IIllll
JJJl
III
IIII
IIIll
IIII
IIIJJ
UlII
IIIII
Illl
IIIII
IIIII
IIIII
Illll
IIII
IIIIJl
III
IIlJl
Illl
USFC2006-1168-06
{A62A3997-4A4A-4154-BA4F-21
{70883} {32-060622:180626}
A066891 A41 }
{061206}
JOINT
APPENDIX
Volume
I, Pages
JA0001
- JA0189
06-1168
UNITED
STATES
COURT
OF
APPEALS
DESA
FOR
THE
FEDERAL
CIRCUIT
IP, LLC
Plaintiff-Appellant
Vo
EML
COSTCO
TECHNOLOGIES,
and
WHOLESALE
LLC
CORPORATION
Defendants-Appellees
APPEAL
MIDDLE
FROM
THE
DISTRICT
UNITED
STATES
OF TENNESSEE
JUDGE
JOINT
ALETA
DISTRICT
IN CASE
COURT
NO.
FOR
THE
3:04-CV-0160
A. TRAUGER
APPENDIX
FBLED
U.S. COURTOF APPEALSFOR
THE FEDERALCIRCUIT
JUN
] _ Z006
JANHOI@ALy
CL81_
TABLE
OF CONTENTS
PAGE
CERTIFIED
DOCKET
U.S. PATENT
STIPULATION
TRANSCRIPT
MASTER
ORDER
NO. 5,598,066
OF JUDGE'S
.......................................................
HEARING
.......................................
.................................................................................................
WHOLESALE
ANSWER
TO COMPLAINT
..................................................
OF STEVEN
STATEMENT
OF MARK
STATEMENT
OF WILLIAM
STATEMENT
OF THOMAS
B. CARLSON
JA0059
JA0066
JA0081
JA0082
JA0092
JA0099
..................................................
JA0106
..................................................
JA0135
C. RAPER
.....................................................
JA0151
J. PAULUS
.....................................................
JA0164
J. PATTERSON
OF THE JOINT
APPENDIX
JA0032
BY
LLC ........................................................................
STATEMENT
OF FILING
JA0028
BY
CORPORATION
EML TECHNOLOGIES
JOINT
................................................................
MARKMAN
COSTCO
WITH
JA0016
................................................................................................
TO COMPLAINT
NOTICE
......................................................................
..........................................................................
ANSWER
AMENDED
JA0001
RULING
CHART
FOLLOWING
COMPLAINT
...................................................................
OF JUDGMENT
CLAIM
SCHEMATIC
SHEET
APPENDIX
.............................................................................
JA0190
EVANS
JA0730
STATEMENT
OF SCOTT
STATEMENT
OF J. MICHAEL
...............................................................
THESZ
......................................................
JA0736
STATEMENT
MARKMAN
OF PROFESSOR LLOYD MASSENGILL
HEARING
.......................... JA0748
TRANSCRIPT ....................................................... JA0781
U.S. PATENT NO. 3,177,399 ........................................................................ JA0951
U.S. PATENT NO. 4,225,808 ........................................................................ JA0955
U.S. PATENT NO. 4,233,545 ........................................................................ JA0963
U.S. PATENT NO. 4,604,524 .......................... .............................................. JA0974
U.S. PATENT NO. 4,800,278 ........................................................................ JA0985
U.S. PATENT NO. 4,823,051 ........................................................................ JA0998
U.S. PATENT NO. 4,843,283 ........................................................................ JA1027
U.S. PATENT NO. 4,943,712 ........................................................................ JA1034
U.S. PATENT NO. 4,982,176 ........................................................................ JA1042
U.S. PATENT NO. 5,015,994 ........................................................................ JA1053
U.S. PATENT NO. 5,231,373 ........................................................................ JA1064
U.S. PATENT NO. 5,293,097 ........................................................................ JA1075
U.S. PATENT NO. 5,349,330 ........................................................................ JA1093
JAPANESE PATENT NO. 6-90995 .............................................................. JA1102
CLAIM KEY ...................................................................................................
JA1110
TEXT KEY .....................................................................................................
JA 1112
SPICE SIMULATION
SIGNAL PLOT RESULTS - "SIGNALS"
.............. JA1118
EXCERPTS FROM STEVEN B. CARLSON DEPOSITION ....................... JA1119
ii
DEPOSITION OF STEVEN B. CARLSON .................................................. JA1154
DERENIAK
et al., Infrared
Detectors
and Systems,
pp. 86-7 .......................
JA1175
JA1179
SPICE
SIMULATION
SIGNAL
PLOT RESULTS
- "TRIGGER"
SPICE
SIMULATION
SIGNAL
PLOT
- "NO TRIGGER"
RESULTS
..............
....... JA1180
EVANS'
TEST CIRCUIT
SCHEMATIC
DIAGRAM,
PART
1...................
JA1181
EVANS'
TEST CIRCUIT
SCHEMATIC
DIAGRAM,
PART
2 ...................
JA1182
EXCERPTS
FROM
MODERN
EXCERPTS
FROM
MERRIAM-WEBSTER
CURRICULUM
VIDEO
VITAE
OF WILLIAM
OF LLOYD
C. RAPER
CASE MANAGEMENT
COMPARISON
DICTIONARY
PLAN
SCHEMATIC
OF ELECTRONICS
ONLINE
MASSENGILL,
......... JA1183
DICTIONARY
...... JA 1200
PhD ........................
DEMONSTRATION
.............................
AND ORDER .............................................
CIRCUIT
DIAGRAMS
JA 1215
JA1242
JA 1243
...............................
JA1255
TEXT KEY .....................................................................................................
JA1270
PRODUCT
JA 1277
LITERATURE
FOR PIRs ...........................................................
HEATH ZENITH INSTRUCTION
MANUAL
FOR THE REFLEX
SL-5315-A
PULSE COUNT MOTION SENSOR LIGHT CONTROL
........ JA1334
NIPPON CERAMIC
INSTRUCTION
MANUAL
FOR PIR PASSIVE
INFRARED
ENERGY CONTROL
SWITCH ...............................................
JA 1342
JENSEN
JA1343
AND McCAVIT
EXCERPT
RELEVANT
OF RAPER
CLAIMS
DECLARATION
DEPOSITION
................................................
..........................................................
OF U.S. PATENT
iii
NO. 5,598,066
............................
JA1359
JA1367
EXCERPT
OF LANDIS
OF PATENT
CLAIM
ON MECHANICS
DRAFTING
................................................................
JA 1374
r
COLOR-CODED
COURT'S
CHART
FINDINGS
DEPICTING
THE
TRIAL
FOR_ CORRESPONDIN,_
/
STRUCTURE
OF "[FIRST]
AND '*CONTROL
CIRCUIT
U.S.
PATENT
NO.
Nilssen
v. Magnetek,
Applied
Medical
Surgical
(May
6,225,748
Inc.,
Reources
Corporation,
15, 2006)
EXCERPTS
........................................................................
L999 WL 982966
Corporation
_F.3d
..................
OF U.S.
SENSOR
MEANS i'
MEANS".
.......................................................
__,
(N_D. Ill. 1999) ........................
v. United
2006
WE
3................................
PATENT
NO.
5,598,066i
iv
JA1383
JA1385
JA1394
States
132504
'.............................................
JA1403
.............................................
JA1421
CM/ECF
- DC V2.5
(October
2005)
- Docket
Report
Page
APPEAL,
U.S.
Middle
District
CIVIL
DOCKET
District
Use
PROTECTIVE-ORDER,
(Nashville)
#: 3:04-cv-00160
Only
Date
Filed:
02/27/2004
DESA IP, LLC v. EML Technologies
LLC, et al
Assigned
to: District Judge Aleta A. Trauger
Demand:
$0
Jury Demand:
Plaintiff
Nature of Suit: 830 Patent
Cause:
Jurisdiction:
35:0101
Patent
Infringement
STAY
Court
of Tennessee
FOR CASE
Internal
BROWN,
1 of 15
Federal
Question
Plaintiff
DESA
IP, LLC
represented
by. James R. Higgins,
Jr.
Middleton
Reutlinger,
PSC
2500 Brown and Williamson
401 S Fourth Avenue
Louisville,
Tower
ICY 40202-3410
(502) 625-2728
Fax: (502) 561-0442
ATTEST &N_
Email: jhiggins@middreut.com
LEAD ATTORNEY
ATTORNEY
TO BE NOTICED
CERTIFY
A TRUE COPy
Cler_
O.s. oiaac_ Cour_
Middle District of Tennessee
Robb S. Harvey
Waller, Lansden,
Dortch
Nashville
City Center
511 Union Street
Suite 2100
Deputy Clerk
& Davis
Nashville,
TN 37219
(615) 244-6380
Emaih
LEAD
robb.harvey@wallerlaw.com
ATTORNEY
ATTORNEY
Brian
TO BE NOTICED
Patrick
McGraw
Middteton
Reutlinger,
PSC
2500 Brown and Williamson
401 S Fourth Avenue
Tower
Louisville,
ICY 40202-3410
(502) 584-1135
Fax: (502)
561-0442
Email: bmcgraw@middreut.com
ATTORNEY
TO BE NOTICED
Richard
G. Sanders,
Jr.
Waller, Lansden,
Dortch & Davis
511 Union Street
JA 0001
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CM/ECF- DC V2.5 (October2005)- DocketReport
Page2 of 15
Suite2100
Nashville,TN 37219
(615)244-6380
Email: rick.sanders@wallerlaw.com
ATTORNEY
Robert
TO BE NOTICED
Theuerkauf
Middleton
Reutlinger,
PSC
2500 Brown and Williamson
.401 S Fourth Avenue
Louisville,
KY 40202-3410
Tower
1502) 584-1135
Email: rtheuerkauf@middreut.com
'ATTORNEY TO BE NOTICED
V°
Defendant
EML
Technologies
LLC
represented
by Angus M. MacDonald
Townsend,
Townsend
& Crew,
Two Embarcadero
Center
8th Floor
San Francisco,
LLP
CA 94111
(415) 576-0200
Email: ammacdonald@townsend.com
TERMINATED:
11/08/2004
LEAD "ATTORNEY
ATTORNEY
TO BE NOTICED
Iris
Mitrakos
Townsend,
Townsend
& Crew,
Two Embarcadero
Center
8th Floor
San Francisco,
(415)
LLP
CA 94111
576-0200
Email: ismitrakos@townsend.com
LEAD A TTORNE Y
ATTORNEY
TO BE NOTICED
Leonard
J. Augustine,
Jr.
Townsend,
Townsend
& Crew,
Two Embarcadero
Center
LLP
8th Floor
San Francisco,
(415)
CA 94111
576-0200
Email: ljaugustine@townsend.com
LEAD ATTORNEY
A1TORNEY
TO BE NOTICED
Roger
L. Cook
JA 0002
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Page3 of 15
Townsend,
Townsend
& Crew,
Two Embarcadero
Center
8th Floor
San Francisco,
(415) 576-0200
LLP
CA 94111
Email: rlc@townsend.com
LEAD A77"ORNEY
ATTORNEY
TO BE NOTICED
Steven Allen Riley
Bowen Riley Warnock
PLC
1906 West End Avenue
& Jacobson,
Nashville,
TN 37203
(615) 320-3700
Email: sriley@bowenriley.com
LEAD ATTORNEY
ATTORNEY
TO BE NOTICED
Nathan E. Morgan
Bowen, Riley, Warnock
PLC
1906 West End Avenue
Nashville,
(615)
& Jacobson,
TN 37203
320-3700
Email: nmorgan@bowenriley.com
ATTORNEY
TO BE NOTICED
Defendant
Costco
Wholesale
Corporation
represented
by
Angus M. MacDonald
(See above for address)
TERMINATED:
11/08/2004
LEAD AITORNEY
ATTORNEY
TO BE NOTICED
Iris Mitrakos
(See above for address)
LEAD ATTORNEY
ATTORNEY
Leonard
TO BE NOTICED
J. Augustine,
Jr.
