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`Case: IPR2018-01592
`Patent No.: 9,320,122
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`9,320,122 UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. 42.100 et seq.
`PRIME Wire & Cable, Inc. (hereinafter “PRIME”) requests cancelation of
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`PRIME WIRE & CABLE, INC.
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` Petitioner,
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`v.
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`CANTIGNY LIGHTING
`CONTROL, LLC.
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` Patent owner
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`JASCO PRODUCTS, INC.
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` Licensee
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`
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`claims 1 through 20 of Pat. No. 9,320,122 (issued Apr. 19, 2016) (“the ‘122
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`patent”) [Ex. 1001].
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`Filed on behalf of PRIME by:
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`John K. Buche & Bryce A. Johnson
`Buche & Associates, P.C.
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`i
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ................................................................................... vi
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`a.
`Claims 1-20 of the ‘122 patent should be canceled under §102 & §103
`over basic light timers described in prior art that were missed during the
`hasty 3.5 month prosecution of the claims.................................................... 1
`b. Claims 1-20 of the ‘122 issued as the result of missed prior art and
`should be canceled as obvious under §102 and §103 over sprinkler
`timers since the same technology was obvious to use for controlling
`landscape lights ............................................................................................. 2
`The ‘122 patent’s priority as a so-called “divisional” is not deserved
`and, as a result, the claims should be canceled under §102 over one
`particular prior art timer that precedes the actual ‘122 filing date ............... 5
`Prosecution of Serial No. 15/822,295 (filed Nov. 27, 2017) (“the ‘295
`child”) demonstrates how the ‘122 claims should be canceled under
`§102 over Hatemata [Ex. 1032] ..................................................................10
`
`c.
`
`d.
`
`
`II. MANDATORY NOTICES [37 C.F.R. §42.8(a)(1)] & ETC. ...........................11
`a.
`Real Party-in-interest [37 C.F.R. §42.8(b)(1)] ............................................12
`b. Related Matters [37 C.F.R. §42.8(b)(2)] .....................................................13
`i. Lawsuits .......................................................................................................13
`ii. Related patent prosecutions .........................................................................13
`c.
`Lead and Back-up Counsel [37 C.F.R. §42.8(b)(3)] ...................................15
`d.
`Service Information [37 C.F.R. §42.8(b)(4)] ..............................................15
`e.
`Timing [37 C.F.R. §42.102(a)] ...................................................................16
`f.
`Eligibility to file [37 C.F.R. §42.101(a)-(c)] & Grounds for Standing
`[37 C.F.R. §42.104(a)] ................................................................................16
`g. Grounds for Standing [37 C.F.R. §42.104(a)] ............................................16
`
`ii
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`

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`E.
`
`F.
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`C.
`
`D.
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`III. THE ‘122 PATENT ...........................................................................................17
`A. The ‘122 patent speaks to a simple timer with a display (and some
`buttons) used to turn appliances on and/or off. ...........................................17
`B. Claims 1 & 15 describe timers with buttons that can be used to program
`on/off times. Claim 8 and its dependents describe a timer that features
`buttons that activate pre-stored timing patterns for electrical appliances.
`In JASCO’s actual timer shown below, one can see timing patterns and
`associated buttons: ......................................................................................18
`JASCO marks its timer (shown below) with “patented” under the ‘122
`patent ...........................................................................................................18
`JASCO was itself sued by the patent owner, CANTIGNY, for this same
`product—before it acquired a license to the ‘122 and used it against
`competitors, like PRIME .............................................................................20
`PRIME filed a 37 CFR §1.501 Citation of “claim scope statements”
`[Ex. 1003] in the file of the ‘122 patent to demonstrate how the patent
`owner, CANTIGNY, asserted its patent claims over JASCO’s timer ........21
`There is pending ‘295 child application by CANTIGNY that is for the
`same timer claimed in the ‘122 patent that was recently rejected as
`anticipated by §102 prior art Hatemata [Ex. 1032] ....................................22
`G. The patent prosecution of the ‘122 was unusual in several respects: (a)
`the duration of prosecution lasted 3.5 months even though the case was
`not expedited; (b) a data-dump via IDS was reviewed only after an
`allowance was granted; (c) prosecution counsel is the alleged inventor,
`attorney of record, and principle member of the non-practicing entity,
`CANTIGNY, that first initiated claims over the timers; (d) priority
`claims appear to have been manipulated to both target and avoid
`JASCO’s timer as prior art—because the ‘122 patent was a so-called
`“divisional” that added descriptions not found in the parent; and (e) no
`substantive patentability analysis was made of record, including of
`priority claims in the so-called “divisional,” and the Examiner’s search
`notes show that classification based searching for prior art was
`extremely limited ........................................................................................23
`
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`IV. IDENTIFICATION OF CHALLENGES AND PRECISE RELIEF
`REQUESTED ....................................................................................................25
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`iii
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`a.
