Paper No Entered: January 14, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE

Transcription

1 Paper No Entered: January 14, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CRESTRON ELECTRONICS, INC., Petitioner, v. INTUITIVE BUILDING CONTROLS, INC., Patent Owner. Case IPR Before KEN B. BARRETT, MICHAEL W. KIM, and DANIEL N. FISHMAN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Crestron Electronics, Inc. ( Petitioner ) filed a Petition (Paper 1, Pet. ) for inter partes review of claims 1 14 of U.S. Patent No. 6,160,359 ( the 359 Patent ) (Ex. 1001) pursuant to 35 U.S.C Intuitive Building Controls, Inc. ( Patent Owner ) filed a Patent Owner Preliminary Response (Paper 13, Prelim. Resp. ). We have jurisdiction under 35 U.S.C. 314, which provides that an inter partes review may be instituted only if the information presented in the petition... shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Petitioner challenges the patentability of claims 1 14 of the 359 Patent under 35 U.S.C. 102 and 103. We determine that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1, 2, 6, 8 11, and 14 are unpatentable. We are not persuaded that there is a reasonable likelihood that Petitioner would prevail in showing that claims 3 5, 7, 12, and 13 are unpatentable. Pursuant to 35 U.S.C. 314, we authorize an inter partes review to be instituted as to claims 1, 2, 6, 8 11, and 14 of the 359 Patent. A. The 359 Patent The 359 Patent relates to a computer-based system for controlling power to multiple ac lighting loads. Ex. 1001, 1:8 10. According to the 359 Patent, previously known systems allowed a computer to control lighting loads in a large building based on pre-defined schedules for controlling lights to be on or off. Id. at 1: The patent explains that such known systems present a problem for workers in a large building choosing to work outside the scheduled lighting times. Id. at 1:

3 According to the 359 Patent, previously known systems presented such a worker with cumbersome options to, for example, turn lights on outside the normally scheduled hours. Id. at 1: To remedy such problems, the 359 Patent discloses presenting a graphical user interface to allow simple user control of lighting loads. Id. at 1:61 2:4. A lighting control request is generated in response to input from an input device. Id. at 1: The generated request identifies the lighting load and the desired state. Id. at 1: The request is then sent to a remote computer that controls the identified lighting load according to the lighting state in the request. Id. at 2:1 4. B. Related Matters Both parties identify the following related district court proceedings between Petitioner and Patent Owner that involves the 359 Patent: Intuitive Building Controls, Inc. v. Creston Electronics, Inc., Case No. 2:15-cv (E.D. Tex.); Intuitive Building Controls, Inc. v. AMX LLC, Case No. 2:15- cv (E.D. Tex.); and Intuitive Building Controls, Inc. v. Control4 Corporation, Case No. 2:15-cv (E.D. Tex.). Pet. 1; Paper 8, 2. Both parties also identify the following related patents and proceedings: U.S. Patent No. 6,118,230 (hereinafter the 230 Patent ) 1 ; U.S. Patent No. 5,945,993 (hereinafter the 993 Patent ); and IPR (challenging the 993 Patent). Pet. 1 2; Paper 8, Petitioner indicates an intent to file a petition for inter partes review of the 230 patent. Pet. 1. 3

4 C. Illustrative Claim Independent claim 1 is reproduced below: 1. Apparatus for requesting a remote computer to control an assigned lighting load, the remote computer being connected to the assigned lighting load via an interface module, a power/communications bus and a relay, the apparatus comprising: an input device; and means for storing an identifier for the assigned lighting load and for generating a lighting control request in response to the input device, the lighting control request indicating the identifier for the assigned lighting load and a lighting state for the assigned lighting load; the means sending the lighting control request to the remote computer, whereby the remote computer controls power to the assigned lighting load in accordance with the indicated lighting state. D. References Applied by Petitioner Petitioner challenges the patentability of claims 1 14 on the basis of the following items of art: Affidavit of Christopher Butler and attached printouts of archived web page. Ex ( SavoySoft ). SAVOY AUTOMATION, X-10 POWERLINE SUPPORT (CyberHouse CD- ROM, rel. 2, 1996). Ex ( X10type ). House et al., CEBus for the Masses, HOME AUTOMATION & BUILDING CONTROL (1995). Ex ( House ). E. The Alleged Grounds of Unpatentability The information presented in the Petition sets forth Petitioner s contentions of unpatentability of claims 1 14 of the 359 Patent based on the following specific grounds (Pet. 3 50): 4

5 No. Reference(s) Basis 1 SavoySoft 102(b) SavoySoft SavoySoft and House Challenged Claims 4 X10type 102(a) or 102(b) X10type SavoySoft and X10type (Ex. 1004). Petitioner also cites the Declaration of Dr. David L. Nelson II. ANALYSIS A. Claim Construction As a step in our analysis for determining whether to institute a review, we determine the meaning of the claims for the purpose of this Decision. In an inter partes review, a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015) ( We conclude that Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA. ). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. 5

