DOCKET NO.: 2211726-00149
`Filed on behalf of Unified Patents Inc.
`By:
`
`(David.Cavanaugh@wilmerhale.com)
`David L. Cavanaugh, Reg. No. 36,476
`(Daniel.Williams@wilmerhale.com)
`Daniel V. Williams, Reg. No. 45,221
`(Evelyn.Mak@wilmerhale.com)
`Evelyn C. Mak, Reg. No. 50,492
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Roshan Mansinghani, Reg. No. 62,429
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, DC, 20009
`Tel: (202) 805-8931
`
`(roshan@unifiedpatents.com)
`(jonathan@unifiedpatents.com)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`UNIFIED PATENTS INC.
`Petitioner
`v.
`WIRELESS MONITORING SYSTEMS
`Patent Owner
`IPR2018-00027
`Patent 9,280,886
`DECLARATION OF PAUL FRANZON, PH. D.
`US PATENT NO. 9,280,886
`CLAIMS 1-2, 4-6, 9-10, 29, 35, 37-42, AND 51-54
`
`Unified V. Wireless
`IPR2018-00027
`Unified Ex 1002
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`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................... 1 
`I. 
`TECHNOLOGY BACKGROUND ................................................................. 4 
`II. 
`III.  OVERVIEW OF THE ’886 PATENT ............................................................ 6 
`A. 
`Summary of the Alleged Invention ....................................................... 6 
`B. 
`Prosecution History ............................................................................. 12 
`C. 
`Level of Ordinary Skill in the Art ....................................................... 13 
`D.  Understanding of the Law ................................................................... 14 
`IV.  CLAIM CONSTRUCTION .......................................................................... 16 
`A.  Means-Plus-Function Terms ............................................................... 17 
`1. 
`“a comparison module configured to…” (claim 1) .................. 19 
`2. 
`“a communication module configured to…” (claim 1) ............ 20 
`3. 
`“a circuit monitoring module configured…” (claim 29) .......... 21 
`4. 
`“a communications module to…” (claim 29) ........................... 23 
`INVALIDITY OF THE CHALLENGED CLAIMS ..................................... 25 
`A.  Ground I: Claims 1-2, 4-6, 9-10, 38-42, 51 are rendered obvious by
`Handley in view of Pacheco ............................................................... 25 
`1. 
`Overview of Handley ................................................................ 25 
`2. 
`Overview of Pacheco ................................................................ 29 
`3. 
`Reasons to Combine Handley and Pacheco ............................. 31 
`4. 
`Claim 1 ...................................................................................... 37 
`5. 
`Claim 2 ...................................................................................... 53 
`6. 
`Claim 4 ...................................................................................... 54 
`7. 
`Claim 5 ...................................................................................... 55 
`8. 
`Claim 6 ...................................................................................... 55 
`9. 
`Claim 9 ...................................................................................... 56 
`10.  Claim 10 .................................................................................... 56 
`11.  Claim 38 .................................................................................... 56 
`12.  Claim 39 .................................................................................... 58 
`13.  Claim 40 .................................................................................... 58 
`14.  Claim 41 .................................................................................... 58 
`
`V. 
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`B. 
`
`15.  Claim 42 .................................................................................... 59 
`16.  Claim 51 .................................................................................... 60 
`Ground II: Claims 29, 35, 37, 52-54 are rendered obvious by Handley
`in view of Pacheco, Castleman, and Ruckley ..................................... 60 
`1. 
`Overview of Castleman ............................................................ 60 
`2. 
`Overview of Ruckley ................................................................. 63 
`3. 
`Claim 29 .................................................................................... 65 
`4. 
`Claim 35 .................................................................................... 82 
`5. 
`Claim 37 .................................................................................... 82 
`6. 
`Claim 52 .................................................................................... 83 
`7. 
`Claim 53 .................................................................................... 84 
`8. 
`Claim 54 .................................................................................... 84 
`VI.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 84 
`VII.  RIGHT TO SUPPLEMENT .......................................................................... 85 
`VIII.  JURAT ........................................................................................................... 86 
`
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`I.
`
`INTRODUCTION
`1. My name is Paul Franzon. I am a currently the Cirrus Logic Inc.
