp. 32.
`Moreover, the ordinary meaning of the suffix “able” is “capable of” or
`“fit for.” See Ex. 3002 (defining “-able” as “capable of, fit for, or worthy of
`(being so acted upon or toward)—chiefly in adjectives derived from verbs”).
`
`11
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`Thus, the ordinary meaning “connectable” is “capable of connecting.”
`Patent Owner fails to provide support for limiting the scope to also require
`“capable of disconnecting.”
`For the above reasons, on the current record and for purposes of
`institution, we determine that the broadest reasonable construction of
`“connectable” is “capable of connecting.”
`
`3. “Communication apparatus”
`Claim 12 recites, among other things, “[a] system for monitoring
`power consumption of and controlling power supply to a plurality of
`electrical devices, the system including: communication apparatus for
`communicating with an energy saving device.” Patent Owner argues that
`“claim 12 should be construed to recite two primary elements—a
`communication apparatus and an energy saving device, wherein the energy
`saving device has at least a single electrical inlet, a plurality of electrical
`outlets, a power sensor, a processor, and a device sensor.” Prelim. Resp. 42;
`see id. at 32–42. Patent Owner argues that “[e]xternal to the energy saving
`device, the specification shows a separate communication apparatus for
`communicating with the energy saving device.” Id. at 36. In distinguishing
`EP ’379, Patent Owner asserts that the USB interface in EP ’379 “is not an
`apparatus” and “is part of the alleged energy saving device rather than a
`separate apparatus for communicating with the energy saving device.” Id. at
`46.
`
`We address the scope of “communication apparatus” in connection
`with the analysis of the second ground below. See infra Section II.C.2.c.
`
`12
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`B. Asserted Obviousness over EP ’379 and the ’707 patent
`Petitioner contends that claim 10 is unpatentable under 35 U.S.C.
`§ 103 as obvious over EP ’379 and the ’707 patent. Pet. 3, 8–20. Relying in
`part on the testimony of Mr. Gafford, Petitioner explains how the references
`allegedly teach or suggest the claim limitations and provides purported
`reasoning for combining the teachings of the references. Id. at 8–20 (citing
`Ex. 1006).
`
`1. Summary of EP ’379
`EP ’379 discloses a power saving system for electronic devices when
`the devices are in standby mode and not in use. Ex. 1002, 1. According to
`EP ’379, television sets, audio systems, DVD players, and “many similar
`electronic devices widely used in the end-user electronics market consume
`energy in their standby mode, though the amount of energy consumed in this
`mode is less as compared to their operating mode.” Id. ¶ 2. EP ’379
`explains that an advantage of the invention described therein is saving
`energy that many devices consume during their standby period. Id. ¶ 28.
`Figure 2 of EP ’379, shown below, illustrates a block diagram of the
`system:
`
`13
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`
`Id. ¶ 12. As shown above in Figure 2, a controller is connected to electronic
`devices such as a television set, a DVD player, and an audio and video
`receiver. Id. ¶¶ 16, 17, 21.
`Figure 3 of EP ’379, shown below, illustrates the components of the
`controller:
`
`14
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`
`Id. ¶ 12. As shown in Figure 3 above, the controller includes memory 13,
`bus 9 to change data on the controller’s memory, microprocessor 12, a signal
`receiving unit (in this example, infrared receiver unit 10), a signal
`transmitting unit (in this example, infrared transmitter unit 11), a main
`power supply, an internal power supply, switches for powering on or off
`electronic devices 1 to 7, and plug outputs for connecting to electronic
`devices 1 to 7. Id. ¶¶ 16, 17, 21, 23.
`EP ’379 describes an example in which a user utilizes a remote
`control to transmit a signal to switch the television to standby mode, and the
`internal electronics of the television switch the television to standby mode.
`
`15
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`Id. ¶¶ 19, 24. The controller also senses the remote control signal and
`completely interrupts the power to the television after a short period of time,
`according to a predetermined shutting-down rule. Id. The controller also
`completely interrupts the power to other connected devices in accordance
`with rules stored in the memory of the controller. Id. ¶ 21. For example, the
`controller may also interrupt the power to the DVD player and the
`video/audio receiver, thereby saving power to all three devices. Id.
`EP ’379 also discloses that when the controller does not sense a signal
`from the remote control for a certain period of time (e.g., three hours), the
`controller may power off the devices connected to it in accordance with an
`automatic turning-off rule. Id. ¶ 26.
`
`2. Summary of the ’707 patent
`The ’707 patent is a U.S. patent titled “System and Device for
`Monitoring at Least One Household Electric User, in Particular a Household
`Appliance.” Ex. 1007, [54]. The ’707 patent issued April 25, 2006 and is
`prior art to the ’099 patent under 35 U.S.C. § 102(b). Compare id. [45], with
`Ex. 1001, [22], [30].
