IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Case: IPR2018-01592
`Patent No.: 9,320,122
`
`EXHIBIT 1057
`
`))))))))))))))
`
`PRIME WIRE & CABLE, INC.
`
`Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
`Patent owner
`
`JASCO PRODUCTS, INC.
`
`Licensee
`
`DECLARATION OF BRYCE A. JOHNSON IN SUPPORT OF THE
`PETITION FOR INTER PARTES REVIEW OF U.S. PAT. NO. 9,320,122
`My name is Bryce A. Johnson. I am over the age of 18 and in all ways
`
`qualified to make this declaration. I hereby declare as follows:
`
`1.
`
`I am a registered patent attorney (CA Bar No. 258357) (USPTO Reg.
`
`No. 74,733) for Petitioner PRIME Wire & Cable, Inc. (“PRIME”). I am familiar
`
`with the facts and circumstances in the above captioned action as they relate to this
`
`declaration. Unless stated as relying on information and belief, the facts contained
`
`herein are based on my own personal knowledge and, if called upon, I could and
`
`would testify competently thereto.
`
`Exhibit 1001 - U.S. Patent No. 9,320,122 (issued Apr. 19, 2016)
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Case: IPR2018-01592
`Patent No.: 9,320,122
`
`EXHIBIT 1057
`
`))))))))))))))
`
`PRIME WIRE & CABLE, INC.
`
`Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
`Patent owner
`
`JASCO PRODUCTS, INC.
`
`Licensee
`
`DECLARATION OF BRYCE A. JOHNSON IN SUPPORT OF THE
`PETITION FOR INTER PARTES REVIEW OF U.S. PAT. NO. 9,320,122
`My name is Bryce A. Johnson. I am over the age of 18 and in all ways
`
`qualified to make this declaration. I hereby declare as follows:
`
`1.
`
`I am a registered patent attorney (CA Bar No. 258357) (USPTO Reg.
`
`No. 74,733) for Petitioner PRIME Wire & Cable, Inc. (“PRIME”). I am familiar
`
`with the facts and circumstances in the above captioned action as they relate to this
`
`declaration. Unless stated as relying on information and belief, the facts contained
`
`herein are based on my own personal knowledge and, if called upon, I could and
`
`would testify competently thereto.
`
`Exhibit 1001 - U.S. Patent No. 9,320,122 (issued Apr. 19, 2016)
`
`
`
`2.
`
`Attached to the above captioned petition as Exhibit 1001 is a true and
`
`correct copy of U.S. Patent No. 9,320,122 (“the ‘122 patent”). I downloaded this
`
`document
`
`on
`
`Jun.
`
`18,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US9320122B2/en?oq=9320122.
`
`Exhibit 1002 -
`
`Complete File History for U.S. Pat. No. 9,320,122, App. Ser.
`No. 14/944,302 (filed Nov. 18, 2015) (as of Jul. 11, 2018)
`Attached to the above captioned petition as Exhibit 1002 is a true and
`
`3.
`
`correct copy of the Complete File History for U.S. Pat. No. 9,320,122, App. Ser.
`
`No. 14/944,302 (filed Nov. 18, 2015) (as of Jul. 11, 2018). I downloaded this
`
`document from the USPTO’s PAIR system on Jul. 11, 2018.
`
`Exhibit 1003 -
`
`Bryce A. Johnson, RULE 501 CITATION OF PRIOR ART
`AND WRITTEN CLAIM SCOPE STATEMENTS IN U.S.
`PAT. NO. 9,320,122, pages 1-57, Mar. 14, 2018, USPTO
`Alexandria, VA
`Attached to the above captioned petition as Exhibit 1003 is a true and
`
`4.
`
`correct copy of a document I wrote entitled “RULE 501 CITATION OF PRIOR
`
`ART AND WRITTEN CLAIM SCOPE STATEMENTS IN U.S. PAT. NO.