`b.
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`Claims for which IPR is requested [37 C.F.R. §42.104(b)(1) ] ..................25
`The specific prior art and statutory grounds on which the challenge is
`based and identification and relevance of the supporting evidence [37
`C.F.R. §42.104(b)(2),(5)] ............................................................................25
`c. A person having skill in the art ...................................................................28
`d. Claim Construction
`[37 C.F.R. §42.104(b)(3)]: The Broadest
`Reasonable Construction Standard (“BRCS”) governs ..............................28
`
`
`V. IPR SHOULD BE INSTITUTED BECAUSE IT IS MORE LIKELY THAN
`NOT THAT AT LEAST ONE OF THE CHALLENGED CLAIMS OF THE
`‘122 PATENT IS UNPATENTABLE [37 C.F.R. §42.108(c), §42.104(b)(4)] 29
`1. Claim 15 is invalid under §102(a)(1) for lacking novelty in view of
`“How to program a Timex TX12874” ........................................................29
`2. Claims 1, 2, 5, 7, 15, 19, & 20 are invalid under §102(a)(2) for lacking
`novelty in view of Stack ..............................................................................32
`3. Claims 1, 6, 7, 15 & 20 and are invalid under 35 U.S.C. 102(a)(1) for
`lacking novelty in view of Kamii ................................................................36
`4. Claims 1-7 & 15-20 are invalid as obvious under §103 by Brundisini’s
`sprinkler timer in view of Miller’s teaching of how to modify any given
`sprinkler timer to make an outdoor (i.e., landscape) light timer. ................39
`5. Claims 1, 2, 5-16, & 19-20 are invalid as obvious under §103 by Lavoie
`in view of Miller’s teaching of how to modify a sprinkler timer to make
`an outdoor (i.e., landscape) light timer. ......................................................46
`6. As Effectively filed Nov. 18, 2015, claims 1 and 6-14, 15 and 20 of the
`‘122 are invalid under §102 for being anticipated in view of JASCO’s
`Published Instruction Manual, Instructional YouTube videos, and
`Design Patent for its own timer, and CANTIGNY’s admissions ...............53
`7. Claims 1 and 6-14, 15 and 20 of the ‘122 are invalid under §103 for
`being obvious in view of JASCO’s Published Instruction Manuals,
`Instructional YouTube videos, and Design Patent for its timer ..................68
`8. Claims 1-2, 7, 8, 14-17 and 20 invalid under 35 U.S.C. 102(a)(1) for
`lacking novelty over Hatemata consistent with the USPTO’s rejection ....70
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`iv
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`9. Claims 8-12 & 14 are invalid as obvious under §103 over Simon in
`view of Miller’s teaching of how to modify any given sprinkler timer to
`make an outdoor (i.e., landscape) light timer. ............................................75
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`VI. CONCLUSION .................................................................................................80
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`CERTIFICATE OF SERVICE RE CANTIGNY ....................................................82
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`CERTIFICATE OF SERVICE RE: JASCO ............................................................83
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`CERTIFICATE OF WORD COUNT ......................................................................84
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`APPENDIX OF CLAIM LISTING .........................................................................85
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`v
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`TABLE OF AUTHORITIES
`
`Cases
`In re Best
`562 F.2d 1252, 1255 (CCPA 1977)………………………………..…….. pg. 3, 45
`Rivera v. Int’l Trade Commission
`857 F.3d 1315, 1323-1324 (Fed. Cir. 2017) ……………………….……pg. 7,54,56
`Cuozzo Speed Tech., LLC v. Lee
`136 S.Ct. 2131, 2142 (2016)………………………………………………..…pg.28
`Verdegaal Bros. V. union Oil Co. of California
`814 F.2d 628, 631 (Fed. Cir. 1987)……………………………………………pg.29
`KSR Int’l Co. v. Teleflex Inc.
