Tasco Inc.v.David Pagnani

Patent Trial and Appeal Board

May 23, 2013

12378753 (P.T.A.B. May. 23, 2013)

Trials@uspto.gov
571-272-7822
Paper 6
Entered: 23 May 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

TASCO, INC.
Petitioner

v.

DAVID PAGNANI
Patent Owner
____________

Case IPR2013-00103
Patent 8,018,348
____________

Before SCOTT R. BOALICK, JUSTIN T. ARBES, and
TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION
Denying Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner Tasco, Inc. (“Tasco”) requests inter partes review of claims 1-12
of U.S. Patent 8,018,348 (“'348 patent”) pursuant to 35 U.S.C. §§ 311 et seq.
Patent Owner David Pagnani (“Pagnani”) did not submit a preliminary response
under 37 C.F.R. § 42.107(b). We have jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a), which provides as follows:
THRESHOLD -- The Director may not authorize an inter
partes review to be instituted unless the Director
determines that the information presented in the petition
filed under section 311 and any response filed under
section 313 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 claims 1-6 and 8-12 as being anticipated (35 U.S.C.
§ 102). Petitioner also challenges claims 1-12 as being obvious (35 U.S.C. § 103).
For the reasons that follow, the Petition is denied.

II. BACKGROUND
A. The '348 patent (Exhibit 1001)
The '348 patent describes an electrical circuit tracing apparatus to enable
identification of a particular circuit breaker feeding a remotely disposed electrical
outlet. '348 patent Abstract, col. 2, ll. 52-54. The electrical circuit tracing
apparatus connects to multiple branch circuits, typically at the circuit breaker
panel, and transmits uniquely identifiable electrical signals to the various circuits.
Id. col. 2, ll. 36-38. A circuit analysis box connects to a particular outlet, receives
one of the uniquely identifiable signals, and provides a readout that indicates the
circuit number to which the particular electrical outlet is connected. Id. col. 2, ll.
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42-51.
Figure 2 of the '348 patent, reproduced below, illustrates an exemplary
circuit tracing apparatus.

'348 patent Fig. 2

As shown above in Figure 2, a multi-output electrical signal generating test
apparatus 204 is connected to branch circuits associated with circuit breakers 104a,
104b, 104c, through 104n of the breaker panel 102. Id. col. 4, ll. 36-49. The
digital readout 202 can be connected to electrical outlet 110b and can display the
number of the branch circuit, for example “03,” to which the outlet 110b is
connected. Id. col. 4, ll. 50-51.

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B. Illustrative Claims
Independent claims 1 and 8, reproduced below, are illustrative (emphasis
added).
1. A circuit tracing apparatus, comprising:
a) a signal generating test apparatus having at least two
outputs adapted and configured for connection, respectively, to at
least two different branch circuits of an electrical power
distribution network simultaneously, each of said at least two
outputs comprising a uniquely identifiable signal; and
b) a signal receiving apparatus adapted and configured for
connection to one of said at least two different branch circuits of
said electrical power distribution network, said signal receiving
apparatus comprising means for identifying at least one of said
uniquely identifiable signals, and a display for indicating which
of said at least two outputs is associated therewith.

8. A method of tracing an electrical network, the
steps comprising:

a) providing a multi-output, signal generating
electrical test apparatus configured to provide a uniquely
identifiable electrical signal simultaneously at each
output thereof;

b) providing a readout device compatible with said
multi-output, signal generating electrical test apparatus;

c) deenergizing all branch circuits to be tested in
an electrical power distribution network to create at least
one deenergized branch circuit;

d) connecting an output of said multi-output, signal
generating electrical test apparatus to each of said at least
one deenergized branch circuit; and

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e) connecting said readout device to an electrical
outlet connected to said at least one deenergized circuit.