`
`9,320,122.” I submitted this document for placement into the file of the ‘122
`
`patent on Mar. 14, 2018 under 37 C.F.R. § 1.501 (“Rule 501”) and 35 U.S.C. §
`
`301. I received an email from ThirdPartySubmissionInitialReview@USPTO.gov
`
`(dated Mar. 22, 2018) stating that the document was reviewed and determined
`
`compliant with Rule 501 and 35 U.S.C. § 301. A true and correct copy of that
`
`2
`
`
`
`email is appended to this declaration. The document was placed in the ‘122 record
`
`on Mar. 27, 2018 by the USPTO. Being part of the official record of the ‘122
`
`patent, this document is also included as part of Ex. 1002, pgs. 113-169. The
`
`document is attached as a separate Exhibit 1003 for ease of reference and because
`
`the copy placed in the record has poorer image quality than the copy provided here.
`
`Exhibit 1004 -
`
`Complaint, Document #1, pages 1-17, Jun. 2, 2016,
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court
`For the Northern District of Illinois Eastern Division
`Attached to the above captioned petition as Exhibit 1004 is a true and
`
`5.
`
`correct copy of the complaint of record (Document #1) in CANTIGNY v. JASCO,
`
`case 1:16-cv-005794, District Court For the Northern District of Illinois Eastern
`
`Division. I downloaded this complaint from the Public Access to Court Electronic
`
`Records (“PACER”) database at www.pacer.gov on Mar. 14, 2018. This
`
`complaint was attached to my Rule 501 citation [Ex. 1003] and has been made part
`
`of the ‘122 patent record. Being part of the official record of the ‘122 patent, this
`
`complaint is also included as part of Ex. 1002, pgs. 7-23. The complaint is
`
`nevertheless attached as a separate Exhibit 1004 for ease of reference and because
`
`the copy placed in the record has poorer image quality than the copy provided here.
`
`Exhibit 1005 -
`
`Exhibit A, Complaint, Document #1-1, pages 1-32, Jun. 2,
`2016, CANTIGNY v. JASCO, case 1:16-cv-005794, District
`Court For the Northern District of Illinois Eastern Division
`
`6.
`
`Attached to the above captioned petition as Exhibit 1005 is a true and
`
`3
`
`
`
`correct copy of Exhibit A to the complaint of record (Document #1-1) in
`
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court For the Northern
`
`District of Illinois Eastern Division. I downloaded this Exhibit A from the PACER
`
`database at www.pacer.gov on Mar. 14, 2018. This Exhibit A was attached to my
`
`Rule 501 citation [Ex. 1003] and has been made part of the ‘122 patent record.
`
`Being part of the official record of the ‘122 patent, this complaint is also included
`
`as part of Ex. 1002, pgs. 24-55. Exhibit A to the complaint is nevertheless attached
`
`as a separate Exhibit 1005 for ease of reference and because the copy placed in the
`
`record has poorer image quality than the copy provided here.
`
`Exhibit 1006 -
`
`Exhibit B, Complaint, Document #1-2, pages 1-31, Jun. 2,
`2016, CANTIGNY v. JASCO, case 1:16-cv-005794, District
`Court For the Northern District of Illinois Eastern Division
`
`7.
`
`Attached to the above captioned petition as Exhibit 1006 is a true and
`
`correct copy of Exhibit B to the complaint of record (Document #1-2) in
`
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court For the Northern
`
`District of Illinois Eastern Division. I downloaded this Exhibit B from the PACER
`
`database at www.pacer.gov on Mar. 14, 2018. This Exhibit B was attached to my
`
`Rule 501 citation [Ex. 1003] and has been made part of the ‘122 patent record.
`
`Being part of the official record of the ‘122 patent, this complaint is also included
`
`as part of Ex. 1002, pgs. 56-86. Exhibit B to the complaint is nevertheless attached
`
`as a separate Exhibit 1006 for ease of reference and because the copy placed in the
`
`4
`
`
`
`record has poorer image quality than the copy provided here.
`
`Exhibit 1007 -
`
`Exhibit C, Complaint, Document #1-3, pages 1-2, Jun. 2, 2016,
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court
`For the Northern District of Illinois Eastern Division
`
`8.