`550 U.S. 398, 406 (2007)……………………………………………………..pg. 29
`Graham v. John Deere Co.
`383 U.S. 1, 17-18 (1966)……………………………………………………...pg. 29
`
`Statutes
`35 U.S.C. § 102
`…………….… pg. 1,2,5,8,10,22,23,25,26,27,29,30,31,31,32,36,39,53,68,69,70,75
`35 U.S.C. § 103
`………………………………………………… pg. 1,2,25,26,27,29,39,46,68,69,75
`35 U.S.C. § 301
`……………………………………………………………………………..… pg. 21
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`Patent Rules
`37 CFR § 1.501…………………………………………………..…pg. 8,9,21,22,58
`37 CFR § 42.8…………………………………………………….…pg. 11,12,13,15
`37 CFR § 42.100………………………………………………………………pg. 28
`37 CFR § 42.101………………………………………………………………pg. 16
`37 CFR § 42.102………………………………………………………………pg. 16
`37 CFR § 42.104…………………………………………………pg. 16,25,27,28,29
`37 CFR § 42.108………………………………………………………………pg. 29
`
`Manual for Patent Practice & Procedure (MPEP)
`MPEP 201.06……………………………………………………………… pg. 6,54
`MPEP 211.05……………………………………………………………… pg. 6,24
`MPEP 2112.02……………………………………………………………... pg. 3,45
`MPEP 2114………………………………………………………………….… pg. 2
`MPEP 2128……………………………………………………………………pg. 58
`MPEP 2131…………………………………………..………pg. 29, 31,36,39,68,75
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`vi
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`MPEP 2131.01……………………………………………………………..…pg. 53
`MPEP 2143…………………………………………………………….. pg. 4,45,46
`MPEP 2163… ………………………………………………………………….pg. 7
`MPEP 2163.03……………………………………………………………... pg. 6,54
`MPEP 2163.06……………………………………………………………...…pg. 55
`MPEP 2202……………………………………………………………………pg. 21
`MPEP 2217………………………………………………………………...… pg. 10
`
`Other Authorities
`None
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`
`
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`vii
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`

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`I.
`
`INTRODUCTION
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`a. Claims 1-20 of the ‘122 patent should be canceled under §102 &
`§103 over basic light timers described in prior art that were
`missed during the hasty 3.5 month prosecution of the claims
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`Petitioner requests cancelation of claims 1-20 of the ‘122 patent because a
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`hasty 3.5 month examination and failure to consider highly pertinent prior art
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`resulted in patent claims now being abused in an attempt to restrict use of old,
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`public domain technology. Basic timers like those claimed for lights or other
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`electric devices have been in the public domain long prior to the ‘122 issuance.
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`Published online instructions of one public domain timer, shown in the table
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`below, exactly reads on the main claims of the patent, and yet this prior art was
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`never considered before the patent grant. See Table 1:
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`Table 1: For example, claim 15 is invalid over an old public domain Timex®
`timer, made and instructed [Ex. 1027] for use with lights, dated at least as
`early as 2011.
`Consequently, PRIME petitions for cancelation of all claims of the ‘122 patent in
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`1
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`view of prior art light timers overlooked during prosecution.