C. Prior Art Relied Upon
Petitioner relies on the following prior art:
Blades 2005/0212526 A1 Sep. 29, 2005 Ex. 1002
Johnson WO 2008/052223 A2 May 2, 2008 Ex. 1003
Earle 5,422,564 Jun. 6, 1995 Ex. 1004
Coia 6,154,032 Nov. 28, 2000 Ex. 1005
Admitted Prior Art - Petitioner cites column 5, lines 51-57 of the '348 patent
as Admitted Prior Art.

D. The Asserted Grounds
Petitioner asserts the following two grounds of anticipation under 35 U.S.C.
§ 102. Pet. 8.
Blades: claims 1-6 and 8-12.
Johnson: claims 1-6 and 8-12.
In addition, Petitioner asserts the following ten grounds of obviousness
under 35 U.S.C. § 103. Id.
Earle (single reference): claims 1-3, 6, and 8-11.
Earle and Blades: claims 4-6, 10, and 12.
Earle and Johnson: claims 6, 10, and 12.
Earle and the Admitted Prior Art: claim 7.
Blades and the Admitted Prior Art: claim 7.
Johnson and the Admitted Prior Art: claim 7.
Coia (single reference): claims 1-3, 5-6, and 8-12.
Coia and Blades: claims 1 and 4.
Coia and the Admitted Prior Art: claim 7.
Coia and Johnson: claim 1.
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II. CLAIM CONSTRUCTION
In an inter partes review, claim terms in an unexpired patent are given their
broadest reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b). Under the broadest reasonable construction
standard, claim terms are presumed to be given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art at the time of
the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
banc). Petitioner does not provide a specific proposed construction of claim terms.
Rather, Petitioner states that the claims should be “given their broadest reasonable
interpretation” and asserts that various prior art references disclose the claim
features. See, e.g., Pet. 8, 35, 37-38.
We use the ordinary and customary meaning for all claim terms for the
purposes of this decision. In particular, we construe the claim phrase “uniquely
identifiable signal” as a signal capable of being identified individually among other
signals. Furthermore, we construe the “means for identifying at least one of said
uniquely identifiable signals,” as a means-plus-function limitation. The function of
the limitation is “identifying at least one of said uniquely identifiable signals” and
the corresponding structure in the '348 patent encompasses decoding circuit 406 in
Figure 4. See '348 patent col. 5, ll. 12-16.

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III. ALLEGED UNPATENTABILITY OF CLAIMS 1-12
Petitioner has raised two separate anticipation contentions under 35 U.S.C.
§ 102 and ten obviousness contentions under 35 U.S.C. § 103. These contentions
are analyzed below and grouped according to the reference for an anticipation
contention or the first listed reference for an obviousness contention.

A. Blades (Ex. 1002)
Petitioner contends that Blades anticipates claims 1-6 and 8-12 under 35
U.S.C. § 102(b). Pet. 13-25. Additionally, Petitioner contends that claim 7 would
have been obvious in view of Blades and the Admitted Prior Art under 35 U.S.C. §
103(a). Pet. 40.
1. Claim 1
Claim 1 requires that the “signal generating test apparatus” have at least two
outputs to at least two branch circuits simultaneously and that each output must
comprise a “uniquely identifiable signal.” Furthermore, claim 1 requires a “signal
receiving apparatus” comprising a means for identifying at least one of the
uniquely identifiable signals and a display for indicating which of the at least two
outputs is associated therewith.
Petitioner alleges that Blades discloses both the claimed “signal generating
test apparatus (i.e., a Load Center Interface LCI 15 of illustration 2)” and the
“signal receiving apparatus (i.e., PCA 2 of illustration 2).” Pet. 16. Figure 1 of
Blades, reproduced below, illustrates that the Load Center Interface (“LCI”) 15 is
proximate to the breaker panel 20 and that the Portable Circuit Analyzer (“PCA”) 2
is proximate to the outlet 7.