`
`Attached to the above captioned petition as Exhibit 1007 is a true and
`
`correct copy of Exhibit C to the complaint of record (Document #1-3) in
`
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court For the Northern
`
`District of Illinois Eastern Division. I downloaded this Exhibit C from the PACER
`
`database at www.pacer.gov on Mar. 14, 2018. This Exhibit C was attached to my
`
`Rule 501 citation [Ex. 1003] and has been made part of the ‘122 patent record.
`
`Being part of the official record of the ‘122 patent, this complaint is also included
`
`as part of Ex. 1002, pgs. 87-88. Exhibit C to the complaint is nevertheless attached
`
`as a separate Exhibit 1007 for ease of reference and because the copy placed in the
`
`record has poorer image quality than the copy provided here.
`
`Exhibit 1008 -
`
`Exhibit D, Complaint, Document #1-4, pages 1-3, Jun. 2, 2016,
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court
`For the Northern District of Illinois Eastern Division
`
`9.
`
`Attached to the above captioned petition as Exhibit 1008 is a true and
`
`correct copy of Exhibit D to the complaint of record (Document #1-4) in
`
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court For the Northern
`
`District of Illinois Eastern Division. I downloaded this Exhibit D from the PACER
`
`database at www.pacer.gov on Mar. 14, 2018. This Exhibit D was attached to my
`
`5
`
`
`
`Rule 501 citation [Ex. 1003] and has been made part of the ‘122 patent record.
`
`Being part of the official record of the ‘122 patent, this complaint is also included
`
`as part of Ex. 1002, pgs. 89-91. Exhibit D to the complaint is nevertheless attached
`
`as a separate Exhibit 1008 for ease of reference and because the copy placed in the
`
`record has poorer image quality than the copy provided here.
`
`Exhibit 1009 -
`
`Exhibit E, Complaint, Document #1-5, pages 1-3, Jun. 2, 2016,
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court
`For the Northern District of Illinois Eastern Division
`
`10. Attached to the above captioned petition as Exhibit 1009 is a true and
`
`correct copy of Exhibit E to the complaint of record (Document #1-5) in
`
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court For the Northern
`
`District of Illinois Eastern Division. I downloaded this Exhibit E from the PACER
`
`database at www.pacer.gov on Mar. 14, 2018. This Exhibit E was attached to my
`
`Rule 501 citation [Ex. 1003] and has been made part of the ‘122 patent record.
`
`Being part of the official record of the ‘122 patent, this complaint is also included
`
`as part of Ex. 1002, pgs. 92-94. Exhibit E to the complaint is nevertheless attached
`
`as a separate Exhibit 1009 for ease of reference and because the copy placed in the
`
`record has poorer image quality than the copy provided here.
`
`Exhibit 1010 -
`
`Exhibit F, Complaint, Document #1-6, pages 1-6, Jun. 2, 2016,
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court
`For the Northern District of Illinois Eastern Division
`
`11. Attached to the above captioned petition as Exhibit 1010 is a true and
`
`6
`
`
`
`correct copy of Exhibit F to the complaint of record (Document #1-6) in
`
`CANTIGNY v. JASCO, case 1:16-cv-005794, District Court For the Northern
`
`District of Illinois Eastern Division. I downloaded this Exhibit F from the PACER
`
`database at www.pacer.gov on Mar. 14, 2018. This Exhibit F was attached to my
`
`Rule 501 citation [Ex. 1003] and has been made part of the ‘122 patent record.
`
`Being part of the official record of the ‘122 patent, this complaint is also included
`
`as part of Ex. 1002, pgs. 95-100. Exhibit F to the complaint is nevertheless
`
`attached as a separate Exhibit 1010 for ease of reference and because the copy
`
`placed in the record has poorer image quality than the copy provided here.
`
`Exhibit 1011 -
`
`Listing of Original Claims for the Child of U.S. Pat. No.