`
`Distinguished Professor and Director of Graduate Programs in the Department of
`
`Electrical and Computer Engineering at North Carolina State University
`
`(“NCSU”) in Raleigh, North Carolina. I have been affiliated with NCSU in
`
`various roles since 1989.
`
`2.
`
`I completed my Ph.D. in Electrical and Electronic Engineering in
`
`1989 from the University of Adelaide in Australia. I obtained two additional
`
`degrees from the University of Adelaide: a Bachelor of Engineering in Electrical
`
`and Electronic Engineering in 1984 and a Bachelor of Science in Physics and
`
`Mathematics in 1983.
`
`3.
`
`I have over 20 years of experience with sensor systems, and the
`
`devices, circuits and processors used within and with them. My experience in
`
`these areas started in the 1980s.
`
`4.
`
`In 1983, one of my senior design projects at the University of
`
`Adelaide was to build a circuit and microprocessor for interpreting results from an
`
`infrared sensor used as an eye gaze monitor. I demonstrated using this system to
`
`enable a gaze to text function suitable for use by quadriplegics.
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`5.
`
`In 1987, I co-founded Network Communications Pty. Ltd. One of the
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`projects we participated in was the system design of anklet devices for home
`
`internment of prisoners.
`
`6.
`
`From 1993 to 2000, I led a project designing a programmable optical
`
`micro-device to be used for a laser radar sensor. This project was sponsored by
`
`the National Science Foundation and the United States Air Force.
`
`7.
`
`From 2006 to 2010, I was co-PI of a project developing sensor chips
`
`to be used to qualify a continuous flow food processing system. These chips
`
`sensed, recorded temperature, and communicated that profile to a central
`
`computer via a wireless link.
`
`8.
`
`From 2011 to 2013, I was a thrust director in a Center building
`
`integrated sensors for self-monitoring by asthma patients. I was responsible for
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`sensor integration.
`
`9.
`
`Over my entire career I have taught classes involving circuit design
`
`and processor design and programming. I have participated in many projects
`
`requiring this skill set.
`
`10. A copy of my C.V. is attached as Appendix A.
`
`11.
`
`I have reviewed the specification, file history and claims of U.S.
`
`Patent No. 9,280,886 to Eric Bullmore (the “’886 patent”).
`
`12.
`
`I have reviewed and understand the following references:
`
`2
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`
`
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`
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`U.S. Patent No. 6,215,405 (“Handley”)
`U.S. Patent No. 5,499,196 (“Pacheco”)
`U.S. Patent No. 6,057,549 (“Castleman”)
`U.S. Patent No. 6,360,277 (“Ruckley”)
`
`13. The ’886 patent purports to relate to “circuit monitoring devices.”
`
`(’886 patent at Abstract (EX1001)). In the ’886 patent, the “circuit monitoring
`
`devices” require knowledge of circuit design, microprocessor programming, and
`
`network interfaces. Accordingly, I have been retained by Petitioner Unified
`
`Patents Inc. as an expert in the fields of circuit design, microprocessor
`
`programming, and network interfaces.
`
`14.
`
`I am being compensated at my normal consulting rate for my work.
`
`My compensation is not dependent on and in no way affects the substance of my
`
`statements in this declaration.
`
`15. To the best of my knowledge, I have no financial interest in Petitioner.
`
`To the best of my knowledge, I similarly have no financial interest in the ’886
`
`patent. To the extent any mutual funds or other investments I own have a
`
`financial interest in the Petitioner, Unified Patents Inc., or the ’886 patent, I do not
`
`knowingly have any financial interest that would affect or bias my judgment.
`
`3
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`II. TECHNOLOGY BACKGROUND
`16. By December 2000, it was well known to provide devices for
`
`monitoring the status of circuits in alarm systems, security management systems,
`
`fire systems, and building management systems. (’886 patent at 1:37-59
`
`(EX1001); Handley at 2:55-65, Fig. 1 (EX1003); Pacheco at 4:65-5:3, Fig. 1
`
`(EX1004)).
`
`17.
