Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: December 20, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRICKLESTAR LLC,
`Petitioner,
`
`v.
`
`EMBERTEC PTY LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01336
`Patent 9,106,099 B2
`____________
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: December 20, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRICKLESTAR LLC,
`Petitioner,
`
`v.
`
`EMBERTEC PTY LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01336
`Patent 9,106,099 B2
`____________
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2016-01336
`Patent 9,106,099 B2
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`I.
`INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`TrickleStar LLC (“Petitioner”) challenges the patentability of certain claims
`of U.S. Patent No. 9,106,099 B2 (Ex. 1001, “the ’099 patent”), owned by
`Embertec Pty Ltd. (“Patent Owner”). We have jurisdiction under 35 U.S.C.
`§ 6. This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner has
`shown by a preponderance of the evidence that claims 1–7 and 9 of the ’099
`patent are unpatentable.
`
`A. Procedural History
`Petitioner filed a Petition for inter partes review of claims 1–16 of the
`’099 patent. Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). On December 27, 2016, we instituted an inter
`partes review of claims 1–7 and 9 of the ’099 patent on the following
`grounds: (1) claims 1–4, 7, and 9 of the ’099 patent as anticipated under 35
`U.S.C. § 102(a) or (b)1 by EP ’379,2 and (2) claims 5 and 6 of the ’099
`patent as obvious under 35 U.S.C. § 103 over EP ’379 and EP ’752.3 Paper
`7, 23–24 (“Dec.”).
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’099
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 EP 2 051 379 A1, filed Oct. 16, 2008, published Apr. 22, 2009 (Ex. 1002,
`“EP ’379”).
`3 EP 1 223 752 A2, filed Nov. 30, 2001, published July 17, 2002 (Ex. 1003,
`“EP ’752”).
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`2
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`Subsequent to institution, Patent Owner did not file a Patent Owner
`Response. See Ex. 3002 (email stating that Patent Owner “will not be filing
`a Patent Owner Response”); 37 C.F.R. § 42.120(a) (providing that “[a]
`patent owner may file a response to the petition addressing any ground for
`unpatentability not already denied”). Neither party requested oral argument.
`See Paper 10 (noting that neither party requested oral argument and ordering
`that no oral argument take place); 37 C.F.R. § 42.70(a) (providing that “[a]
`party may request oral argument on an issue raised in a paper”).
`
`B. Related Matters
`The parties do not identify any related district court proceedings, inter
`partes reviews, post-grant reviews, or covered business method patent
`reviews. See Pet. 1; Paper 4, 1.
`
`C. The ’099 Patent
`The ’099 patent is directed to an energy saving device that monitors
`the electrical power supply to electrical equipment to reduce unnecessary
`power consumption. Ex. 1001, [57], 1:14–18. The ’099 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 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, is a general representation the
`components of the energy saving device:
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`Id. at 5:52–54. 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. 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) and microcomputer 50,
`which implements energy saving algorithms and includes flash and/or
`EEPROM non-volatile memory 52 for storing energy saving configuration
`parameters. Id. at 5:63–64, 6:56–64.
`Figure 1 above also illustrates a number of interfaces. Id. at 7:4–5.
`User interface 70 includes LCD or LED indicators 64, beeper 66, and
`pushbuttons and keypad 68. Id. at 7:20–21. According to the ’099 patent,
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`the LCD or LED indicators “output data from monitored power consumption
`and provide an indication of status to the use” and the beeper “provide[s] an
`audible output to indicate faults or status change conditions, such as
`imminent powering down of connected mains powered equipment.” Id. at
`7:22–24, 7:8–30.