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`b. Claims 1-20 of the ‘122 issued as the result of missed prior art
`and should be canceled as obvious under §102 and §103 over
`sprinkler timers since the same technology was obvious to use
`for controlling landscape lights
`
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`CANTIGNY Lighting Control, LLC (“CANTIGNY”) obtained the ‘122
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`patent after a short examination that focused too narrowly on the words
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`“programmable light timer[s]” while ignoring that the claimed subject matter was
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`really just a simple timer—with buttons— for turning electrical appliances on and
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`off. Indeed, only USPC class 315 for “electric lamp” timers and CPC symbol
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`H05B/0281 for timers with “circuit arrangements for electrical light sources” were
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`reviewed during just one days’ worth (Feb. 5, 2016) of searching. See Examiner’s
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`Search Notes, Ex. 1054, pg. 1. The prosecution was improperly narrow in scope of
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`prior art being considered (and searched) because it neglected prior art classes of
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`timers that have functions highly analogous to light control. Cf. MPEP 2114, I.
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`The references considered in examination only looked at timers for lights or lamps.
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`A much broader range of prior art appliance timers were relevant, including
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`timers for any type of appliance, and they should have been considered. As the
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`inventor even noted in col. 4:25-28 [Ex. 1001]: “…it should be understood that the
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`user interfaces, circuits and methods set forth in more detail below could be
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`implemented in a timer which is plugged into an outlet (commonly called a light or
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`appliance timer)” (emphasis added). The specification in col. 7:17-19 [Ex. 1001]
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`2
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`further admits “As shown in FIG.9, the timer comprises a receptacle for receiving
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`the prongs of a plug of a light or an appliance” (emphasis added).
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`A simple prior art search immediately reveals that on-point ON/OFF timers
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`have been around since at least the 1980’s to provide: electronic appliance timing,
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`programmed timing control to TV show schedules (before DVRs and cable boxes),
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`and programmed lawn-watering schedules (“sprinkler timers”). Prior art sprinkler
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`timers, aka “landscape” or “irrigation” controllers, should have been compared to
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`the claimed “light timers” before a patent was granted because sprinkler timers
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`have nearly all the recited structural elements of the claimed timers and are thus
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`presumed to be obviously capable of the recited lighting control functions of the
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`claims. Timer expert, Joseph Mayo, states:
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`“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 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.”
`Mayo Decl., Ex. 1056, ¶22; see also MPEP 2112.01, I. citing In re Best, 562 F.2d
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`1252, 1255 (CCPA 1977) (for product and apparatus claims, “[w]here the claimed
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`and prior art products [or apparatus] are identical or substantially identical in
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`structure… a prima facie case of obviousness has been established”).
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`For example, the sprinkler timer described by Brundisini [Ex. 1028] closely
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`tracks the ‘122 “light timer” claims as shown in Table 2:
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`3
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`Table 2: A basic broad search for general purpose timers reveals many prior
`art ON/OFF sprinkler timers, like the ON/OFF timer depicted above and
`otherwise presented in this petition, that were not considered by the USPTO
`before it gave CANTIGNY the ‘122 patent.
`Sprinkler timer technology is obviously similar to outdoor (i.e., landscape) light
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`timers. One prior art, Miller [Ex. 1045], explicitly teaches “a given irrigation
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`controller..., particularly a multi-program capable one… could… be used to
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`operate outdoor [i.e., landscape] lighting… that is, to turn the lights on and off at
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`predetermined times.” Col. 25:23-38 [Ex. 1045]; see also MPEP 2143, I., G.
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`(obviousness is demonstrated when “some teaching, suggestion, or motivation in
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`the prior art… would have led [to a modification of a] prior art reference… to
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`arrive at the claimed invention.”). Miller goes on to give simple examples of how
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`a sprinkler timer can be modified to become an outdoor light timer. Id. If the
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`4
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`scope of the claims had been properly appreciated, the Examiner would have
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`expanded the prior art search to include sprinkler timers and the ‘122 patent would
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`not have issued. Regrettably, the claims are now asserted by litigants to cover
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`nearly all prior art digital ON/OFF timers that could conceivably be used to control
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`appliances.