`
`In these alarm or security systems, it was known to provide circuits,
`
`such as sensors, to monitor “a zone or area of protection.” (Handley at 2:60-62
`
`(EX1003)). These systems supported many different types of sensors that could
`
`monitor for different conditions within a specified area. For example, it was
`
`known to use sensors such as motion detectors, fire detectors, water detectors,
`
`glass break detectors, door/window contacts to detect an open door/window,
`
`shock sensors to detect shock outside a range, switches to detect changes between
`
`normally open and closed states, keypads to provide authorization and/or entry
`
`codes that permit on-site enablement/disablement of a system, temperature sensors
`
`to detect a temperature outside a range, etc. (Handley at 2:60-65 (EX1003);
`
`Pacheco at 5:19-29 (EX1004)).
`
`18.
`
`In these alarm/security systems, it was also known to provide a
`
`monitoring device (e.g., alarm panel, alarm interface, keyboard controller) that
`
`could receive data from these sensors and use this data to detect for a normal
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`4
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`condition or for one or more alarm conditions in the specified area associated with
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`a sensor. (Handley at 2:55-3:16, 4:47-5:48, Figs. 1-3 (EX1003); Pacheco at 4:65-
`
`5:29, 6:45-7:18, Figs. 1-3 (EX1004)). It was further known that this monitoring
`
`device typically included a processor, among other circuit components, that
`
`received the data from the sensors, compared the data from each sensor to one
`
`more thresholds that corresponded to different conditions (e.g., normal/alarm,
`
`door open/closed, fire/water not detected/detected, temperature below/exceeded a
`
`threshold), and assigned a status (e.g., set a flag or bit to logical “0” or “1”
`
`depending on the condition) based on the comparison. (Handley at 3:42-48, 4:47-
`
`5:48, Figs. 1-3 (EX1003); Pacheco at 5:19-29, 6:45-7:18, Figs. 2-3 (EX1004);
`
`Castleman at 15:7-35, Figs. 11-12 (EX1005)).
`
`19.
`
`In these alarm/security systems, it was also known that this
`
`monitoring device could then transmit the assigned status information from the
`
`sensors to a remote monitoring system over a network that uses a telephone dialer,
`
`cellular telephone technology, or other means of wired or wireless
`
`communication. (Handley at 3:2-12, Fig. 1 (EX1003); Pacheco at 4:66-5:3, Figs.
`
`1-2 (EX1004)). To transmit the assigned status, it was known that this monitoring
`
`device included a transmitter as well as additional hardware and/or software that
`
`could support different industry standard network topologies and protocols
`
`including, for example, Fieldbus, process field bus (PROFIBUS), Seriplex, smart
`
`5
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`distributed system (SDS), DeviceNet, and controller area network (CAN). (Id.;
`
`Ruckley at Abstract (EX1006)).
`
`20.
`
`In these alarm/security systems, it was known that multiple
`
`monitoring systems from different areas (e.g., different houses, buildings, parts of
`
`a structure) could transmit the assigned status information for their corresponding
`
`sensors to the same remote monitoring station. (Pacheco at 1:25-43 (EX1004)).
`
`It was also known that the remote monitoring system was a computer system
`
`having a monitor that would display specific alarm information about the various
`
`monitoring circuits. (Pacheco at 4:31-41, 13:50-14:15, Figs. 1, 8C (EX1004)). It
`
`was further known that personnel at the remote monitoring system could use this
`
`specific alarm information to take the appropriate action. (Handley at 4:66-5:3
`
`(EX1003); Pacheco at 1:33-60 (EX1004)). For example, if the specific alarm
`
`information indicates an alarm condition for a sensor associated with a monitoring
`
`device located at a building that requires immediate attention (e.g., a fire has been
`
`detected), the personnel could immediately dispatch a firetruck to that building.
`
`III. OVERVIEW OF THE ’886 PATENT
`A.
`Summary of the Alleged Invention
`21. The background section of the ’886 patent describes prior art security
`
`management systems (SMS), problems associated with upgrading and modifying
`
`these known SMS systems, known attempts to address these problems, and
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`problems associated with these known attempts. (’886 patent at 1:37-3:13
`
`(EX1001)). The ’886 patent purports to solve these problems by providing
`
`“monitoring systems” that are “especially useful in security management systems,
`
`fire systems and building management systems.” (Id. at 1:26-30 (EX1001)).