`Figure 1 also illustrates “[s]ensor interface 72 and 73,” which
`according to the ’099 patent “provides an interface for wired connection of
`an external sensor module (not shown) including a remote control [infrared
`(IR)] sensor for IR remote control activity sensing in audio-visual
`applications.” Id. at 7:35–38. The patent states that “[t]he purpose of this is
`to enable automatic power reduction or power increase to electrical devices,
`such as in audio-visual equipment, if power can be reduced depending on
`user activity.” Id. at 7:41–44. For example, in the embodiment illustrated in
`Figure 3 of the ’099 patent for a networked universal wall plug or general
`power outlet (GPO), “when the user operates the wireless transmitter via its
`push button or touch sensor, a wireless RF signal would be transmitted and
`received by wall plug 12b, causing it to supply mains power to the
`appliance.” Id. at 8:65–67, 9:34–40. The ’099 patent also discloses that the
`purported invention provides “[u]ser control to optimize energy savings
`function for individual outlets, e.g.[,] by setting idle power threshold levels,
`‘active standby’ timeout periods, etc.” Id. at 14:26–28.
`
`D. Illustrative Claims
`Among the claims at issue in this proceeding, claims 1 and 9 are
`independent. Claims 1, 5, and 9 are illustrative of the claims at issue and
`read as follows:
`
`5
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` An energy saving device for reducing power
`1.
`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.
`5. The energy saving device of claim 1, further including
`an alert device, which provides an alert signal to a user prior to
`the termination of the power supply to the external electrical
`device.
`9. An energy saving device including:
`an electrical input configured for connecting to a power
`supply;
`an electrical output configured for connecting to an
`electrical device of the type which, when connected to a power
`supply has an ‘ON’ state and a ‘STANDBY’ state;
`a switch configured to selectively connect said electrical
`output to said electrical input; and
`a sensor able to wirelessly sense activity of a user-operated
`remote control device for controlling the electrical device;
`wherein said switch is configured to disconnect said
`electrical output from said electrical input in response to at least
`one of:
`(i) said electrical device is in said ‘ON’ state and an
`absence of said activity is detected by said sensor for
`a predetermined timeout period, or,
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`(ii) said electrical device entering said ‘STANDBY’
`state.
`Id. at 15:5–19, 15:33–36, 15:52–67 (indentations added to claim 9).
`
`II. DISCUSSION
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s patent claims, Petitioner
`must demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`A claim is anticipated if a single prior art reference either expressly or
`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
`Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). A claim is unpatentable
`under 35 U.S.C. § 103(a) if the differences between the claimed subject
`matter and the prior art are such that the subject matter, as a whole, would
`have been obvious at the time of the invention to a person having ordinary
`skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
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`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “A determination of
`whether a patent claim is invalid as obvious under § 103 requires
`consideration of all four Graham factors, and it is error to reach a conclusion
`of obviousness until all those factors are considered.” Apple Inc. v. Samsung
`Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc) (citations
`omitted). “This requirement is in recognition of the fact that each of the
`Graham factors helps inform the ultimate obviousness determination.” Id.
`
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the invention. Graham, 383
`U.S. at 17. “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The
`person of ordinary skill in the art is a hypothetical person who is presumed
`to have known the relevant art at the time of the invention. In re GPAC,
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in
`determining the level of ordinary skill in the art include, but are not limited
`to, the types of problems encountered in the art, the sophistication of the
`technology, and educational level of active workers in the field. Id. at 1579.
`In a given case, one or more factors may predominate. Id. Generally, it is
`easier to establish obviousness under a higher level of ordinary skill in the
`art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed.
`Cir. 2011) (“A less sophisticated level of skill generally favors a
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`determination of nonobviousness . . . while a higher level of skill favors the
`reverse.”).
`Petitioner contends that a person having ordinary skill in the art at the
`time of the invention would have had “at least an undergraduate degree in
`Electrical Engineering and three years of experience working with designing
`hardware and software interfaces and power supply and monitoring systems,
`or an equivalent combination and experience in related fields.” Pet. 7.
`Petitioner’s declarant, Mr. Thomas A. Gafford, likewise opines that a person
`of ordinary skill in the art would have had that background. Ex. 1006 ¶ 17.