`Figure 1 of the ’707 patent is shown below:
`
`16
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`
`Figure 1 above illustrates a Multiple Smart Adapter (MSA) and a plurality of
`household electrical users HA1–HA4, such as an electric oven, a
`dishwasher, and a refrigerator. Ex. 1007, 5:11–18. The ’707 patent
`discloses that the MSA “is interposed between a current outlet indicated with
`‘OUT’ in FIG. 1 and the electric users HA1–HA4.” Id. at 5:23–28.
`According to the ’707 patent, the MSA monitors and controls the
`electric users. Id. at 5:32–6:3. Figure 2, below, illustrates an
`implementation of the MSA:
`
`17
`
`
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`Id. at 6:4–5. As illustrated above, the MSA includes a power meter (PM),
`which measures current absorbed by loads HA1–HA4 and the voltage
`applied to their terminals. Id. at 6:62–7:4. The ’707 patent discloses that the
`PM meters voltage V2, which is detected at the terminals of current sensor
`S, and voltage V1, and derives quantities “such as cost, power and
`energy . . . through appropriate mathematic elaborations.” Id. at 6:62–7:9.
`
`3. Analysis
`Petitioner contends that the combination of EP ’379 and the ’707
`patent teaches the limitations of claim 10. Pet. 8–20. Petitioner cites
`passages of EP ’379, and identifies components of the controller illustrated
`in Figure 3 of EP ’379 that purportedly correspond to each limitation of
`claim 10, except the claimed “electrical plug.” Id. at 8–20. Petitioner
`asserts that EP ’379 “is silent regarding whether the connection between the
`switches and the main power supply is an electrical plug” but that “[i]t was
`well-known at the time that electrical plugs were used for connecting energy
`saving devices to mains power supply.” Id. at 9 (citing, e.g., Ex. 1006 ¶ 20).
`Petitioner cites as an example the ’707 patent, which according to Petitioner
`describes an energy device that includes an electrical plug for connecting its
`energy device to the mains power supply. Id. at 9–11 (citing, e.g., Ex. 1007,
`Abstract, Fig. 1; Ex. 1006 ¶¶ 54, 60). Petitioner also provides purported
`reasons for combining the teachings of EP ’379 and the ’707 patent as
`claimed. Id. at 11–12.
`Patent Owner does not challenge in its Preliminary Response
`Petitioner’s contentions that claim 10 is unpatentable as obvious over
`EP ’379 and the ’707 patent. See generally Prelim. Resp.
`
`18
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`Having reviewed the record, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claim 10 is unpatentable under 35 U.S.C. § 103(a) as obvious
`over EP ’379 and the ’707 patent. See Pet. 11–20. Petitioner sufficiently
`shows on the current record, and for purposes of institution, that EP ’379
`discloses an energy saving device that connects to a mains power supply, an
`electrical socket configured for connecting to an electrical device, and a
`switch configured to control the electrical connection to the electrical device.
`Id. at 11–15 (citing, e.g., Ex. 1002, Fig. 3, [57], ¶¶ 21, 23). Petitioner also
`sufficiently shows that EP ’379 discloses a sensor configured to wirelessly
`sense activity of a user-operated remote control device, and to disconnect the
`electrical connection when the length of time during which activity has not
`been detected exceeds a threshold value. Id. at 15–20 (citing, e.g., Ex. 1002,
`Fig. 3, ¶¶ 14, 19, 23, 24, 26).
`Petitioner also sufficiently shows that the ’707 patent discloses an
`electrical plug, and provides sufficient reasoning with rational underpinning
`for combining the teachings of EP ’379 and the ’707 patent as claimed. Id.
`at 9–12 (citing, e.g., Ex. 1007, Abstract, Fig. 1, 5:22–31; Ex. 1006 ¶¶ 54–57,
`60), 15, 19–20. For example, Petitioner asserts that it was well known that
`electrical plugs were used for connecting energy saving devices to a mains
`power supply. Id. at 9, 11. Petitioner also asserts that “[t]he combination
`uses known methods (use of electrical plugs to connect to mains power
`supplies) [to] yield predictable results (the device would work in exactly the
`same manner).” Id. at 11 (citing Ex. 1006 ¶¶ 55–56). Petitioner further
`argues that there are only a limited number of ways in which the connection
`
`19
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`to the mains voltage can be implemented—a direct connection or a plug as
`described in the ’707 patent. Id. at 11–12.
`
`C. Asserted Obviousness over EP ’379, EP ’752, and the ’707 patent
`Petitioner contends that claims 8 and 11–16 of the ’099 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over EP ’379, EP ’752,
`and the ’707 patent. Pet. 3, 20–67. Relying in part on the testimony of
`Mr. Gafford, Petitioner explains how the references allegedly teach or
`suggest the claim limitations and provides purported reasoning for
`combining the teachings of the references. Id. at 20–67.