`
`These monitoring system purport to “allow[] the retrofit of existing security
`
`management systems, fire systems and building management systems, while
`
`utilising the existing circuit wiring regardless of existing resistance values.
`
`Retrofits and new installations may use various PLCs and operator interfaces, and
`
`a variety of hardware and software, instead of being locked into proprietary
`
`hardware and software.” (Id. at 4:28-35 (EX1001)).
`
`22. Figure 2 shows a monitoring system having three components: a
`
`centralized SMS control unit (element 5 – shown in red), multiple circuit
`
`monitoring devices (elements 10, 20, 30 – shown in blue), and multiple field
`
`devices (elements A, B, C – shown in green). (’886 patent at 4:66-5:8, Fig. 2
`
`(EX1001)). The circuit monitoring devices “monitor the status of various
`
`[electrical] circuits containing field devices such as motion detectors, read
`
`switches on doors and windows, smoke detectors, etc.” (Id. at 5:1-5 (EX1001)).
`
`The SMS control unit includes a communications module (element 7) and a
`
`programmable logic controller (PLC) having a microprocessor (element 6) that
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`7
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`reads the status of the various electrical circuits from the associated circuit
`
`monitoring devices. (Id. at 5:9-15, 7:45-54, Fig. 2 (EX1001)).
`
`
`
`
`
`23. Figure 3 shows the block diagram for the circuit monitoring devices in
`
`Figure 2. (’886 patent at 4:50-51, 5:62-63, Fig. 3 (EX1001)). The circuit
`
`monitoring device includes an operational amplifier (OPAMP) (element 40 –
`
`shown in red), an analog to digital (A/D) converter (element 41 – shown in
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`8
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`brown), a microprocessor (element 42 – shown in orange), and a communication
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`module (element 43 – shown in purple). (Id. at 5:63-66, Fig. 2 (EX1001)).
`
`
`
`
`
`24. The OPAMP receives as input an analog signal from the field device.
`
`(Id. at 5:66-6:1 (EX1001)). The A/D converter converts the analog signal from
`
`the OPAMP to a count value representing a numerical representation of the end-
`
`of-line resistance of the field device. (’886 patent at 6:1-4 (EX1001)). The
`
`microprocessor compares the count value to various thresholds to determine the
`
`status of the field device. (Id. at 6:5-8 (EX1001)). The communication module
`
`communicates the result of the comparison to the SMS control unit. (Id. at 6:8-16
`
`(EX1001)).
`
`25. Figure 4 of the ’886 patent shows a diagrammatic representation of
`
`the comparisons performed by the microprocessor in the circuit monitoring device
`
`to determine the status of the field device. (’886 patent at 6:34-41, Fig. 4
`
`(EX1001)).
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`
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`The microprocessor compares the measured count value to each of four thresholds:
`
`(1) 8,000; (2) 15,000; (3) 16,000; and (4) 30,000. (Id. at 7:17-19, 7:25-26, Fig. 4
`
`(EX1001)). The four thresholds result in five different threshold ranges, each of
`
`which corresponds to one of five different status conditions:
`
`(1) if the count value is between 0 and 8,000, an Open Circuit condition is
`
`assigned;
`
`(2) if the count value is between 8,000 and 15,000, an Alarm 1 condition is
`
`assigned;
`
`(3) if the count value is between 15,000 and 16,000, a Normal condition is
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`assigned;
`
`(4) if the count value is between 16,000 and 30,000, an Alarm 2 condition is
`
`assigned; and
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`(5) if the count value is between 30,000 and 32,767, a Short Circuit condition
`
`is assigned.
`
`(Id. at 6:37-48, Fig. 4 (EX1001)). Based on the comparison, the microprocessor
`
`generates an output in the form of individual flags or digital bits that are
`
`transmitted to the SMS control unit:
`
`After comparing the measured resistance to each of the threshold values
`the microprocessor 41 (FIG. 3) produces, as an output, an indication of
`the status of the field circuit, eg.[sic] circuit A, B or C in FIG. 2. This
`output may be in the form of individual flags or bits which are set when
`a particular status condition is assigned and thus has only two possible
`values from each comparison. For example, five output bits may
`represent five possible status conditions, namely Short Circuit, Alarm
`2, Normal, Alarm 1 and Open Circuit.