6 Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). When construing a means-plus-function limitation under 35 U.S.C. 112, sixth paragraph, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that actually performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). The corresponding structure of a means-plus-function limitation, however, must be more than simply a general-purpose computer or microprocessor to avoid pure functional claiming. Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The specification must disclose the algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirectTV Group Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citations omitted). Petitioner proposes construction of seven terms and urges no patentable weight be given to four recitations in the claims. Pet Patent Owner contends claim construction is not required to deny this Petition and suggests claim construction will be addressed if trial is instituted. Prelim. Resp For the purpose of this Decision, we construe 6

7 only terms required for our Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). Means for Storing, Generating, and Sending Claim 1 of the 359 Patent recites, means for storing an identifier for the assigned lighting load and for generating a lighting control request in response to the input device... the means sending the lighting control request to the remote computer. Petitioner argues virtual light switch ( VLS ) 20 or Web Browser system 22 of Figure 1 of the 359 Patent are the corresponding structure for the aforementioned storing and generating means (Pet. 6 7). Petitioner argues further that the identity of the desired lighting load is stored (according to an algorithm ) in that the VLS 20 (1) can be preconfigured with the identifier, (2) can be manually configured based on an identifier in a configuration file of the server, or (3) automatically configured based on an identifier received from the server. Pet. 6 7 (citing Ex. 1001, 6:4 18). We agree with Petitioner that both VLS 20 and system 22 are the appropriate corresponding structure, and that they are general purpose computer systems programmed to perform an algorithm to store, generate, and send a lighting request to a server to effectuate a desired lighting state for an identified lighting load. See, e.g., Ex. 1001, Fig. 5 (steps ), Fig. 6 (steps ), Fig. 7 (steps ). Petitioner also contends the Specification broadens the storing means to include any device with a user input and a network connection capability. Pet. 8 9 (citing Ex. 1001, 10:50 11:12); see also Ex. 1001, 2:5 7. We again 7

8 agree with Petitioner, subject to the caveat that such any device must still include the disclosed algorithm. On this record and for the purpose of this Decision, we construe the means for storing, generating, and sending to mean any device performing any of the algorithms illustrated in figures 5 7 and having a user input and a network connection capability. Input Device, Input Means, and I/O device Claim 2 depends from claim 1 and recites the input means allowing the lighting load state to be entered into the control panel. There is no antecedent for the input means but claim 1 recites an input device. Petitioner argues the antecedent for the input means of claim 2 is the input device of claim 1 and, thus, input device of claim 1 and input means of claim 2 must be interpreted as a means clause. Pet (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)). Petitioner argues further that the structure corresponding to the input means disclosed in the specification is a mouse and keyboard. Pet. 10 (citing Ex. 1001, 4:35 36); see also Ex. 1001, 2:10 12, 4:54 55, 5: The 359 Patent uses the term input device only in the Summary section (Ex. 1001, 1:65, 2:6 7) paraphrasing the claim language (as well as in claims 1, 2, 4, and 5) and refers to input means only in claim 2. The 359 Patent also uses the term I/O device in various claims, in reference to elements 56 and 88 of Figure 1, and in reference to element 604 of Figure 9. In all cases, however, references to the input device/means and I/O device in the claims and specification all appear to be for the same element. Thus, for the purpose of this Decision, we construe input means and I/O device to be synonymous with input device. 8

9 Furthermore, we decline to apply means-plus-function interpretation (under 35 U.S.C ) to input device in the claims. A recitation devoid of the word means gives rise to the presumption that means-plusfunction interpretation is not appropriate. See Williamson, 792 F.3d at In particular, if the claim recites sufficient structure, we are not persuaded means-plus-function interpretation is appropriate. Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012) ( When the claim drafter has not signaled his intent to invoke [Section] 112, 6 by using the term means, we are unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be construed as structure. ). The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Williamson, 792 F.3d at We determine input device connotes sufficiently detailed structure specifically a device (in an electronic apparatus) that receives an input. We agree with Petitioner that the 359 Patent discloses exemplary input devices include a mouse and a keyboard. See, e.g., Ex. 1001, 2:10 12, 4:35 36, 4:54 55, 5: We further observe the 359 Patent also discloses exemplary input devices may include: a detector for detecting presence of a person (Ex. 1001, 2:5 9), a touchpad (Ex. 1001, 11:3), and voice-responsive control as exemplary input means (Ex. 1001, 11:3). On this record for the purpose of this Decision, we construe input means as a device that receives input including a keyboard, a mouse, a touchpad, a voice-responsive control, and a detector for detecting presence of a person. 9

10 Network Means Independent claim 11 recites a network means for establishing communications with a second computer. On this record and for the purpose of this Decision, we agree with and adopt Petitioner s proposed construction of network means as a network card, Ethernet chip, modem, ISDN line, IR link, RF link, and any equivalents of those. Pet Other Claim Terms Petitioner argues certain identified recitations are not deserving of patentable weight (Pet ) and proffers constructions of other claim terms (Pet ). For the purpose of this Decision, and at this juncture, we determine that it is unnecessary to construe any other claim terms. B. Prior Art and Printed Publications Petitioner asserts four grounds based on SavoySoft (Ex. 1002) alone and in combination with either House (Ex. 1005) or X10type (Ex. 1003) and asserts two grounds based on X10type alone. Pet Petitioner contends SavoySoft (Ex. 1002) is published at least one year prior to the 359 Patent filing and thus is prior art under 35 U.S.C. 102(b). Pet. 18. Petitioner likewise contends House (Ex. 1005) is prior art under 102(b). Pet Lastly, Petitioner contends X10type is prior art under 102(a) (a CDROM shipped with a book at least as early as August 15, 1997) or under 102(b) (published on SavoySoft s website at least a year before the 359 Patent). Pet Patent Owner argues: (1) SavoySoft (Ex. 1002) is not a printed publication (Prelim. Resp. 3 14); (2) House (Ex. 1005) is not a printed publication (id. at 25); and (3) X10type (Ex. 1003) is not a printed publication (id. at 26 33). 10