`9,320,122, App. Ser. No. 15/822,295 (filed Nov. 27, 2017)
`12. Attached to the above captioned petition as Exhibit 1011 is a true and
`
`correct copy of a Listing of Original Claims for U.S. App. Ser. No. 15/822,295
`
`(filed Nov. 27, 2017). I downloaded this document from the USPTO’s PAIR
`
`system on Jul. 11, 2018.
`
`Exhibit 1012 -
`
`Non-Final Office Action dated Mar. 26, 2018 for the Child of
`U.S. Pat. No. 9,320,122, App. Ser. No. 15/822,295 (dated Nov.
`27, 2017)
`13. Attached to the above captioned petition as Exhibit 1011 is a true and
`
`correct copy of Non-Final Office Action dated Mar. 26, 2018 from U.S. App. Ser.
`
`No. 15/822,295 (filed Nov. 27, 2017). I downloaded this document from the
`
`USPTO’s PAIR system on Jun. 28, 2018.
`
`7
`
`
`
`Exhibit 1013 -
`
`Complaint, Document #1, pages 1-11, Mar. 14, 2018, JASCO
`v. PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`
`14. Attached to the above captioned petition as Exhibit 1013 is a true and
`
`correct copy of the complaint of record (Document #1) in JASCO v. PRIME, Civil
`
`Action No. 5:18-cv-44, District Court for the Western District of North Carolina.
`
`This complaint was filed on Mar. 14, 2018 and I downloaded document the next
`
`day on Mar. 15, 2018 from the PACER database at www.pacer.gov.
`
`Exhibit 1014 -
`
`Exhibit 1, Document #1-1, page 1, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`
`15. Attached to the above captioned petition as Exhibit 1014 is a true and
`
`correct copy of Exhibit 1 to the complaint of record (Document #1-1) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 1 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1015 -
`
`Exhibit 2, Document #1-2, page 2, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`
`16. Attached to the above captioned petition as Exhibit 1015 is a true and
`
`correct copy of Exhibit 2 to the complaint of record (Document #1-2) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`8
`
`
`
`North Carolina. This Exhibit 2 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1016 -
`
`Exhibit 3, Document #1-3, pages 1-31, Mar. 14, 2018, JASCO
`v. PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`
`17. Attached to the above captioned petition as Exhibit 1016 is a true and
`
`correct copy of Exhibit 3 to the complaint of record (Document #1-3) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 3 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1017 -
`
`Exhibit 4, Document #1-4, pages 1-5, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`
`18. Attached to the above captioned petition as Exhibit 1017 is a true and
`
`correct copy of Exhibit 4 to the complaint of record (Document #1-4) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 4 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1018 -
`
`Exhibit 5, Document #1-5, pages 1-8, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`
`9
`
`
`
`Western District of North Carolina
`
`19. Attached to the above captioned petition as Exhibit 1018 is a true and
`
`correct copy of Exhibit 5 to the complaint of record (Document #1-5) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 5 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1019 -
`
`Exhibit 6, Document #1-6, page 1, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`20. Attached to the above captioned petition as Exhibit 1019 is a true and
`
`correct copy of Exhibit 6 to the complaint of record (Document #1-6) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 6 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1020 -
`
`Exhibit 7, Document #1-7, page 1, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`
`21. Attached to the above captioned petition as Exhibit 1020 is a true and
`
`correct copy of Exhibit 7 to the complaint of record (Document #1-7) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`10
`
`
`
`North Carolina. This Exhibit 7 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1021 -
`
`Exhibit 8, Document #1-8, page 1, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`
`22. Attached to the above captioned petition as Exhibit 1021 is a true and
`
`correct copy of Exhibit 8 to the complaint of record (Document #1-8) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 8 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1022 -
`
`Exhibit 9, Document #1-9, page 1, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`
`23. Attached to the above captioned petition as Exhibit 1022 is a true and
`
`correct copy of Exhibit 9 to the complaint of record (Document #1-9) in JASCO v.