(See above for address)
LEAD ATTORNEY
ATTORNEY
Roger
TO BE NOTICED
L. Cook
(See above for address)
LEAD ATTORNEY
ATTORNEY
TO BE NOTICED
JA 0003
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923
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CM/ECF - DC
V2.5
(October
2005)
- Docket
Report
Page
Steven
Allen
4 of 15
Riley
(See above for address)
LEAD ATTORNEY
ATTORNEY
Nathan
TO BE NOTICED
E. Morgan
(See above for address)
ATTORNEY
TO BE NOTICED
Date
Filed
Docket
#
02/27/2004
02/27/2004
1
2
Text
COMPLAINT
w/att'd
exhibits
A:B (Summonses
in the amount
of $150,
Receipt
#97254
CORPORATE
LLC
DISCLOSURE
(af) (Entered:
(af) (Entered:
S'FATEMENT
03/01/2004)
NOTICE 'oflCMC
set for 11:00 a.m. on 4/26/04
(at') (Entered:
03/01/2004)
04/07/2004
4
MOTION
by pltf for attorneys
& Brian P. McGraw
of good standing)(PHV
04/16/2004
(Entered:
R. Higgins
04/07/2004
7
of Good
Patrick
04/09/2004
8
ORDER
0b)
Standing
of Good
McGraw
from
by Judge
before
R. Higgins,
Jr.,
Judge
Robert
filed by pltfDESA
Trauger
J.
04/07/2004)
(jb) (Entered:
Standing
IP, LLC
(jb) (Entered:
A. Trauger
granting
for Robert
04/07/2004)
filed by pltfDESA
USDC/ND/IL
Aleta
(Entered:
IP, LLC for James
filed by pltfDESA
from USDC/WD/KY
CERTIFICATE
IP,
to appear pro hac vice (w/attached
fees paid) (jb) Modified
on
Standing
from USDC/WD/KY.
6 1 CERTIFICATE
03/01/2004)
04/07/2004)
of Good
J. Theuerkauf
04/07/2004
James
Theuerkauf,
certificates
CERTIFICATE
fee paid
filed by pltf DESA
3
5
Filing
,
02/27/2004
04/07/2004
issued)
IP, LLC for Brian
04/07/2004)
motion
for attorneys
James
R. Higgins, Jr. [4-1], for Robert J. Theuerkauf
[4-2], & Brian P. McGraw
to appear pro hac vice [4-3] by pltfDESA
1P, LLC. EOD 4/9/04 (cc: all
counsel)
(dlt) (Entered:
04/09/2004)
i
04/21/2004
PROPOSED
Agreed Order
tts answer or other response
extending
time until 4/23/04 to file and serve
to t_ltf's complaint
(kin) (Entered:
04/21/2004)
04/22/2004
AGREED
4/23/04
ORDER
for defls
compl_nt.
04/22/2004
04/23/2004
PROPOSED
04/23/2004)
10
MOTION
(w/attached
by Judge
(EOD
4/22/04)
Initial
by defts
Aleta
to file and sere
Case
(cc: ,fallcounsel)
Manffgement
for attorney
certificate
A. Trauger
its answer
IRoger
ofgoodlstanding
extending
or other
time until
response
(km) (Entered:
Plan and Order
L. Cook
to appear
) (jb) (Entered:
to pltf's
04/22/2004)
(,jb) (Entered:
pro hac vice
04/26/2004)
JA 0004
_,**,,_-//off tnmd.circ6.dcn/cgi-bin/DktRpt.pl?650525229072425-L_923
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CM/ECF- DC V2.5 (October2005)- DocketReport
Page5 of 15
04/23/2004
11 CERTIFICATE of GoodStandingfiled by deftsfor RogerL. Cook from
USDC/ND/CA (jb) (Entered:04/26/2004)
04/23/2004
12 ANSWER by deft EML TechnologiesLLC to complaint[1-1] (jb)
(Entered:
04/23/2004
13
04/26/2004
14
04/26/2004)
ANSWER
04/26/2004)
CLERK'S
by deft Costco
RESUME:
Wholesale
Initial
to complaint
Case Management
[ 1-1 ] (jb) (Entered:
Conference
held 4/26/04.
Initial disclosures
by 14 days. Discovery
ddl set for 4/1/05. Jury Trial set
for 12/13/05.
PTC set 12/1/05 at 1:30 p.m. Est. 4 days. Simultaneous
] designations
by 7/31/04. Markman
Briefs ddl 8/31/04. Responsive
briefs
ddl 9/24/04. Markman
hearing set 12/20-21/04.
the Court's use at hearing.
Mr. Harvey to revise
04/26/2004)
04/26/2004
15
Ptys to prepare expert
ICMO. (jb) (Entered:
for
ORDER by Judge Aleta A. Trauger setting case for trial. Jury Trial is set
for 9:00 a.m. on 12/13/05.
Joint Proposed
Pretrial Order ddl is set for
11/28/05. Pretrial Conference
is set for 1:30 p.m. on 12/1/05. Motions
in
limine shall be filed by 11/17/05. Responses
shall be filed by 11/28/05.
(cc: all counsel)
(EOD 4/26/04) (jb) (Entered:
04/26/2004)
04/26/2004
16
05/12/2004
17
ORDER
L. Cook
4/26/04)
by Judge Aleta A. Trauger granting motion for attorney Roger
to appear pro hac vice [10-1] by defls (cc: all counsel)
(EOD
0b) (Entered:
04/26/2004)
RETURN
OF SERVICE
unexecuted
Technologies
LLC. Service
of State. Served by certified
Tracer
05/18/2004
05/18/2004
Sent-No
PROPOSED
05/18/2004)
18
Record
- attempted
as to deft EML
attempted
via State of Tennessee
Department
mail. Returned
undelivered
w/notation
of Delivery.
Case Management
(jb) (Entered:
Plan and Order
05/12/2004)
(jb) (Entered:
CASE MANAGEMENT
PLAN AND ORDER approved
by Judge Ateta
A. Trauger: The ddl for the ptys to amend the pleadings
and to name
additional
ptys will be 90 days prior to the ddl for fact discovery.
Nonexpert Discovery
ddl is set for 4/1/05.
6/30/05. A two-day
Markman
hearing
Expert Discovery
will be conducted
ddl is set for
on December
20
and 21, 2004. Dispositive
Motion filing ddl is set for 8/31/05. Responses
ddl is set for 30 days of service of the motion for summary
judgment.
Reply briefs ddl is set for 14 days of service of the response.
Jury Trial is
set on 12/13/05. Pretrial Conference
is set for 12/1/05 at 1:30 p.m. (cc: all
counsel)
(EOD 5/19/04) ***Amended
See Order #79*** (jb) Modified
on 04/19/2005
(Entered:
05/19/2004)
05/19/2004
07/08/2004
Docket Modification
fUtility Event) ; Markman
on 12/20/04 (bbj) (Entered:
07/22/2004)
19
MOTION
by deft for attorney
vice. (w/att'd
07/08/2004)
certificate
Angus
of good
hearing
M. MacDonald
standing)
(PHV
set for 9:00 a.m.
to appear
fee paid)
pro hac
(dlt) (Entered:
JA 0005
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07/O8/2004
20 CERTIFICATE of GoodStandingfiled by deftsfor AngusM.
MacDonaldfrom the USDC/NDCA. (dlt) (Entered:07/08/2004)
07/12/2004
21 ORDERby JudgeAleta A. Traugergrantingmotion for attorneyAngus
M. MacDonaldto appearpro hac yice [19-1] for defts EML Technologies
LLC & Costco
Wholesale
(cc: all;counsel)
(EOD
7/13/04)
(jb) (Entered:
I
07/13/2004)
08/02/2004
22
NOTICE,by
(Entered:
08/23/2004
08/25/2004
pltfofdesignated
Stipulated
AMENDMENT
24
Protective
Order
TO DESIGNATED
5,598,0661
08/25/2004
of U.S. Patent
No. 5,598,066
(jb)
08/04/2004)
PROPOSED
23
terms
by pltfDESA
STIPULATED
TERMS
IP, LLC.
PROTECTIVE
(gi) (Entered:
OF US PATENT
(hv) (Entered:
ORDER
08/24/2004)
NO.
08/26/2004)
by Judge
Aleta
A. Trauger
re
manufac_ring,
technical,
licensifig, research
& development,
financial,
marketing,
sales, or other commercial
information.
(cc: all counsel)
EOD
8/26/04 0av) (Entered:
08/26/2004)
08/26/2004
08/27/2004
STIPULATION
AND PROPOSED
Order
briefing
schedule
(km) (Entered(08/26/2004)
25
STIPULATION
AND
ORDER
bY Judge
continuing
Aleta
"Markman"
A. Trauger
that the time
for the parties to file their "Markman"
briefs shall be extended
from
8/31/04 to 9/10/04 and that the time for the parties to file their rebuttal
"Markman"
briefs shall be extended
from 9/24/04 to 9/30/04.
(EOD
8/27/04)
09/10/2004
26
(cc:
OPENING
CLAIM
(w/attached
and attached
09/10/2004
27
PROOF
copies
exhs.
09/30/2004
09/30/2004
28
29
30
OPENING
32
of declarations
of Elliot B. Aronson
1-37) (jb) (Entered:
09/13/2004)
& Roger
by defts
RESPONSIVE
CLAIM
BRIEF
of opening
claim
construction
L. Cook
brief
and
09/13/2004)
BRIEF
09/13/2004)
FILED
by pltf(w/attached
CONSTRUCTION
(Entered:
10/01/2004)
NOTICE
by defts of late filing
declaration
09/30/2004
by defts
(jb) (Entered:
REBUTTAL
08/27/2004)
FILED
MARKMAN
BRIEF
of the original
exhs.
FILED
signature
A-D)
by defls (jb)
pages
to the
of Roger L. Cook & Elliot B. Aronson
in support ofdefts'
claim contruction
brief (w/attached
copies of declarations)
(jb) (Entered:
31
(Entered:
CONSTRUCTION
(jb) (Entered:
declarations
responsive
09/30/2004
(km)
OF SERVICE
declarations
09/10/2004
all counsel)
10/01/2004)
MARKMAN
of R. Dennis
BRIEF
Cornett)
FILED
by pltf (w/attached
(jb) (Entered:
copy of
10/01/2004)
NOTICE
by pltfof late filing o!fthe original signature
page of the
declaration
of R. Dennis Corne_tt. DESA will file the signature
page.
(Entered:
(jb)
10/0t/2004)
JA 0006
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10/01/2004
33 DECLARATION by pltf of R. DennisComett(jb)
10/01/2004
34
LETTER
(copy)
from Roger
(Entered:
L. Cook re: the ptys have
10/01/2004)
been
unable
to
agree on an expert to advise the court at the Markman
hearing scheduled
for 12/10/04; defls propose
selection of a technical
expert such as
10/05/2004
35
Professor
Lloyd
Massengill
ORDER
by Judge
Aleta
(w/attachments)
A. Trauger:
(jb) (Entered:
10/04/2004)
The ptys shall make
another
attempt
to agree upon a court expert and, if not, to propose
additional
experts for
the court's consideration
by 10/15/04.
The court will not choose as an
expert any lawyer or any person
(co: all counsel)
(EOD 10/5/04)
10/18/2004
10/20/2004
36
37
associated
with Vanderbilt
(jb) (Entered:
10/05/2004)
JOINT MOTION
by pltf, deft for extension
of deadline
to file a joint
proposal
for a technical
advisor to the Court for the Markman
hearing
to and including
10/22/04 (bbj) (Entered:
10/20/2004)
ORDER
deadline
38
11/05/2004
39
40
brief
ORDER
(km)
by Judge
contruction
alternative
ORDER
(Entered:
10/21/04)
Aleta
11/08/2004)
A. Trauger:
and the Cornett
motion
granted. Brief
(kin) (Entered:
41
(EOD
MOTION
by defts to strike Desa's alternative
claim contruction
and the
Cornett Declaration
or, in the alternative
for leave to file a sur-rebuttal
claim
11/08/2004
[36-1].
CLERK'S
RESUME:
Telephone
conference
held 10/27/04 ; Status of
parties agreement
on expert to assist the Court at the Markman
hearing.
C/R: none (km) (Entered:
10/27/2004)
Markman
11/08/2004
up
by Judge Aleta A. Trauger granting motion for extension
of
to file a joint proposal
for a technical
advisor to the Court for the
Markman
hearing up to and including
10/22/04
(cc: all counsel)
(km) (Entered:
10/21/2004)
10/27/2004
University.
for leave
Motion
Aleta
A. Trauger:
(EOD
Parties
Desa's
alternative
[39-1 ] is denied,
to file a sur-rebuttal
shall be filed by 11/17/04.