11 Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, (Fed. Cir. 1986); see, e.g., L-3 Commc n Holdings, Inc. v. Power Survey, LLC, Case IPR , slip op. at (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR , slip op. at (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). A reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. Kyocera Wireless Corp. v. Int l Trade Comm n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)). The status of a reference as a printed publication is a legal question based on underlying factual determinations. Id. [W]hether information is printed, handwritten, or on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the information, in whatever form it may be, as a printed publication... should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents. In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (citing Philips Elec. & Pharm. Indus. Corp. v. Thermal & Elec. Indus., Inc., 450 F.2d 1164, 1171 (3d Cir. 1971)). 11

12 1. SavoySoft SavoySoft (Ex. 1002) is a collection of printouts of archived web pages (Ex. 1002, 2 15) and includes an affidavit of Christopher Butler (Ex. 1002, 1; hereinafter the Butler Affidavit ) attesting to his role in the Internet Archive (a San Francisco organization that maintains an archive of web pages available on the Internet the archive commonly referred to as the Wayback Machine ). The Butler Affidavit also explains the processes used to archive web pages from the Internet and how the archived copies of web pages can be associated with a date of archiving. Ex. 1002, 1. Exhibit 1002 further includes Exhibit A, a plurality of web pages (Ex. 1002, 2 15) identified by Mr. Butler as having been archived by the Wayback Machine from a URL Ex. 1002, 1. Based on the Butler Affidavit and the printed web pages archived in the Wayback Machine, Petitioner contends the SavoySoft web pages were published at least as early as November 14, 1996 (more than one year prior to the filing date of the 359 Patent January 30, 1998). Pet. 18. The Butler Affidavit explains how the date of an archived web page can be determined from the URL printed on each archived web page. Id. In particular, Mr. Butler s Exhibit A includes printouts for several URLs all of which indicate a date of November 14, Ex. 1002, On the record before us and for the purpose of this Decision, for the reasons discussed below, we are persuaded that SavoySoft is a printed publication under 35 U.S.C. 102(b). a. Patent Owner Asserts: Petition Fails to Show SavoySoft Pages Published Before Critical Date Patent Owner argues SavoySoft is not a printed publication because the Butler Affidavit admits that image files embedded within an archived 12

13 web page are not necessarily archived on the same date and, in like manner, individual pages of a web page designed with frames may not all be archived on the same date. Prelim. Resp Patent Owner specifically asserts at least pages 4 and 9 of Exhibit 1002 (SavoySoft web pages Overview.htm and page2.html, respectively) appear to include embedded images upon which Petitioner relies and, thus, Petitioner fails to establish sufficiently the date of publication for these images. Prelim. Resp On this record and having considered both parties evidence and arguments, we determine that Petitioner has presented sufficient evidence that the web pages and underlying images were archived on the same date for the purpose of institution. To be sure, if Patent Owner can provide evidence that the underlying images on a particular web page were archived on different dates, that would weigh against Petitioner, even after institution. Although Patent Owner is correct that the Butler Affidavit asserts that embedded images may not be archived on the same date as the web page that embeds the image, Mr. Butler does not state that such embedded images cannot be archived on the same date. Thus, we have no evidence on this record that the specific web pages produced in Exhibit 1002 do not in fact include the embedded images, as asserted by Patent Owner. On the record before us and for the purpose of this Decision, we are persuaded that all portions of SavoySoft the Petition relies on, including portions that may be separate, embedded, image files, were published at least one year prior to the filing of the 359 Patent. b. Patent Owner Asserts: Petition Fails to Show SavoySoft Web Pages Were Publicly Accessible Patent Owner further argues SavoySoft is not a printed publication because the Petition provides no evidence that SavoySoft could have been 13