`
`PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 9 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1023 -
`
`Exhibit 10, Document #1-10, pages 1-40, Mar. 14, 2018,
`JASCO v. PRIME, Civil Action No. 5:18-cv-44, District Court
`
`11
`
`
`
`for the Western District of North Carolina
`
`24. Attached to the above captioned petition as Exhibit 1023 is a true and
`
`correct copy of Exhibit 10 to the complaint of record (Document #1-10) in JASCO
`
`v. PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 10 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1024 -
`
`Exhibit 11, Document #1-11, page 1, Mar. 14, 2018, JASCO v.
`PRIME, Civil Action No. 5:18-cv-44, District Court for the
`Western District of North Carolina
`25. Attached to the above captioned petition as Exhibit 1024 is a true and
`
`correct copy of Exhibit 11 to the complaint of record (Document #1-11) in JASCO
`
`v. PRIME, Civil Action No. 5:18-cv-44, District Court for the Western District of
`
`North Carolina. This Exhibit 11 was filed on Mar. 14, 2018 and I downloaded
`
`document the next day on Mar. 15, 2018 from the PACER database at
`
`www.pacer.gov.
`
`Exhibit 1025 -
`
`U.S.P.T.O Performance and Accountability Report, Fiscal Year
`2015
`
`26. Attached to the above captioned petition as Exhibit 1025 is a true and
`
`correct copy of U.S.P.T.O Performance and Accountability Report, Fiscal Year
`
`2015. I downloaded this document on Jun. 18, 2018 from the USPTO website at
`
`https://www.uspto.gov/sites/default/files/documents/USPTOFY15PAR.pdf.
`
`12
`
`
`
`Exhibit 1026 -
`
`U.S.P.T.O Performance and Accountability Report, Fiscal Year
`2016
`27. Attached to the above captioned petition as Exhibit 1025 is a true and
`
`correct copy of U.S.P.T.O Performance and Accountability Report, Fiscal Year
`
`2015. I downloaded this document on Jun. 18, 2018 from the USPTO webiste at
`
`https://www.uspto.gov/sites/default/files/documents/USPTOFY16PAR.pdf.
`
`Exhibit 1027 -
`
`to program Timex TX12874X,” Web Page
`“How
`<http://waterheatertimer.org/pdf/how-to-program-
`Timex_TX12874X.pdf>, 1 page, Aug. 16, 2011, retrieved from
`Internet
`Archive
`Wayback
`Machine
`<http://wayback.archive.org/web> on Feb. 26, 2018
`28. Attached as to the above captioned petition as Exhibit 1027, pg. 1 is a
`
`true
`
`and
`
`correct
`
`copy of
`
`the pdf-ed
`
`instruction guide
`
`found
`
`at
`
`http://waterheatertimer.org/pdf/How-to-program-Timex-TX12874X.pdf
`
`and
`
`downloaded on Feb. 26, 2018. The guide was still available for download as of
`
`Aug. 22, 2018. On Feb. 26, 2018, I discovered that the pdf manual was archived
`
`by the Internet Archive Wayback Machine on Aug. 16, 2011. I accessed the
`
`archived website and printed the archived website to pdf using Foxit PDF printing
`
`software. A true and correct copy of the archived website I found in the Internet
`
`Archive Wayback Machine database is attached as Exhibit 1027, pg. 2. The
`
`archived pdf guide and the pdf guide I downloaded on Feb. 26, 2018 appear to be
`
`exact copies of each other. I note that a document corroborating that this timer was
`
`13
`
`
`
`available in the early 2000’s was made of record in the ‘122 patent file history as
`
`“evidence of publication” as part of my Rule 501 citation [Ex. 1003] and appears
`
`in Exhibit 1002, pgs. 101-105.
`
`Exhibit 1028 -
`
`U.S. Pat. No. 6,259,955 (issued Jul. 10, 2001) to Brundisini et
`al (“Brundisini”)
`
`29. Attached to the above captioned petition as Exhibit 1028 is a true and
`
`correct copy of U.S. Patent No. 6,259,955. I downloaded this document on Jul. 18,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US6259955B1/en?oq=6%2c259%2c955.
