IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Case: IPR2018-
`Patent No.: 9,320,122
`
`EXHIBIT 1056
`
`))))))))))))))
`
`PRIME WIRE & CABLE, INC.
`
`Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
`Patent owner
`
`JASCO PRODUCTS, INC.
`
`Licensee
`
`DECLARATION OF JOSEPH MAYO IN SUPPORT OF THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PAT. NO. 9,320,122
`My name is Joseph Mayo. I am over 18 and in all ways qualified to make
`
`this declaration. I hereby make the following declaration.
`
`I.
`
`Background & Qualifications
`
`1.
`
`I am a registered patent agent (reg. no. 53,288) and have prosecuted
`
`over 500 patent applications to allowance. I am also a Sun Certified Enterprise
`
`Architect and Java programmer. I am also an electrical engineer, and received
`
`my education and BSEE from the Massachusetts Institute of Technology (MIT)
`
`in 1983. After college, I worked in the software and electronics industry for 19
`
`years (from 1983-2002) before turning my attention to a patent prosecution
`
`1
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Case: IPR2018-
`Patent No.: 9,320,122
`
`EXHIBIT 1056
`
`))))))))))))))
`
`PRIME WIRE & CABLE, INC.
`
`Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
`Patent owner
`
`JASCO PRODUCTS, INC.
`
`Licensee
`
`DECLARATION OF JOSEPH MAYO IN SUPPORT OF THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PAT. NO. 9,320,122
`My name is Joseph Mayo. I am over 18 and in all ways qualified to make
`
`this declaration. I hereby make the following declaration.
`
`I.
`
`Background & Qualifications
`
`1.
`
`I am a registered patent agent (reg. no. 53,288) and have prosecuted
`
`over 500 patent applications to allowance. I am also a Sun Certified Enterprise
`
`Architect and Java programmer. I am also an electrical engineer, and received
`
`my education and BSEE from the Massachusetts Institute of Technology (MIT)
`
`in 1983. After college, I worked in the software and electronics industry for 19
`
`years (from 1983-2002) before turning my attention to a patent prosecution
`
`1
`
`
`
`practice focused on the arts of programmable electronics.
`
`2.
`
`I am very familiar with programming electronics and circuitry,
`
`including timers, which are the mechanisms of operation in the technology of
`
`U.S. Pat. No. 9,320,122 (“the ‘122 Patent”)[Ex. 1001].
`
`3.
`
`A copy of my curriculum vitae, which describes in further detail my
`
`qualifications, responsibilities, employment history, and etcetera are attached.
`
`II.
`
`Retention
`
`4.
`
`I have been retained by Petitioner to offer an objective opinion about
`
`whether a person of skill in the art at the time of invention would have found the
`
`claims of the ‘122 patent either anticipated or obviousness in light of certain art
`
`provided to me by Petitioner. I have been compensated at my standard hourly
`
`rate of $350.00. My compensation is in no way contingent on the results of this
`
`or any other proceedings related to the above-captioned matter.
`
`III.
`
`Information Provided To Me
`
`5.
`
`In proceedings before the USPTO, I understand that the claims of an
`
`unexpired patent are to be given their broadest reasonable interpretation in view
`
`of the specification from the perspective of one of ordinary skill in the field. I
`
`have been informed that the ‘122 patent has not expired. In comparing the ‘122
`
`patent to the known prior art, I have carefully considered the ‘122 patent and the
`
`‘122 patent’s file history from my perspective as one of skill in the art using my
`
`2
`
`
`
`experience and knowledge in the relevant field. I observed that CANTIGNY
`
`Lighting Control, LLC (“CANTIGNY”) is the listed owner of the ‘122 patent. In
`
`the ‘122 patent file history [Ex. 1002], I observed a citation of “claim scope
`
`statements” [Ex. 1003] under 37 CFR § 1.501 (“Rule 501 statements”) which
`
`informed my reading of the ‘122 patent because it shows how the rights holders
`
`have interpreted the scope of their claims in the marketplace. Similarly, I have
`
`also reviewed the complaints filed in the two lawsuits for alleged infringement of
`
`the ‘122 patent, namely: (1) Cantigny v. Jasco, Civil Action No. 16-cv-05794 (in
`
`the Norther District of Illinois) [Ex. 1004-1010]; and (2) Jasco v. Prime, Civil
`
`Action No. 5:18-cv-44 (in the Western District of North Carolina) [Ex. 1013-
`
`1024].
`
`6.
`
`I observed that the application for the ‘122 patent was filed on Nov.