11/08/2004)
by Judge
to strike
Declaration
Markman
11/8/04)
but the
brief
[39-2]
is
(cc: all counsel)
shall jointly
transmit
to Dr.
Carnal as soon as possible copies of all the briefs filed in this case. By
separate order, the court is allowing
the defts to file a sur-rebuttal
brief,
and this brief, as well, should be furnished
to Dr. Carnal as it is filed.
Parties
shall file with the court
Dr. Camal
all counsel)
11/12/2004
42
' NOTICE
Court's
11/12/2004
11/15/2004
43
44
a notice
by pltfto
expert,
the Court
Dr. Charles
regarding
Carnal
MOTION
by defts
for extension
brief
(Entered:
1 I/15/2004)
(km)
ORDER
that lists every
and the date on which it was
(km) (Entered:
11/08/2004)
by Judge
Aleta
materials
(km) (Entered:
item transmitted
(EOD
granting
Markman
11/15/2004)
to
(cc:
to the
11/15/2004)
motion
brief
11/8/04)
transmitted
of time to file sur-rebuttal
A. Trauger
until 11/24/04 to file sur-rebuttal
(cc: all counsel)
(km) (Entered:
transmitted.
Markman
for extension
[43-1].
(EOD
of time
11/15/04)
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(October
2005)
- Docket
Report
Page
11/23/2004
45
NOTICE
by defls to the Court regarding
materials
transmitted
Court's expert, Dr. Charles
Carnal (gi) (Entered:
11/24/2004)
11/24/2004
46
NOTICE
by dells of late filing
declaration
of Clyde
"Kip"
the declaration
of Elliot
pltfs rebuttal Markman
(w/attached
copies
11/24/2004
47
DEFENDANTS'
11/29/200:4)
12/02/2004
48
MOTION
12/03/2004
12/06/2004
49
50
of ihe original
M. Brown,
B. Aronson
Brief. Defts
of declaration
0 (km)
(w/attached
ORDER
Aleta
by Judge
(Entered:
BRIEF
conference
proposed
A. Trauger
to establish
order)
granting
(km)
motion
conference
to establish
pre-hearing
all counsrl)
conference
set for 3:30 p.m. on 12/10/04.
(dlt) (Entered:
12/03/2004)
NOTICE
OF FILING
protocol
pages
to the
signature
pages
to
11/29/2004)
M_
by pltf for pre-hearing
to the
in support orders'
sur-rebuttal
to
will file the signature page promptly.
SUR-REBUTTAL
Markman
Hearing
12/02/2004)
signature
Jr. and original
8 of 15
for Markman
protocol
for
(Entered:
for pre-hearing
Hearing
by defls of, the original
(km) (Entered:
signature
[48-1 ]. Telephone
EOD
12/3/04
pages
Declaration
of Clyde "Kip" M. Brown Jr, and the original
to the Declaration
of Elliot B. Aronson
in support ofdefts'
Markman
Brief. (hv) (Entered:
12/06/2004)
(cc:
to the
signature
pages
sur-rebuttal
to
E
12/10/2004
51
CLERK'S
RESUME:
Telephone
conference
held
12/10/04
; Discussions
were heard on how the Marksman
hearing should proceed.
Marksman
Hearing on 12/20/04
is cancelled
next T/C is set for 12/21/04 at 1:00;
C/R: none (km) (Entered:
12/13/2004)
12/21/2004
52
CLERK'S
procedure
12/21/2004
53
ORDER by Judge Aleta A. Trauger:
As a result of the telephone
conference
held w/counsel
on 12/21/04,
the pltf may respond to the
dells' contentions
in the Report filed 12/21/04 by 1/7/05, the dells may
supplement
12/21/04
12/21/2004
54
55
REPORT
BRIEF
by the same
ddl and,all
(cc: all counsel)
by parties
proceed!ngs
01/07/2005
RESUME
Telephone
conference
held on 12/20/04.
for Markman
Hearing.
(dlt) (Entered:
12/21/2004)
Markmaaa
on conference
(gi) (Entered:
IN RESPONSE
procedure.
parties
(dlt) (Entered:
may
Update
reply by 1/14/05.
on
EOD
12/21/2004)
to establish
procedure
for Markman
12/21_/2004)
by pltfDESA
(w/att'd
IP, LLC to dells'
exhibits
A-D)
(dlt) (Entered:
01/07/2005
56
MEMORANDUM
by dells
(Entered:
01/10/2005)
01/14/2005
57
REBUTTAL
by defts to pltfs
(Entered:
01/18/2005)
01/18/2005
58
CORRECTED
REBUTTAL
by'. dells to pttfs
9rocedures
[47-1] (km) (Entereil:
01/19/2005)
regarding
brief
arguments
on
01/10/2005)
Markman
Procedure.
(dlt)
on markman
procedure
[55-1]
(jb)
i
brief
on markman
I
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02/01/2005
59 MOTION by deftEML TechnologiesLLC for leaveto file amended
answer(w/attachedcopyof declarationof RogerL. Cook andExhibit
A/amendedanswerw/attachment)(km) Modified on 02/02/2005
(Entered:02/02/2005)
02/01/2005
60 ORDERby JudgeAleta A. Trauger:Pltf shall furnishto the deftthe
written directtestimonyof any expertwitnesswho will testify for the pltf
atthe Markmanhearing,which submittalsshallbe in compliancewith
Local Rule 12(c)(6)(c)of this Courtby 2/I 1/05.Deft may deposeanyof
theseexpertwitnessesby 3/18/05.By 4/1/05,the deftsshall furnish
Local Rule 12(c)(6)(c)written direct testimonyof any expertwitnesses
whomthe deft intendsto havetestify atthe Markmanhearingto thepltf.
Pltf mayhaveuntil 5/6/05within which to deposethe defenseexpert
witnesses.By 5/13/05,thepartieswill file a joint plan that setsout the
anticipatedproof to bepresentedby eachsideatthe Markmanhearing.
To the extentthatthe termsof this Orderconflict with the Case
ManagementPlanandOrder(DocketNo. 18),this Order shall
predominate.(EOD 2/2/05)(cc: all counsel)(km) (Entered:02/02/2005)
02/02/2005
61 ORDERby JudgeAletaA. Traugergrantingmotion for leaveto file
amendedanswer[59-1].Clerk shall file Exhibit A. (EOD 2/2/05)(cc: all
counsel)(km) (Entered:02/02/2005)
02/02/2005
62 ' AMENDED ANSWER [12-1] by deftEML TechnologiesLLC
(w/attachments)(km) (Entered:02/02/2005)
02/04/2005
PROPOSEDStipulationandProposedOrderto modify deadlinesin
Court'sOrderof 2/1/05(km) (Entered:02/07/2005)
02/07/2005
63 ORDERby JudgeAleta A. Trauger:Partiesshall furnishto the courtappointedexperts,Dr. CharlesL. Carnal,copiesof all submittalsmade
pursuantto this Court'sOrderentered2/1/05(DocketEntry No. 60),
showingin the certificateof servicefor eachsubmittalthatthis hasbeen
accomplished.(EOD2/7/05)(cc: all counsel)(kin) (Entered:02/07/2005)
02/07/2005
64 STIPULATION AND
deadlines
ORDER by Judge Aleta A. Trauger:
Certain
set forth in the Court's Order of 2/1/05 are modified
as outlined
in this order.
(EOD
2/8/05)
02/18/2005
65
STATEMENT
of Steven
(Entered:
02/22/2005)
02/18/2005
66
STATEMENT
02/22/2005)
of Mark
02/18/2005
67
STATEMENT
02/22/2005)
of William
02/18/2005
68
STATEMENT
02/22/2005)
of Thomas
03/01/2005
69
03/02/2005
70
(cc: all counsel)
B. Carlson
J. Patterson
(km) (Entered:
02/08/2005)
filed by pltf (w/attachments)
filed by pltf (km)
(Entered:
C. Raper
filed by pltf (km)
(Entered:
J. Paulus
filed by pltf (km)
(Entered:
DESIGNATION
OF EXPERTS
by pltf (dlt) (Entered:
DESIGNATION
OF EXPERTS
by defts (gi) (Entered:
(kin)
03/02/2005)
03/02/2005)
JA 0009
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- DC V2.5
(October
2005)
- Docket
Report
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03/10/2005
71
NOTICE
by pltfDESA
IP, LLC of filing the joint appendix
(w/attachments
and disk) (km) (Entered:
03/11/2005)
03/22/2005
72
DEFENDANT'S
03/22/2005)
03/22/2005
73
JOINT SUBMISSION
RE JOINT
settlement:
Parties are negotiating
Supplemental
Designation
to the Court for approval;
parties
appropriate
to file the settlement
revised
fact discovery
of experts
(km)
10 of 15
(Entered:
STATEMENT
regarding
prospects
for
revised discovery
ddls to be submitted
believe that it would be more
Statement on or before 10 days prior
ddl (gi) (En_tered:
to a
03/23/2005)
r
03/23/2005
74
ORDER
by Judge Aleta A. Trauger:
Defense counsel shall immediately
send a copy of this submittal to Dr. Carnal. EOD 3/23/05 (cc: all counsel)
(dlt) (Entered:
03/28/2005
04/04/2005
75
76
03/23/2005)
MOTION
by deft Costco
discovery
requests
(km)
(Entered':
by Judge
Aleta
A. Trauger
ORDER
Wholesale
to enlarge
time to respond
03/29/2005)
denying
motion
to enlarge
respond to pltfs discovery
requests
[75-1 ] without prejudiceteleconference.
(EOD 4/5/05) (cc: all counsel)
(krn) (Entered:
04/05/2005)
04/07/2005
77
MOTION
(Entered:
04/08/2005
78
ORDER
by defts to extend
04/08/2005)
by Judge
Aleta
to pltfs
deadlines
A. Trauger
in Court's
granting
order
motion
time to
requires
date 2/1/05
to extend
(km)
deadlines
in Court's order date 2/1/05 [77-1]. Deadline
for defts to serve upon pitf
is written direct testimony
of its experts that will testify at the Markman
hearing shall be extended
from 4/8/05 to 4/12/05. (EOD 4/8/05) (cc: all
counsel)
04/15/2005
(km) (Entered:
PROPOSED
04/08/2005)
STIPULATION
Court's Case management
i 04/18/2005)
04/18/2005
79
STIPULATION
80
ORDER
plan and order
ORDER
by Judge
Case Management
Discovery
extended
ddl reset for 6/30/05; Dispositive
until 9/16/05. See Order for other
MOTION
by deft EML
attorney
Iris Mitrakos
(w/attached
proposed
(kin)
Technologies
5/19/04
Plan and Order
(Entered:
deadlines
(kin)
Aleta A. Trauger
in Court's
(cc: all counsel)
to modify
dated
deadlines
4/19/05)
05/05/2005
AND
AND
in
(Entered:
to modify
dated
5/19/04:
mtns filing deadline
extended
deadlines.
(EOD
04/19/2005)
LLC,
deft Costco
Wholesale
for
to appear pro hac vice (PHV fee paid 5/11/05)
order) (krn) Modified
on 05/12/2005
(Entered:
05/O5/2O05)
05/05/2005
81
CERTIFICATE
of Good
filed by defts (km)
05/06/2005
82
Standing
(Entered:
for Iris Mitrakos
from
USDC,
ND/CA
05/05/2005)
LETTER
from Clerk to Iris Mitrakos
(km) (Entered:
05/06/2005)
re $75.00
pro hac vice motion
fee
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05/11/2005
83 NOTICE of Hearing:Telephoneconferenceresetfor 3:00on 5/11/05.
(km) (Entered:05/11/2005)
05/12/2005
84 ORDERby JudgeAleta A.
Mitrakos
counsel)
05/13/2005
05/16/2005
PROPOSED
Agreed
(Ent+red: 05/13/2005)
85
MOTION
(PHV
05/16/2005
86
Trauger
granting
to appear pro hac vice [80-1]
(km) (Entered:
05/13/2005)
Procedure
for Markman
by defls for attorney
fee paid)
(w/attached
of Good
USDC,
filed by defts
ND/CA
Nathan
proposed
CERTIFICATE
motion
by defts.