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`c. The ‘122 patent’s priority as a so-called “divisional” is not
`deserved and, as a result, the claims should be canceled under
`§102 over one particular prior art timer that precedes the actual
`‘122 filing date
`
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`Now, important for this proceeding (and to what is available as prior art), it
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`should be noted, that there have been unusual manipulations of priority claims in
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`the ‘122 patent that need to be evaluated—and with consideration that the ‘122
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`patent claims are not entitled to the priority date asserted. The ‘122 patent holder,
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`CANTIGNY, asserted an undeserved and yet unchecked “divisional” priority to
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`2013. File History, Ex. 1002, pg. 334. However, in truth, the subject matter of the
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`‘122 claims was actually only inserted circa late-2015 by named inventor, litigant,1
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`and patent attorney of record, John J. King (“King”). In what appears to be an
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`effort to back-date a new disclosure to use against a litigation target, the patent
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`applicant (a) inserted new matter2 into portions of the specification, (b) drafted
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`claims to the new matter to match the litigation target, and then (c) filed a so-called
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`1 John J. King and a relative are the only two listed managers of CANTIGNY. Ex. 1044.
`2 A red-line comparison of the ‘122 patent and its parent is attached as Ex. 1043.
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`5
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`“divisional” which was really a “continuation-in-part.” Cf. MPEP 211.05 (“The
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`disclosure of a divisional application must be the same as the disclosure of the
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`prior-filed application…” (emphasis added)); also Cf. MPEP 201.06 (“A
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`continuation-in-part application should not be designated as a divisional
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`application… the disclosure in a divisional application must not include any
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`subject matter which would constitute new matter if submitted as an
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`amendment to the parent application… while a divisional application may
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`depart from the phraseology used in the parent application there may be no
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`departure therefrom in substance or variation in the disclosure that would
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`amount to new matter if introduced by amendment to the parent application.”
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`(emphasis added)). By law, claims are not entitled to an earlier effective filing
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`date unless the priority document has full written description support for the
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`claimed subject matter. MPEP 2163.03, sub. II. In this case, a “divisional”
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`priority is not deserved because the priority document does not provide the
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`necessary written description to support the full breadth of the rewritten portions of
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`the specification and the associated claims.
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`The priority issue is only relevant to one of the prior art references identified
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`in this Petition. All of the other old prior art timers presented in this Petition
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`predate and invalidate the claims regardless of the legitimacy of the asserted ‘122
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`priority date. However, one prior art timer discussed herein is particularly relevant
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`6
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`to consider since the timer was actually a litigation target of the ‘122 patent. Infra
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`II. B. That targeted timer is shown in Ex. 1009:
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`
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`Indeed, Courts involved in patent cases that have issues of inadequate “written
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`description” will frequently focus on a targeted device to get a taste of the full
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`breadth of asserted claims before returning back to the original write-up for
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`comparison, and to assess whether or not a priority document “provides the
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`necessary written description support for the full breadth of the asserted claims.”
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`Rivera v. Int’l Trade Commission, 857 F.3d 1315, 1323-1324 (Fed. Cir. 2017); see
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`also MPEP 2163, II. (“Methodology for Determining Adequacy of Written
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`Description… 1. For Each Claim, Determine What the Claim as a Whole Covers;
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`2. Read the [parent specification]… 3. Determine Whether There is Sufficient
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`Written Description…”). Logically, if the claims are not entitled to the asserted
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`priority and it turns out the effective filing date of the claims came after the
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`accused device went public, then the targeted device (and contemporary
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`publications that described it) will necessarily become an invalidating prior art
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`7
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`reference under §102.
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`Such is this case. CANTIGNY actually sued then Defendant, JASCO
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`Products Inc., LLC (“JASCO”) less than two months after the ‘122 patent issued
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`for alleged infringement by one of JASCO’s own timers – which is described in
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`publications presented as prior art herein. As alleged in that suit, JASCO’s timer
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`[Exs. 1009] had all the elements to anticipate the ‘122 patent claims. See Ex. 1004.
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`What is interesting though is that JASCO’s timer predated the earliest effective
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`filing date of the ‘122 patent and is prior art when proper priority analysis is done:
`
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`Table 3: JASCO’s timer [e.g., Ex. 1031] predates the effective filing date of the
`claims and has all the limitations of the claims.
`CANTIGNY’s infringement contentions were cited by PRIME in the ‘122 record
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`under 37 CFR 1.501 (“Rule 501”). See Ex. 1002, pgs. 113-169; Ex. 1003.