`
`18, 2015, but that it claims to be related as a “divisional” to now U.S. Pat. No.
`
`9,226,373 (issued Dec. 20, 2014) (“the ‘373 parent”). So, I also reviewed the
`
`‘373 parent to assist my reading of the ‘122 patent and its claims. I immediately
`
`observed that the ‘122 patent has been rewritten relative to the ‘373 parent.
`
`Importantly, I observed that only the new matter added to the ‘122 specification
`
`provides the antecedent basis of subject matter in the ‘122 claims. For reasons
`
`discussed below, it is my opinion that the ‘122 claims were not entitled to the
`
`priority of the ‘373 parent because there is not a sufficient written description in
`
`3
`
`
`
`the ‘373 parent for the subject matter of the ‘122 claims. So, for purposes of this
`
`declaration, I take Nov. 18, 2015 or actual filing date of the ‘122 claims to
`
`determine whether a reference constitutes prior art.
`
`7.
`
`I understand that a claim is invalid (or should not be allowed) if its
`
`subject matter is anticipated or obvious under 35 U.S.C. §§ 102 and 103
`
`respectively. I further understand that anticipation of a claim requires that every
`
`element of a claim be disclosed expressly or inherently in either a single prior art
`
`reference or multiple corroborating references, as claimed. MPEP 2131 and
`
`2131.01.
`
`8.
`
`I understand that a claim is “obvious” for purposes of 35 U.S.C. §
`
`103 when the claimed subject matter has elements that are technically different
`
`than the elements of comparable prior art, but there is a rational explanation as to
`
`why the differences between the elements of the claims and the prior art are not
`
`meaningful or are otherwise insignificant to a person of relevant skill in the art
`
`before the claims were filed. MPEP 2141-2144. In particular, I understand that a
`
`claim is obvious if it alters prior art by way of mere substitution of one element
`
`for another known element in the field and that combination yields predictable
`
`results. Id. While it may be helpful to identify a reason one of skill in the art
`
`might have altered the prior art to arrive at the claimed invention, common sense
`
`should guide and no rigid requirement of finding a teaching suggestion or
`
`4
`
`
`
`motivation to combine is required. Id. But, if there is an express teaching of the
`
`alteration of prior art to arrive at the claimed invention, the claim is prima facie
`
`obvious, which I understand to mean the claim must be proved unobvious or else
`
`it is invalid. Id. I further understand that a claim may be obvious if common
`
`sense directs one to combine multiple prior art references or add missing features
`
`to produce the alleged invention recited in the claims. Id. I understand that a
`
`person of ordinary skill in the art is a person of ordinary creativity, not an
`
`automaton. Id.
`
`IV.
`
`The ‘122 patent (Ex. 1001)
`
`9.
`
`The ‘122 patent specification describes several embodiments of a
`
`programmable ON/OFF timers. The ‘122 patent has 20 total claims, including
`
`three independent claims (claims 1, 8, and 15). The ‘122 patent claims speak to
`
`ON/OFF timers with two separate timing programs tied to buttons. In some
`
`cases, timing patterns can be customized, in other cases it is pre-stored. The
`
`patent has 20 total claims, including three independent claims (claims 1, 8, and
`
`15). Two independent claims are apparatus claims for timers, and one
`
`independent claim is a method claim tied to using a timer for an electrical
`
`apparatus.
`
`10.
`
`In addition to reading the claims, I have also reviewed Rule 501
`
`statements [Ex. 1003] to inform my understanding of the claimed subject matter.
`
`5
`
`
`
`Specifically, I note that the Patent Owner asserts that its claims cover the
`
`“myTouchSmartTM Indoor/Plug-In Digital Timer” shown and described in its
`
`instruction manual [Ex. 1009] dated Jun. 19, 2015 and a YouTube.com video
`
`[Ex. 1030] published June 24, 2015. I also specifically note that the timer is
`
`marked as “patented” under the ‘122 patent. See Ex. 1018, which is a licensing
`
`agreement requiring the timer be marked as patented. That timer is shown below:
`
`From the instruction manual cited in the CANTIGNY v. JASCO lawsuit [Ex.
`
`1009], one way to apparently use this timer is to: (a) press the “my on time” button
`
`plus use the up/down arrows to set a time on the display for an appliance to turn
`
`ON; and, (b) press the “my off time” button plus arrows to set a time for the
`
`appliance to turn OFF. Timers with two buttons that have simple programming
`
`6
`
`
`
`capability or routine is what I understand to be claimed in intendent apparatus
`
`claims 1 and method claim 15. The timer has other buttons, like the “evening
`
`5pm-12am” and “morning 5am-8am” buttons that simply have preprogrammed
`
`ON/OFF times. Timers with such preset buttons are claimed in independent
`
`apparatus claim 8.