Standing
to appear
(km)
pro hac vice
05/16/2005)
J. Augustine,
(km) (Entered:
(cc: all
Order
(km) (Entered:
for Leonard
Iris
5/13/05)
Proceedings
E. Morgan
order)
for attorney
(EOD
Jr. from
05/16/2005)
05/17/2005
87
ORDER by Judge Aleta A. Trauger
granting motion for attorney Nathan
E. Morgan
to appear pro hac vice [85-1] by defts EML Technologies
LLC, and Costco Wholesale.
(EOD 5/17/05) (cc: all counsel)
(km)
(Entered:
05/17/2005)
05/19/2005
88
AGREED
ORDER by Judge Aleta A. Trauger that the parties have
reached agreement
on a proposed
Markman
procedure
to construe the
identified
disputed terms of the patent-in-suit
as outlined in this order;
Telephone
conference
is set for 11:00 on 5/19/05 to set dates for the
Markman
heating.
05/19/2005)
05/19/2005
05/26/2005
89
90
(EOD
5/19/05)
(cc: all counsel)
(km)
(Entered:
CLERK'S
RESUME:
Telephone
conference
held 5/19/05
Carnall on phone also; Parties to check witness schedules
Markman
heating;
ORDER
by Judge
10/25/05
(Entered:
to continue
05/26/2005)
06/06/2005
91 PLAINTIFF'S
06/06/2005)
06/08/2005
92
C/R: none
Aleta
(Entered:
A. Trauger:
for 3 days.
Designation
LETTER
(COPY)
for pltf, returning
(km)
05/20/2005)
Markman
(EOD
of rebuttal
; Dr. Charles
to schedule
hearing
5/26/05)
experts
set for 9:00 on
(cc: all counsel)
(km)
(km) (Entered:
from CT Corporation
to Robert Theuerkauf,
counsel
the cover letter, settlement
agreement
addressed
to
Edward
Small, "unable to accept process for an indiv with a company
whom we are the agent" (km) (Entered:
06/08/2005)
06/10/2005
06/13/2005
07/07/2005
STIPULATION
AND PROPOSED
settlement
agreement
(km) (Entered:
93
094
STIPULATION
AND
ORDER
Order requiring
06/13/2005)
by Judge
Aleta
A. Trauger
DESA IP, LLC to produce
settlement
counsel)
(km) (Entered:
06/14/2005)
agreements.
STIPULATION
ORDER
Court's
AND
[PROPOSED]
Case Management
LLC, EML
Technologies
Plan and Order
LLC,
Costco
pltfto
(EOD
to modify
dated
Wholesale
5/19/04
for
produce
requiring
6/14/05)
deadlines
in
by DESA
Corporation.
pltf,
(cc: all
IP,
(Harvey,
JAO011
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07/08/2005
O9j
Robb)
(Entered:
Minute
Entry
Telephone
07/08/2005
for proceedings
Conference
pretrial
AM before
for 8/31/2006
by Judge
07/11/2005
07/07/2005)
09__66
ORDER:
09:00
Page12of 15
Judge
(kin,)
Aleta
A. Trauger
(Entered:
PM before
A. Trauger
District
Judge
on 7/8/I05. (km,)
Aleta
A. Trauger.
(Entered:
LLC,
07/11/2005)
AND [PROPOSE
D ] ORDER to modify deadlines
in
Case Management
Plan dnd Order dated 5/19/04 by DESA IP,
EML
Robb)
Technologies
(Entered:
LLC,
Cbstco
Wholesale
Corporation.
098
10/17/2005
09_9_9 NOTICE
by DESA IP, LLC, EML Technologies
Corporation
of Joint Presentatioli
of Additional
REVISED
STIPULATION
AND. ORDER to modify deadlines
in Court's
Case Management
Plan and Ordei" re 977 and 94. Signed by Judge Aleta
A. Trauger on 7/12/05. (krn,) (Efitered:
07/12/2005)
I
MarkmanHearing
(Sanders,
Richard
LLC, Costco Wholesale
Authority
Bearing
Upon
) (Entered:
10/17/2005)
10/17/2005
0100
10/18/2005
0101
ORDER granting
during Markman
10/18/05.
(km,)
10/26/2005
O102
Minute Entry for proceedings
held before Judge Aleta A. Trauger
Markman
Hearing
held on 10/25/2005
and continued
to t0/26/05.
MOTION
for Leave to Videotape
Demonstrations
During Markman
Hearing
by DESA IP, LLC. Responses
due by 11/3/2005 (Sanders,
Richard)
(Entered:
10/17/2005)
Reporter
10._
Becky
10/27/2005
to next
(krn,)
(Entered:
***Deadline
terminated:
entered
Reporter
Becky
Cole.)
(jb) Modified
Continued
10/26/05-
and ruled
:
on
10/27/2005)
Markman
and continued
Hearing
to next day. (jb) (Entered:
Minute Entry for proceedings
held before Judge
Markman
Hearing held on 10/27/2005.
Evidence
(Entered:
:
(Court
10/26/2005)
held before Judge Aleta A. Trauger
on 10/26/05.
Evidence
entered and
day. (Court
Ob). (Entered:
findings
O105
Cole.)
10/27/2005
Evidence
O104
100 Motion for Leave to videotape
demonstrations
Hearing.
Signed by Judge Aleta A. Trauger
on
(Entered:
10/18/2005)
Minute Entry for proceedings
Markman
Hearing
Continued
continued
10/31/2005
(Harvey,
07/11/2005)
07/12/2005
10/27/2005
set
Signed
09_.7_7
STIPULATION
Court's
10/27/2005
:
07/11/2005)
Order due by 8/28/2006.
Jury Trial set for 9/12/2006
District Judge Atleta A. Trauger. Pretrial Conference
01:30
Aleta
held before
held on 7/8/2005.
from the bench.
(Court
10/27/2005)
Aleta A. Trauger
:
entered-Court
made
Reporter
Becky
Cole.)
(km,)
10/28/2005)
ORDER
following
Markman
hearing:
the claim
terms
are to be
interpreted
as "means plus function"
terms and the disputed claim terms
are construed
in accordance
with the court's oral ruling. Signed by Judge
Aleta
A: Trauger
on 10/31/05.
(,hv) (Entered:
11/01/2005)
L
11/02/2005
O106
WITNESS/EXHIBIT
LIST
prepared
by Deputy
Clerk.
re: 103 Markman
JA 001'2
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11/17/2005
0107
Page13of 15
) Modified
on 11/9/2005
STIPULATION
of Judgment
Pursuant
LLC, EML Technologies
LLC, Costco
(Attachments:
# 1 Appendix
Robb) (Entered:
11/17/2005)
11/21/2005
0108
(bb-j,).
STIPULATION
II# 3_Appendix
: This Court
just reason for delay and expressly
directs
infringement
in accordance
here with. This
does retain jurisdiction
over this matter in
claims which may be reinstated.
See Order
signed by Judge
11/21/2005)
11/21/2005
***Civil
11/21/2005
O
Aleta
A. Trauger
Case Terminated.
Docket
entry
number
11/29/2005
12/05/2005
Remark
O 109
: Exhibits
0110
placed
Corporation.
12/05/2005)
MEMORANDUM
35 U.S.C.
in exhibit
0111
Responses
in Support
Section
0112
(km,)
is no
(Entered:
in compliance
room.
(km,)
with Rule 58
(km,)
(Entered:
due by 12/22/2005
of 109 MOTION
11/29/2005)
(Cook,
for Attorney
28 and Rule 11 of the Federal
Rules
Wholesale
Roger)
Fees
Under
of Civil Procedure
Corporation.
(Cook,
DECLARATION
of Roger L. Cook in Support of Motion for Attorneys
Fees filed by EML Technologies
LLC, Costco Wholesale
Corporation.
(Attachments:
# 1 Exhibit A# 2 Exhibit B part 1# 3 Exhibit B part 2# 4
Exhibit B part 3# 5 Exhibit C# 6 Exhibit D# 7 Exhibit E# 8 Exhibit F# _9
Exhibit G# I_Q Exhibit
(Entered:
12/05/2005)
12/05/2005
that there
of Civil Procedure.
filed by EML Technologies
LLC, Costco
Roger) (Entered:
12/05/2005)
12/05/2005
determines
11/21/2005)
entered
Rules
III)(Harvey,
MOTION
for Attomey
Fees Under 35 U.S.C. Section 28 and Rule 11 of
the Federal
Rules of Civil Procedure
by EML Technologies
LLC, Costco
Wholesale
! (Entered:
12/05/2005
(Entered:
108 is hereby
and/or Rule 79(a) of the Federal
(Entered:
11/21/2005)
IP,
entry of judgment
of nonCourt shall retain and hereby
its entirety, including
any
for terms and conditions.
on 11/21/05.
(km,)
11/03/2005)
to FRCP 54(b) by DESA
Wholesale
Corporation.
I# 2_ Appendix
OF JUDGMENT
(Entered:
DECLARATION
H# L1 Exhibit
of Lloyd
I# 122Exhibit
Massengill
in Support
J)(Cook,
Roger)
of Defendants'
Motion
for Attorneys
Fees filed by EML Technologies
LLC, Costco Wholesale
Corporation.
(Attachments:
# 1 Exhibit 1# 2_Exhibit 2# 3 Exhibit 3# 4
Exhibit 4)(Cook,
Roger) (Entered;
12/05[2005)
12/05/2005
0113
DECLARATION
of Steven
Riley:in
Support
of Defendants'
Attorneys
Fees filed by EML Technologies
LLC,
Corporation.
(Cook, Roger) (Entered:
12/05/2005)
12/05/2005
12/06/2005
Ol1.__4 PROPOSED
0
ORDER
re: 109 MOTION
U. S. C. Section
28 and Rule
(Cook,
Roger)
Modified
Docket
Entry
for Attorney
11 of the Federal
Text on 12/6/2005
#'s 110 and 111, In the future,
JA
Costco
Rules
Motion
Fees
Under
35
of Civil Procedure.
(dt). (Entered:
please
for
Wholesale
remember
12/05/2005)
to add the
0013
https://ecf.tnmd.circ6.dcn/cgi-bin/DktRpt.pl?650525229072425_L_923_0_
1
2/13/2006
CM/ECF- DC V2.5 (October2005) - DocketReport
following
Page14 of
to your signature
line: s/(attorney
name
that filed the pleading)
on the pleading
and the certificate_ of service. Also, Docket Entry #114,
a proposed
order. In the future, please file proposed
orders as an
attachment
to the motion. These pleadings
DO NOT need to be refiled.
(dt) (Entered:
12/09/2OO5
Ol15
ORDER:
12/19/2005
0116
011"/
MOTION
0118
by Judge
OF APPEAL
(Harvey,
Robb)
Appeal
of Appeal
12/21/2005
for Attorney
NOTICE
USCA
Aleta
Fees
109 is referred
A.Trauger
(Entered:
to the Magistrate
on 12/8/05.
as to 105 Order,,
(km,)
(Entered:
108 Order, by DESA
IP, LLC.
12/16/2,005)
Fees received
filed by DESA
$ 255 receipt
IP, LLC,
BILL OF COSTS by EML
Corporation.
(Attachments:
(Entered:
is
12/06/2005)
Judge.
Signed
12/09/2005)
12/16/2005
(hv)
Technologies
# 1 Exhibit
number
(Entered:
108048
re 116 Notice
12/20/2005)
LLC, Costco Wholesale
A# 2 Exhibit B)(Cook,
Roger)
12/21/2005)
12/22/2005
01l__9
RESPONSE
in Opposition re 109 MOTION
for Attorney
Fees Under
U.S.C. Section 28 and Rule 11 of the Federal Rules of Civil Procedure
filed by DESA IP, LLC. (Harvey,, Robb) (Entered:
12/22/2005)
12/22/2005
O120
MOTION
to Stay re 109 MOTION
for Attorney
Fees Under 35 U.S.C.
Section 28 and Rule 11 of the Federal
Rules of Civil Procedure
by DESA
IP, LLC.
15
Responses
due by 1/9/2006
(Harvey,
Robb)
35
(Entered:
12/22/2005)
12/22/2005
0121
NOTICE
MOTION
of Filing by DESA
for Attorney
Fees
the Federal
(Harvey,
12/22/2005
0122
Rules
Robb)
IP, LLC re 120 MOTION
to Stay re 109
Under 35 U.S.C. Section 28 and Rule 11 of
of Civil Procedure
(Entered:
(Attachments:
# 1_ Proposed
Order)
12/22/2005)
MEMORANDUM
in Support of 120 MOTION
to Stay re 109 MOTION
for Attorney
Fees Under 35 U.S.C. Section 28 and Rule 11 of the Federal
Rules
of Civil Procedure
Exhibit
App.