`Patent Owner did not file a Patent Owner Response and thus does not
`challenge Petitioner’s contention or Mr. Gafford’s testimony regarding the
`level of one of ordinary skill in the art at the time of the invention.4
`We determine that the level of ordinary skill proposed by Petitioner
`and Petitioner’s declarant is consistent with the challenged patent and the
`asserted prior art, and we therefore adopt that definition of the level of
`ordinary skill in the art for the purposes of the analysis below. See Ex. 1001,
`1:14–15 (“The invention relates to aspects of the monitoring of electrical
`power supply to electrical equipment.”); Ex. 1002 ¶ 1 (“The present
`invention relates to a method and system to provide power saving for
`electronic devices while such devices are in the standby mode and are not in
`use, particularly for a setting accommodating multiple electronic devices
`especially in the end-user sector.”); Ex. 1003 ¶ 1 (“The present invention
`relates to an automatic means switch device used to disconnect a load from
`
`
`4 We note that, in its Preliminary Response, Patent Owner did not challenge
`Petitioner’s contention or Mr. Gafford’s testimony regarding the level of
`ordinary skill in the art. See generally Prelim. Resp.
`9
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`the electrical mains line, particularly useful in association with electrical
`appliances controlled by remote control units like, for example, television
`sets.”) (emphasis omitted).
`
`C. 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
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for “input” (claim 1), “electrical
`input” (claim 9), “sensor” (claims 1 and 9), and “alert device” (claim 5).
`Pet. 7–10. Petitioner asserts that “input” and “electrical input” each mean “a
`power or electrical line for connecting a power supply to the energy saving
`device.” Id. at 8. Petitioner asserts that “sensor” means “any signal
`detection device that detects any kind of wireless signal from a remote
`controller.” Id. at 9. Petitioner asserts that “alert device” means “any device
`which can send out a visual or audible signal to a user.” Id. at 9–10.
`
`10
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`Patent Owner did not file a Patent Owner Response and thus does not
`challenge in this instituted inter partes review any of Petitioner’s proposed
`constructions. See 35 U.S.C. § 316(a)(8) (stating that the Director “shall
`prescribe regulations . . . providing for the filing by the patent owner of a
`response to the petition . . . after an inter partes review has been instituted,
`and requiring that the patent owner file with such response, through
`affidavits or declarations, any additional factual evidence and expert
`opinions on which patent owner relies in support of the response”); 37
`C.F.R. § 42.120(a) (providing that “[a] patent owner may file a response to
`the petition addressing any ground for unpatentability not already denied”).
`We note that in its Preliminary Response, Patent Owner asserted that
`each term should be given its plain and ordinary meaning, without
`specifying what that plain and ordinary meaning is. Prelim. Resp. 12–22.
`With respect to the terms “input” and “electrical input,” Patent Owner
`argued that “electrical plug”—recited in claim 10—does not have the same
`meaning as “input” and “electrical input.” Id. at 12–18. With respect to
`“sensor,” Patent Owner argued that Petitioner’s proposed construction
`makes other claim terms redundant. Id. at 20. And with respect to “alert
`device,” Patent Owner argued that “alert device” does not require
`construction because neither of Petitioner’s proposed grounds in its Petition
`turn on the meaning of “alert device.” Id. at 21.
`We determine that we do not need to expressly construe “input”
`(claim 1), “electrical input” (claim 9), “sensor” (claims 1 and 9), and “alert
`device” (claim 5) to determine whether Petitioner has shown by a
`preponderance of the evidence that claims 1–7 and 9 are unpatentable.
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`D. Asserted Anticipation by EP ’379
`Petitioner contends that claims 1–4, 7, and 9 are unpatentable under
`35 U.S.C. § 102(a) or (b) as anticipated by EP ’379. Pet. 3, 11–36. Relying
`in part on the testimony of Mr. Gafford, Petitioner purportedly explains how
`EP ’379 discloses each claim limitation. Id. at 11–36 (citing Ex. 1006).
`As stated above, Patent Owner did not file a Patent Owner Response.