14 located by an interested, ordinarily-skilled, artisan more than one year prior to the filing of the 359 Patent and, thus, Petitioner has not shown that SavoySoft was accessible at the time of the 359 Patent. Prelim. Resp. 8. Specifically, Patent Owner contends that even if the Butler Affidavit makes a threshold showing that pages of SavoySoft were archived prior to the critical date, [t]his evidence does not suggest that interested persons could have located the SavoySoft web pages with reasonable diligence. Prelim. Resp. 9. Patent Owner further suggests that, to locate SavoySoft web pages, an interested person would have to build a system like the Wayback Machine including a capability to search the archived pages. Prelim. Resp. 11. We disagree. The Butler Affidavit indicates the Wayback Machine uses crawler programs to locate web pages on the Internet. Ex. 1002, 1. We are persuaded, on this record, that web pages locatable by crawlers of the Wayback Machine would have been locatable to interested persons using typical search engines available at least one year before the critical date. Patent Owner further contends there is no evidence that the various web pages of SavoySoft are linked with one another so as to enable an interested person to locate each of the pages. See Prelim. Resp Specifically, Patent Owner argues: Take, for example, two of the web pages provided in the SavoySoft web page collection: housemgr.htm and lighting.htm, Exhibit 1002 at 7, 8. The Petition relies heavily on these pages. Pet. at However, there is no indication on the face of the SavoySoft website s index page index.html, Exhibit 1002 at 3 that these pages were accessible via the index page, and the Petition makes no attempt to explain how the index page links to these pages. 14

15 Id. at 11. Patent Owner s arguments are misplaced, however, as the evidence of record appears to indicate that both housemgr.htm and lighting.htm web pages were archived by the Wayback Machine more than one year prior to the critical date and, hence, each was publicly accessible individually on the Internet. Accordingly, we are unpersuaded that whether or not these various web pages were linked is material for the purpose of determining public accessibility. Therefore, we are persuaded, for the purpose of this Decision, that all portions of SavoySoft the Petition relies on were publicly accessible to interested persons at least one year prior to the filing of the 359 Patent. c. Patent Owner Asserts: SavoySoft Is Inadmissible Hearsay Patent Owner argues SavoySoft is not a printed publication because the web pages of SavoySoft are inadmissible hearsay and contends Petitioner has failed to identify an exception to the hearsay rule (Fed. R. Evid. 802). Prelim. Resp. 14. Initially, we find Patent Owner s hearsay argument unavailing, at least, because SavoySoft web pages (Ex. 1002, 2 15) are not being offered to prove the truth of matters discussed therein. See, e.g., Joy Techs., Inc. v. Manbeck, 751 F.Supp. 225, 233 n.2 (D.D.C. 1990), judgment aff d, 959 F.2d 226 (Fed. Cir. 1992); Fed. R. Evid. 801(c) 1972 Adv. Comm. Note ( If the significance of an offered statement lies solely in the fact that it was made, no issue is raised as to the truth of anything asserted, and the statement is not hearsay. ). Here, SavoySoft is offered as evidence that statements (about CyberHouse software) were made at a particular date the truth of those statements is not at issue (i.e., whether CyberHouse software actually provided the discussed features, the truth of the statements of the web pages, 15

16 is not at issue here). Therefore, SavoySoft is not hearsay under Federal Rule of Evidence 801(c). Furthermore, although we are cognizant that electronic documents generally are not self-authenticating, there are several ways to authenticate web pages. St. Luke s Cataract and Laser Institute, P.A. v. Sanderson, 2006 WL , at *2 (M.D. Fla. 2006) (quoting In re Homestore.com, Inc. Sec. Litig., 347 F.Supp.2d 769, 782 (C.D. Cal. 2004)) (internal quotation marks omitted); see also Market-Alerts Pty. Ltd. v. Bloomberg Finance L.P., 922 F.Supp.2d 486, 493 n.12 (D. Del. 2013) (citing Keystone Retaining Wall Sys., Inc. v. Basalite Concrete Prods., LLC, 2011 WL , at *9 n.9 (D. Minn. 2011)) (Documents generated by a website called the Wayback Machine have been accepted generally as evidence of prior art in the patent context.); U.S. v. Bansal, 663 F.3d 634, (3d. Cir. 2011) (concluding that the screenshot images from the Internet Archive were authenticated sufficiently under Federal Rule of Evidence 901(b)(1) by a witness with personal knowledge of its contents, verifying that the screenshot the party seeks to admit are true and accurate copies of Internet Archive s records). The statements of web pages of Exhibit 1002 regarding dates of archival of the web pages are sufficiently authenticated, at least, under Fed. R. Evid. 901(b)(1) by Mr. Butler s affidavit. Thus, on the record before us and for the purpose of this Decision, we determine SavoySoft (Ex. 1002) is not inadmissible hearsay. 2. House House (Ex. 1005) appears to be an article excerpted from an industry journal entitled Home Automation & Building Control, and references a date of April Petitioner offers no evidence to corroborate publication 16

17 of this exhibit other than the date on the pages of the article. Patent Owner argues that the dates on pages of House appear to vary 2 and that [t]he significance of these dates is also unclear. Prelim. Resp. 25. On this record and for the purpose of this Decision, we are persuaded that the House reference (Ex. 1005) is a printed publication that was published in April of Specifically, we are persuaded that the House reference has sufficient general indicia, such as its content, format, and layout that would be typical for a published industry journal. 3. X10type X10type (Ex. 1003) is a document describing use of an enhancement in the CyberHouse software that provides support for an X-10 powerline network in a home. An X-10 powerline network uses the pre-existing electrical wiring of the house/facility to control lighting and appliances that plug into that electrical wiring. Ex. 1003, 1. Relying on the Declaration of Dr. Nelson (Ex. 1004), Petitioner contends X10type qualifies as prior art under 35 U.S.C. 102(a) and 35 U.S.C. 102(b). Pet (citing Ex , 9). More specifically, Dr. Nelson avers the X10type reference was stored on a CD-ROM distributed with a book he co-authored that was published prior to the 2 We note the presumed date of publication on the House reference (Ex. 1005) is marginally legible on some pages of the article. We presume each page has the same date and, on the most legible of the pages, the apparent date of publication appears to be April Ex. 1005, 8. It appears that the varying dates of the pages of House is a function of varying quality of the reproduced, scanned page images. We do note that the date on page 8 appears to be in a different font than the other pages of the exhibit. However, pages 6 and 7 of the exhibit appear to have the same date and are sufficiently legible. 17