A)(Harvey,
filed by DESA
Robb)
(Entered:
IP, LLC.
(Attachments:
# 1
12/22/2005)
12/29/2005
Appeal Record Packet re:l 16 Notice
012___33 Certified and Transmitted
to Federal Circuit Court ofAppeals(mk,
) (Entered:
12/29/2005)
12/30/2005
O124
NOTICE
by DESA
(Entered:
12/30/2005)
IP, LLC re'l
18 Bill of Costs
(Harvey,
of Appeal
Robb)
F
12/30/2005
0125
TRANSCRIPT
prepared
by OCR Becky Cole before Judge Trauger, re
116 NOtice of Appeal(This
document
is NOT available
on-line. Contact
the court reporter
at 615-726-4,893
to purchase
10/25/05 (mk,) (Entered:
12/30/2005)
12/30/2005
0126
TRANSCRIPT
prepared
by OCR
Becky
a copy)
(Vol
Cole re 116 Notice
1 on
of Appeal
(This document
is NOT available
on-line. Contact the court reporter
at
615-726-4893
to purchase
a copy) (vol 2 held 10/26/05)
(mk,) (Entered:
12/30/2005)
JA 0014
https://ecf.tnmd.circ6.dcn/cgi-bin/DktRpt.pl?650525229072425-L_923
0-1
2/13/2006
CM/ECF - DC V2.5 (October2005) - DocketReport
Page15of 15
12/30/2005
0127
__ TRANSCRIPTpreparedby OCR Becky Colere 116Noticeof Appeal
(This documentis NOT availableon-line. Contactthe courtreporterat
615-726-4893to purchasea copy)(vol 3 held 10/27/05)(mk,) (Entered:
12/30/2005)
12/30/2005
Ol29 TRANSCRIPTREQUESTby DESA IP, LLC
/25-27-2005
before Judge
! (Entered:
01/09/2006)
01/03/2006
O128
__
' ORDER
on 1/3/06.
01/10/2006
O130
01/24/2006
O131
0132
120 Motion
(xc: 6CCA
Clerk)
for proceedings
re 116 Notice
to Stay.
(km,)
Signed
of Appeal
by Judge
(Entered:
Appeal Remark
re 116 Notice of Appeal:
Court of Appeals
as case 06-1168
(mk,)
held on 1(rnk,)
Aleta
A. Trauger
01/03/2006)
Notice of docketing
(Entered:
01/10/2006)
in Federal
Joint MOTION
to Stay Proceedings
on Bill of Costs by EML
Technologies
LLC, Costco Wholesale
Corporation.
Responses
due by
2/10/2006
(Attachments:
# _!_Exhibit Joint Proposed
Order to Stay
Proceedings
01/25/2006
granting
Trauger,
on Bill of Costs)(Morgan,
ORDER granting
Signed by Judge
01/25/2006)
Nathan)
(Entered:
01/24/2006)
131 Motion to Stay proceedings
on defl's bill of costs
Aleta A. Trauger on 1/25/06. (mk,) (Entered:
JA 0015
httDs://ecf.tnmd.circ6.dc,
n/o._i-hinff'lk-tlT_,t
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IIra lilflllmIllfl$11_I
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US005598066A
United
States
W]esexnann
Patent
[19]
et aL
[54]
TWO-LEVF__
SYSTEM
[75]
Invvmors:
SECURITY
David
LIGHTING
L WtL_mmnn,
A.csig_ee_" Heath
Company,
_
Feb.
Related
Date
Benton
Harbor, Mich.
6-_995
Coafiauafion of Set. No. 282,986, JLd.29,199_
[5l]
Ia_' CL e .............................
8/1994
_/1995
Jan. 28, 1997
Diong_ta/ ...................
HaalaraetM ..................
340/$67
250/338.1
PATENT DOCUM_N'TS
5/1994
Japan
PUBLICATIONS
Re_m_ l../ghgag,
"L_ng
and operating
_L200
set[c,s
_ghr_ fixtm_, Aug. _995.
Heath Zenith,
=InsmJ_ons
Sensor
for the Refl_
Light _nZtol",
SL--53 ! 5--A Pulse
1989, 'Iltle Page a_d
Nippon Ceramm Co,, Ltd., "PIR Pa._ve
InfraredEaetlp
d
Conh-ol Switch I_
Manual", Undated but published
m¢,"_ than 1 year befians ttu: filing- date or _ze p_at
application Sa'. I_. 08/282,986,
filed on Jul. 29, 1994.
Data
[53]
of Patent:
OFI_R
Count M_fion
p_. 2-15.
Appllcaffon
5,598,066
Number:
FOR_GN
13, 1996
US.
[45]
Bemon
[2U App,. No.: 600,823
[22]
Patent
_j49,330
5.414,263
Township, _
County, MidL;
Daniel F.. SchaaL Michigan
C_ty, Ind.,
Wai-Shing
P. Ko, Kwat Chtmg, Hong
Kong
[73]
[11]
alumdoned.
Pr/mary
[521 US. C1. ...............
[58]
Fteld
of Seard]
315/154.
HOSB 37/02
3IS0,$9;
315/[55;
250/338.1;
....................
1.55, 159; 34(Y469:
315/1_.9;
250/238
315/149, 153,
250/238. 338.1.
Exam/ner---4P, NaerL Pascal
E:a_niner--Haissa
Phi]ogcrte
Attorney,Agen_ or Fimt--._tc.h,
Even, Tabin & Ftanne_',d
[57]
A]_S_CT
221
[56]
Refereecea
U.S. PATENT
3.177,399
q_lg65
4.225.808
911980
4,233,545
11/1980
4_¢d)4.52a 8/1986
4,_0278
1/1989
4,823,051
4/1989
4.843.283
¢S/1989
_q43312
7/1990
4.982.176
L/l_gl
5,015394
5/]99l
5,231,373
711993
5,293,097
3/1994
Cited
DOCLrMENTS
Mmtcun .................
Saracen! ................
Web_,r ¢_ eL ...............
Kvflicld _ M.................
Tax_gud et el ................
Ymmg ...................
Cl_u .......................
_r_dcx .......................
Sd_au-z ...................
Hoberman e_ eL ...............
F._cm:m _ al. ...................
Elwell .......................
315/20l
3 t5/154 X
31_q54t X
2.q0/342
250/33_ !
315/155
315/153
_1
3,4(_2
340/567
340/4.69
3!5/154
lhatlhclamp iskek_offinth_absem:_of _on
of motion
at nig_ A us_--inifiau_d
ov_d_
mode is also p_ovid_d,
which cause_tl_Imnp tocantinuou_lyoperateat 95% of full
brightm_
until the phomcr._ _-a:c_
daylightor untilthe
disables the ovetrk_ _de.
13 Claims, 4 Drawing
JA 0016
Sh_t_
U.S.
Patent
Jan. 28,
1997
Sheet
JA 0017
I of 4
5,598,066
U.S. Patent
Jan. 28, 1997
Sheet
5,598,066
2 of 4
Fig.2a
,o
•*
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DETECTOR
°#
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,TURN ON,AMPLIFY,
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OUTPUT
[110V
!
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67
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POWER
JA0018
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SUPPLY
U.S.
Patent
jan.
I
,
,
,
PHOTOCELL
28, 1997
Sheet
PULSE
COUNT
5,598,066
3 of 4
ON-TIMER,
&
TURN-ON
INHIBIT
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-r-
53
I
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I
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ICaa
DAYLIGHT
57 .......
DETECT
& RESET
'
I
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+5V
]
!
_I.
--
MANUAL OVERRIDE
'
58
JA 0019
II
U.S.
Ja..
Patent
28, 1997
Sheet
5,598,066
4 of 4
Fig. 3
VOLTAGE
NODE 67
TIME
:!::=,"T2 T1
_r
NODE 68
I
v
I
TIME
VOLTAGE
ACROSS
LAMP 18 FOR
THREASHOLD
T1
VOLTAGE
ACROSS
LAMP 18 FOR
THREASHOLD
T2
,,'/-_,
,
I
j
L
"1
I
\
-
,,
TIME
J
TIME
illlJS_
%
JA 0020
5,598,066
1
TWO-LEVEL
2
SECURITY
SYSTEM
LIGHTh-NG
This is a continuation,
of application
986, filed Jul. 29, 1994, now abandoned.
FIELD
OF _
Sec
No. 08/'282.
5
SUMMARY
INVENTION
The presentinventionrelates
generallyto n secmSty light
and, more spanificnlly, to a _emJty light of the type which
l0
has a Fassive infrareddetectorthat controlsthe levd of
• _on
as a functionof detectionof motion.
BACKOROUN'D
An objectof the present invention is tberefore to provide
a light which has a lamp with a _atively
long operational
lifetime, and which can provide illuminedonthroughout
the
night in a manner
which is highly energy efftciem and is
suitable
for securityapplications.
OF THE
INVF3q'flON
OF THE
INVENTION
The objects and por[xx_s of the invention.including
those
set forthabove,are met by providingan apparatuswhich
includes:
a seasm agangement
for detecting a predetermined condition exmrnal m the apparatus;
a lamp which can
emit a first
levelof iIIumination
and which can emita second
l_.l
of _un_natiou
sab*tamlaRy
great_ than the fax level
of i.lluminstino, the lalnp being capable of switching rapidly
u,s_]for 15 from the first level of illumination
to the second level of
sectaityzzeassuch as psrking lots. which use a conventional
illuminaRon;mad a control circuit
coupled m the lamp and
hi#a pressuresodium (HPS) lamp or rnercm'yvapor (MV)
responsive to the sensor arrangement for causing the lamp to
lamp. Tlm HPS and MV
lamps ere normally operated
emit light at tbe first level of illumination
in the absen_
of
continuouslyat f',.tll brightness,except wbeta they are off. 2o the Frederermined
condition,
and for causing the lamp to
They have traditionally
been prefenr.d
for securityapplicaemit light st _e second level of illumination
tn response
to
tions because
they have significantly
longer operational
detection of the predetemsinedcondition.
li?climcs than incmadesr.ent lan_ps, for example on the mdcr
of 15,000 to 20,I_IX) hours in enmparimn
m a_ut 2,000
BRIEF DF_.SCRIIWrION OF THE DRAWINGS
hours for an incandescent
lamp. "I_ longer operational
A pro_rr_
embodiment of th_ print
invention is
lifclime ia important not only to optlmisethe security effect
deaorihedin detail h_dna_qer
with reference to theaccomo1' thebulb,but alsobecause of the ineonverrleece
involved
There arc knowo
s_,,udtylights,commonly
panying drawings, in which:
in frequentlychanging incandescentlights
which may be 20
feet in the _z on a light pole in a parking let. W_ile tbesc
FIG. I is an exploded diagrammatic
perspective view of
known
lights have been generally
adequate
for their 30 a secority light which ombndies the present invention;
intended purposes,they have not bean satisfactory
in all
FIGS. 1A and 2B, are a schernstic
diagram of an electrical
circuit
provided within the securitylightof FIG. 1; and
More specifically,
MV lamps are not the most energy
FIG. 3 is a timing diagram
showing
waveforms
of
cl_nle.nt
lamps available,
and may be made illegal
in thenear
setectnddan_l
signalsfrom the c'trcuit
of FIGS. ZA
furoreformost or allapplic_tious.
Further,itisnot consid- 35 21:1.
e.red appropriate to operate MV or HPS lamps under _ontrol
of a sensor so that they are ourmnlly off but are turned on in
DEr.MI.F_.D DESCRIVrION
re.sponse m detection of a condition such as motion, both
because HPS and MV lamps usually rake severalminutes to
Referring to FIG. 1, a security light wMch embod'ms the
progressively
turn on, and because ta_ming them on and off _a presant invention
is designated
generally with teferenco
numeral 10. Tbe ligin 10includes
a metalchassis
12 that can
degrades them and should thmefore be done only once a day
in order to nptimize their operational
lifetimes.
be fixedly mounted no a wall, and a metal reflector 13 which
is fmediy mo,,_ted on the cha_s.