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Blades Fig. 2
Blades discloses that the LCI 15 is connected to a remotely located PCA 2 via
umbilical cable 17. See Blades ¶¶[0069-70, 73]. In the paragraphs of Blades cited
by Petitioner, Blades discloses that the LCI “serves to monitor signals in the Load
Center that result from active load testing performed by the PCA 2” and “has the
ability to identify which branch circuit the PCA is plugged into.” Blades ¶¶[0072,
86] (emphasis added). Thus, the cited portions of Blades disclose that the LCI 15
is not a “signal generating test apparatus,” as alleged by Petitioner, but rather
receives the loads generated by the PCA 2. See Blades ¶¶[0072, 86]. Specifically,
in later paragraphs, Blades discloses that in testing mode, the PCA applies a
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rectified load to the branch circuit at the outlet and the “LCI measures the voltage
drop across each Branch Circuit Breaker for the purpose of determining which
Branch Circuit the load is on.” Blades ¶[0095]. Therefore, Petitioner has not
provided persuasive evidence that the LCI 15 in Blades acts as a “signal generating
test apparatus,” or that the PCA 2 acts as the “signal receiving apparatus.”
Furthermore, Petitioner fails to provide persuasive evidence from the cited
portions of Blades that at least two outputs connected to branch circuits each
comprise a uniquely identifiable signal. As explained above, we interpret
“uniquely identifiable signal” to mean a signal capable of being identified
individually among other signals. Petitioner argues that this claim requirement is
met in Blades in “illustration 1 and paragraphs 0071, 0082, 0086, [and] 0118
discussing interoperability and bi-directional communications of the LCI 15 and a
Portable Circuit Analyzer PCA 2.” Pet. 16. Petitioner does not provide a
sufficient and credible explanation, however, as to why these paragraphs disclose
two outputs providing uniquely identifiable signals to two branch circuits. See
Blades ¶¶[0072, 82, 86, 118]. Instead, Blades discloses that the umbilical cable 17,
shown above in Figure 2, “provides a bi-directional communications link between
PCA 2 and the LCI.” Blades ¶[0118]. More specifically, Blades discloses that
“umbilical cable 17 is used to carry high-speed communication signals between the
LCI and the PCA.” Blades ¶[0075]. Blades does not disclose the transmission of
uniquely identifiable signals via the branch circuits, but rather communication via
umbilical cable 17. For testing purposes, Blades discloses that PCA 2 applies a
generic rectified load to a branch circuit and the “LCI measures the voltage drop
across each Branch Circuit Breaker for the purpose of determining which Branch
Circuit the load is on.” Blades ¶[0095]. Therefore, Petitioner has not shown that
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Blades discloses the claimed signal generating test apparatus that provides two
uniquely identifiable signals.
Petitioner alleges that “[c]learly, identifying each circuit of a circuit breaker
via corresponding test connections” means that the signals between Blades’ LCI 15
and PCA 2 are unique because “[o]therwise, it would not be possible to distinguish
one circuit from another.” Pet. 17. Contrary to Petitioner’s contention, the cited
portions of Blades disclose that by inserting a rectified load on the branch circuits
and communicating via umbilical cable 17, the system is able to identify a circuit.
See Blades ¶¶[0072, 86].
Furthermore, even if we were to assume that Blades discloses uniquely
identifiable signals as recited in claim 1, Petitioner has not shown that the cited
portions of Blades disclose injecting multiple loads on the branch circuits
“simultaneously” as required by claim 1. See Blades ¶¶[0072, 82, 86, 118].
Blades describes that the PCA 2 is portable, so that the “electrician moves from
outlet to outlet in a room, testing each in succession.” Blades ¶[0074] (emphasis
added). Therefore, the LCI 15 is identifying only one load on the branch circuits at
one time. Blades ¶[0072].
We are not persuaded by Petitioner’s arguments that claim 1 is anticipated
by Blades. Furthermore, we note that the citations made by Petitioner with respect
to Blades lack detail and explanation. See Pet. 16-18. A petition must identify
with particularity each claim challenged, the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds for the challenge.
35 U.S.C. § 312(a)(3). Under 37 C.F.R. § 42.22(a), a petition must include a
statement of the precise relief requested and a full statement of the reasons for the
relief requested, including a detailed explanation of the significance of the
evidence including material facts, the governing law, rules, and precedent.
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Additionally, in accordance with 37 C.F.R. § 42.104, the burden is on the
petitioner to establish “[h]ow the construed claim is unpatentable” by specifying
“where each element of the claim is found in the prior art patents or printed
publications relied upon.” Rather than providing specificity, Petitioner merely
identifies structures in Blades, without explaining why or how the identified
structures allegedly meet the requirements of the claim. See, e.g., Pet. 16.
Petitioner also makes the general assertion that “in view of the amount of detail
and the numerous embodiments that Blades discloses, it does not appear that there
is a single novel feature in the Contested Patent.” Pet. 17-18 (emphasis added).
These conclusory allegations are insufficient to meet Petitioner’s burden. Thus,
based on the information presented in the Petition, we conclude that Petitioner has
not demonstrated a reasonable likelihood that it will prevail in proving the subject
matter of claim 1 to be anticipated by Blades.