`
`V.
`
`Listing of claims
`
`11. Claims 1 through 20 are listed below for reference:
`
`claim 1
`
`Preamble: A programmable light timer for implementing a timing pattern,
`
`Transition:
`
`the programmable light timer comprising:
`
`Element 1:
`
`an actuator on a user interface of the programmable light timer
`
`enabling a selection of a time for the programmable light timer;
`
`Element 2:
`
`a control circuit coupled to the actuator;
`
`Element 3:
`
`a display coupled to the control circuit, wherein a time selected
`
`by the actuator is provided on the display;
`
`Element 4:
`
`a first button on the user interface of the programmable light
`
`timer, wherein the first button is programmable to have an on
`
`time; and,
`
`Element 5
`
`a second button on the user interface of the programmable light
`
`7
`
`
`
`timer, wherein the second button is programmable to have an off
`
`time.
`
`claim 2
`
`Transition
`
`The programmable light timer of claim 1 wherein
`
`Element
`
`the first button is further programmable to have an off time, and
`
`the second button is further programmable to have an on time.
`
`claim 3
`
`Transition
`
`The programmable light timer of claim 1 wherein
`
`Element
`
`the on time for the first button is a pre-stored on time, and the off
`
`time for the second button is a pre-stored off time.
`
`claim 4
`
`Transition
`
`The programmable light timer of claim 3 further comprising
`
`Element
`
`a third button that is programmable by way of the actuator, with
`
`a user programmable on time.
`
`claim 5
`
`Transition
`
`The programmable light timer of claim 1 wherein
`
`Element
`
`the on time for the first button is programmable using the
`
`actuator, and the off time for the first button is programmable
`
`using the actuator.
`
`8
`
`
`
`claim 6
`
`Transition
`
`The programmable light timer of claim 1 further comprising
`
`Element
`
`a third button having a pre-stored timing pattern.
`
`claim 7
`
`Transition
`
`The programmable light timer of claim 1
`
`Element
`
`further comprising a switch enabling overriding the timing
`
`pattern implemented by the programmable light timer.
`
`claim 8
`
`Preamble: A programmable light timer for implementing a timing pattern,
`
`Transition:
`
`the programmable light timer comprising:
`
`Element 1:
`
`an actuator on a user interface of the programmable light timer,
`
`the actuator enabling a selection of a time for the programmable
`
`light timer;
`
`Element 2
`
`a control circuit coupled to the actuator;
`
`Element 3
`
`a display coupled to the control circuit, wherein a time selected
`
`by the actuator is provided on the display;
`
`9
`
`
`
`Element 4
`
`a first button on the user interface of the programmable light
`
`timer, the first button enabling the selection of a first pre-stored
`
`timing pattern; and
`
`Element 5
`
`a second button on the user interface of the programmable light
`
`timer, the second button enabling the selection of a second pre-
`
`stored timing pattern.
`
`claim 9
`
`Transition
`
`The programmable light timer of claim 8 further comprising
`
`Element
`
`a third button that is user programmable.
`
`claim 10
`
`Transition
`
`The programmable light timer of claim 9 wherein
`
`Element
`
`the third button is programmable with a user programmable on
`
`time.
`
`claim 11
`
`Transition
`
`The programmable light timer of claim 10 further comprising
`
`Element
`
`a fourth button that is user programmable.
`
`claim 12
`
`Transition
`
`The programmable light timer of claim 11 wherein
`
`Element
`
`the fourth button is programmable with a user programmable an
`
`10
`
`
`
`off time.
`
`claim 13
`
`Transition
`
`The programmable light timer of claim 8 wherein
`
`Element
`
`the actuator enables an up or down operation for selecting a time
`
`used by the programmable light timer.
`
`claim 14
`
`Transition
`
`The programmable light timer of claim 8 further comprising
`
`Element
`
`a switch enabling overriding the timing pattern implemented by
`
`the programmable light timer.