Two spaced lamp hotders
m_ o_¢_ ¢_1_,ng seoufit 7 |ighks which have h_
eal_ty totuna
onr'_diy. Theselights
_._Uy Imvean 16 and 17 are Frilly secured to file chassis 1_ and projcst.
reflecitmsttdesn¢_
lamp, a padre
infi-aed detector, a photocell
45 forwardlythrough respe.cfive spaced openings in _
tor 13. Az inean¢isseeat
lamp18,whichis a g_ally
asd a circuit whith keeps _he lamp off whoa the photocell Is
cylindrical quartz-halogen
lamp, has each end suppor,.ed by
_
daylight, whlch kneps the lamp cff at nigla in the
an outer end of a reapecti've one of the lmlders 16 and 17, the
abs¢¢tco of det¢ctinn of motion by the inflated _
and
lamp 18 having et en_h end, a oma_ant which cl_'tdc'_l¥
which _
file lamp on fo_ra preteen'mined
tim_ thmrval in
mspm_¢ to dc¢cc_an of motinn a_ hight These haown un_s
also have an ovemde
mode. which a user can act_te
by
tm-Mng pow_ to il_ unit off and no with a wall switch that
_pplies
dcca'ical
power to the light. In the override mode,
the liglx is forced con_ly
on until the user disables the
ovenJde rnod_ using the wall sw'R_, or until the photocell
detectsdaylightand disablesilm oven'/demode.
so engages a further
contactprovided
assot_tcd holdcas16 or 17.
5_
This farter
type of securitylightis ty#caRy not used in
applications such as a cammeacinl or industrial parking lot
wimm light must be provided continmmnly at night, because
of the power consamptiou
of the immadascant
bulb_, and _0
Imcause of t_ somewhat limited life of incandescent
bulbs
on a respective
one of the
TWo U-shaped brackets
20 and 21 each have legs with
outer ends _c_y
secured to the air.sis
12, and a housing
22 is fixedly mounted
on the brakkets 20 and 21. The
housing 22 has an opening 23 in a curved war portion on its
front side, and a cm'v_
lens 26 is disposnd
within tim
housing 22 so as to extend acrossthe opening.The housing
22 has within it a cir_it, which isdepicted in the sohomatic
diagram of FIG. 2, and which is described
in mote dntal]
later.The cilenR within the housing 7,2 is elecL"i_dly
coupled to tim contactson the lamp holders 16 and 17 by
wires which are not visiblein FIG. L and is coupled to a
coaventiortal extenml anurce of 120 VAC power by wir_.
which are not visiblein FIG. 1.
wfum operated at full brightness.
The lifetime of a typical
ita:andes_at
bulb may be only about 2000 hours.In addition, th¢_e lamwn security lights are either fully off or fully
on, and are thus not suitablefor use in certain s_tmty s5
The :u=_'itylight
10 fiutherlncludes
a cover 31 having a_
applications where the light most be emitting flluminailon in
edge pordon 214thatc_ be fixedly coupled to the peripheral
order m be useful.
edge of chassis 12 in any mdtable and conventional nmun_,
JA 0021
5,598,066
3
4
for example by not-illustratod screws. The cover 31 has a
_a c_pu_
c_m_ txna_._t
ut a_ gn_ta_ the _
&l
awvnd wall portion with an opening 32 that is closely
adjacent and aligned with the opening 23 in Lhehousing 22
when the cover 31 is mounted on chasm 12. The housing 31
also incIuc_s _ _
_
portion 33, through which
light from the lamp 18 czn pass in direetiorut forwardly,
downwardly and to both sides. In order to minimize the
eat/y of moisture into the light 10, a rubboror foam gasket
(not_sibleinFIG.1) is_vided on thesideof t_fiphm-al
edge 34 fang the ehas._ 12 m _ to extend mound the
1o mukiplesatmSs,the switch 53 being manually set toselect
enli_ _pheral
edge. and this gasket ereat_ a seal between
oneof_everal predeterm_d on-time inW.a'vals,wkich in the
the cover 31 emdchassis12 whim cover 31 is imlnLlndon
ptefen'ed emhodime_t include 1, 5 and 20 minute intervals.
chas_ 12, Lt_'wisc, a forum or tuber _kct (not visible in
The cc-llm_r and n,m-_a [nhf_it
portion
52 alsoinc_des
FIG. 1) is pfovidad oc the rear side of the curved wall
c_cuttry which, for a Im_detmninnd t_e interval after 120
portion
ofcover31 soastoextend mound opening32, and t_ VAC powerisinitially
applied
tothecircuit
ofriGS.2A a_d
whe_ cover 31 is i_ta2]eA on _
12 th_ gaskete_gagcs
7.B,
inhibits
activation
ofthelamp 18inre_pometosignals
the front side of heus_ 22 in order to create a seal.
from_
Q1 and Q2.
Turaing to FIGS. 2A and 2B, the quartz-halogen lamp 18
A photocell 56 detects the prostrate or absev._ of dayL__own for c]a.dty,but afidafrom lamp 18 thoendre circ_
Hght, and has amoetlrat coupled to a daylight detect andreset
of PIC_S.2.Aand7,Bis dLspo.u:dwLthinthc ho_
22. Th= 2o potion 57 of the citcair.
cir_t o_ HGS. 2A and 2B receives standard 120 VAC
power at 41, and a power _q_pty section 42 provides both
120 VAC and 5 VDC power to the rest of the eircntL
JA 0022
al
5,598,066
S
6
provide a plc_ssnt level of light thst will "accent" a home or
s_urky area in tho absence of any detection of' motion.[_
_[thc
ssnsom QI and Q2 detect modon,]then th-e
_-d_--dF_-pordon 43, turn.on in.'bit portion
46, amplification
lind filtering portion 47, window _mparamr portion 4_ and
pulse count po_on S1 will actua_ the on-_mer mad_m-on
inhibit portion 52, which in turn will produce a different
thr_hold voltage at node 61 that eatm_ the triac to be mrn_l
on duringmost of each half-wave cycle, so that the lamp 18
_its about 95% of tim Hghtwhich it would emit at 1_II
brighmc_s. The lamp emits _ds higher level of light for a
timeinterval
selected
by theuserusingswitch53, andthan
which is applied tho romp signal at endc 68 _
having a
the on-thner and Un'n-on_aibit portion changes its oxapot in
fualm" ixtpm to which isappliedthe t_shdcl
voltag_ at
orderto t_tumthe_Id
voltage
at nod= 61 to tl_ vak¢
ende 6L Whan _ ramp volm_ exc_mds the mreslmid
at which the lamp produces the lower level of HghL
voltage, the compa,-at_ prodnecs an outlmt which tunas on
A conventional quartz-halogen
lamp ofthetypeshown at
thc uiac Q3, so that tim 120 VAC input _
is applied to i_
lg in FIG.I,when operated at 100% of full brightness,
has
the lamp l& For example, wtth refca_ncc m IWG.& wlmn tim
l_shold voltage at node 61 has a level TI, the _
is
an _ted
life time of about2,000hours.WI_n operated
_..Sl_etivaiy at 95%, 90%, 65%, ned _
of full bfiginnc_
turned
on when tlmramp voltage
atnode 68xr.adlcs
level
T1.FIG.3 showstheconcsponding
voltage
across
lamp18
thasamelampMs respective exp.:ted
operational
lifetimes
2o ofahout 3,5C0 hours, 6j0g hours, 389,000 hours(thcored.
for thres_ld TL wbem the voltage across the lamp is
eat), and 6,384,000 hours (thc_¢odcal). Thus, when opm'ated
dining the tint lmrtion of ahalf wave until llm uiae is turned
on, and then the _dac applies the half wave voltage ac_oss
the
in tbe ancem mode at _0% d _ull brightness, with infreqaent
lamp dm'ing the remalndcr of that half wavc. FIG. 3 also
pc6ods of briefoperation
at95% of fullbdghtoc,_, the
showsthe resulting voltage across lamp lg for a different
qum't_-halogen lamp 18 will enjoy a rclallvaiy long apen15onailifetinm.
thresholdT2. By compatingthe voltages across the lamp 18
creat_l
onthac_acitorC16 atonde68 isshown inFIG.3.
Itwillbencr_ thateachpulseorramp ofthawaveformat
on_ 68 hegira
justafter
andissyncl_enlz_l
toa respective
cms£mg point of tbe sine wave at node 67. The ramp
wa_
atnode 68 s_-'ves
as the outputof the zero 5
cm=i_ detect portion
66.
A_
angl_ conll'ot por_t172 of the cirtmit is rc_nsive to the outpm of din z=m crossing dr_cct pordon 66 and
tha tkre_old voltage at mode61 for acraadng a tdac Q3 in
a tdan posen 73. More apeclflcal.ly, the _se angle control
p_aon 72 includes
a compm'atm"
IC2d havingone input to to
for r.ln'c_olds TI and T'_ it will be cvkiant that more. enetD"
_
toelmminionma_ng RalIzi_ht
mode.tha_nvit_
is supplied to the lamp 18 when using thresbeld T1 than
62 h mmaally settointo'clapt
the connection between tho
wlmn t,tsing
threshold
T_ asa r_uh ofwhichthelamp18
dayli_at
detect
amlreset
portlon
57and thereaiator
RM. A_
will emit more light at thmslmld T1 than at threshold T2. 3o a resu/t,
the photocell 56 does notautomatically mm the
When the th_shdd voltage'at node 61 is changing, the
lamp 18 on at night,
and doesnotproduc_dudng the nig_
capacitor C17 causesthc.tlnrd_old voltage
atnode61 to
a threshold
voltage at node 6].whichworld causethelamp
18 to be mined on at any level of brighmess. Const_w.nfly,
c/xange pmgresalvely rather than instmnatmousiy from one
voltag_ k-vel _o aonthcr.Thus, with [dm'_xe t_ FIG. 3, if tlic
e_adt Is changing the threshold voltage at node 61 from
mmicn]rnpa_cu/ar, when modon isdetccr_:dat
tl_m-dmor and turn-on
inhibit
circuit
52 ram,tho
level TI to'1'2, the wave2onn of the voltag_ actuss lamp 18 _ night,
will ekanZe progressively fi'omthatshows inFIG.3 fc_
lamp 18 on at95% offull
bri_amess
forthetimeintm-vai
thteslmld 1"2 to that shown inFIG. 3 for threshold 1"1,sollmt
which tI_userhas sale_tod
usingswitch53, after
which
Imnp 18 istnrnodcompletely offuntilmotion isagsi_
thc lamp 18 incrc_ca pmgrcssivaly in b_ghthc_s dndng thc
change. Z"Ms f_mm in t_ed
to as a "slowtorn-on"
4o d_teeteMdu_
the ruShY.It will be noted llmt. even in the
feature.
When Rim lamp 1.8 b being tin'ned
on to full
"full bdght" mode, the ]ampis lmmaL!yoperatodat lcv=/s of
bdghta_,mpacit_rC_ _ re.aistm's
R_ andI_8 retard btighmesswhichnever exceed 95% of its tree full bdght_.SS.
the set_ug of node 61 to the fall brightness triter Im_.l.
When tlm lamp is tun_ off, diod* D19 rapidly charges
The thtnl mode ts the maonal ovarklc mode. whhth is
capacitor C._ so that the lamp _tdnguishes almost imme- _5 connoned by _ manual ovea'a_ potion _ of the _uit
diaml:?.Alhhongh the progressive ct=_Be in bfighlP,ms for
of riGS. ZA and 2B. Dudng the day. the photocefl _ kanps
slow nma-on tak_ sc_zalcycles of the sine wave,,
the
tha manual oveaide pordon $8 in a reset ccmlifics, aml t_
change appears to the human eye m be almost immmaneous.
manual oven'ide por'don _ wghcamin in the xcsat enndi_ion
Tbe _
shown in FIGS. 2A and 213 iscapable of
at night unless it is inmminnal]y actmlted by a necr. The usc:r
operafiug
thesecurity
lightI0 ofFIG.I intlir¢¢
difl'_ _o _uatcs _ mature/ove=ide
poaion 58, wlnm 120 VAC
modes ofoporafion,
nan_lya motion semlngancent
mode,
powc= L_belng mpltEed to the ci=uit of HGS. 2A and 2B
a minionsccsingfullbright
mode. and a manualoverride • by turning off 120 VAC powtr atxl then promptly turningtt
mode..