2. Claims 2-6
Petitioner’s contentions for claims 2-6, dependent upon claim 1, address
only the additional limitations presented in each of these dependent claims. Pet.
18-22. In the allegations for dependent claims 2-6, Petitioner has not pointed to
evidence in Blades showing, among other things, a signal generating test apparatus
providing at least two outputs, each comprising a uniquely identifiable signal as the
claims require. As such, we conclude that Petitioner has not demonstrated a
reasonable likelihood that it will prevail in proving the subject matter of claims 2-6
to be anticipated by Blades.

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3. Claims 8-12
Similar to claim 1, independent claim 8 requires providing a “multi-output,
signal generating electrical test apparatus configured to provide a uniquely
identifiable electrical signal simultaneously at each output thereof.” In the
contentions for claim 8, Petitioner makes the same unsupported assertions as it
does for claim 1, and fails to provide evidence demonstrating that Blades discloses
a signal generating electrical test apparatus capable of providing uniquely
identifiable electrical signals. See Pet. 22-23. Thus, we conclude that Petitioner
has not demonstrated a reasonable likelihood that it will prevail in proving the
subject matter of claim 8 to be anticipated by Blades.
Petitioner’s allegations for claims 9-12, dependent upon claim 8, address
only the additional limitations presented in each of these dependent claims. Pet.
23-25. Thus, our analysis with respect to claim 8 applies to dependent claims 9-12.
As such, we conclude that Petitioner has not demonstrated a reasonable likelihood
that it will prevail in proving that claims 9-12 are anticipated by Blades.

4. Claim 7
In addition to the anticipation grounds based on Blades discussed above,
Petitioner contends that claim 7, dependent upon claim 1, would have been
obvious in view of Blades and the Admitted Prior Art. Pet. 40. Claim 7 requires
that the circuit tracing apparatus use an X10 protocol for carrier current
communications. Petitioner’s citations to the Admitted Prior Art for claim 7
address only this additional limitation. Id. In the allegation for dependent claim 7,
Petitioner has not pointed to evidence in the Admitted Prior Art showing a signal
generating test apparatus providing at least two outputs, each comprising a
uniquely identifiable signal. Thus, our analysis with respect to claim 1 applies to
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dependent claim 7. As such, we conclude that Petitioner has not demonstrated a
reasonable likelihood that it will prevail in proving the subject matter of claim 7 to
be obvious in view of Blades and the Admitted Prior Art.

B. Johnson (Ex. 1003)
Petitioner contends that Johnson anticipates claims 1-6 and 8-12 under 35
U.S.C. § 102(e). Pet. 25-30. Additionally, Petitioner contends that claim 7 would
have been obvious in view of Johnson and the Admitted Prior Art under 35 U.S.C.
§ 103(a). Pet. 40.