18 critical date of the 359 Patent. Ex b 3e, 8. In support of his assertion, Dr. Nelson provides a copy of a Statement of Use for a trademark that is the same as the title of his book. Ex (Exhibit C thereto). That Statement of Use indicates a first use in commerce as August 15, 1997, and further indicates the mark is used in conjunction with books. Id. Patent Owner argues the specimen book covers for the trademark registration are not exactly the same as the book Dr. Nelson published. Prelim. Resp ; Ex Although Patent Owner s arguments have some merit, we note, however, that specimens in a trademark registration application are merely samples of use of a mark and do not necessarily represent every possible use of a mark in commerce. At this juncture, we credit Dr. Nelson s testimony that the Statement of Use is applicable to the X10type reference. On the record before us and for the purpose of this Decision, based on the testimony of Dr. Nelson, we determine X10type (Ex. 1003) qualifies as prior art under 102(a). Exhibit F of Dr. Nelson s Declaration (Ex. 1004) appears to be a similar, if not identical, printout of the X10type reference (Ex. 1003). Dr. Nelson avers the X10type reference was publicly available as a publication on the website at least as early as December Ex a, 3f, 3g, 9. Exhibit A of Dr. Nelson s Declaration (Ex (Exhibit A)) is a printout of an archived web page from the Wayback Machine evidencing an archival capture dated November 14, Furthermore, Exhibit G of Dr. Nelson s Declaration (Ex (Exhibit G)) is a Wayback Machine printout evidencing an archive date of February 15, 1997 for a URL that appears to refer to the X10type reference. 18

19 On this record, we are unpersuaded that Petitioner has shown sufficiently that X10type qualifies as prior art under 35 U.S.C. 102(b). As an initial matter, although Exhibit A of Dr. Nelson s Declaration mentions X-10 support generally in the CyberHouse program, that is not persuasive corroboration that the X10type reference per se (Ex. 1003; Ex (Exhibit F)) was published on that date. Additionally, Exhibit G only identifies the URL and does not show the content of that archived document. Furthermore, Exhibit G shows an archive date of February 1997 less than one year prior to the critical date in January of C. Ground 1: Claims 1 14 Anticipated by SavoySoft Petitioner contends that claims 1 14 are anticipated by SavoySoft (Pet. 18) and provides a claim chart mapping each feature of each claim (1 14) to disclosures of SavoySoft (Pet ). 1. SavoySoft (Ex.1002) SavoySoft generally discloses a home automation and facility management application ( CyberHouse ) that enables control of home or facility electronic resources (e.g., lighting loads) via a computer network. Ex. 1002, 4. SavoySoft discloses the application may be implemented in a client/server program architecture that allows a user of a client program to access the home/facility automation features of a remote site through a server program. Id. ( True Client/Server architecture with the CyberHouse Manager running as a server (like the Print Manager) and the CyberHouse Viewer running as a client on any networked computer (including laptop over dialup phone line). ). The client may access the server through dial-up connection to the server at the facility/home to be managed or may connect via the Internet. Id. at 10. Screen images on pages 4 and 8 of SavoySoft, 19

20 reproduced below, disclose aspects of the user interface of the Viewer (client) program: The above screen image from page 4 of SavoySoft depicts a Layout screen showing animated icons to show activity of electronic devices at a facility and to allow control of lighting loads in a facility. 20

21 The above screen image from page 8 of SavoySoft depicts another user interface screen with individual lighting loads ( Light1, Light2, and Light3 ) and corresponding slider controls to adjust the lighting state (intensity) for each lighting load as well as controls to selects preset lighting states defined by rules for each of three scenes ( Scene1, Scene2, and Scene3 ). 2. Whether SavoySoft is a Single Reference Patent Owner argues Ground 1 (anticipation by SavoySoft) should be denied review because SavoySoft is not a single reference for the purpose of anticipation under 35 U.S.C Prelim. Resp Specifically, Patent Owner asserts [f]or a prior art reference to anticipate a claim, it must disclose each claim limitation in a single document. Prelim. Resp. 15 (citing Apple Inc. v. Int l Trade Comm n, 725 F.3d 1356, 1362 (Fed. Cir. 2013)). Patent Owner also cites Yamaha Corp. of Am. v. Black Hills Media, LLC, Case IPR , slip op. at (PTAB March 20, 2014) (Paper 17) 3 in support of the assertion that SavoySoft is not a single document i.e., not a single web page. Prelim. Resp. 15. We disagree. In particular, we identify Yamaha as instructive, because there, the various web pages retrieved from the Wayback Machine were associated with a variety of archival dates i.e., different archival dates for different portions of the collection of web pages. Yamaha, slip op. at 32. Here, by contrast, all web pages provided in SavoySoft (Ex. 1002, 2 15) are associated with the same archival date indicating they were all accessible on the Internet at the same time (on the archive date) and from the same URL of the Internet 3 Yamaha Corp. of Am. v. Black Hills Media, LLC, Case IPR , 2014 WL (PTAB Mar. 20, 2014). 21