`
`claim 15
`
`Preamble: A method of implementing a timing pattern on a programmable
`
`light timer,
`
`Transition:
`
`the method comprising:
`
`Step 1:
`
`enabling, on a user interface of the programmable light timer, a
`
`selection of a time for the programmable light timer;
`
`Step 2:
`
`displaying the time on a display of the programmable light timer;
`
`11
`
`
`
`Step 3:
`
`enabling a first button, provided on the user interface of the
`
`programmable light timer, to be programmed to have an on time;
`
`and
`
`Step 4:
`
`enabling a second button, provided on the user interface of the
`
`programmable light timer, to be programmed to have an off time.
`
`claim 16
`
`Transition
`
`The method of claim 15 further comprising
`
`Step
`
`enabling the first button to be programmed to have an off time,
`
`and the second button to be programmed to have an on time.
`
`claim 17
`
`Transition
`
`The method of claim 15 wherein
`
`Element
`
`the on time for the first button is a pre-stored on time, and the off
`
`time for the second button is a pre-stored off time.
`
`claim 18
`
`Transition
`
`The method of claim 17 further comprising
`
`Step:
`
`enabling a third button, provided on the user interface of the
`
`programmable light timer, to be programmed by way of an
`
`actuator on the user interface.
`
`claim 19
`
`12
`
`
`
`Transition
`
`The method of claim 15 wherein
`
`Element
`
`the on time for the first button is user programmable, and
`
`wherein the off time for the first button is user programmable.
`
`claim 20
`
`Transition
`
`The method of claim 15 further comprising
`
`Element
`
`providing a switch enabling overriding the timing pattern
`
`implemented by the programmable light timer.
`
`VI.
`
`Person of Skill in the Art; Level of Ordinary Skill in the Art
`
`12.
`
`I have been advised that there are multiple factors relevant to
`
`determining the level of ordinary skill in the pertinent art, including education level
`
`of active workers in the field at the time of the invention, the sophistication of the
`
`technology, the type of problems encountered in the art, and the prior art solutions
`
`to those problems. I have been informed that the level of skill in the art is
`
`evidenced in part by the prior art references. I have also been informed that a
`
`named inventor, particularly when it is the only inventor, of a patented technology
`
`is presumed to have the requisite level of skill in the art at the time of the
`
`invention. The prior art discussed herein demonstrates that that a person of skill in
`
`the art between late 2013 to late 2015 for this particular invention would be
`
`someone familiar by training or education with basic electronics and timers that
`
`could be used to operate appliances such as lights, sprinklers, or other electronic
`
`13
`
`
`
`appliances. I presume the named inventor, John J. King, is a person of skill in the
`
`art. He has a background in the electrical arts and is also the prosecuting patent
`
`attorney of the ‘122 patent. I have a similar background to that of the named
`
`inventor because of my background in electronics and my experience as a patent
`
`practitioner. So, I believe I am a person appropriately skilled in the art to render
`
`the opinions set forth herein.
`
`VII.
`
`The Prior Art and Other Relevant Materials
`
`13.
`
`In forming this opinion, I have been provided by counsel with the
`
`following references:
`
`“How to program a Timex TX12874” [Ex. 1027]
`
`Stack-
`Stack’s Provisional Filings-
`
`US 2015/0061546 (pub. Mar. 5, 2015) [Ex. 1050]
`61/884,895 (filed Sep. 30, 2013) [Ex. 1048]
`61/872,120 (filed Aug. 30, 2013) [Ex. 1049]
`
`Kamii-
`
`Brundisini-
`
`Miller-
`
`Lavoie-
`
`US 2013/0141018 (pub. Jun. 5, 2013) [Ex. 1033]
`
`US 6,259,955 (issued Jul. 10, 2001) [Ex. 1028]
`
`US 7,058,479 (issued Jun. 6, 2006) [Ex. 1045]
`
`US 6,453,215 (issued Sep. 17, 2002) [Ex. 1047]
`
`“My TouchSmart Timer” Instruction Manual (dated Jun. 19, 2015) [Ex. 1009]
`“My Touchsmart Timer Overview” (pub. Jun. 24, 2015) [Ex. 1030]
`Screen grabs [Ex. 1031]
`
`Hatemata-
`
`Simon-
`
`US 6,658,303 (issued Dec. 2, 2003) [Ex. 1032]
`
`US 6,507,775 (issued Jan. 14, 2003) [Ex. 1055]
`
`14
`
`
`
`Trice-
`
`US D791,620 (issued Jul. 11, 2017) [Ex. 1046]
`
`U.S. Pat. No. 9,226,373 (“the ‘373 parent”) [Ex. 1036]
`
`VIII.