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`The issues of bogus priority went unlitigated because JASCO simply
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`8
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`accepted a license [Ex. 1018] instead of answering CANTIGNY’s complaint [Ex.
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`1004] or filing a Post Grant Review. The failure of JASCO to litigate these
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`priority issues is disappointing because a cursory review of the original priority
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`document, the “divisional” specification replete with new matter, and the target of
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`the ‘122 claims (i.e., JASCO’s timer), demonstrates that the alleged priority of the
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`‘122 claims was manipulated and, therefore, the claims lack novelty under §102
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`over JASCO’s own timer. Fortunately, with priority issues in view, and with
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`CANTIGNY’s infringement contentions laid out in the Rule 501 citation [Ex.
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`1003] of record, the anticipation issues should be clear to see. See, e.g., Table 4:
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`
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`Table 4: The Rule 501 citation [Ex. 1003] shows CANTIGNY’s infringement
`contentions (e.g. of claim 1 excerpted above) which are admissions that
`JASCO’s timer had all the limitations of claims.
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`9
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`So, PRIME requests cancelation of the ‘122 claims in view of prior art publications
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`[Exs. 1009, 1030, 1031] which disclose JASCO’s prior art timer and the Rule 501
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`citation [Ex. 1003] of record. Cf. MPEP 2217, sub. III (“an admission by the
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`patent owner of record in the file or in a court record may be may be utilized in
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`combination with a patent or printed publication [when applying the prior art in ex
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`parte reexamination]”).
`
`d. Prosecution of Serial No. 15/822,295 (filed Nov. 27, 2017) (“the
`‘295 child”) demonstrates how the ‘122 claims should be
`canceled under §102 over Hatemata [Ex. 1032]
`
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`CANTIGNY’s prosecution of the ‘295 child is relevant because certain
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`rejections by the USPTO demonstrate that CANTIGNY is not entitled to a patent
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`for basic timers claimed in the ‘122 patent. In this child case, CANTIGNY
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`attempted to claim what was rejected by the USPTO as a double patent of the ‘122
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`claims. These ‘295 child claims [Ex. 1011] “are not patentably distinct” from the
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`‘122 claims “because the claim recitations [in the child] are merely reworded
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`to recite the same limitations [of the ‘122 claims] in different language and
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`some of the limitations have been regrouped in a slightly different manner but
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`still overall set forth the same limitations.” ‘295 Child’s Office Action dated
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`Mar. 26, 2018, Ex. 1012, pg. 3. These double-patented claims were also rejected
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`“as being anticipated by Hatemata.” Id., pg. 4. As expected, the prior art timer
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`disclosed by Hatemata mapped onto the claims of the ‘122 patent in precisely the
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`10
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`

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`same way the Examiner said Hatemata mapped onto the claims of the double-
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`patented child. Hatemata was clearly identified as a prior art light timer. Id. A
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`§102 rejection over Hatemata should have been made during prosecution of the
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`‘122 patent and, if it had, the ‘122 patent would never have issued. See, e.g., Table
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`5:
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`Table 5: For example, claim 8 (right) is invalid over §102 prior art Hatemata.
`The examinations should be somewhat consistent in the same patent family. So,
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`
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`PRIME requests cancelation of the ‘122 patent claims 1-2, 7, 8 14-17, and 20 in
`
`view of Hatemata.
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`II. MANDATORY NOTICES [37 C.F.R. §42.8(a)(1)] & ETC.
`
`The four mandatory notices under 37 C.F.R. §42.8 are set forth below.
`
`11
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`a. Real Party-in-interest [37 C.F.R. §42.8(b)(1)]
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`PRIME certifies that it is the real-party-in-interest on the petitioner’s side of
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`this Inter Partes Review (IPR) of the ‘122 patent. PRIME’s parent company is
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`YCF-BonEagle Co., Ltd (“YFC-Taiwan”), a limited liability company organized in
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`Taiwan.