`We also note that Patent Owner did not challenge in its Preliminary
`Response Petitioner’s contention that claims 1–4, 7, and 9 are anticipated by
`EP ’379. See generally Prelim. Resp. The burden, however, remains on the
`Petitioner to demonstrate by a preponderance of the evidence that these
`claims are anticipated by EP ’379. 35 U.S.C. § 316(e); Dynamic Drinkware,
`800 F.3d at 1378.
`We have reviewed Petitioner’s arguments in the Petition as well as the
`evidence discussed in the Petition, including the declaration of Mr. Gafford.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–4, 7, and 9 are anticipated by
`EP ’379.
`
`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.
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`Figure 2 of EP ’379, below, illustrates a block diagram of the power
`saving system:
`
`
`Id. ¶ 12. As shown above in Figure 2, a controller is connected to electronic
`devices such as television set, DVD player, and audio and video receiver.
`Id. ¶¶ 16, 17, 21.
`Figure 3 of EP ’379, below, illustrates the components of the
`controller:
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`Id. ¶ 12. As shown in Figure 3 above, the controller includes memory 13,
`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, internal power supply 16, switches for powering
`on or off electronic devices 1 to 7 (shown in Figure 1), 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.
`Id. ¶¶ 19, 24. EP ’379 discloses that the controller senses the remote control
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`signal and completely interrupts the power to the television after a short
`period of time, according to a predetermined shutting-down rule. Id.
`According to EP ’379, 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. Analysis
`a. Whether EP ’379 is Prior Art
`Petitioner asserts that the ’099 patent “is a national stage entry of a
`PCT patent application designating the United States, filed on June 3, 2010
`and claims priority to Australian patent application AU2009902532.” Pet. 7.
`Petitioner argues that “the effective filing date of the ’099 patent is June 3,
`2010,” and “the earliest priority date of the ’099 patent is June 3, 2009”—the
`filing date of the Australian patent application. Id. Petitioner contends that
`EP ’379—which was published April 22, 2009—is prior art under 35 U.S.C.
`§ 102(a) or § 102(b). Pet. 3.
`Patent Owner does not challenge that EP ’379 is prior art to the claims
`at issue in this inter partes review. Patent Owner also does not argue or
`provide any supporting evidence that the claims at issue are entitled to an
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`invention date prior to June 3, 2009, the filing date of the Australian patent
`application.5
`EP ’379 was published April 22, 2009. Ex. 1002, [43]. Because
`EP ’379 was published before the earliest possible invention date of record
`in this proceeding, Petitioner has shown by a preponderance of the evidence
`that EP ’379 is prior art to claims 1–4, 7, and 9 of the ’099 patent at least
`under 35 U.S.C. § 102(a).
`
`b. Claim 1
`Petitioner contends that EP ’379 discloses each limitation of
`independent claim 1. Pet. 11–18. Specifically, Petitioner contends that EP
`’379 discloses an energy saving device—a power saving system controller—
`that turns off power to a connected device when no remote command has
`been received for a predetermined time period. Id. at 11 (citing Ex. 1002,
`[57]). 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. Id. at 11–18.
`Having reviewed the Petition and the evidence discussed therein, we
`determine that Petitioner has demonstrated by a preponderance of the
`evidence that claim 1 is unpatentable under 35 U.S.C. § 102(a) as anticipated
`by EP ’379. See Pet. 11–18; Ex. 1002 ¶¶ 23, 24, 26, Figs. 2, 3. First, EP
`’379 discloses an energy saving device for reducing power consumption of
`an external electrical device. Ex. 1002, [57] (disclosing “a method and
`system to provide power saving for electronic devices”); Ex. 1006 ¶ 42. EP
`’379 also discloses turning off devices for which no signal is received from a
`
`5 We also note that Patent Owner did not challenge the prior art status of EP
`’379 in its Preliminary Response. See generally Prelim. Resp.