`
`Opinions
`
`14. With reference to the above listing of claims (Infra IV., c., by claim
`
`number and associated element or step, My opinions are as follows:
`
`1. A person of skill in the art at the time of the invention of the ‘122 patent
`would have found Claim 15 anticipated under 35 U.S.C. § 102(a)(1) or
`at least obvious under § 103 in view of “How to program a Timex
`TX12874X” [Ex. 1027]
`
`15. My opinion is that the how-to-program guide “How to program a
`
`Timex® TX12874X” anticipates the four step method recited in claim 15 under 35
`
`U.S.C. §102. First, I see the how-to-guide was archived in 2011 via the WayBack
`
`Machine and, as a result, the document predates the filing date of the ‘122 claims.
`
`Next, the prior art document is a how-to guide for operating the Timex® TX12874,
`
`which is a “24 hour plug-in digital timer.” The document shows the interface of
`
`the timer:
`
`15
`
`
`
`And, the manual teaches how to program the timer with an “ON time for lights to
`
`go on” and an “OFF time for lights to go off.” I interpret these teachings to
`
`disclose a method of implementing a timing pattern on a programmable light timer,
`
`as recited in the preamble of claim 15. The how-to guide goes on to teach setting
`
`the current time by holding the TIME button down and pushing HOUR and
`
`MINUTE buttons and a time of 12:38 AM is shown on the display of the timer. I
`
`interpret these teachings to accomplish the first two steps of claim 15’s method.
`
`The ON time is programmed to the ON button by holding the ON button down and
`
`pushing HOUR or MINUTE buttons until the time gets to the desired ON Time.
`
`The OFF time is programmed to the OFF button by holding the OFF button down
`
`and pressing HOUR or MINUTE buttons until the time gets to the desired OFF
`
`Time. I interpret the instruction of programming the ON and OFF times to the ON
`
`and OFF buttons of the timer to disclose the third and fourth steps of method claim
`
`15. It is my opinion that method claim 15 is anticipated by the how-to guide
`
`16
`
`
`
`because all of the steps of the method are disclosed by the “How to program a
`
`Timex® TX12874X.”
`
`2. A person of skill in the art at the time of the invention of the ‘122 patent
`would have found claim 1, 2, 4, 7, 15, 19 & 20 anticipated under 35
`U.S.C. §102(a)(2) or at least obvious under § 103 in view of Stack [Ex.
`1050]
`
`16. My opinion is that the light timer disclosed by Stack anticipates the
`
`five element apparatus and substantially similar four step method respectively
`
`recited in claims 1 and 15 under 35 U.S.C. §102. First, I read the disclosure of
`
`Stack’s published application to be the same, in substance, as the disclosure of
`
`Stack’s two provisional patent filings [Exs. 1048, 1049]. So, I have the opinion that
`
`Stack’s effective date is at least Sep. 30, 2013. So, Stack is prior art under the
`
`express terms of 35 U.S.C. §102(a)(2). Stack meets the preamble of claims 1 and
`
`15 because Stack discloses a “two-outlet digital timer” (Title) with lights plugged
`
`into either side of the timer so that “the timer will turn each of the lights on or off
`
`automatically… depending on stored programming information.” (¶[0030]).
`
`Stack’s timer is shown in his FIG. 1:
`
`17
`
`
`
`Generally, Stack’s timer 1 keeps a running clock that is selected using the + and –
`
`buttons on the timer’s interface 3 (¶[0052]-[0054]; ¶[0060]-[0067]). Later, the
`
`power outlet (B9) on the left side of Stack’s timer 1 in FIG. 1 can be controlled by
`
`timing patterns (e.g., “A ON.” ¶[0069]-[0088]) programmed to button A (12)
`
`using the +/- buttons to set on and off times while the power outlet on the right side
`
`of stack’s timer can be controlled by a second timing pattern (e.g., “B ON,”
`
`¶[0069]-[0088]) programmed to button B (13) via the +/- buttons. In my opinion,
`
`the first element of claims 1 and first step of claim 15 are met by Stack’s actuator
`
`buttons (“[+] or [-]”, ¶[0054]) on the “face” (3, ¶[0032]) of the timer where the
`
`“current time” can be selected by manipulating the actuator buttons (¶[0052]-
`
`[0054]; ¶[0060]-[0067]). I interpret the second and third element of claim 1 and
`
`the second step of claim 15 to also be met by Stack because it discloses a “micro
`
`controller,” 29 in FIG. 3 coupled to the actuator (“[+] or [-]”, FIG. 1; 41 & 45, FIG.
