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`Case: IPR2018-01592
`Patent No.: 9,320,122
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`EXHIBIT 1003
`
`PRIME WIRE & CABLE, INC.
`
` Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
` Patent owner
`
`JASCO PRODUCTS, INC.
`
` Licensee
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`U.S. Patent No. 9,320,122
`
`Issued: Apr. 19, 2016
`
`For: PROGRAMMABLE LIGHT
`TIMER AND A METHOD
`OF
`IMPLEMENTING A
`PROGRAMMABLE LIGHT
`TIMER
`
`
`Patentee: Cantingy Lighting
`Control, LLC
`
`
`Art Unit: 2841 (for
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`§
`§
`
`Rule 501 citation of prior art and written “claim scope statements”
`in U.S. Pat. No. 9,320,122
`
`
`
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`37 CFR 1.501 Citation of prior art and
`written statements in patent files
`
`
`
`
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Cantigny Lighting Control, LLC’s (“Cantigny”) owns U.S. Patent No.
`
`9,320,122 (“the ‘122 patent”)(Real/Frame: 038505/0163).1 Mid-2016, Cantigny
`
`sued Jasco Products Company, LLC (“Jasco”) for infringement of the ‘122 patent
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`in the District Court for the Northern District of Illinois, Eastern Division (Civil
`
`Action No. 16-cv-05794). Cantigny’s complaint in that lawsuit contains multiple
`
`1 Cantigny “holds total legal ownership” of the ‘122 patent. The inventor and patent attorney of
`record, John Joseph King, formed Cantigny as “a vehicle for the development of consumer
`products using his inventions in light timing technology.” Document #1, page 1, ¶ 1, Cantigny v.
`Jasco (case no. 1:16-cv-05794).
`
`
`
`i
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`EXHIBIT 1003 Page 1 of 57
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`

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`
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`infringement contentions and associated “claim scope statements” that are now
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`made of record pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 (“rule 501”).
`
`Importantly, Cantigny’s overreach on the scope of its claims causes the claims to
`
`encompass prior art that was not considered by the USPTO before it decided to
`
`allow the ‘122 patent. Such prior art was presumably overlooked during the
`
`Examiner’s patentability search and examination of the patented technology
`
`because the USPTO and Cantigny took a much narrower position on the claims
`
`during prosecution than Cantigny now takes in the Federal Courts and in the
`
`marketplace. Moving forward, fairness, equity, and rule 501 demand that Cantigny
`
`either (1) explain its forum-dependent positions on claim scope and state for the
`
`record the limitations of its claims via its own Rule 501 citation or (2) otherwise be
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`held to its invalidatingly expansive positions on claim scope during any
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`reexaminations or inter partes reviews of this patent. See MPEP § 2202 (“The
`
`basic purpose for citing written claim scope statements is to ensure that the patent
`
`owner takes consistent positions regarding the scope of the claims of a particular
`
`patent in the courts and before the Office.”).
`
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`March 14, 2018
`Date
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`ii
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`Respectfully Submitted,
`Bryce A. Johnson
`/Bryce A. Johnson/
`Reg. No. 74,733
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`EXHIBIT 1003 Page 2 of 57
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`

`

`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`Table of Contents
`Background & Introduction .............................................................................. 3
`
`
`
`I.
`
`II. Requirements for Rule 501 citations of prior art & “claim scope statements” 8
`
`A. Prior art that has a bearing on the patentability of the ‘122 patent claims ....... 9
`
`B. Claim scope statements made in Federal Court. .............................................11
`1. Any other documents, pleadings, or evidence from the proceeding in which
`the statement was filed that address the written statement .........................18
`2. The forum & proceeding in which patent owner filed each statement .......19
`3. The specific papers and portions of the papers submitted that contain the
`statements ....................................................................................................19
`4. How each statement submitted is a statement in which patent owner took a
`position on the scope of any claim in the patent .........................................20
`
`C. Explanation –Patent Owner Statements:.........................................................21
`
`D. Explanation –Patent Owner Statements:.........................................................28
`1. At least independent claims 1 and 15 of the ‘122 patent are invalid under
`AIA 35 U.S.C. § 102 (a)(1) for being anticipated by “Timex Digital ON-
`OFF Lamp Timer” (published Oct. 14, 2004) by BookOfJoe, in view of
`Cantigny’s “claim scope statements” ..........................................................28
`2. At least independent claims 1 and 15 of the ‘122 patent are invalid under
`AIA 35 U.S.C. § 102 (a)(1) for being anticipated by Data Sheet for “4980
`Programmable repeat cycle ON-OFF timer” (published Oct. 1, 2010) by
`Artisan Controls Corporation, in view of Cantigny’s “claim scope
`statements” ..................................................................................................35
`3. At least independent claim 8 of the ‘122 patent is invalid under AIA 35
`U.S.C. § 102 (a)(1) for being anticipated by Data Sheet for “5100
`
`
`
`1
`
`EXHIBIT 1003 Page 3 of 57
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`