The as_ _.2_:ts
oneoftha two motinnsm_ag mm_
back on, for c_amplc asi_g a smodard wallswi__.hcontrolusing tho _-,,_
swlw.h 62 (HOS. ZA sod 2B. sod can
ling AC power to tha s_oaity li_t 10. Whon the manual
actuate
theovelT[de
mode fl'om
a standard
wallswitch tlrat
55 overdde portion _1 is m:mamdin this mannm', R f_ces t_
Issupplying
120 VAC power to the light 10, in order m
on-dmor end t_m-on inhibit p(mion 5"-tto inoduce an m_ont
ovc,uld* operation in either motion teasing
mode.
dganl that turns tha _
18an at 95% of full br_glmams,
and the manual override por_on _8 will keep tl_ lm_p l#t
Starting with tim modon senalng accont mode, this mode
cot_nuctmlyon atthisIn_
level until d_ manual
is sc]ccmd by scatMg tim switch 62 so that the it alcctdcal]y
tmm'ide portion ._,8is r=,,et by mm of two c..'_n_. The first
coopte, tl_ daylight demct and mant portion g7 to tl_
event occms ff the us_ switc/ms the urd_ bank to camof the
rcaistor R34. In this nmdc, d_e photocell $6 maintains at
two motion sensing modes by agmn usingthowallswitch
to
node 61 during daylight hours a llm_shold voltage which
toggle 120 VAC power off sodon.Tha secondevent is tha
ke_s ttm lamp IS off. At night, the phOt_¢tli _ cans_ a
of dawn, bantmsc dayEght causes the phot(_ll
diffamnt
tlncshold voltage to appear at node 61,which in
_ toreact
tl_manual ovm'kl=poa'lion
._.
mm cameothetdacQ3 m be tam_ on fgra limited
po_on
of e_c2t_f w'aw cycle, m that _lamp
t8 emits about 50%
Altho_ghtl_pr_fc=ed
em
,hadLm_ usessmincandes:em
of tim light tlmt it would emit at Pailbrighmess, in order to
lamp whichisa quartz.halogen
bulb,itwm bc r_ognized
JA 0023
5,598,066
7
that other incandcsecat
including converrtional
household
light bulbs.
8
lamps could eltcmath, ely be used,
floodlight bdl_
and iacaadescem
lamp 10clog capable of switcldng rapidly _rom said lltst
level of flluminaRon
to said second level of illumination; and
Although a particular
preferred embodiment
of the Invention has been disclosedin detailforillustrative
purposes,it
will bc recognized
that vaxiatiom
or modificationsof the
disclosedapl_ratus,
includingtherearrangementof parts,
lie
within the scope of th= present hnv_ca.
The embodiments
of the invention in which ma exclusive
5
property or pdvfleg¢ is claimed are defined as follows:
tO
1. An apparatus comprising:
fa'_t .sensor mc=ns fo_ detecting
a fost predetonnmod
coaditi_
ex_cmai to said app_'atns, said first predctermim_ condition being motion rela_ve m raid first
sensor tar.amof a person or an objectseparatefrom
said app _-'ams;
second sensor means for dnmc_g
a second predetorrnirnxl condition, saRI scrond pred_mrmiaed
condition
being a/nedetoxminnd
level of light extm'nai to said
apparatns;
2O
sensor m_am for detectinga pred_:rminnd coudi_on
_xtm'nalto saidappm'ams;
a lamp which can emit a first level of illumination
and
which man emil a second levd of illumination
substan-
a tamp which can emit a first level of illumination _d
which can emit a second loved of ilh;mimlion
subst.an-
tially grantor than said _
level of ilhimimation,
said
lamp capable d switching x-_pidly from said fn's_ level
afUlurainat2on to said second hivel ofinumin_on;
and z_
dallygr=atcrthansaid first level of i11m_natioa,
said
lamp being cobble of switchingrapidlyfrom saidfirst
level of ilhmain_on to saidsecond level of illumina-
control circuit means coupled to said lamp and responsive
to said _t and second sensor means for cousin B said
lamp to emit light at said first level of illumination
in
response to said second prcdezm'mine.d eccsdidon in the
zbs_ac¢ of said frtst predetnrmin=d condition, mad for 30
tion;and
controldrcadtnmans coupled to saidlamp and responsive
t_said _
me_as fur causing saidlamp to emitlight
at said fi_t level of ilhnniandon
in tbo _
of
causingsaid lamp to emit lightat said secoDd l_vel of
iQuminatfonin r_onsn to detectionof _dd first
pre-
det_
coadition,l=,id _
eondifio_ and for causing _d lamp te
emit li#ztat _a/d s_eond level of iIlaminationin
re_poexc to detection of said txedetctmlmd
condition;
_
light sanaing means r_lxmaive
to light _
to said
appar'_us
for canting
said control r,2c_t
means to
maintain said lamp in an off eonditino
du_ag daylighi
hou_ a_d to canse said lamp to crait Hght at said first
level of ".'llumina_oa in tlm absence of both daylight and
4o
2. ,_a app_,-atns accoa'th_ to elm= l, w_=e_ _ilid co1_"ol
circuit
mman.s_ndud=s n_ans forcansing saidseennd level
of illumin_on to be _m_ly
95% of fullbrighiacss
of said lamp.
_
3. An apparatm acoo_ling to claim 1, wh_"=in said sensor
menm _
a passive infrared detector.
4. An apparatusaccording to _
I, whe_in
saidlamp
is a qaar_-halogen
lamp.
5. A_ _
as recited in ctaim 1, wtm_in said lamp
is adapted tobe electricaily
co_l_d
m a muree of clecaical 50
pow_
and wMmin said s_lecd_ly
aetuable manual ove_dd_ mcaas is ant'oared by togglingt_ electrical
power
sourco to said apparatus,
said predelmmined
condition, s_d control _rcoit
means causing saidlamp to emit lightatsaid s_
levelof i/kmdnatlon
in response to dem_on
of said
predaternm_
conditionin the absence of daylight,
wkcrdn said control circuit means include* selectively
m:tuablemanual ovemde means for earning said lamp
to coadmmmly
emit _ht at said second Invd of
i/luminatJonby sde_vely
ovezddi_g said sensor
meam by m=ual
=:marion.
8. An eppamtns as rceir.ed in claim 7 farther including
meam
responsi,.¢
to dete_n
meres for _tam,_ically
ectzmblc ovcn_
meaz_
9. An appzrams comprising:
sensor n=ans for d_ing
6. An apparatuscomprising:
exmmai
_i_second sens_ meam
for detcating
a second prede_rmim_ condition,said second im:d=tcm_cd
condition
being a pred_erminod level
app--;
of daylight
by said light
deacmadng
said selectively
-a
level of ilhiminatio
ti_; and
of Hghi externalto said
JA 0024
a predetermined
ctmdidtm
to said apFuams;
_--_L;-:
_" "__::Z_=
n to *a';d second
level
-_-of illnmima-
5,598,066
9
10
response to detection of said predetermined condition,
wl_a'_in said cont_l eircuk rr_am is power_db7
an AC
voltage, and wherein said control clmuit means include
switching
means for selcctivaiy
pormitting
and prereelingti__plic_ioo
of _id AC vctU_e to saidIm_p
s
and means for causing said switching means to he
acumtcd fora seleaed portionof each halfwave cycle
of said AC voltage,s_.d portion of mid half waves
being grcatcrforsaid second levelof illumination
then
forsaid fast levelof iLImnination.
10. An apparatus comtrri_mg;
sensc_ means for aetee_g
external to said appurams;
a predetermined
Io
condition
a lamp which can emit a first level of illumination
and
which can also cn"dt a seco_l level of ilinminati_mIS
subsmmL_ly greaterthan said first
level of illumination,said lamp being capable of swimhin8 rapidlyfrom
said firsx
levelof illuminationm said second levelof
Ulumination;
comrdl ain:uit
means coupled tosaid lamp and r_ponslve
to mid sensor n'ma_ for eansing said lanap to _nit liglit
at said first level of illumination in the absmca of said
prcdet_ined
condition, and for causing _
lamp to
czmt lightat said firstlevel of fllu_l.inat_on
in tim
absence of saidpmdezzn_ainedcondition,end 1_reaus- 2s
ing said lamp to emit lightat said senend level of
illumination
in xnspom_ to den=_zionof said pz_I_crcondition, whexein szid ccmu'ol circuit meens is
powered by ma AC voltage and whe_'ia sam control,
circuit
mean includesswlmhing means forselectively30
pe'anitingand preventingthe appHcaZion of said AC
voltageto saidlamp and means forcausing saidswitchingmeans tobe actuatedfura selectedportionof each
halfwave cycleof saidAC voltage,said portionof said
half waves being greater for said secead level of 35
i11uminat/on
than forsaid Rrstlevelof iliuminariort;
and
a zeru cr_sing
dete_
eireait for deteerSng zero ere_ng
poin_ of said AC voltage,means for p't_uaing
a ramp
wavoform havingfor each halfwave of saidAC v_ltage
a ramp _e
which is initiated in response to _c_ion
4o
of the zero arosaingpoint f_r the half Wave, a enmparator which compares said ramp pulse toa tkrmhold
vol_age and which actor.s
said'switching
mem_ at a
pointin time when said ramp voltage first
exceeds said
threshold voltage,and means responsive
to _id sensor 45
f_3r c@asing _d first tln'esholti vol;ag_ to have a
first
valuein the absonce of said predetorntined
conditionand a second value in reaponseto detectionof said
pre_rXerrnined
condition.
11. An apparatus onmtntaing:
5o
sensor means for _
a fa'edctcrmincd
externalm said apparatus;
a lamp which can emit a first level
c_ndlti_
of llluminatinn
and
wMch can Rim emit a second level of iliamin_icm
55
substantially
greaterthan s_d _rst levelof iL.'uminat/on, said lamp being _apablu vf switr.hin8 rapidly from
said _r_t level of ilkuninafion
to saidsecond level of
illumination;
control_'cuitmeans coupled to saidlamp and responsive
f_
to said umsaz mem_ fez enasing s_id lamp to emit llg_
at said 6rstl_v,-1
of_
in the absence of s_id
predetermhed
condltlon,
andforcansin_
sa/d
lump
to
emit light
at said
second level
of Hlumin_on
in
response
to detcctinn
of s_d in'c_tcz'min_l
onnd_fion,
whor_in said controlc_cuk meatzsispowered by onAC
volrases, and wherein
said control aiteuitmeans
;
inch_s
switci'dng
means for select/relyperrnkr.ing
and preventing
the applicationof saidAC vol_g¢ to
saidlamp and means forcausing saidswitchingmeens
to bc actuatedfora selectedpofd_n of each halfwave
cycle of saidAC vcltege,said portion of said half
waves being greaterfor said second levelof illuminationthanforsaid first level of illurainatton;
a zero _-ressing detectcircuit for detecting zero crossing
points of said AC voltage, means for producing ramp
waveform havin8foreachhalfwave of saidAC voltage
a ramp pulse which isi_tiamd in resptmse m detection
of the zero cressing point for the half wave. a eomparatorwhich compares saidramp pulseto e threshold
•oltag_,m_I which actaatnssaidswitchingravensat a
point in time when the ramp voltagefirst exceeds said
tlucsb_Id voltage, and mc_
_.sponse
to said sensor
means for ca-using r'_d thaeshoM to have a Rrst valne in
the absence of saidpredeten_ned condition,and a
sex.oadvaitmin r_ponse to detect/onof saidpredatormined condition;
and
light sensing means responsive
to light ex_-_ai
to said
apparatus for d_dectingthe pmsenc_ end absence of
daylight,
saidcircuit
means includingmeans responsive to sald light sensing means for causing said
threshold voltage to have a third value different from
saidfirst
mad second values when said Hght _ensing
means is detecf.ag dnylighL
12.An apparatuscompfidng:
first
sensor means for detecting
a fir_predctc'cmincd
conditionexmrnai to saidappurams, said first
predeterminedconditionbeing motion relativeto said first
sensor mcaes of a person or an objectsepm_e
from
saidapparatus;
second _e_asor
memas fox detceting
a second predetermined coadit/on,
said second/n_'.detcrmined
condition
being a In'edeunTnin_ level of light external
to said
apparatus;
a lamp which c_u emit a first levelof illuminationand
which can _nita seco_
levelof illumination
substentiaily
greslsrthansaidfirst
level of ilaumin_cn, said
tamp capable of zwitchingrapidlyfrom saidill'St:
level
ofillumin_crn
to said second level of ilktmination;
and
control
elrcukm e,,sm
coupled to said lamp and responsive
to saidfL,
st and second sensormeans for causing said
lamp to emit light at saidfirst levelof illumiaalioa
in
response to said second psedet_mined
condition in the
absence of said grst p_.determincd
condition,and let
causing said lamp m emit lightat saids_:ond levelof
LIlnmina_ in responseto detectionof saidfirst
predctormincd condRion, said comzol circuit mcm_
includingseluelivaly
acmahie manual ovenSde mem_
for selectively overridingsaidRrst and second _r
means by manual actuation to cause said lamp to cn-dt
fight at said second level of flluminazion,
said manual
ovcnldc
mea_
including
means for disabling
s_:l
lamp in die abscmc of said sacond px'edmm'mlnnd
condition SRer said manual ove_cte means has been
_ec_e4,
wherein said control circuit n_enn_ include.s
means for gm-_'_ing
a pulse each time sa_d first
_aedete_,din_t eondiaon
is tietcctcd end fur ther ineludtug means for coun_ng said pulses and preventing
lamp _om entering illuminatio_
at said second level
unlesstwo o_ m_re p_Iscs _
coun_l.