1. Claim 1
Petitioner alleges that the processor 102 in Johnson which is coupled to each
of the breaker nodes 1-10 in the breaker box 104, is a “signal generating test
apparatus” as recited in claim 1. Pet. 28. Furthermore, Petitioner alleges that
Johnson’s computer 114, which is coupled through interface 122 to outlets A-I, is a
“signal receiving apparatus.” Id. Johnson discloses that the processor 102 may
coordinate a sequence of directional events at each node, enable the collection of
information on the nodes, and develop a wiring diagram. Johnson p. 7, ll. 29-31.
Figure 1 of Johnson reproduced below, illustrates the processor 102 connected to
the breaker box 104 and the computer 114 connected to the interface 122.

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Johnson Fig. 1

The portions of Johnson cited by Petitioner disclose that each of the outlet nodes
may be configured to create a detectable signal at the node, which can be relayed
to identify the node’s position. Id. p. 7, ll. 1-6. Specifically, Johnson discloses that
an “electrical event may be created by a switched known load at each node.” Id. p.
8, ll. 9-10. For example, as shown in Figure 3 reproduced below, Johnson
discloses that an outlet node 300 can include a switchable micro-load 304 capable
of creating a directional and detectable electrical event. Id. p. 9, l. 19-p. 10, l. 22;
Fig. 3.

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Johnson Fig. 3

Johnson discloses that the “process of mapping the nodes may begin with the
individual nodes or the central processor.” Id. p. 13, ll. 21-22. For example,
Johnson discloses that the central processor 102 can send a “reset signal” to all
outlet nodes to initiate a “roll call” among the outlet nodes, and “[e]ach active node
may wait a random period of time and send a message to the processor indicating
that it is present.” Id. p. 13, ll. 22-25. Johnson discloses that “[w]hen each active
node sends a message to the processor that it is present, the message may include
descriptive information, such as, identifying information, e.g., a serial number.”
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Id. p. 13, l. 30 – p. 14, l. 1 (emphasis added). Therefore, contrary to Petitioner’s
assertions, the outlet nodes in Johnson, such as outlet node 300 shown above in
Fig. 3, generate signals and the central processor 102 receives those signals. See
Johnson p. 7, ll. 1-6 and p. 13, ll. 21-25. Therefore, Petitioner has not provided
persuasive evidence that the central processor 102 in Johnson acts as the “signal
generating test apparatus” with outputs comprising uniquely identifiable signals or
that the computer 114 acts as a “signal receiving apparatus.”
Furthermore, Petitioner has not shown that the cited portions of Johnson
disclose the claim requirement that “each of said at least two outputs” comprises “a
uniquely identifiable signal.” Petitioner does not identify what it believes is a
“uniquely identifiable signal” in Johnson but alleges that the claim requirement is
met by processor 102. Pet. 28. Although Johnson discloses that the central
processor sends a “reset signal” to the outlet nodes, Petitioner fails to cite a
disclosure in Johnson indicating that this reset signal is a “uniquely identifiable
signal.” Indeed, the “reset signal” sent by central processor 102 is a generic
broadcast signal to all nodes. See Johnson p. 13, ll. 21-25 (sending a reset signal to
initiate a “roll call”). Therefore, Petitioner has not shown that Johnson discloses a
signal generating test apparatus that provides two uniquely identifiable signals, as
required by claim 1.
Based on the information presented in the Petition, we conclude that
Petitioner has not demonstrated a reasonable likelihood that it will prevail in
proving the subject matter of claim 1 to be anticipated by Johnson.

2. Claims 2-6
Petitioner’s allegations for claims 2-6, dependent upon claim 1, address only
the additional limitations presented in each of these dependent claims. Pet. 29. As
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such, we conclude that Petitioner has not demonstrated a reasonable likelihood that
it will prevail in proving the subject matter of claims 2-6 to be anticipated by
Johnson.