`
`Exhibit 1029 -
`
`U.S. Pat. No. 6,453,215 (issued Sep. 17, 2002) to Lavoie
`(“Lavoie”)
`
`30. Attached to the above captioned petition as Exhibit 1029 is a true and
`
`correct copy of U.S. Patent No. 6,453,215. I downloaded this document on Jul. 19,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US6453215B1/en?oq=6%2c453%2c215.
`
`Exhibit 1030 -
`
`[JASCO Products Company, LLC]. (Jun. 24, 2015). My
`Touchsmart Timer Overview [video file]. Retrieved from
`https://www.YouTube.com/watch?v=8z3ZnGwobYQ on Jul.
`26, 2018.
`
`31. Attached to the above captioned petition as Exhibit 1030 is a true and
`
`correct copy of Jasco’s video titled “My Touchsmart Timer Overview.” I found
`
`JASCO’s video at https://www.YouTube.com/watch?v=8z3ZnGwobYQ on Jul.
`
`25, 2018. I downloaded the video that same day by putting the YouTube link into
`
`14
`
`
`
`the Online Video Downloader at http://www.onlinevideoder.net/.
`
`Exhibit 1031 -
`
`Screen captures from YouTube video clip entitled "My
`Touchsmart Timer," 4 pages, uploaded on March Jun. 24, 2015
`by user JASCO Products Company, LLC. Retrieved from
`Internet:
`<https://www.YouTube
`.com/watch?v=8z3ZnGwobYQ> on Jul. 26, 2018.
`
`32. Attached to the above captioned petition as Exhibit 1031 is a true and
`
`correct copy of Jasco’s video titled “My Touchsmart Timer Overview.” I found
`
`JASCO’s video at https://www.YouTube.com/watch?v=8z3ZnGwobYQ on Jul.
`
`25, 2018. I printed several screen captures to pdf using Foxit PDF printing
`
`software.
`
`Exhibit 1032 -
`
`U.S. Pat. No. 6,658,303 (issued Dec. 2, 2003) to Hatemata et
`al. (“Hatemata”)
`
`33. Attached to the above captioned petition as Exhibit 1032 is a true and
`
`correct copy of U.S. Patent No. 6,658,303. I downloaded this document on Jul. 11,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US6658303B2/en?oq=6%2c658%2c303a.
`
`Exhibit 1033 -
`
`U.S. Pub. Pat. App. No. 2013/0141018 (pub. Jun. 6, 2013) to
`Kamii (“Kamii”)
`
`34. Attached to the above captioned petition as Exhibit 1033 is a true and
`
`correct copy of U.S. Pub. Pat. App. No. 2013/0141018. I downloaded this
`
`document
`
`on
`
`Jul.
`
`26,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US20130141018A1/en?oq=2013%2f0141018.
`
`15
`
`
`
`Exhibit 1034 -
`
`Reserved.
`
`Exhibit 1035 -
`
`Screen captures from a google for “CANTIGNY Lighting
`Control, LLC.”
`
`35. Attached to the above captioned petition as Exhibit 1035 is a true and
`
`correct copy of Google® search results for an online search I initiated on Jul. 20,
`
`2018. The search terms were “Cantigny Lighting Control, LLC” I printed the
`
`screen captures to pdf using Foxit PDF printing software.
`
`Exhibit 1036-
`
`U.S. Pat. No. 9,226,373 (issued Dec. 29, 2015) (“the ‘122
`Parent”)
`
`36. Attached to the above captioned petition as Exhibit 1036 is a true and
`
`correct copy of U.S. Pat. No. 9,226,373. I downloaded this document on Jul. 20,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US9226373B2/en?oq=9%2c226%2c373.
`
`Exhibit 1037-
`
`U.S. Pub. Pat. App. No. 2016/0113097 (pub. Apr. 21, 2016)
`
`37. Attached to the above captioned petition as Exhibit 1037 is a true and
`
`correct copy of U.S. Pub. Pat. App. No. 2016/0113097. I downloaded this
`
`document
`
`on
`
`Jun.