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`remote control for a predetermined time period. Id. at ¶ 26; see Pet. 17
`(citing, e.g., Ex. 1002 ¶ 26).
`EP ’379 also discloses that the energy saving device includes an input
`connectable to an external power supply, as illustrated in Petitioner’s
`annotated version of Figure 3 of EP ’379, below:
`
`
`Pet. 11–12; Ex. 1002, Fig. 3, ¶ 23; Ex. 1006 ¶ 47. Petitioner’s annotated
`Figure 3 adds red ovals around the main power supply and the input to the
`switches that selectively power electronic devices 1–7. Id. at 11–13; Ex.
`1002 ¶ 23. EP ’379 discloses that the line connecting the switches to the
`main power supply (as opposed to “internal” power supply 16 illustrated in
`Figure 3) is an input connectable to an external power supply. Ex. 1002,
`Fig. 3, ¶ 23; see also Ex. 1006 ¶ 47 (opining that main power supply
`depicted in Figure 3 is an external power supply).
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`EP ’379 also discloses that the energy saving device includes an
`output connectable to the external electrical device for selectively providing
`operating power thereto, as illustrated in Petitioner’s annotated version of
`Figure 3:
`
`
`Pet. 13–14 (citing Ex. 1002, Fig. 3, ¶¶ 23, 24; Ex. 1006 ¶ 49). Petitioner
`annotates Figure 3 above with red circles around a microprocessor,
`switching circuit, and plug outputs. Id. at 13; Ex. 1002, Fig. 3, ¶ 23. EP
`’379 discloses that “the plugs (i.e. wall plugs) to connect . . . electronic
`devices are placed on [the] controller.” Ex. 1002 ¶ 16; see also id. ¶ 21
`(disclosing that electronic devices 1–7 (illustrated in Figure 1) are connected
`to the controller via plugs on the controller). EP ’379 also discloses that “the
`controller may include power switches (14a-14g) capable to powering on
`and off the relevant units.” Id. ¶ 23. EP ’379 also discloses that the
`switches selectively connect the external electrical devices to the main
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`Patent 9,106,099 B2
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`power supply and thereby selectively provide operating power to the
`external electrical device, as claimed. Id. ¶¶ 23, 26 (“[I]f the user does not
`depress any key on any remote control of any electronic device connected to
`the controller, . . . the controller may power off the electronic devices
`connected to itself according to an automatic turning-off rule.”). Thus, EP
`’379 discloses a plug output connectable to an electronic device for
`selectively powering that device.
`EP ’379 also discloses that the energy saving device includes a
`processor for controlling when power is supplied to the external device. Ex.
`1002, Fig. 3, ¶ 24; Ex. 1006 ¶ 49. Specifically, EP ’379 discloses a
`microprocessor (element 12 in Figure 3), which implements a turning-ON
`rule for, for example, switching an electronic device to standby mode. Ex.
`1002, Fig. 3, ¶ 24. EP ’379 discloses that “[t]he controller unit identifies as
`to which electronic device’s remote control the user has depressed . . . and
`then, allows power to be supplied to the relevant electronic device according
`to the ON/OFF status of devices stored on its memory (13), and to a turning-
`ON rule stored on its microprocessor (12).” Id. ¶ 24.
`EP ’379 also discloses that the energy saving device includes a sensor
`for monitoring wireless output signals of a remote control device, the 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 wireless output signals of the remote control
`device by the sensor. Ex. 1002, Fig. 3, ¶¶ 23, 24, 26; Ex. 1006 ¶ 50.
`Petitioner’s annotated Figure 3 is below:
`
`19
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`IPR2016-01336
`Patent 9,106,099 B2
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`
`Pet. 16. As illustrated above, Petitioner adds red ovals around what it
`contends, and with which we agree, correspond to the claimed sensor and
`microprocessor: infrared receiver unit 10 and microprocessor 12. Id.