22 ( Furthermore, all provided web pages of Exhibit 1002 describe aspects of the same software product ( CyberHouse ). See, e.g., Haliburton Energy Servs., Inc., v. Dynamic 3D Geosolutions LLC, Case IPR , slip op. at (PTAB Jan. 12, 2015) (Paper 13). Thus, on the record before us and for the purpose of this Decision, we determine SavoySoft is a single printed publication for the purpose of anticipation of claims 1 14 i.e., a single document comprising multiple web pages, from a single source (SavoySoft.com), describing a single product (CyberHouse), archived on the same date at least one year prior to the critical date of the 359 Patent. 3. Independent Claims 1, 9, and 11 Petitioner s claim chart maps the elements of independent claim 1 of the 359 Patent to images and text on pages 4, 6, 7, and 8 of SavoySoft depicting and describing a client program ( CyberHouse Viewer ) generating a lighting request responsive to user input and sending the generated request to a server program ( House Manager ). Pet According to Petitioner, SavoySoft discloses the recited input device as point and click mouse actions (implying the presence of a mouse as an input device). Id. at 19 (citing Ex. 1002, 4, 7). Petitioner further contends SavoySoft discloses the recited means for storing, generating, and sending as user interface functions for controlling lights via the CyberHouse Viewer client program interacting with the House Manager server program. Id. at (citing Ex. 1002, 4, 7, 8). Petitioner also contends the generated request (generated by the Viewer for processing by the House Manager) indicates the lighting load and the desired state for the identified load as recited in claim 1. Id. at 20 (citing Ex. 1002, 4, 8). 22

23 Independent claim 9 recites an apparatus and independent claim 11 recites an article of manufacture each comprising a memory storing computer instructions to cause the computer to perform essentially the functions of the apparatus of claim 1. Petitioner maps features of claims 9 and 11 to similar disclosures of SavoySoft. Id. at Regarding claims independent 1 and 11, Patent Owner contends the Petition fails to explain sufficiently where SavoySoft teaches that a lighting control request indicates an identifier for the assigned lighting load and a lighting load state. Prelim. Resp. 19. In like manner, regarding independent claims 1, 9, and 11, Patent Owner contends the Petition fails to explain sufficiently where SavoySoft teaches the generation of a lighting control request or command. Id. at 20. We disagree. SavoySoft discloses an identity of each lighting load (e.g., Light1, Light2, etc.) that is manipulated by the user interface of a client program (i.e., the Viewer program) and discloses generating a request/command for a server program (i.e., House Manager ). Pet (citing Ex. 1002, 4, 7, 8). SavoySoft also discloses that its Viewer program functions as a client program communicating with the CyberHouse Manager as a server program. Id. at 18 (citing Ex. 1002, 4 ( True Client/Server architecture with the CyberHouse Manager running as a server (like the Print Manager) and the CyberHouse Viewer running as a client on any networked computer (including laptop over dialup phone line). )). SavoySoft also discloses a lighting load state manipulated by the user interface of the Viewer (client) program (through the slider controls associated with a lighting load) to generate a request for CyberHouse Manager (server) program. Id. at 19 (citing Ex. 1002, 8). 23

24 On the record before us for the purpose of this Decision, we are persuaded that there is a reasonable likelihood that Petitioner would prevail in showing that independent claims 1, 9, and 11 are anticipated by SavoySoft. 4. Dependent Claims 2 8, 10, and Petitioner s claim chart also maps features of dependent claims 2 8, 10, and to features of SavoySoft. Pet Patent Owner contends certain features of claims 3, 6 8, 10, 12, and 13 are not shown in SavoySoft. Prelim. Resp Claim 6 depends from claim 1 and further recites that the server includes a daemon listening for a lighting control request. Regarding claim 6, Petitioner identifies disclosures on pages 4 and 7 of SavoySoft disclosing the use of a client/server architecture in the CyberHouse product. Pet. 23. In particular, Petitioner quotes SavoySoft s disclosure of the server s behind-the-scenes processing and communications as disclosing the recited lighting daemon. Id. Patent Owner argues the Petition fails to identify a disclosure of a lighting daemon as claimed. Prelim. Resp. 23. On this record and for the purpose of this Decision, we agree with Petitioner that use of a daemon process is disclosed by the aforementioned portions of SavoySoft. Claims 8 and 10 each recite further features relating to the server process broadcasting state of the devices. Petitioner identifies disclosures in SavoySoft that the client process can present status of devices based on information received from the server. Pet. 24, 26 (citing portions of Ex. 1002, 4, 8, 10, 12, 13). Patent Owner argues the Petition fails to identify disclosure of the broadcast limitations. Prelim. Resp. 24. On this record and 24