3. Claims 8-12
Similar to claim 1, independent claim 8 requires providing a “multi-output,
signal generating electrical test apparatus configured to provide a uniquely
identifiable electrical signal simultaneously at each output thereof.” Petitioner’s
allegations with respect to claim 8 rely upon Petitioner’s unsupported allegations
for claim 1. Pet. 29-30. We conclude that Petitioner has not demonstrated a
reasonable likelihood that it will prevail in proving the subject matter of claim 8 to
be anticipated by Johnson for the same reasons as claim 1.
Petitioner’s allegations for claims 9-12, dependent upon claim 8, address
only the additional limitations presented in each of these dependent claims. Pet.
30. As such, we conclude that Petitioner has not demonstrated a reasonable
likelihood that it will prevail in proving the subject matter of claims 9-12 to be
anticipated by Johnson.

4. Claim 7
In addition to the anticipation grounds based on Johnson discussed above,
Petitioner contends that claim 7, dependent upon claim 1, would have been
obvious in view of Johnson and the Admitted Prior Art. Pet. 40. Claim 7 requires
that the circuit tracing apparatus use an X10 protocol for carrier current
communications. Petitioner’s citations to the Admitted Prior Art for claim 7
address only this additional limitation. Id. In the allegation for dependent claim 7,
Petitioner has not pointed to evidence in the Admitted Prior Art showing, among
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other things, a signal generating test apparatus providing at least two outputs, each
comprising a uniquely identifiable signal. Thus, our analysis with respect to claim
1 applies to dependent claim 7. As such, we conclude that Petitioner has not
demonstrated a reasonable likelihood that it will prevail in proving the subject
matter of claim 7 to be obvious in view of Johnson and the Admitted Prior Art.

C. Earle (Ex. 1004)
Petitioner contends that claims 1-3, 6, and 8-11 would have been obvious in
view of Earle. Pet. 31-36. Petitioner also contends claims 4-6, 10, and 12 would
have been obvious in view of Earle and Blades, claims 6, 10, and 12 would have
been obvious in view of Earle and Johnson, and claim 7 would have been obvious
in view of Earle and the Admitted Prior Art. Id. at 36-40.

1. Claim 1
Petitioner alleges that the claimed “signal generating test apparatus” is met
by Earle’s disclosure of a plurality of transmitters 22a-f that each generate a
distinctive signature signal 26a – 26f. Pet. at 32 (no citation to Earle provided).
Furthermore, Petitioner alleges that the claimed “signal receiving apparatus” is met
by Earle’s disclosure of a receiver means 24 and the claimed “display” is met by
Earle’s disclosure of a visual indicator means 160. Id. at 32-33 (citing Earle col. 8,
ll. 26-41). Other than these general allegations, Petitioner fails to provide a
description of “where each element of the claim is found in the prior art.” See 37
C.F.R. § 42.104(b)(5). For example, Petitioner does not explain how Earle teaches
the “means for identifying at least one of said uniquely identifiable signals”
required by claim 1.
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Further, even assuming for the sake of argument that Petitioner had provided
sufficient explanation as to how Earle teaches the elements of claim 1, Petitioner's
obviousness analysis is deficient. Petitioner states that the “only difference
between Earle and independent claim 1 of the Contested Patent is that Earle
transmits from the outlets 14a - 14f and the receiver detects the signals at the
circuit breaker box 18,” but contends that reversing the transmission would be a
“trivial change.” Pet. 33. Petitioner’s argument is unsupported and, in any case,
not commensurate with the scope of the claim, as claim 1 does not require
transmitting from a breaker box and receiving at outlets. Claim 1 only requires
that the “signal generating test apparatus” connect to two branch circuits and that
the “signal receiving apparatus” connect to one of these branch circuits. Claim 1
does not designate a particular location for these devices along the branch circuit.
In our view, Petitioner has failed to establish prerequisites for demonstrating
obviousness under KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). As noted
by the Federal Circuit,
[a]lthough the obviousness analysis should “take account of the
inferences and creative steps that a person of ordinary skill in the art
would employ,” the Supreme Court emphasized that this evidentiary
flexibility does not relax the requirement that, “[t]o facilitate review,
this analysis should be made explicit.” Id. [KSR] at 418, 127 S. Ct.
1727 (citing [In re] Kahn, 441 F.3d [977] at 988 (“there must be some
articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”)).

Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed.
Cir. 2009). Petitioner’s challenge to the claims over Earle amounts to mere
conclusory statements in support of the legal conclusion of obviousness.
Specifically, Petitioner alleges that “claim 1 is clearly obvious in view of Earle.”
Pet. 34. Petitioner offers no convincing rationale, in light of the teachings of the
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prior art, as to why one of ordinary skill in the art would have chosen to modify
Earle to render claim 1 obvious. Furthermore, Petitioner fails to point to prior art
references or teachings that can be combined with Earle to render claim 1 obvious.
See Pet. 32-34. As required by 37 C.F.R. § 42.104(b)(4), a petition must specify
how a claim is unpatentable and where each element of a challenged claim is found
in the prior art. Petitioner’s cursory discussion of Earle and limited citations have
failed to do so. Based on the information presented in the Petition, we conclude
that Petitioner has not demonstrated a reasonable likelihood that it will prevail in
proving the subject matter of claim 1 to be unpatentable over Earle.

2. Claims 2, 3 and 6
Petitioner’s allegations for claims 2, 3, and 6, dependent upon claim 1,
address only the additional limitations presented in each of these dependent claims.
Pet. 34-35. As such, we conclude that Petitioner has not demonstrated a
reasonable likelihood that it will prevail in proving the subject matter of claims 2,
3, and 6 to be obvious over Earle.

3. Claims 8-11
Petitioner alleges that claim 8 simply provides a method of operating the
claimed circuit tracing apparatus of claim 1 and the only difference is that claim 8
operates on a deenergized circuit. See Pet. 23, 35.
1
Petitioner does not provide
substantive analysis for the elements of claim 8, other than to state that “[e]ven

1
Specifically, petitioner states that “[t]he only difference between the two claims is
that the method of claim 8 recites the more limited ability to operate on only
deenergized circuits.” Pet. 23.
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assuming Earle is operable on an energized circuit, Earle would anticipate
2
this
element because a deenergized circuit would not interefere [sic] with any form of
communication thereon.” Id. at 35. As Petitioner has not shown Earle to, in fact,
operate on a deenergized circuit (along with other elements of the claim as
discussed above), we conclude that Petitioner has not demonstrated a reasonable
likelihood that it will prevail in proving the subject matter of claim 8 to be obvious
over Earle.
Petitioner’s allegations for claims 9-11, dependent upon claim 8, address
only the additional limitations presented in each of these dependent claims. Id. at
35-36. Thus, our analysis with respect to claim 8 applies to dependent claims 9-11.
As such, we conclude that Petitioner has not demonstrated a reasonable likelihood
that it will prevail in proving the subject matter of claims 9-11 to be obvious over
Earle.

4. Combinations of Additional Prior Art for the Dependent Claims
Petitioner provides additional proposed rejections for dependent claims 4-6,
10 and 12, relying upon Earle in combination with either Blades, Johnson, or the
Admitted Prior Art. Similar to the grounds discussed above, Petitioner does not
provide sufficient evidence demonstrating that these additional prior art references
disclose the requirements of the claims. Thus, we conclude that Petitioner has not
demonstrated a reasonable likelihood that it will prevail in proving the subject
matter of dependent claims 4-6, 10, and 12 obvious over Earle and the additional
prior art.