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`CANTIGNY owns the ‘122 patent (real/frame 038505/0166). But, JASCO
`
`submitted to an unrecorded license (attached as Ex. 1018) soon after it was sued by
`
`the nonpracticing entity3 in the District Court for the Northern District of Illinois
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`Eastern Division. See Cantigny v. Jasco, Civil Action No. 16-cv-05794 (in the
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`Norther District of Illinois) (attached as Ex. 1004-1010); JASCO settled (Ex. 1018,
`
`pg. 4) without answering the complaint). JASCO is now pursuing its competitor
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`PRIME for alleged infringement of the ‘122 patent in the District Court for the
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`Western District of North Carolina using the same untested patent right. See Jasco
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`v. Prime, Civil Action No. 5:18-cv-44 (in the Western District of North Carolina)
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`(attached as Ex. 1013-1024). Between JASCO and CANTIGNY, JASCO may be
`
`obligated to bear the costs of this IPR (Ex. 1018, pg. 3-4), but CANTIGNY still
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`has a reversionary interest in the patent if ever JASCO fails to pay a designated
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`minimum royalty (Id., pg. 1). So, CANTIGNY and JASCO are likely interested
`
`
`3 Google searching “Cantigny Lighting Control, LLC” results in a list of links related to patents
`and lawsuits involving timers. Ex. 1035. Cantigny products cannot be found anywhere by
`PRIME.
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`12
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`parties.
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`b. Related Matters [37 C.F.R. §42.8(b)(2)]
`
`There are several related matters.
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`i. Lawsuits
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`CANTIGNY sued JASCO in 2016. CANTIGNY v. JASCO settled and
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`JASCO now marks the accused products in that case as “patented” under the ‘122
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`patent. JASCO filed its lawsuit against PRIME on Mar. 14, 2018. PRIME knows
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`of no other lawsuits involving the ‘122 patent.
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`ii. Related patent prosecutions
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`CANTIGNY has two patent families related to the technology of the ‘122
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`patent. Both patent families claim rights to timers for electrical appliances. The 1st
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`patent family includes the ‘122 patent. The 2nd patent family covers similar if not
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`identical technology. See e.g., Table 6:
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`13
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`First patent family
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`Second patent family
`CANTIGNY v. JASCO
`
`Lawsuit
`Table 6: the claims of the ‘122 patent describe what is shown in the 2nd patent
`family; and, the product accused of infringing the ‘122 patent in JASCO v.
`CANTIGNY is exactly like what is shown and described in the 2nd patent
`family, so the two families are related for purposes of this IPR.
`PRIME believes that the 2nd patent family might actually be another “continuation-
`
`in-part” of the 1st patent family that failed to include a proper priority claim. For
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`these reasons, PRIME determined both families are related to the ‘122 patent:
`
`First patent family
`
`
`(1)
`Ex. 1036- Pat. 9,226,373
`Ser. No. 14/066,724 (filed Oct. 30,
`2013)
`(2)
`Ex. 1001- Pat. 9,320,122
`Ser. No. 14/944,302 (filed Nov. 18,
`2015)
`(3a)
`Ex. 1037- Pub. App. US2016/0113097
`Ser. No. 14/979,376 (filed Dec. 27,
`2015)
`(4)
`Ex. 1039- Pat. 9,888,551
`
`Second patent family
`
`
`
`
`
`
`
`
`
`
`(3b)
`Ex. 1038- Pub. App. US2016/0212832
`Ser. No. 14/979,377 (filed Dec. 27,
`2015)
`
`
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`14
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`

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`Ser. No. 15/131836 (filed Apr. 18,
`2016)
`
`
`
`
`
`
`
`
`
`
`(8)
`Ex. 1042- Pub. App. US2018/0084629
`Ser. No. 15/822,295 (filed Nov. 27,
`2017)
`
`
`(5)
`Ex. 1040- Pub. App. US2017/0188441
`Ser. No. 15/239,764 (filed Aug. 17,
`2016)
`(6)
`Ex. 1041- Pub. App. US2017/0188442
`Ser. No. 15/390,424 (filed Dec. 23,
`2016)
`(7)
`Not publicly available
`PCT/US/68619 (filed Dec. 26, 2016)
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`c. Lead and Back-up Counsel [37 C.F.R. §42.8(b)(3)]
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`Lead counsel:
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`
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`John K. Buche (Reg. No. 46,584)
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`Back-up or co-counsel: Bryce A. Johnson (Reg. No. 74,733)
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`Pursuant to 37 C.F.R. §42.10(b), PRIME submits herewith a power of
`
`attorney as designated above.