`

`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`
`
`configurable countdown timer” (published Aug. 21, 2013) by Artisan
`Controls Corporation, in view of Cantigny’s “claim scope statements” ...42
`4. At least the independent claims of the ‘122 patent are invalid under AIA 35
`U.S.C. § 102 (a)(1) for being anticipated by U.S. Pat. No. 4,279,012(issued
`Jul. 14, 1981) by Beckerdorff et al. for a “programmable appliance
`controller” in view of Cantigny’s “claim scope statements” ......................48
`III. Reexamination Expected. ...............................................................................54
`
`IV.
`
`Identity of Submitter .......................................................................................54
`
`V. Certificate of Service. .....................................................................................54
`
`CERTIFICATE OF SERVICE .................................................................................. 1
`
`
`
`2
`
`EXHIBIT 1003 Page 4 of 57
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`

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`
`
`I. Background & Introduction
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`The ‘122 patent issued on April 19, 2016 with all claims limited to
`
`“programmable light timer[s]” (emphasis added).2 Almost immediately after
`
`issuance, Cantigny sued Jasco for infringement of the ‘122 patent (Civil Action
`
`No. 1:16-cv-05794). The accused product was a general-purpose programmable
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`power-outlet timer called the “myTouchSmartTM Indoor/Plug-In Digital Timer.”
`
`See Table 1:
`
`
`
`Table 1: Jasco’s “myTouchSmartTM Indoor/Plug-In Digital Timer.” See, e.g.,
`Document #1-5, page 2, Cantigny v. Jasco (case no. 1:16-cv-05794).
`
`
`2 Independent claims 1 and 8 are directed to a “programmable light timer;” independent claim 15
`is a method of implementing a “programmable light timer;” each of the three independent claims
`1, 8, and 15 recite the term “programmable light timer” six times.
`
`
`
`3
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`EXHIBIT 1003 Page 5 of 57
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`Cantingy also accused a general-purpose in-wall timer called “MyTouchSmartTM
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`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`In-Wall Digital Timer” of infringing the ‘122 patent.
`
`
`Table 2: Jasco’s “myTouchSmartTM In-Wall Digital Timer.” See, e.g.,
`Document #1-4, page 2, Cantigny v. Jasco (case no. 1:16-cv-05794).
`Cantigny’s infringement contentions and associated “claim scope statements”
`
`underlying the lawsuit against Jasco were extremely disingenuous considering how
`
`the patent was prosecuted at the Patent Office.
`
`
`
`4
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`EXHIBIT 1003 Page 6 of 57
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`