`
`18
`
`
`
`3) and the display (5, FIG. 1; 36, FIG. 3) so that the time selected by the actuators
`
`is provided on the display. ¶[0054]; ¶[0067]-[0068]. I see the fourth element of
`
`claim 1 and the third step of claim 15 are met by Stack since it describes a first
`
`button, “A,” (12, FIG. 1; 43, FIG. 3) that is programmable to have an on time, “A
`
`ON.” ¶[0069]-[0088]. Finally, the fifth element and fourth step of claims 1 and 15
`
`respectively are met by Stack’s timer, which has a second button, “B,” (13, FIG. 1;
`
`47, FIG. 3) that is programmable to have an off time, e.g., “PROG… OFF.”
`
`¶[0069]-[0092]. It is my opinion that apparatus claim 1 and method claim 15 are
`
`anticipated by the Stack.
`
`17. Claims 2, 5, and 7 depend from claim 1; claims 19 and 20 depend
`
`from claim 15. These dependent claims are also anticipated by Stack under 35
`
`U.S.C. § 102. Claim 2 is anticipated in my opinion because the first button, “A,”
`
`of FIG. 1 is further programmable (¶[0073]) to have an off time (“PROG… OFF.”
`
`¶[0069]-[0092]) and the second button, “B,” is further programmable (¶[0074]) to
`
`have an on time (“B ON,” ¶[0069]-[0088]). Claim 5 and 19 are anticipated
`
`because the on time (“A ON,” ¶[0069]-[0088]) for the first button (“A,” 12, FIG.
`
`1) is programmable (FIG. 7, ¶[0073]) using the actuator (“[+] or [-]”, FIG. 1,
`
`¶[0054]; 41 & 45, FIG. 3), and the off time (e.g., “PROG. 1 OFF,” ¶[0069]-[0092])
`
`for the first button (“A,” 12, FIG. 1) is programmable (FIG. 7, ¶[0073]) using the
`
`actuator (“[+] or [-]”, FIG. 1, ¶[0054]; 41 & 45, FIG. 3). Finally, claims 7 and 20
`
`19
`
`
`
`are anticipated because Stack’s timer features a switch (“Mode,” FIG. 1) enabling
`
`overriding the timing pattern implemented by the programmable light timer
`
`(“Manual Override” by “holding down the MODE key,” ¶[0126]-[0134]).
`
`It is
`
`therefore my opinion that dependent claims 2, 5, 7, 19 and 20 are anticipated by
`
`Stack.
`
`3. A person of skill in the art at the time of the invention of the ‘122 patent
`would have found claim 1, 6, 7, 15 & 20 anticipated under 35 U.S.C.
`§102(a)(1) or at least obvious under § 103 in view of Kamii [Ex. 1033]
`
`18. My opinion is that the light timer disclosed by Kamii anticipates the
`
`five element apparatus and substantially similar four step method respectively
`
`recited in claims 1 and 15 under 35 U.S.C. § 102(a)(1). First, Kamii published in
`
`June of 2013 and is unquestionably prior art for the claims under the express terms
`
`of § 102(a)(1). Kamii meets the preamble of claims 1 and 15 because Kamii
`
`discloses a “lighting device” (Title) or “absence timer” (Abstract) for turning a
`
`light on or off. ¶[0015]. Kamii’s timer is shown in his FIG. 5:
`
`20
`
`
`
`19.
`
`20. Kamii meets the first element of claims 1 and first step of claim 15
`
`when Kamii discloses actuator buttons (57A&B, FIG. 5) on the “interface” (50,
`
`FIG. 5) of the timer where a time can be selected by manipulating the actuator
`
`buttons (¶[0106]). The second and third element of claim 1 and the second step of
`
`claim 15 are met because Kamii discloses a circuit (86, FIG. 6) coupled to the
`
`actuator (57A&B, FIG. 5; 83 to 86, FIG. 6; [0121]-[0122]) and the display (52,
`
`FIG. 5, [0084]) so that the time selected by the actuators is provided on the display.
`
`¶[0106]. The fourth element of claim 1 and the third step of claim 15 is met since
`
`Kamii describes a first button (75, FIG. 5) on the user interface (50, FIG. 5) that is
`
`programmable (FIG. 30, [0385]-[0386]) to have an on time ([0102]). Finally, the
`
`fifth element and fourth step of claims 1 and 15 respectively are met because
`
`Kamii’s timer has a second button (74, FIG. 5) that is programmable (FIG. 30,
`
`[0385]&[0387]) to have an off time ([0101]). So, each and every element of
`
`21
`
`
`
`claims 1 and 15 are set forth in Kamii.