`
`(Id. at 7:25-33 (EX1001)).
`
`This status is then presented as an output in the form of five digital bits
`which then can be read by or transmitted to a centralised monitoring
`system.
`
`(Id. at 7:38-40 (EX1001)).
`
`26. The ’886 patent describes two types of communication modules in the
`
`circuit monitoring device. In one type, the communication module “is adapted for
`
`communication across the back plane of the PLC to the microprocessor 6.” (’886
`
`patent at 6:11-13, Fig. 2 (EX1001)). In another type, the communication module
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`“is a DeviceNet™ communication module implementing the DeviceNet™
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`communication standard.” (Id. at 6:13-16, Fig. 2 (EX1001)).
`
`B.
`Prosecution History
`27. The application for the ’886 patent was filed November 13, 2014. It
`
`claims priority as a continuation of U.S. Pat. No. 8,816,869, filed on July 1, 2013,
`
`which is a continuation of U.S. Pat. No. 8,912,893, filed on September 30, 2010
`
`(“’893 patent”), which is a continuation of U.S. Pat. No. 7,834,744, filed on July
`
`13, 2007, which is a continuation of U.S. Pat. No. 7,256,683, filed on December 3,
`
`2001 (“’683 patent”), which claims priority to Australian Appl. No. PR1878, filed
`
`on December 4, 2000. (’886 patent at cover page (EX1001)).
`
`28. On November 21, 2014, the Applicant filed a Preliminary
`
`Amendment that cancelled originally-filed claims 1-20 and added new claims 21-
`
`57 (application claims 21 and 49 correspond to issued claims 1 and 29,
`
`respectively). (File History, 11/21/14 Preliminary Amendment at 3-13
`
`(EX1007)).
`
`29.
`
`In the only Office Action dated March 11, 2015, the Examiner
`
`rejected many of the claims (including claims 21 and 49) based on non-statutory
`
`double patenting over various claims of the ’893 and ’683 patents. (File History,
`
`3/11/15 Office Action at 1, 3 (EX1008)). On May 26, 2015, the Applicant filed a
`
`Response to the Office Action adding new claims and filing a terminal disclaimer
`
`12
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`over the ’893 and ’683 patents. (File History, 5/26/15 Response at 1 (EX1009);
`
`File History, 5/26/15 Terminal Disclaimer at 1 (EX1010)).
`
`30. Based on this Response, the Examiner allowed the claims. (File
`
`History, 10/7/15 Notice of Allowability at 2 (EX1011)). The Examiners indicated
`
`the following reasons for allowance:
`
`The prior art of record fail to disclose the circuit monitoring
`device/apparatus of independent claims 21, 31 and 49…wherein a
`comparison module is configured to compare a digital value, which
`corresponds to a magnitude of the measured electrical parameter, to at
`least one threshold value stored in the memory, wherein the threshold
`value defines at least one range of digital values, and assigns a status
`based on the digital value being within the particular range defined by
`the threshold value.
`
`(Id. (EX1011)). The Examiner stated that the following limitations from claims
`
`49-57 and 72-74 were subject to means-plus-function under 35 U.S.C. § 112, ¶6:
`
`“a circuit monitoring module configured to…” and “a communications module
`
`to….” (Id. at 3 (EX1011)). The Examiner then identified the corresponding
`
`structures for these limitations: “communications module 43, fig. 3, circuit
`
`monitoring module 10, 20, 30, fig. 2.” (Id. (EX1011)).
`
`C. Level of Ordinary Skill in the Art
`31. A person of ordinary skill in the art at the time of the filing of the
`
`earliest priority application for the ’886 patent, i.e., December 4, 2000, would
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`have at least a Bachelor of Science degree in Electrical Engineering or an
`
`equivalent field, as well as at least 2-3 years of academic or industry experience in
`
`circuit design, microprocessor programming, and network interfaces, or
`
`comparable industry experience(s).
`
`D. Understanding of the Law
`32.
`I am not an attorney. For the purposes of this declaration, Petitioner’s
`
`counsel has informed me about certain aspects of the law that are relevant to my
`
`opinions.
`
`33. Petitioner’s counsel has informed me that a patent claim may be
`
`“anticipated” if each element of that claim is present either explicitly or inherently
`
`in a single prior art reference.