`

`On one hand, Cantigny prosecuted the ‘122 patent at the Patent Office with a
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`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`
`
`narrow claim scope limited to programmable light timers. Light timers are not
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`stand-alone devices because they have a specific purpose related to lighting and
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`therefore must be built-in or hardwired to a lamp or lighting circuit. For this
`
`reason, the Patent Office appears to have only Examined the claims against prior
`
`art in just one USPC technology class for lamps (class 315 (Electric lamp and
`
`discharge device)) before deciding to grant this patent.3 Cantigny’s taking such a
`
`narrow position on claim scope at the Patent Office made it easier to obtain the
`
`patent because there was a limited class of prior art for the Patent Office to
`
`consider4 when weighing the patentability of the claimed light timers.
`
`On the other hand, Cantigny now asserts the ‘122 patent in the Federal
`
`Courts and in the marketplace with an extremely broad claim scope that includes
`
`general-purpose programmable power-outlet timers. General-purpose power-
`
`outlet timers are not limited to lighting and have long predated the ‘122 patent.
`
`Many such timers are stand-alone auxiliary power-sockets that are not built-in or
`
`
`3 Indeed, the front of the ‘122 patent shows a “Field of Classification Search” with only one
`USPC technology class (class 315). The “Examiner’s search strategy and results,” and “Search
`information including classification, databases and other search related notes” of Mar. 1, 2016 in
`the File History prove (1) that no other classes besides class 315 were searched for relevant prior
`art by the USPTO prior to issuing the ‘122 patent and (2) that the claims were prosecuted by
`Cantigny in just the one USPC class 315 for light timers. Every independent claims recites
`“programmable light timer” at least six times.
`4 The Patent Office also appears to have omitted to consider highly-relevant prior art submitted
`by Information Disclosure Statement (IDS) because the listed prior art was not in the same
`technology class of the narrowly prosecuted claims.
`
`
`
`5
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`EXHIBIT 1003 Page 7 of 57
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`hardwired to anything. General purpose power-outlet timers simply plug-in to a
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`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`power-outlet auxiliary to any type of electrical appliance. For instance, general-
`
`purpose power-outlet timers have been used since at least the 1980’s to provide:
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`programmed timing control to TV show schedules (before DVRs and cable boxes),
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`programmed lawn-watering schedules for sprinkler systems, programmed cook-
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`times for crockpots or toasters, and programmed ON/OFF timing of Christmas-
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`light-strings. So, general-purpose power-outlet timers fall in several different
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`patent classes and they were not considered – even though they should have been
`
`prior art according to the ‘122 patent holders own view of its invention formed
`
`after prosecution. See, e.g., U.S. Patent classes 368 (Horology: time measuring
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`systems or devices), 307 (Electrical transmission or interconnection systems), 323
`
`(Power supply or regulation systems), 361 (Electrical systems and devices), 200
`
`(Electricity Circuit makers and breakers), 336 (Electronic digital logic circuitry),
`
`174 (Electricity: conductors and insulators), or 315 (Electric lamp and discharge
`
`device).5 Given that the Patent Office only looked for prior art in one relevant
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`technology class before granting the ‘122 patent, Cantingy’s broad position on
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`claim scope in the Federal Court opens the patent claims to validity challenges by
`
`new prior art in new technology classes that were not considered by the Patent
`
`5 This is not an exhaustive list of patent classifications for general purpose power outlet timers.
`These exemplary power-outlet timer classes were taken from the field of search listed in Several
`U.S. Patents for power-outlet timers like Jasco’s “myTouchSmartTM Indoor/Plug-In Digital
`Timer.”
`
`
`
`6
`
`EXHIBIT 1003 Page 8 of 57
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`

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`Office. Basic searching of general purpose power-outlet timer classes nearly
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`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`immediately reveals on-point prior art under 35 USC §§ 102 or 103.
`
`Cantigny’s forum-dependent position on claim scope is academically
`
`disingenuous. If validity of the ‘122 patent is challenged in the Federal Courts,
`
`then Cantigny can rely on a heavy presumption of patent validity and a fact-finder
`
`who is not necessarily familiar or savvy with the laws of patentability would be
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`badly misled into thinking broadly scoped claims of an issued patent define a novel
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`invention. On the other hand, if the validity of the ‘122 patent is challenged at the
`
`Patent Office, then Cantigny could make invalidating the patent more difficult by
`
`relying on the very narrow claim scope position it used to originally prosecute the
`
`patent. Such inconsistency is unfair and not consistent with the purposes of the
`
`Patent Act.
`
`Fortunately, Rule 501 holds patent owners accountable for these types of
`
`inconsistent forum-dependent claim scope positions. By rule, Cantigny’s
`
`expanded position on the claim scope in the Federal Courts can be made known to
`
`the Patent Office and then used to challenge the ‘122 patent at the Patent Office
`
`during ex parte reexamination or inter partes review. See MPEP § 2202 (“The
`
`basic purpose for citing written claim scope statements is to ensure that the patent
`
`owner takes consistent positions regarding the scope of the claims of a particular
`
`patent in the courts and before the Office.”). The relevant claim scope statements
`
`
`
`7
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`EXHIBIT 1003 Page 9 of 57
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`