`
`1. Summary of EP ’752
`EP ’752 discloses an automatic mains switch device that monitors the
`presence of a load on an electric power line and disconnects the load when it
`is not in use. Ex. 1003, 1. Figure 1 of EP ’752, shown below, illustrates
`mains switch device 1 connected to television set 2 and receiver unit 4 for
`receiving signals from remote control unit 5:
`
`
`
`20
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`Id. ¶¶ 15, 17, Fig. 1. As illustrated in Figure 1 above, mains switch device 1
`is connected to first mains power socket 10, and a load (here, television set
`2) is connected to second mains power socket 11 in mains switch device 1.
`Id. ¶ 17.
`The components of device 1 are illustrated in Figure 2 of EP ’752,
`shown below:
`
`
`Id. ¶ 15, Fig. 2. As illustrated in Figure 2 above, mains switch device 1 is
`connected by means of power supply transformer 20 to the electric mains
`line from which the device takes the power required for its operation. Id.
`¶ 18, Fig. 2. Device 1 also includes sensor unit 24, which is used to detect
`the possible presence of an active electrical load connected to device 1. Id.
`¶ 21, Fig. 2. According to EP ’752, “[s]ensor unit 24 will output a first
`electrical signal when the presence of an active load is detected and will
`output a second electrical signal when no active load is detected.” Id. ¶ 22.
`For example, “[s]ensor unit 24 will be able to detect . . . when the electric
`
`21
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`load has been turned off, i.e., when the television set has been turned off by
`using its remote control unit.” Id. ¶ 34. EP ’752 explains that in such a
`case, sensor unit 24 will send an appropriate signal to logical control unit 23,
`which will disconnect load 2 from the mains power line. Id.
`EP ’752 also discloses that device 1 includes signaling device 27 (e.g.,
`a visual signaling device such as an LED and/or an acoustic signaling device
`such as a buzzer) to warn the user that the electric load will be disconnected
`shortly. Id. ¶¶ 26, 34, 35, Fig. 2.
`
`2. Analysis
`a. Claim 8
`Claim 8 depends from claim 1 and requires, among other things, “an
`input connectable to an external power supply” and “a power sensor
`configured to sense power consumption of the external electrical device.”
`Petitioner cites passages of EP ’379, and identifies components of the
`controller illustrated in Figure 3 of EP ’379, that purportedly correspond to
`each limitation of claim 1, and identifies passages from EP ’752 and the
`’707 patent that purportedly correspond to the limitations of claim 8. Id. at
`26–36. Petitioner also provides purported reasons for combining the
`teachings of EP ’379, EP ’752, and the ’707 patent as claimed. Id. at 20–25.
`Patent Owner argues that Petitioner has not shown that EP ’379
`teaches or suggests “an input connectable to an external power supply.”
`Prelim. Resp. 42–45. Patent Owner argues that, in EP ’379, the line leading
`from the main power supply to the controlled outlets “appears to be
`hardwired.” Id. at 45. Patent Owner argues that “a hardwired connection to
`a power supply is not an input ‘connectable’ to a power supply.” Id. at 44–
`45. Relying on its proposed construction of “connectable,” Patent Owner
`
`22
`
`
`
`IPR2017-00839
`Patent 9,106,099 B2
`
`asserts that because, in EP ’379, the line leading from the main power supply
`to the controlled outlets “cannot be both connected and disconnected,” the
`line is not “connectable” to a power supply. Id.; see also id. at 30–32
`(arguing that “connectable” means “can be connected and disconnected”).
`Having reviewed the record, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claim 8 is unpatentable under 35 U.S.C. § 103(a) as obvious
`over EP ’379, EP ’752, and the ’707 patent. See Pet. 26–36. As explained
`in Section II.A.2. above, Patent Owner fails at this preliminary stage to show
`that the broadest reasonable interpretation of “connectable” is “can be
`connected and disconnected.” Rather, we determine for institution purposes
`that “connectable” means “capable of connecting.” Applying this
`construction, Petitioner sufficiently shows on the current record, and for
`purposes of institution, that EP ’379 discloses an energy saving controller
`that has an input connectable to an external power supply, an output
`connectable to an external electrical device for selectively providing
`operating power thereto, a processor for controlling when power is supplied
`to the external device, and a sensor for monitoring wireless output signals of
`a remote control device. See Pet. 26–33 (citing, e.g., Ex. 1002, [57], Fig. 3,
`¶¶ 23, 24, 26; Ex. 1006 ¶ 105). Petitioner also sufficiently shows that EP
`’379 discloses that the processor terminates power supplied to the external
`electrical device based upon the absence of detection of wireless output
`signals of the remote control device by the sensor. See Pet. 30–33 (citing,
`e.g., Ex. 1002, [57], Fig. 3, ¶¶ 23, 24, 26; Ex. 1006 ¶ 105). Petitioner also
`sufficiently shows that the ’707 patent discloses a power sensor configured
`to sense power consumption and that the ’707 patent and EP ’752 teach a
`
`23
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