25 for the purpose of this Decision, we agree with Petitioner that broadcast of status information is disclosed by the aforementioned portions of SavoySoft. Claim 14 recites further features relating to the icon showing status of the represented lighting load and updating the icon to indicate changes in the state of the lighting load. Petitioner identifies disclosures in SavoySoft that CyberHouse displays icons indicating the state of corresponding lighting loads including animated icons to show activity of the represented device (e.g., updating the icon display). Pet. 29 (citing portions of Ex. 1002, 4, 8, 10, 12). On this record and for the purpose of this Decision, we agree with Petitioner that display of icons representing state of represented devices is disclosed by the aforementioned portions of SavoySoft. Claims 7 and 12 recite that the means for storing, generating, and sending receives the identifier (of a lighting load) from another computer. Petitioner maps these claim limitations to disclosures of SavoySoft relating to adding a device to the CyberHouse system and creating rules for control of the device. Pet , (citing portions of Ex. 1002, 4, 12). We are unpersuaded that the cited portions of SavoySoft disclose receipt of the identifier from another computer. We are not persuaded there is a reasonable likelihood of Petitioner prevailing in showing features of claims 7 and 12 are anticipated by SavoySoft. Claims 3 and 13 recite a specific sequence of operations in that the icon of a device is displayed before the corresponding control panel, and the control panel is shown when the icon is selected. Petitioner argues that certain portions of SavoySoft disclose displaying icons, displaying slider controls, and mouse functions selecting certain icons, and contend that these disclosures correspond to the claimed features of claims 3 and 13. Pet

26 22, 29 (citing portions of Ex. 1002, 4). We are unpersuaded that Petitioner has shown how the cited portions of SavoySoft disclose the specifically recited sequence for displaying an icon before display of the control panel and display of the control panel in response to selection of the icon. We are not persuaded there is a reasonable likelihood of Petitioner prevailing in showing features of claims 3 and 13 are anticipated by SavoySoft. Claims 4 and 5 depend from claim 1 and recite further features of the claimed input device. In analyzing claim 1, Petitioner asserts that I/O devices 56 such as a mouse and keyboard of SavoySoft correspond to the recited input device. Pet In Petitioner s claim chart for claim 4, Petitioner maps motion detectors and other sensors disclosed in SavoySoft as corresponding to the recited input device that includes a person detector. Pet. 22. Petitioner has failed to explain adequately, however, how the mouse and keyboard of SavoySoft (as mapped in claim 1) could include the motion detectors and sensors, also of SavoySoft, as would be required to meet the limitations of claim 4. A similar analysis is applicable to the the input device includes a manual input device limitation of claim 5. Pet We are not persuaded there is a reasonable likelihood of Petitioner prevailing in showing features of claims 4 and 5 are anticipated by SavoySoft. 5. Conclusion On the record before us for the purpose of this Decision, we are persuaded that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1, 2, 6, 8 11, and 14 are anticipated by SavoySoft. We are unpersuaded that there is a reasonable likelihood that Petitioner 26

27 would prevail in showing that dependent claims 3 5, 7, 12, and 13 are anticipated by SavoySoft. D. Ground 2: Claims 1 14 Obvious over SavoySoft Petitioner generally contends that claims 1 14 are obvious over SavoySoft. Pet. 30. The totality of Petitioner s argument is: Id. To the extent that SavoySoft (Exhibit 1002) is not considered to be a unitary anticipatory reference, Petitioner submits that it would have been obvious to have combined its respective teachings directed to a functionality associated with a single software product, CyberHouse Release 2. Moreover, to the extent that SavoySoft (Exhibit 1002) fails to fully disclose any limitation of claims 1-14, any such differences would have been sufficiently minor that the claims as a whole would nonetheless have been obvious to one skilled in the art at the time of the filing of the 359 Patent. The Petition s analysis of the alleged obviousness of claims 1 14 of the 359 Patent over SavoySoft suffers from a fundamental legal deficiency by failing to identify any differences between any claim of the 359 Patent and SavoySoft. Graham v. John Deere Co., 383 U.S. 1, (1966). Instead, Petitioner leaves it for this panel and Patent Owner to speculate as to which features of SavoySoft potentially differ from the claims and why any such missing features would be obvious. We decline to so speculate and, accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that claims 1 14 would have been obvious over SavoySoft. See Apple Inc. v. SmartFlash LLC, Case CBM , slip op. at (PTAB May 28, 2015) (Paper 11) (denying institution of an asserted obviousness ground based on Petitioner s failure to explain adequately any differences between the asserted prior art 27