`

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`and samples of invalidating prior art are thus submitted so that Cantigny can either
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`(1) state for the record the “light timer” limitations of its claims via its own Rule
`
`501 citation or (2) otherwise be held to its invalidatingly expansive positions on
`
`claim scope during any reexaminations or inter partes reviews of the ‘122 patent.
`
`II. Requirements for Rule 501 citations of prior art and “claim scope
`statements”
`With regard to “claim scope statements,” 37 CFR § 1.501 (a)(2) through
`
`
`
`(b)(1) reads:
`
`(a) Information content of submission: At any time during the period
`of enforceability of a patent, any person may file a written submission
`with the Office under this section, which is directed to the following
`information:
`
`(1) Prior art consisting of patents or printed publications which
`the person making the submission believes to have a bearing on
`the patentability of any claim of the patent; or
`
`(2) Statements of the patent owner filed by the patent owner in
`a proceeding before a Federal court or the Office in which the
`patent owner took a position on the scope of any claim of the
`patent. Any statement submitted under this paragraph must be
`accompanied by any other documents, pleadings, or evidence
`from the proceeding in which the statement was filed that
`address
`the written statement, and such statement and
`accompanying information under this paragraph must be
`submitted in redacted form to exclude information subject to an
`applicable protective order.
`
`(3) Submissions under paragraph (a)(2) of this section must
`identify:
`
`
`
`8
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`EXHIBIT 1003 Page 10 of 57
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`
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`(i) The forum and proceeding in which patent owner filed
`each statement;
`
`(ii) The specific papers and portions of the papers
`submitted that contain the statements; and
`
`(iii) How each statement submitted is a statement in
`which patent owner took a position on the scope of any
`claim in the patent.
`
`(b) Explanation: A submission pursuant to paragraph (a) of this
`section:
`
`(1) Must include an explanation in writing of the
`pertinence and manner of applying any prior art
`submitted under paragraph (a)(1) of this section and any
`written
`statement and accompanying
`information
`submitted under paragraph (a)(2) of this section to at
`least one claim of the patent, in order for the submission
`to become a part of the official file of the patent
`A. Prior art that has a bearing on the patentability of the ‘122 patent claims
`The following general purpose timers bear on the patentability of the ‘122
`
`patent claims:
`
`Prior art #1
`
`
`
`9
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`
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`EXHIBIT 1003 Page 11 of 57
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`

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`“Timex Digital ON-OFF Lamp Timer” (published Oct. 14, 2004), Web page <
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`http://www.bookofjoe.com/2004/10/timex_digital_o.html>, 2 pages, Oct. 18, 2004,
`
`retrieved
`
`from
`
`Internet
`
`Archive
`
`Wayback
`
`Machine
`
`<http://wayback.archive.org/web> on Feb. 26, 2018.
`
`Prior art #2
`
`Data Sheet for “4980 Programmable repeat cycle ON-OFF timer” (published Oct.
`
`1, 2010) (pages 1-5) by Artisan Controls Corporation, 111 Canfield Ave., Bldg
`
`
`
`B15-18, Randolph, New Jersey 07896, U.S.A.
`
`Prior art #3
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`
`
`10
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`
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`EXHIBIT 1003 Page 12 of 57
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`Data Sheet for “5100 Configurable countdown timer” (published Aug. 21, 2013)
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`(pages 1-2) by Artisan Controls Corporation, 111 Canfield Ave., Bldg B15-18,
`
`Randolph, New Jersey 07896, U.S.A.
`
`Prior art #4
`
`
`U.S. Pat. No. 4,279,012(issued Jul. 14, 1981) by Beckerdorff et al. for a
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`“programmable appliance controller.”
`
`B. Claim scope statements made in Federal Court.
`
`Cantigny’s claim scope statements or written positions on claim scope are
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`repeated below:
`
`Statement 1:
`
`
`“The first type of infringing product permits the user to set the time,
`and program separate ON and OFF times. This feature is present in
`
`
`
`11
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`EXHIBIT 1003 Page 13 of 57
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`