`EP ’379 discloses that infrared receiver unit 10 is coupled to microprocessor
`12 and that the infrared receiver unit monitors wireless output signals from a
`remote control. Ex. 1002, Fig. 3, ¶¶ 24, 26. Specifically, EP ’379 discloses
`that “the signals of the remote controls of electronic devices connected to the
`subject controller [are] sensed, identified, and interpreted by the controller.”
`Id. ¶ 23; see also id. ¶ 26 (stating that “the remote control signals controlling
`the devices connected to the controller can also be sensed by the
`controller”). According to EP ’379, “[t]he controller unit identifies as to
`which electronic device’s remote control the user has depressed by means of
`the signal receiver (10) on itself.” Id. ¶ 24.
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`20
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`Patent 9,106,099 B2
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`EP ’379 also discloses that the microprocessor terminates power
`supplied to the external electrical device based upon the absence of detection
`of signals from the remote control. Id. ¶ 26. EP ’379 states the following:
`The controller can be set to a predetermined time period in order
`to save power, and if no signal is received within this time period
`from a remote control of any device connected to it, the controller
`can turn OFF such devices in turn or at the same time according
`to a predetermined power saving rule.
`Id. EP ’379 adds an example of a user setting the automatic turn-off period
`to three hours. Id. Under this example, according to EP ’379, “if the user
`does not depress any key on any remote control of any electronic device
`connected to the controller, or if no signal is sensed by the controller within
`three hours, the controller may power off the electronic devices connected to
`itself in sequence according to an automatic turning-off rule.” Id.
`In sum, Petitioner shows by a preponderance of the evidence that
`claim 1 is unpatentable as anticipated by EP ’379.
`c. Claims 2 and 3
`Claim 2 depends from claim 1 and adds “wherein the wireless output
`signals of the remote control device comprise radio frequency (RF) control
`signals and wherein the sensor is configured for monitoring RF signals.”
`Ex. 1001, 15:20–23. Claim 3 depends from claim 2 and adds “wherein
`wireless output signals of the remote control device comprise infrared (IR)
`control signals and wherein the sensor is configured for monitoring IR
`signals.” Id. at 15:20–27. Petitioner contends that EP ’379 discloses the
`limitations of claims 2 and 3. Pet. 34–35.
`Having reviewed the Petition and the evidence discussed therein, we
`determine that Petitioner has demonstrated by a preponderance of the
`
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`evidence that claims 2 and 3 are unpatentable under 35 U.S.C. § 102(a) as
`anticipated by EP ’379. See Pet. 34–35 (citing Ex. 1002 ¶¶ 19, 23); Ex.
`1006 ¶¶ 67, 69; Ex. 1002, Fig. 3, ¶¶ 19, 23. As explained above, EP ’379
`discloses all of the limitations of claim 1. In addition, EP ’379 discloses that
`the wireless output signals of the remote control can be radio frequency
`control signals and can be infrared control signals. For example, the sensor
`depicted in Figure 3 of EP ’379 is an “[i]nfrared receiver unit.” Ex. 1002,
`Fig. 3; see also id. ¶ 23 (describing the example of “an infrared signal
`transceiver”). EP ’379 also states that, “[i]n addition to infrared rays, the
`electronic devices can be controlled by radio signals or by any other known
`remote control methods as well.” Ex. 1002 ¶ 19. Further, EP ’379 discloses
`that “[t]he signals used to control the electronic devices are also sensed by
`the controller.” Id. Petitioner thus shows that EP ’379 discloses the
`limitations of claims 2 and 3.
`d. Claim 4
`Claim 4 depends from claim 1 and adds “wherein the processor
`terminates the supply of power to the external electrical device when the
`absence of the detection of the wireless output signals of the remote control
`device by the sensor exceeds a predetermined time-out period.” Ex. 1001,
`15:28–32. Petitioner contends that EP ’379 discloses the limitations of
`claim 4. Pet. 35–36.
`Having reviewed the Petition and the evidence discussed therein, we
`determine that Petitioner has demonstrated by a preponderance of the
`evidence that claim 4 is unpatentable under 35
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