`
`18,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US20160113097A1/en?oq=2016%2f0113097.
`
`Exhibit 1038-
`U.S. Pub. Pat. App. No. 2016/0212832 (pub. Jul. 21, 2016)
`38. Attached to the above captioned petition as Exhibit 1038 is a true and
`
`16
`
`
`
`correct copy of U.S. Pub. Pat. App. No. 2016/0212832. I downloaded this
`
`document
`
`on
`
`Jul.
`
`19,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US20160212832A1/en?oq=2016%2f0212832.
`
`Exhibit 1039-
`U.S. Pat. No. 9,888,551 (issued Dec. 29, 2015)
`39. Attached to the above captioned petition as Exhibit 1039 is a true and
`
`correct copy of U.S. Pat. No. 9,888,551. I downloaded this document on Jun. 18,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US9888551B1/en?oq=9%2c888%2c551.
`
`Exhibit 1040-
`U.S. Pub. Pat. App. No. 2017/0188441 (pub. Jun. 29, 2017)
`40. Attached to the above captioned petition as Exhibit 1040 is a true and
`
`correct copy of U.S. Pub. Pat. App. No. 2017/0188441. I downloaded this
`
`document
`
`on
`
`Jul.
`
`19,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US20170188441A1/en?oq=2017%2f0188441.
`
`Exhibit 1041-
`U.S. Pub. Pat. App. No. 2017/0188442 (pub. Jun. 29, 2017)
`41. Attached to the above captioned petition as Exhibit 1041 is a true and
`
`correct copy of U.S. Pub. Pat. App. No. 2017/0188442. I downloaded this
`
`document
`
`on
`
`Jul.
`
`19,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US20170188442A1/en?oq=2017%2f0188442.
`
`Exhibit 1042-
`U.S. Pub. Pat. App. No. 2018/0084629 (pub. Mar. 22, 2018)
`42. Attached to the above captioned petition as Exhibit 1042 is a true and
`
`correct copy of U.S. Pub. Pat. App. No. 2018/0084629. I downloaded this
`
`17
`
`
`
`document
`
`on
`
`Jun.
`
`18,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US20180084629A1/en?oq=2018%2f0084629.
`
`Exhibit 1043-
`
`Redline of the ‘122 Spec. and the ‘122 parent disclosures.
`
`43. On Jul. 25, 2018, I visited the USPTO Patent Full-Text and image
`
`database (PatFT) at http://patft.uspto.gov/netahtml/PTO/search-adv.htm. From the
`
`Pat Num search page, I located the full text of both U.S. Pat. Nos. 9,320,122 and
`
`9,226,373. From a Google® Chrome web browser, I cut and paste the full text
`
`from each patent into separate Microsoft® Word® documents. That same day, I
`
`used Word®’s “Compare” functionality using the full-text document for 9,226,373
`
`as the “original” document and the full-text document for 9,320,122 as the
`
`“revised” document. A true and correct copy of the resulting document produced
`
`by Word®’s “Compare” function is attached as Exhibit 1043.
`
`Exhibit 1044-
`
`Listing of Cantigny’s LLC managers.
`
`44. Attached to the above captioned petition as Exhibit 1044 is a true and
`
`correct copy of LLC MANGERS listing from the website for the OFFFICE OF
`
`THE ILLINOIS SECRETARY OF STATE. On Jul. 30, 2018, I submitted a search
`
`query
`
`for
`
`“Cantigny”
`
`and
`
`located
`
`the manager
`
`listings
`
`here:
`
`https://www.ilsos.gov/corporatellc/CorporateLlcController?command=mms&fileN
`
`br=05243696&type=MGR. I printed this website to pdf via Foxit PDF printer
`
`software the same day.