2
We note that Petitioner states “anticipate” but the asserted challenge is one of
obviousness.
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D. Coia (Ex. 1005)
Petitioner contends that claims 1-3, 5-6, and 8-12 would have been obvious
in view of Coia. Pet. 41-42. Petitioner also contends that claims 1 and 4 would
have been obvious in view of Coia and Blades, claim 7 would have been obvious
in view of Coia and the Admitted Prior Art, and claim 1 would have been obvious
in view of Coia and Johnson. Id. at 44-45.

1. Claim 1
Petitioner alleges that Coia teaches a “signal generating test apparatus” by
disclosing transmitters 31 and 35 and a “signal receiving apparatus” by disclosing
identification circuits 100. Pet. 42. Once again, Petitioner does not explain how
Coia teaches the remaining elements of claim 1. Rather than providing citations to
supporting evidence in Coia Petitioner provides conclusory statements, such as
“[s]ince each circuit of the circuit breaker receives a signal from a distinct
transmitter, the signals of all the circuits must be different or unique.” Pet. 42 (no
citation to Coia provided).
Petitioner fails to provide a sufficient and credible explanation as to how
Coia teaches, among other things, a “means for identifying at least one of said
uniquely identifiable signals” or a “display for indicating which of said at least two
outputs is associated therewith,” as required by claim 1. Accordingly, Petitioner
has not identified “[h]ow the construed claim is unpatentable” and “where each
element of the claim is found in the prior art patents or printed publications relied
upon.” See 37 C.F.R. § 42.104. Based on the information presented in the
Petition, we conclude that Petitioner has not demonstrated a reasonable likelihood
that it will prevail in proving the subject matter of claim 1 to be unpatentable over
Coia.
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2. Claims 2, 3, 5 and 6
Petitioner’s allegations for claims 2, 3, 5, and 6, dependent upon claim 1,
address only the additional limitations presented in each of these dependent claims.
Pet. 42-43. As such, we conclude that Petitioner has not demonstrated a
reasonable likelihood that it will prevail in proving the subject matter of claims 2,
3, 5, and 6 to be obvious over Coia.

3. Claims 8-12
Petitioner alleges that claim 8 “is only a method of operating the signal
generating test apparatus on a deenergized circuit.” Id. at 43. Petitioner does not
provide substantive additional allegations for the elements of claim 8. Thus, we
conclude that Petitioner has not demonstrated a reasonable likelihood that it will
prevail in proving the subject matter of claim 8 to be obvious over Coia.
Petitioner’s allegations for claims 9-12, dependent upon claim 8, address
only the additional limitations presented in each of these dependent claims. Id.
Thus, our analysis with respect to claim 8 applies to dependent claims 9-12. As
such, we conclude that Petitioner has not demonstrated a reasonable likelihood that
it will prevail in proving the subject matter of claims 9-12 to be obvious over Coia.

4. Combinations of Additional Prior Art for the Claims
Petitioner provides additional proposed rejections for claims 1, 4 and 7,
relying upon Coia in combination with either Blades, Johnson, or the Admitted
Prior Art. Similar to the grounds discussed above, Petitioner does not provide
evidence demonstrating that these additional prior art references disclose the
requirements of the claims. Thus, we conclude that Petitioner has not
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24

demonstrated a reasonable likelihood that it will prevail in proving the subject
matter of claims 1, 4, and 7 obvious over Coia and the additional prior art.

IV. SUMMARY
Petitioner has failed to demonstrate a reasonable likelihood of prevailing on
its assertions as to any of the challenged claims. We therefore do not institute an
inter partes review on any of the asserted grounds as to any of the challenged
claims.

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of the '348
patent.

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Petitioner:

Gregory Thomas Fettig
Devin Lee Looijen
Duft Bornsen & Fettig, LLP
gfettig@dbflaw.com
dlooijen@dbflaw.com

Patent Owner:

Mark Levy
Leland Schultz
Hinman Howard & Kattell, LLP
mlevy@hhk.com
amanzer@hhk.com
lschultz@hhk.com