`
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`the GE MyTouchSmartTM Indoor Plug-In Digital Timer, GE
`MyTouchSmartTM In-Wall Digital Timer,… (‘the Programmable
`Timers’).”
`
`
`Cantigny v. Jasco, Case: 1:16-cv-005794, Complaint, Document #1, page 3,
`¶ 9.
`
`Statement 2:
`
`
`“Jasco has directly infringed and continues to directly infringe at least
`claims 1, 6 and 7 of the ‘122 patent through using, selling and/or
`importing the Programmable Timers….”
`
`
`Id., page 4, ¶ 14.
`
`Statement 3:
`
`
`“Claim 1 is an infringed claim. Claim 1 is infringed by the
`Programmable Timers. The exemplar of
`infringement
`is
`the
`MyTouchSmart™ In-Wall Digital Timer. The preamble of claim 1
`states: “A programmable light timer for implementing a timing
`pattern, the programmable light timer comprising[.]” The
`MyTouchSmart™ In-Wall Digital Timer is a programmable timer.
`The use described for the timer on the Jasco website is
`“replac[ing]existing light switch.” Exhibit C [Document #1-3],
`Features. Steps two and three of the setup description in Exhibit D
`[Document #1-4], demonstrate setting the time and setting custom
`on and off times, and states that “[a]ll programmed times will run
`simultaneously in a 24 hour day.” (Exhibit D [Document #1-4]).
`
`
`
`12
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`EXHIBIT 1003 Page 14 of 57
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`

`

`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`
`The product also explicitly describes controlling lights in step 4,
`the manual override. The product is, therefore, a programmable
`light timer, which implements user-input timing patterns.
`
`The first element of the claim is “an actuator on a user
`interface of the programmable light timer enabling a selection of a
`time for the programmable light timer.” Step 2 of Exhibit [D]
`[Document #1-4] demonstrates using the actuators (the up and down
`arrows) to set the time.
`
`
`The user interface is the set of control buttons and the display of the
`timer, as shown
`in
`the picture accompanying step 2. The
`MyTouchSmart™ In-Wall Digital Timer therefore has an actuator on
`the interface enabling selection of a time. These same actuators are
`used both to set the clock time and to set the program times for the
`two available user programs.
`
`The second element of the claim is “a control circuit coupled to
`the actuator[.]” The MyTouchSmart™ In-Wall Digital Timer
`
`13
`
`
`
`
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`EXHIBIT 1003 Page 15 of 57
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`

`

`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`contains circuitry which controls the display of the clock and the time
`for programs, and which is connected to the actuators permitting the
`changing of both clock time and program time. This circuitry meets
`the second element of the claim.
`
`The third element of the claim is “a display coupled to the control
`circuit, wherein a time selected by the actuator is provided on the
`display[.]” The MyTouchSmart™ In-Wall Digital Timer includes
`an LCD display which shows the time selected by the actuator
`both for clock time and for selected program times. The time selected
`by the actuator is provided on the display both during setting of the
`clock and the programmed “my on” and “my off” times.
`
`The fourth element of the claim is “a first button on the user
`interface of the programmable light timer, wherein the first button is
`programmable to have an on time[.]” The “my on” time buttons are
`each programmable to have an on time.
`
`The final element of the claim is “a second button on the user
`interface of the programmable timer, wherein the second button is
`programmable to have an off time.” The “my off” buttons are each
`programmable to have an off time.
`
`As each element of claim 1 is present in the MyTouchSmart™
`In-Wall Digital Timer, claim 1 of the ’122 is infringed by the
`MyTouchSmart™ In-Wall Digital Timer. All of the Programmable
`Timers infringe this claim.
`
`Claim 6 calls for “The programmable light timer of claim 1 further
`comprising a third button having a pre-stored timing pattern.” The
`GE MyTouchSmart™ Indoor Plug-In Digital Timer and the GE
`MyTouchSmart™ Indoor/Outdoor Plug-In Digital Timer each have
`such a third button, including programs such as “evening” or
`“morning”. These two products also infringe claim 6.
`
`Claim 7 calls for “The programmable timer of claim 1 further
`comprising a switch enabling overriding
`the
`timing pattern
`implemented by the programmable light timer.” The ‘on’ switch on
`the MyTouchSmart™ In-Wall Digital Timer overrides the timing
`
`14
`
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`EXHIBIT 1003 Page 16 of 57
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`

`

`
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`pattern. The MyTouchSmart™ In-Wall Digital Timer infringes claim
`7.”
`
`Complaint, Document #1, page 4, ¶ 15 through page 7, ¶ 23.
`
`Statement 4:
`
`
`“Jasco has also directly infringed and continues to directly infringe at
`least claims 8, 9, 10, 11, 12, 13, and 14 of the ’122 Patent
`through using, selling and/or importing the Programmable
`Timers.”
`
`
`Id., page 7, ¶ 25.
`
`Statement 5:
`
`“Claim 8 is an infringed claim. Claim 8 is infringed by the Pre-Stored
`Timers. The exemplar of infringement is the GE MyTouchSmart™
`Indoor Plug-In Digital Timer. The preamble of claim 1 states: “A
`programmable light timer for implementing a timing pattern, the
`programmable light timer comprising[.]” The GE MyTouchSmart™
`Indoor Plug-In Digital Timer is a programmable timer. Like the other
`Jasco products, the use for the timer is to control lighting products.
`Step II of the setup description in Exhibit E [Document #1-5],
`demonstrates selection and use of pre-stored programs that “run
`individually or simultaneously” (Exhibit E [Document #1-5]).
`
`
`
`15
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`
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`EXHIBIT 1003 Page 17 of 57
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`