28 and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM , slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) ( A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on Patent Owner and the Board to determine those differences... risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief. ). E. Ground 3: Claims 1 14 Obvious over SavoySoft and House All claims generally include limitations relating to generating and sending a request/command that identifies a lighting load and a lighting load state. Petitioner argues to whatever extent SavoySoft fails to disclose these features, House provides the missing disclosure. Pet (quoting excerpts from Ex. 1005, 66 67). Specifically, Petitioner asserts House teaches a lighting control request as a packet that includes/identifies a lighting load as destination-address information and includes/identifies lighting control state as the desired dim level. Pet Petitioner further contends SavoySoft, per se, suggests the benefits of using House s techniques (i.e., suggests a reason for the combination). Pet. 32 (citing SavoySoft (Ex. 1002, 3) suggesting support for a CEBus Dimmer switch and House (Ex. 1005, 61) introducing use of CAL messages that control a CEBus light switch ). Patent Owner argues the teachings of House cannot be read as the recited lighting control request because the recited request is to be sent to a computer network (e.g., using protocols such as TCP/IP and HTTP) rather than a lighting control network (e.g., using protocols such as X-10 and CEBus). Prelim. Resp

29 Petitioner argues House discloses a request that indicates or includes the identifier (Pet ), but relies on SavoySoft for the disclosure of sending the generated request/command to another computer in the analysis of independent claims 1, 9, and 11 (Pet ). On this record, we agree with Petitioner, and, thus, determine Petitioner has shown there is a reasonable likelihood of prevailing in establishing that claims 1, 2, 6, 8 11, and 14 of the 359 Patent would have been obvious over the combination of SavoySoft and House. For the same reasons discussed supra, however, certain recitations of claims 3 5, 7, 12, and 13 are not taught by SavoySoft, and Petitioner does not cite House for remedying the aforementioned deficiencies of SavoySoft. Thus, we are unpersuaded that Petitioner has a reasonable likelihood of showing that claims 3 5, 7, 12, and 13 are obvious over SavoySoft and House. F. Ground 4: Claims 1 14 Anticipated by X10type 1. Independent Claims 1, 9, 10, and 11 Although X10type primarily discusses enhancements to the CyberHouse software to support X-10 devices, there are similar disclosures of the client/server architecture (Viewer as a client program and House Manager as the server program), use of a mouse to select devices to be controlled, and generation of commands/requests to control an identified device to a desired state sent from a client to a server. Petitioner maps features of independent claims 1, 9, and 11 to disclosures of X10type that are similar to disclosures of SavoySoft discussed supra. Pet In particular, Petitioner contends X10type teaches an apparatus having an input device. Pet. 34 (citing Ex. 1003, 4 disclosing use of a mouse and keyboard). Petitioner further contends X10type teaches a client/server architecture in 29

30 which requests/commands are generated by a client (Viewer) program and sent to a server program (House Manager). Pet According to Petitioner, the request/command includes an identifier of the lighting load to be controlled. Pet. 35 (citing Ex. 1003, 1, 2, 18, 19). X10type teaches, [y]ou can instruct CyberHouse to activate or deactivate each device individually. Id. Thus, in a client/server architecture application of CyberHouse, a client (Viewer) generated request must identify to the server (House Manager) which device is to be controlled (i.e., the request must indicate the identifier for the assigned lighting load as claimed). In analyzing independent claim 9, we observe that X10type does not appear to teach specifics of the user interface, as was disclosed in SavoySoft. In particular, X10type refers to icons being displayed to represent a device. Ex. 1003, 13 ( It is now ready to accept device icons to represent your X-10 automation devices. ). X10type also teaches that the icon can be used to control the corresponding device that it represents. See, e.g., Ex. 1003, 18 ( In the normal operating mode, you can click a device s icon button to activate or deactivate it ). Petitioner has not identified any description in X10type, however, of the use of a control panel, distinct from the icon that represents the device, to control the device. Thus, the icon as taught in X10type may be read as either an icon as claimed or as a control panel as claimed but not both where, as in claim 9, both elements are recited as distinct elements of the claim. Accordingly, we are unpersuaded that X10type anticipates independent claim 9. In all other respects, Patent Owner presents essentially the same arguments regarding features missing in X10type as discussed above regarding teachings of SavoySoft namely that X10type fails to teach a 30

31 request or command that indicates/includes an identifier for the device to be controlled and fails to teach such a request is sent to another computer. Prelim. Resp We are unpersuaded by Patent Owner s assertions for the same reasons as set forth supra. On the record before us for the purpose of this Decision, we are persuaded that there is a reasonable likelihood that Petitioner would prevail in showing that independent claims 1 and 11 are anticipated by X10type. We are not persuaded, however, that Petitioner is likely to prevail in showing claim 9 and its dependent claim 10 is anticipated by X10type. 2. Dependent Claims 2 8 and Petitioner s claim chart also maps features of dependent claims 2 8, 10, and to features of X10type. Pet Patent Owner contends certain features of claims 3, 6 8, 12, and 13 are not shown in X10type. Prelim. Resp For essentially the same reasons as above regarding Ground 1 (anticipation by SavoySoft), we are unpersuaded that Petitioner has identified sufficient teachings in X10type of the features of claims 3 5, 7, 12, and 13. Regarding claims 2, 6, 8, and 14, for similar reasons to those discussed supra regarding Ground 1 (anticipation by SavoySoft), we are persuaded that Petitioner has shown (Pet ) that there is a reasonable likelihood of prevailing in showing that claims 2, 6, 8, and 14 are anticipated by X10type. 3. Conclusion On the record before us for the purpose of this Decision, we are persuaded that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1, 2, 6, 8, 11, and 14 are anticipated by X10type. We 31