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`d. Service Information [37 C.F.R. §42.8(b)(4)]
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`Electronic service is agreeable. Designated counsel has the following
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`service information:
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`USPTO customer number:
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`61226
`
`Mailing Address:
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`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`Buche & Associates, P.C.
`875 Prospect, Suite 305
`La Jolla, California 92037
`858.459.9111 (phone)
`858.459.9120 (fax)
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`15
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`John K. Buche (jbuche@buchelaw.com); or
`e-Contact information:
`Bryce A. Johnson (bjohnson@buchelaw.com)
`
`
`
`
`
`e. Timing [37 C.F.R. §42.102(a)]
`
`The ‘122 patent was filed Nov. 18, 2015 and has alleged priority to Oct. 30,
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`2013. As such, the patent is subject to the provisions of the Leahy-Smith America
`
`Invents Act (AIA). The ‘122 patent issued April 19, 2016. No post-grant reviews
`
`(PGRs) of the ‘122 patent are on record. So, the timing of this petition complies
`
`with 37 C.F.R. §42.102 (a).
`
`f. Eligibility to file [37 C.F.R. §42.101(a)-(c)] & Grounds for
`Standing [37 C.F.R. §42.104(a)]
`
`Neither PRIME nor YFC-Taiwan have filed a civil action challenging the
`
`validity of the ‘122 patent claims. JASCO’s lawsuit against PRIME for alleged
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`patent infringement was just filed a few months ago on Mar. 14, 2018. JASCO’s
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`complaint served on PRIME on Jun. 12, 2018. JASCO filed an amended
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`complaint that names YFC-Taiwan on July 12, 2018 as a defendant in its patent
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`infringement lawsuit. YFC-Taiwan filed a motion to dismiss that action as to
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`YFC-Taiwan because of lack of personal jurisdiction. Finally, neither PRIME nor
`
`YFC-Taiwan are estopped from challenging the claims on the grounds identified
`
`herein.
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`g. Grounds for Standing [37 C.F.R. §42.104(a)]
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`PRIME certifies that the ‘122 patent is available for IPR and that it (PRIME)
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`16
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`

`

`is not barred or estopped from requesting this IPR challenging the ‘122 patent on
`
`the grounds identified herein.
`
`III. THE ‘122 PATENT
`
`A. The ‘122 patent speaks to a simple timer with a display (and some
`buttons) used to turn appliances on and/or off.
`
`
`
`The ‘122 patent specification describes programmable ON/OFF timers.
`
`The ‘122 claims speak to ON/OFF timers with two separate timing programs or
`
`patterns tied to buttons. In some cases, timing patterns can be customized, in
`
`other cases they are pre-stored. A listing of claims is appended. The patent has
`
`20 total claims, including three independent claims (claims 1, 8, and 15). Two
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`independent claims are apparatus claims for timers, and one independent claim is
`
`a method claim tied to using a timer for an electrical apparatus.
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`17
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`

`

`B. Claims 1 & 15 describe timers with buttons that can be used to
`program on/off times. Claim 8 and its dependents describe a timer
`that features buttons that activate pre-stored timing patterns for
`electrical appliances. In JASCO’s actual timer shown below, one can
`see timing patterns and associated buttons:
`
`
`
`
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`The ‘122 claims describe appliance timers with buttons. They have control
`
`
`
`
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`circuits, actuators, displays, and some buttons that are used to program timing
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`patterns for appliances they control. Buttons are programmable or preset for things
`
`like turn-on, turn-off, or turn-on-then-off.
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`C. JASCO marks its timer (shown below) with “patented” under the ‘122
`patent
`
`
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`Sometime before Jun. 6, 2014,4 JASCO developed a