`

`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`light
`
`timer
`
`therefore, a programmable
`is,
`The product
`implementing a timing pattern.
`
`The first element of the claim is “an actuator on a user
`interface of the programmable light timer enabling a selection of a
`time for the programmable light timer.” Step 2 of Exhibit E
`[Document #1-5] demonstrates using the actuators (the up and down
`arrows) to set the time.
`
`for
`
`
`The user interface is the set of control buttons and the display of the
`timer, as shown in the picture accompanying step 2. The GE
`MyTouchSmart™ Indoor Plug-In Digital Timer therefore has an
`actuator on the interface enabling selection of a time. These same
`actuators are used both to set the clock time and to set the program
`times for the user programs.
`
`The second element of the claim is “a control circuit coupled to
`the actuator[.]” The GE MyTouchSmart™ Indoor Plug-In Digital
`Timer contains circuitry which controls the display of the clock
`and the time for programs, and which is connected to the
`actuators permitting the changing of both clock time and program
`time. This circuitry meets the second element of the claim.
`
`The third element of the claim is “a display coupled to the control
`circuit, wherein a time selected by the actuator is provided on the
`display[.]” The GE MyTouchSmart™ Indoor Plug-In Digital
`Timer includes an LCD display which shows the time selected
`by the actuator both for clock time and for selected program times.
`The time selected by the actuator is provided on the display both
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`Rule 1.501 citation
`U.S. Patent No. 9,320,122
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`during setting of the clock and the programmed “my on” and “my off”
`times.
`
`The fourth element of the claim is “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[.]” The
`“evening” button enables the selection of a preset schedule from
`5 pm to midnight.
`
`The final element of the claim is “a second button on the user
`interface of the programmable timer, the second button enabling
`the selection of a second pre-stored timing pattern.” The
`“morning” button enables the selection of a preset schedule from 5 am
`to 8 am.
`
`As each element of claim 8 is present in the GE MyTouchSmart™
`Indoor Plug-In Digital Timer, claim 8 of the ’122 is infringed by
`the GE MyTouchSmart™ Indoor Plug-In Digital Timer. All of the
`Pre-Stored Timers infringe this claim.
`
`Claim 9 calls for “The programmable light timer of claim 8 further
`comprising a third button that is user-programmable.” Each of the
`Pre-Stored Timers which include the my on time and my off time
`features also infringes this claim, as they have a third (and fourth)
`button which
`is user-programmable. This
`includes
`the GE
`MyTouchSmart™ Indoor
` Plug-In Digital Timer and the GE
`MyTouchSmart™ Indoor/Outdoor Plug-In Digital Timer.
`
`Claim 10 calls for “The programmable light timer of claim 9
`wherein the third button is programmable with a user-programmable
`on time.” Each of the GE MyTouchSmart™ Indoor Plug-In Digital
`Timer and the GE MyTouchSmart™ Indoor/Outdoor Plug-In
`Digital Timer has the my on time button, which is programmable
`with an on time. Each of the GE MyTouchSmart™ Indoor Plug-In
`Digital Timer and the GE MyTouchSmart™ Indoor/Outdoor Plug-
`In Digital Timer infringe claim 10.
`
`Claim 11 calls for “The programmable light timer of claim 10 further
`comprising a fourth button that is user programmable.” Each of the
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`EXHIBIT 1003 Page 19 of 57
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`
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`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`GE MyTouchSmart™ Indoor Plug-In Digital Timer and the GE
`MyTouchSmart™ Indoor/Outdoor Plug-In Digital Timer have a
`fourth button that is programmable, the my off time button, and
`infringe claim 11.
`
`Claim 12 calls for “The programmable light timer of claim 11 wherein
`the fourth button is programmable with a user programmable an
`off time.” The GE MyTouchSmart™ Indoor Plug-In Digital Timer
`and the GE MyTouchSmart™ Indoor/Outdoor Plug-In Digital
`Timer my off time button is so programmable, and they each infringe
`claim 12.
`