`
`34. Petitioner’s counsel has informed me that a patent claim can be
`
`considered to have been obvious to a person of ordinary skill in the art at the time
`
`the application was filed. This means that, even if all of the requirements of a
`
`claim are not found in a single prior art reference, the claim is not patentable if the
`
`differences between the subject matter in the prior art and the subject matter in the
`
`claim would have been obvious to a person of ordinary skill in the art at the time
`
`the application was filed.
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`35. Petitioner’s counsel has informed me that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including,
`
`among others:
`
`
`
`
`
`
`
`
`
`
`
`the level of ordinary skill in the art at the time the application was
`
`filed;
`
`the scope and content of the prior art;
`
`what differences, if any, existed between the claimed invention and
`
`the prior art.
`
`36. Petitioner’s counsel has informed me that a single reference can
`
`render a patent claim obvious if any differences between that reference and the
`
`claims would have been obvious to a person of ordinary skill in the art.
`
`Alternatively, the teachings of two or more references may be combined in the
`
`same way as disclosed in the claims, if such a combination would have been
`
`obvious to one having ordinary skill in the art. In determining whether a
`
`combination based on either a single reference or multiple references would have
`
`been obvious, it is appropriate to consider, among other factors:
`
`
`
`whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield predictable
`
`results;
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`
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`whether a person of ordinary skill in the art could implement a
`
`predictable variation, and would see the benefit of doing so;
`
`
`
`whether the claimed elements represent one of a limited number of
`
`known design choices, and would have a reasonable expectation of success by
`
`those skilled in the art;
`
`
`
`whether a person of ordinary skill would have recognized a reason to
`
`combine known elements in the manner described in the claim;
`
`
`
`whether there is some teaching or suggestion in the prior art to make
`
`the modification or combination of elements claimed in the patent; and
`
`
`
`whether the innovation applies a known technique that had been used
`
`to improve a similar device or method in a similar way.
`
`37. Petitioner’s counsel has informed me that one of ordinary skill in the
`
`art has ordinary creativity, and is not an automaton. Petitioner’s counsel has
`
`informed me that in considering obviousness, it is important not to determine
`
`obviousness using the benefit of hindsight derived from the patent being
`
`considered.
`
`IV. CLAIM CONSTRUCTION
`38.
`In my analysis, I have given the claim terms their ordinary meaning in
`
`light of the specification. I have considered whether any claim term has been
`
`defined in the specification, and for those terms which lack a definition in the
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`specification, I have similarly applied the ordinary meaning that one skilled in the
`
`art would have applied at the time the ’886 patent was filed.
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`39.
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`In this declaration I discuss specific interpretations that I applied for
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`certain claim terms. I have given any claim terms not included in the following
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`discussion their ordinary meaning in light of the specification as commonly
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`understood by those of ordinary skill in the art. Petitioner’s counsel informed me
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`that under a broadest reasonable interpretation standard, a claim term may be the
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`same or broader than under the standard applied here, but cannot be narrower.
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`Therefore, the claim interpretations discussed below also apply under the broadest
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`reasonable interpretation standard.
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`A. Means-Plus-Function Terms
`40. Petitioner’s counsel has informed me that a patent claim may describe
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`a particular element in a “means-plus-function” format, meaning that the claim
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`describes what the particular element does (its function) rather than what it is (its
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`structure). Petitioner’s counsel has informed me that a claim in means-plus-
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`function format is construed to cover the corresponding structure, material or acts
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`described in the specification, and equivalent structures, materials, or acts, for
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`performing the function recited in the claim element.
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`41. Petitioner’s counsel has informed me that a claim term that does not
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`recite the word “means” can be in means-plus-function format if the term does not
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`recite sufficiently definite structure or else recites function without reciting
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`sufficient structure for performing that function. Petitioner’s counsel has
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`informed me that terms such as “mechanism,” “element,” “device,” and “module”
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`can be considered “generic” (or “nonce”) words that operate as a substitute for the
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`word “means” because they are simply a generic description for software or
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`hardware. Such terms typically do not connote sufficient definite structure and
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`are thus subject to means-plus-function format.