`
`18
`
`
`
`Exhibit 1045-
`
`U.S. Pat. No. 7,058,479 (issued Jun. 6, 2006) to Miller
`(“Miller”)
`45. Attached to the above captioned petition as Exhibit 1045 is a true and
`
`correct copy of U.S. Pat. No. 7,058,479. I downloaded this document on Aug. 6,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US7058479B2/en?oq=7%2c058%2c479.
`
`Exhibit 1046-
`U.S. Pat. No. D791,620 (issued Jul. 11, 2017) to Trice (“Trice”)
`46. Attached to the above captioned petition as Exhibit 1046 is a true and
`
`correct copy of U.S. Pat. No. D791,620. I downloaded this document on Jul. 20,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/USD791620S1/en?oq=D791%2c620.
`
`Exhibit 1047-
`
`Reserved
`
`Exhibit 1048-
`
`U.S. Prov. Pat. App. Ser. No. 61/884,895 (filed Sep. 30, 2013)
`by Michael Stack et al.
`47. Attached to the above captioned petition as Exhibit 1048 is a true and
`
`correct copy of the Complete File History for U.S. Prov. Pat. App. Ser. No.
`
`61/884,895 (filed Sep. 30, 2013) by Michael Stack et al.
`
`I downloaded this
`
`document from the USPTO’s PAIR system on Aug. 8, 2018.
`
`Exhibit 1049-
`
`U.S. Prov. Pat. App. Ser. No. 61/872,120 (filed Aug. 30, 2013)
`by Michael Stack et al.
`48. Attached to the above captioned petition as Exhibit 1049 is a true and
`
`19
`
`
`
`correct copy of the Complete File History for U.S. Prov. Pat. App. Ser. No.
`
`61/872,120 (filed Aug. 30, 2013) by Michael Stack et al. I downloaded this
`
`document from the USPTO’s PAIR system on Aug. 8, 2018.
`
`Exhibit 1050-
`
`U.S. Pub. Pat. App. No. 2015/0061546 (pub. Mar. 5, 2015) by
`Stack (“Stack”)
`49. Attached to the above captioned petition as Exhibit 1050 is a true and
`
`correct copy of U.S. Pub. Pat. App. No. 2015/0061546. I downloaded this
`
`document
`
`on
`
`Jun.
`
`19,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US20150061546A1/en?oq=2015%2f0061546.
`
`Exhibit 1051-
`
`Reserved
`
`Exhibit 1052-
`
`Reserved
`
`Exhibit 1053-
`
`Reserved
`
`Exhibit 1054-
`Examiner Don Le’s search notes for App. Ser. No. 14/944,302
`50. Attached to the above captioned petition as Exhibit 1054 is a true and
`
`correct copy of Examiner Don Le’s search notes for App. Ser. No. 14/944,302 File
`
`History for U.S. Prov. Pat. App. Ser. No. 61/872,120 (filed Aug. 30, 2013) by
`
`Michael Stack et al. I downloaded this document from the USPTO’s PAIR system
`
`on Aug. 15, 2018. Being part of the official record of the ‘122 patent, this
`
`document is also included as part of Ex. 1002, pg. 26. The document is attached as
`
`a separate Exhibit 1054 for ease of reference.
`
`20
`
`
`
`Exhibit 1055-
`
`U.S. Pat. No. 6,507,775 (issued Jan. 14, 2003) by Simon et al.
`(“Simon”)
`51. Attached to the above captioned petition as Exhibit 1055 is a true and
`
`correct copy of U.S. Pat. No. 6,507,775. I downloaded this document on Aug. 20,
`
`2018
`
`from
`
`Google®
`
`Patents
`
`at
`
`https://patents.google.com/patent/US6507775B1/en?oq=U.S.+Pat.+No.+6%2c507
`
`%2c775.
`
`52.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful and false statements and the like so made are punishable
`
`by fine or imprisonment, or both, under section 1001 of Title 18 of the United
`
`States Code and that such willful false statements may jeopardies the results of
`
`these proceedings.
`
`Executed on:
`
`Date: Aug. 21, 2018
`
`By:
`
`_______________________
`
`Bryce A. Johnson
`
`21
`
`
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