`
`21. Claims 6 and 7 depend from claim 1; claim 20 depends from claim 15.
`
`In my opinion, claims 6, 7 and 20 are anticipated by Kamii. With regard to claim
`
`6, Kamii’s timer has a third button (67, FIG. 5) having a pre-stored timing pattern
`
`(abstract, [0100]; FIG. 32; [0391]-[0400];[0423]). For claims 7 and 20, Kamii’s
`
`timer features a switch (53, 54, or 78, FIG. 1) enabling overriding the timing
`
`pattern implemented by the programmable light timer. Thus, claims 6, 7, & 20 of
`
`the ‘122 patent are invalid as being anticipated over the timer described in Kamii.
`
`4. A person of skill in the art at the time of the invention of the ‘122 patent
`would have found Claims 1-7 & 15-20 to be obvious under §103 by
`Brundisini’s [Ex. 1028] sprinkler timer in view of Miller’s [Ex. 1045]
`teaching of how to modify any given sprinkler timer to make an outdoor
`(i.e., landscape) light timer.
`22.
`In my opinion, claims 1-7 & 15-20 are invalid as being obvious by the
`
`timer described in Brundisini in view of Miller. The claimed timers came more
`
`than a decade after Brundisini’s patent issued in 2001. The only difference
`
`between Brundisini and the claimed timers is that Brundisini’s timer is for
`
`sprinklers instead of for lights. It would have been obvious to me or any other
`
`person of skill in the art at least by 2006 to modify a sprinkler timer to be an
`
`outdoor or landscape light timer especially since Miller teaches how to accomplish
`
`this modification. Turning electronics ON and OFF via a timer is notoriously old
`
`in the electronic art. The electrical operation of the timer is the same regardless of
`
`22
`
`
`
`whether a 12 volt sprinkler or a 12 volt light system is turned ON and OFF and
`
`regardless of the specific type of electrical connection used to connect the timer to
`
`the sprinkler or light.
`
`23.
`
`24.
`
`Scope & Content:
`
`Brundisini discloses a sprinkler timer (51, FIG. 1)
`
`for turning
`
`sprinklers on or off (“start times” & “run times”, FIG. 4). The sprinkler timer
`
`tracks the preamble of claim 1 except for the preamble calls for a “light timer” and
`
`Brunisini is a sprinkler timer. Brundisini’s timer 51 is shown in his FIG. 1:
`
`Brundisini tracks to first element of claims 1 and first step of claim 15 because
`
`Brundisini discloses actuator buttons (54, 56, FIG. 1; “- +,” col. 2:33-35) on the
`
`23
`
`
`
`“interface” (53, FIG. 1) of the timer where a time (71, FIG. 3; col. 5:60-65) can be
`
`selected by manipulating the actuator buttons (54, 56, FIG. 1). The prior art timer
`
`also tracks second and third element of claim 1 and the second step of claim 15
`
`when Brundisini discloses a circuit (62, FIG. 2; col. 2:53-col. 3:2) coupled to the
`
`actuator (54, 56, FIG. 1) and the display (63, FIG. 1) so that the time (71, FIG. 3)
`
`selected by the actuators is provided on the display. The fourth element of claim 1
`
`and the third step of claim 15 is tracked by Brundisini when it describes a first
`
`button (57, FIG. 1; col. 2:36) on the user interface (53, FIG. 1) that is
`
`programmable to have an on time (“start time,” FIG. 4; col. 3:43-46; col. 4:41-52).
`
`The final element and step of claims 1 and 15 respectively are tracked by the prior
`
`art timer because Brundisini’s timer has a second button (58, FIG. 1; col. 2:37) that
`
`is programmable to have an off time (col. 5:3-4; “run time,” FIG. 4; col. 4:13-40).
`
`So, except for “light,” every element of claims 1 and 15 are set forth in Brundisini.
`
`25. Claims 2-7 depend from claim 1; and claim 16-20 depend from claim
`
`15. These claims are closely tracked by Brundisni, again were the only difference
`
`is a sprinkler versus a light. Claims 2 and 16 are tracked by the prior art reference
`
`because the first button (57, FIG. 1) of Brundisini’s timer is further programmable
`
`to have an off time (“run time,” FIG. 4; col. 4:13-40) and the second button (58,
`
`FIG. 1) is further programmable to have an on time (col. 5:3-4; “start time,” FIG.