`Claim 13 calls for “The programmable light timer of claim 8 wherein
`the actuator enables an up or down operation for selecting a time used
`by the programmable light timer.” All of the Pre-Stored Timers
`contain this feature, with both clock time and program times set using
`the up and down arrow actuators in each product.
`
`Claim 14 calls for “The programmable light timer of claim 8 further
`comprising a switch enabling overriding the timing pattern
`implemented by the programmable light timer.” Each of the GE
`Digital Plug-In MyTouchSmart™ Timer, and the GE In-Wall
`MyTouchSmart™ Digital Timer include this feature, with dedicated
`on and off buttons used to manually control the device plugged into
`the timer.”
`
`
`Id., page 7, ¶ 26 through page 10, ¶ 38.
`
`
`1. Any other documents, pleadings, or evidence from the proceeding
`in which the statement was filed that address the written
`statement
`The statements were made in the complaint (Document #1) for Cantigny’s
`
`lawsuit against Jasco, and that document was accompanied by Exhibits A through
`
`F (Documents #1-1 through 1-6). The complaint and all the exhibits are submitted
`
`per Rule 501 citation. The lawsuit settled before any other responsive pleadings
`
`
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`were filed by Jasco.6 So, there are no other documents in this proceeding that
`
`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`address the claim scope statements. The document is not subject to a protective
`
`order, so the document is submitted without redactions.
`
`2. The forum and proceeding in which patent owner filed each
`statement
`The claim scope statements were made in a complaint (Document #1) and
`
`accompanying exhibits (Documents #1-1 through 1-6) for patent infringement filed
`
`in the District Court for the Northern District of Illinois, Eastern Division. The
`
`proceeding is captioned Cantigny v. Jasco (Civil Action No. 1:16-cv-05794).
`
`3. The specific papers and portions of the papers submitted that
`contain the statements
`In the complaint, the claim scope statements can be located at the following
`
`pages and paragraphs:
`
`Statement 1 -
`
`
`Statement 2 -
`
`Statement 3 -
`
`Statement 4 -
`
`Statement 5 -
`
`Complaint, Document #1, page 3, ¶ 9, Cantigny v. Jasco
`(Civil Action No. 1:16-cv-05794).
`
`Id., page 4, ¶ 14.
`
`Id., page 4, ¶ 15 through page 7, ¶ 23.
`
`Id., page 7, ¶ 25.
`
`Id., page 7, ¶ 26 through page 10, ¶ 38.
`
`
`6 On information and belief, Jasco’s development of its “MyTouchSmart” Digital Plug-In and In-
`Wall Timers predates and therefore invalidates the critical date of the ‘122 patent under AIA 35
`USC § 102. The case was settled before this point was litigated.
`
`
`
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`Rule 1.501 citation
`U.S. Patent No. 9,320,122
`
`4. How each statement submitted is a statement in which patent
`owner took a position on the scope of any claim in the patent
`Each of the written “claim scope statements” (statements 1 through 5) or
`
`“written positions on claim scope” identified above are in fact Cantigny’s
`
`expressed position on the scope of the claims of the ‘122 patent. The statements
`
`amount to stated/written infringement contentions. Specifically, each of the
`
`statements collectively and individually show Cantigny’s position that the scope of
`
`claims 1, 6, 7 and 8 through 14 of the ‘122 patent is expansive enough to include
`
`the general purpose timers of Jasco (i.e., MyTouchSmart™ Indoor Plug-In Digital
`
`Timer; and MyTouchSmart™ In-Wall Digital Timer). Cantigny’s statements are
`
`helpful for interpreting the claims against any prior art that presents a substantial
`
`new question of patentability (SNQ) because Cantigny’s statements give two
`
`examples of what it thinks its claims cover. Moreover, Cantigny’s vastly
`
`expansive position regarding what the claims cover sheds light on how broad a
`
`prior art search should be to properly identify whether Cantigny’s alleged
`
`inventions meet the standard of “new, useful and nonobvious” under 35 U.S.C. §§
`
`101-103, and whether the alleged innovations actually rise to the dignity of a
`
`patent – and the corresponding right to file lawsuits to exclude others from the
`
`marketplace. Cantigny’s claim scope statements make a variety of prior art
`
`references available