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`42. Petitioner’s counsel has informed me that the claim construction of a
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`means plus-function element is a two-step process. First, the claimed function
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`must be identified by identifying the language after the “means for” or equivalent
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`clause. Second, the corresponding structure must be identified by looking to the
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`specification. Petitioner’s counsel has informed me that in this second step, the
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`structure disclosed in the specification is corresponding structure only if the
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`specification or prosecution history clearly links or associates that structure to the
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`function recited in the claim. If structure is necessary to perform the claimed
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`function, then it should also be included. Petitioner’s counsel has informed me
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`that if the disclosed structure is a computer or processor programmed to carry out
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`an algorithm, the disclosed structure is not simply any computer or processor.
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`Instead, it is a special-purpose computer or processor that is programmed to
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`perform the disclosed algorithm.
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`43. Claims 1 and 29 include “module” terms that should be construed as
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`means-plus-function limitations under 35 U.S.C. § 112, ¶6. (’886 patent at claims
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`1, 29 (EX1001)). In particular, the limitations “a comparison module configured
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`to…” (claim 1), “a comparison module configured to…” (claim 1), “a circuit
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`monitoring module configured to…” (claim 29), and “a communications module
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`to…” (claim 29) each uses the generic word “module” and merely recites function
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`without reciting sufficient structure for performing that function. (Id. at claims 1,
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`29 (EX1001)). In addition, during prosecution of the ’886 patent, the Examiner
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`found the two “module” limitations of claim 29 subject to means-to-function.
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`(See Section III.B (Prosecution History)). Accordingly, each of these limitations
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`should be construed as a means-plus-function limitation.
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`1.
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`“a comparison module configured to…” (claim 1)
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`44.
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` Function: Claim 1 recites the following function for the
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`“comparison module”:
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`(1) “compare a digital value, which corresponds to a magnitude of the
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`measured electrical parameter, to at least one threshold value stored in the memory,
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`wherein the threshold value defines at least one range of digital values,” and
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`(2) “assign a status based on the digital value being within the particular range
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`defined by the threshold value.” (’886 patent at claim 1 (EX1001)).
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`45. Structure: The specification does not recite the term “comparison
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`module.” Claim 1 recites a “processor” having “modules comprising software to
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`configure the processor” that include the “comparison module.” Accordingly, the
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`structure needs to be a special-purpose computer programmed to perform the
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`disclosed algorithm. As structure, the specification discloses a processor
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`programmed to perform the following steps:
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`(1) compare a digital value to at least one threshold value,
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`(2) if the digital value is below the at least one threshold value that falls within
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`a first range of digital values, assign a first condition to the circuit, and
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`(3) if the digital value is above the at least one threshold value that falls within
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`a second range of digital values, assign a second condition to the circuit.
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`(’886 patent at 6:5-8, 6:34-48, 7:17-19, 7:25-40, Figs. 3-4, claim 1 (EX1001); see
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`also Section III.A (Summary of the Alleged Invention)). The corresponding
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`structure also includes equivalents of the disclosed structure.
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`2.
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`“a communication module configured to…” (claim 1)
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`46. Function: Claim 1 recites the following function for the
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`“communication module”: “generate a status signal including at least the assigned
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`status.” (’886 patent at claim 1 (EX1001)).
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`47. Structure: The specification does not recite the term “communication
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`module” in the context of claim 1.1 Claim 1 recites a “processor” having
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`“modules comprising software to configure the processor” that include the
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`“communication module.” Accordingly, the structure needs to be a special-
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`purpose computer programmed to perform the disclosed algorithm. As structure,
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`the specification discloses a processor programmed to perform the following
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`steps:
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`(1) if a first condition is assigned to the circuit, set a first flag (or bit),
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`(2) if a second condition is assigned to the circuit, set a second flag (or bit),
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`and
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`(3) produce a status signal that includes at least the first flag (or bit) and the
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`second flag (or bit).
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`(’886 patent at 6:5-10, 7:25-40, Figs. 3-4, claim 1 (EX1001); see also Section III.A
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`(Summary of the Alleged Invention)). The corresponding structure also includes
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`equivalents of the disclosed structure.
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`3.
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`“a circuit monitoring module configured…” (claim 29)
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`1 Claim 29 recites the t