`
`4; col. 3:43-46; col. 4:41-52). Claims 3 and 17 are tracked because Brundisini’s
`
`24
`
`
`
`timer includes the on time (“start time,” FIG. 4; col. 3:43-46; col. 4:41-52) for the
`
`first button (57, FIG. 1) as a pre-stored on time (“pre-stored” is seen in the
`
`statement “modify the… time of start” (col. 4:49-52)), and the off time (col. 5:3-4;
`
`“run time,” FIG. 4; col. 4:13-40) for the second button (58, FIG. 1) with a pre-
`
`stored off time (“pre-stored” is implicit to the statement “modify the [run time]”
`
`(col. 4: 32-38)). Claims 4 and 18 are tracked since Brundisini discloses a timer
`
`with a third button (59, FIG. 1; col. 2:38) that is programmable by way of the
`
`actuator (54, 56, FIGS. 1 & 2), and with a user programmable on time (col. 5:3-4;
`
`“start time,” FIG. 4; col. 3:43-46; col. 4:41-52). Claims 5 and 19 are tracked since
`
`the subject prior art timer features the on time (“start time,” FIG. 4; col. 3:43-46;
`
`col. 4:41-52) for the first button (57, FIG. 1) which is programmable using the
`
`actuator (54, 56, FIGS. 1 & 2), and an off time (“run time,” FIG. 4; col. 4:13-40)
`
`for the first button (57, FIG. 1) which is programmable using the actuator (54, 56,
`
`FIGS. 1 & 2). Claim 6 is tracked since the sprinkler timer has a third button (59,
`
`FIG. 1) having a pre-stored timing pattern (col. 5:3-4; “pre-stored” is shown with
`
`the statement “modify the… time of start” (col. 4:49-52); “pre-stored” is seen in
`
`the statement “modify the [run time]” (col. 4: 32-38). Finally, claims 7 and 20 are
`
`tracked because Brundisni’s timer has a switch (61, FIG. 1; col. 2:41) enabling
`
`overriding (“disable” (col. 5:15-21)) the timing pattern (“start times” & “run
`
`times,” FIG. 4)) implemented by the programmable timer (51, FIG. 1).
`
`25
`
`
`
`26. Miller teaches how a programmable sprinkler timer can be modified
`
`to operate as a programmable outdoor or landscape light timer:
`
`“Integrated Control of Outdoor Lighting
`Outdoor lighting, or landscape lighting, has become increasing
`popular in recent years. There are a number of light controller
`devices available to operate outdoor lighting. However, a given
`irrigation controller…, particularly a multi-program capable one
`(as is the current invention), having at least one unused zone, that
`is, a zone which is not required for the operation of any irrigation
`valves, could, theoretically, be used to operate outdoor lighting. In
`place of the irrigation valve(s) normally connected to the output
`terminal of this zone, a switching relay device compatible with the
`control voltage of the zone control circuit could be connected. A
`program could be set up to activate and deactivate such a switching
`device according to a user defined schedule, that is, to turn the lights
`on and off at predetermined times.”
`Ex. 1045, col. 25:23-38 (emphasis added).
`
`27.
`
`Differences:
`
`28. As set forth above, the old timer described by Brundisini has all the all
`
`the timer elements of claims 1-7 and 15-20 but has an insignificant difference of
`
`being a sprinkler timer instead of a “light timer,” as claimed. A POSITA would
`
`have known how to modify the sprinkler timer of Brundisini according to the
`
`teachings and simple examples of Miller to create a landscape light timer, so there
`
`would be no differences between the claimed subject matter and a modified,
`
`lighting control version of Brundisini’s timer.
`
`29.
`
`Level of skill: resolved above.
`
`30. Obviousness Analysis:
`
`26
`
`
`
`31.
`
`Brundisni discloses a timer for controlling an electrical apparatus with
`
`an insignificant difference between its timer and the claimed timer being that the
`
`apparatus is a sprinkler instead of a light. A person of skill in the art who would
`
`know how to make a timer for a sprinkler would know how to do the same for a
`
`light. This is particularly true since Miller taught circa 2006 that any given
`
`sprinkler timer could be modified to control landscape lights. So, when the timer
`
`of Brundisini
`
`is modified according to the teachings of Miller, Brundisini’s
`
`modified timer is not significantly different than the claimed “light timers.” A
`
`person of skill in the art would definitely find it obvious by 2013 to modify the
`
`timer of Brundisini to make an outdoor landscape light timer per the teachings of
`
`Miller. One apparent teaching for such a modification comes from Miller (Ex.
`
`1045, col. 25:23-38). Miller
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