13. An _pmams
comprising:
_zst sensor m_ns
for dctcctlnga firstpredetermined
o0nditioaaxm_zai to said appamm_ said first prede-
JA 0025
5,598,066
11
12
termined condition being motion relative to said first
sensor means of a person or an object separate from
said apparatus;
second sensor means for detecting a second predetermined condition, said second predetermined
condition
being a predetermined
level of light external to said
apparatus;
a lamp which can emit a first level of illumination and
which can emit a second level of illumination substantiaily greater than said first level of illumination,
said
lamp capable of switching rapidly from said first level
of illumination to said second level of illumination; and
5
10
control circuit means coupled to said lamp and responsive
to said first and second sensor means for causing said
lamp to emit light at said first level of illumination in
response to said second predetermined condition in the
15
absence of said first predetermined condition, and for
causing said lamp to emit light at said second level of
illumination in response to detection of said first predetermined
condition,
said control
circuit means
including selectively actuable manual override means
for selectively overriding said first and second sensor
means by manual actuation to cause said lamp to emit
light at said second level of illumination, said manual
override means including
means for disabling said
lamp in the absence of said second predetermined
condition after said manual override means has been
selected; and means responsive
to said first sensor
means for automatically
deantuating said selectively
actuahie manual override means in the absence of said
second predetermined
JA 0026
condition.
UNITED
STATES
PATENT
CERTIFICATE
PATENTNO.
:
DATED
: Jac, uary
INVENTOR(S)
: Wiesemann,
AND
TRADEMARK
OFFICE
OF CORRECTION
5,598,066
28,
1997
et
al.
It is certified that error appears in the above-indentitied
corrected as shown below:
ColLmm
9,
line
67,
delete
Col_
i0,
line
9,
ColLmm
i0,
lire
14,
"voltages,"
after
"producing"
delete
"voltage,"
patent and that said Letters Patent is hereby
insert
and
and
_itage--
insert
--a--
insert
--voltage--
Signed
First
therefor;
and
Day
of
there__or.
Sealed
this
April,
1997
AffeM:
BRUCE
Attesting
Officer
Comnti_
JA 0027
_io.et
LEHMAN
t_] P_ttt,ttt_
t.Id
T_'ttdl't..fk_
UNITED STATES DISTRICT
MIDDLE
DISTRICT
NASHVILLE
COURT
OF TENNESSEE
DIVISION
DESA IP, LLC,
CIVIL Action No. 3-04-0160
Judge Aleta A. Trauger
Magistrate Judge Joe B. Brown
Plaintiff,
V.
EML TECHNOLOGIES
LLC and COSTCO
WHOLESALE CORPORATION,
Defendants.
STIPULATION
OF JUDGMENT
PURSUANT
TO FRCP 54(b)
cAs_r_o.3-o4-o_
Case 3:04-cv-00160
Document
108
JA 0028
Filed 11/21/2005
Page
1 of 4
Plaintiff,
Wholesale
DESA IP, LLC ("DESA")
Corp. (collectively,
entry of final judgment
conditions
and defendants, EML Technologies
"Defendants"),
LLC and Costco
each by counsel, jointly stipulate
pursuant to Federal Rule of Civil Procedure
and move for
54 (b), on the terms and
set forth herein.
Good cause appearing,
judgment
1. DESA accuses defendants
Patent Number
5,598,066
shall be entered as follows:
of infringing Claims 6, 9, 10 and I 1 of United States
("the '066 patent").
to have the patent held invalid as anticipated
unenforceable
Defendants
deny infringement
and seek inter alia
and/or obvious in view of certain prior art, and
as result of alleged failure to satisfy the duty of candor during prosecution
of the
066 patent.
2.
Following
extensive
briefing, this Court held a three day Markman
hearing on
October 25-27, 2005, during which time the Court reviewed inter alia the patent claims, patent
specification
and selected portions of the '066 patent, and received tutorial testimony
demonstrations
3.
from experts and other witnesses
on behalf of each party.
With the consent of the parties, and at the shared expense
aid the court in understanding
the technical
course of the briefing and at the Markman
and
information
presented
of the parties, in order to
by the parties during the
hearing, the Court was assisted
by Professor
Charles
L. Carnal.
4.
At the conclusion
record, construing
Court's
of the hearing, the Court rendered
each of the contested
oral Markman
its Markman
claim elements ("Markman
Ruling is attached hereto as Appendix
ruling orally, on the
Ruling").
A transcript
I. In the Markman
Court referred to individual claim elements by reference letters used by Professor
his "Master
Claim Chart," [hearing Exhibit 48] a copy of which is attached
1I; and to diagrams
used by Professor
Massengill
of the
Ruling, the
Massengill
hereto as Appendix
to illustrate Which portions of the schematic
I
diagram in Figures 2A and 2B of the '066 patent he contende d represents
corresponding
to the various cla!m elements
hereto as Appendix
the structure
[hearing Exhibit 49], a copy of which is attached
III.
-1-
CASE NO. 3-04-0160
Case 3:04-cv-00160
Document 108
JA 0029
Filed 11/21/2005
Page 2 of 4
in
5.
Each of the asserted claims 6, 9, 10 and 11 contain the following claim element:
"sensor means for detecting
a [first] predetermined
condition external to said apparatus"
("sensor
means claim element").
6.
In the Markman
element is governed
Ruling, this Court concluded
inter alia that the sensor means claim
by 35 U.S.C. §112 ¶ 6; and, pursuant to §112 ¶ 6, this Court identified
construed
the sensor means claim element to cover certain structure from the specification
identified
in the Markman
7.
Ruling, and equivalents
In view of the Markman
ruling set forth in the foregoing
thereof.
Ruling, and particularly
paragraph
those portions
of this Stipulated
Judgment,
device does not include structure which is the same as or equivalent
Court has identified
as corresponding
that it cannot prove infringement
doctrine of equivalents,
construed
and because the accused
to the structure which this
to the sensor means claim element,
DESA has concluded
of claims 6, 9, 10 and 11 so construed,
and stipulates to entry of judgment
of the Markman
either literally or by
as to non-infringement
of the so-
claims 6, 9, 10 and I 1 the '066 patent.
8.
DESA does not waive, and specifically
aspects of this Court's Markman
9.
reserves, the right to appeal any and all
Ruling.
Unless this Court's Markman
rulings identified
in paragraph
vacated on appeal, the stipulated judgment of non-infringement
against Defendants.
Accordingly,
6 herein are reversed or
finally resolves
claims and affirmative
defenses
10. Acc_)rdingly, pursuant
determines
infringement
claims
as to Defendants'
against DESA.
to Federal Rule of Civil Procedure
that there is no just reason for delay and expressly
in accordance
DESA's
to avoid the time and expense needed to resolve Defendants'
claims against DESA, the parties have agreed to a dismissal without prejudice
54 (b), this Court
directs entry of judgment
of non-
here with.
i 1. This Court shall retain and hereby does retain jurisdiction
entirety,
over this matter in its
including any claims which may be reinstated.
-2CASE
and
NO.3-O4-0160
Case
3:04-cv-00160
Document
108
JA 0030
Filed 11/21/2005
Page 3 of 4
I heundew_igncd hereby stipnlal¢ to entry orthis judgment:
B),:
__
Stcven A. Rile;;' (TN'Bar No. 6258)
Nalhan F. Morgan (1N Bar No 022945)
"211.)11
National City Ccnler
5], Union Street
Nashville Tennessee
37219-8966
(615) 244-6380
(615) 244-6804 Facsimile
1906 West F_nd Avenue
Nashville, Tennessee
37203
(615) 320-3700
(6,5) 320-3737 Facsimile
James R lliggins, Jr. (KY Bar No. 31790)
Robert J '! heuerltaul'(K Y Bar No. 89068)
M II)1)1I'.'1ON REU I'LINGI'.'R
2500 Brown & Williamson 'lower
I,onisville, Kentucky 40202-3410
(502) 584- t135
(502) 561-0442 Facsimile
Roger I.. Cook (CA Bar No. 55208)
admitted pro hac vice
TOWNSENI) AND t'UWNSrNI) ANI) CRI'W
Two Embarcadero
Ccnler, 8th Floor
San Flancisco, Calilbrnia
94111
(,I 15) 576-0200
(415) 576-0300
Facsimile
COUNSF_I_ FOR PI ,AIN'I IF'I:,
DESA iP. I,I,C
COUNSEl, FOR DEFENDANTS,
EMI, IT:CIJNOI,OGIES
I,I,C -andCOS'I'CO WI IOI ,FkSA1_E CORI_OI_AI
17 IS SO O"')I'RED
'his
I"IOWHN
RILEY
21_'hY °t N<wombcr' 2005
WARNOCg.
JACOItSON
ION
.....
/¢_/...-_-"_/_S_ll,_
Holl. Aleta Tniuger
United States District
i;O(,203'18
_
/./
Court I/._ge
vI
-3CASE
NO
3-0.1.0100
Case 3:04-cv-00160
Document 108
Filed 11/21/2005
JA 0031
Page 4 of 4
APPENDIX
Case 3:04-cv-00160
Document
107-2
JA 0032
I
Filed
11/17/2005
Page
1 of 27
1
UNITED
FOR
THE
STATES
MIDDLE
2
DISTRICT
COURT
DISTRICT
NASHVILLE
OF
TENNESSEE
DIVISION
3
4
DESA
IP,
LLC,
5
Plaintiff,
6
CASE
VS.
NO.
3:04-0160
7
EML
8
TECHNOLOGIES,
COSTCO
9
WHOLESALE
LLC
and
CORPORATION,
Defendants.
i0
ii
EXCERPT
12
13
OF
PROCEEDINGS
VOLUME
A
JUDGE'S
RULING
14
15
16
BEFORE:
THE
HONORABLE
17
DATE:
OCTOBER
18
TIME:
9:00
ALETA
27,
A.
TRAUGER
2005
A.M.
19
20
21
REPORTED
BY:
22
BEVERLY
OFFICIAL
A-837
23
E.
"BECKY"
COLE,
COURT
REPORTER
U.S.
NASHVILLE,
(615)
RPR
CCR
COURTHOUSE
TN
37203
726-4893
24
25
Case 3:04-cv-00160
Document
107-2
JA 0033
Filed 11/17/2005
Page 2 of 27
2
APPEARANCES
FOR
THE
PLAINTIFF:
JAMES
R. HIGGINS,
JR.
ROBERT
J. THEUERKAUF
Middleton
Reutlinger
2500
Brown
& Williamson
Louisville,
KY
40202
Tower
6
7
FOR
THE
DEFENDANTS:
8
9
ROGER
L. COOK
IRIS
SOCKEL
MITRAKOS
Townsend
and Townsend
and
Two Embarcadero
Center
Eighth
Floor
San Francisco,
CA
94111
Crew
I0
ii
12
13
14
15
16
17
18
19
20
• 21
22
23
24
25
Case 3:04-cv-00160
Document107-2
JA 0034
Filed 11/17/2005
Page 3 of 27
1
THE
2
orally
give
3
case.
It
4
will
We
5
I have
6
have
7
Charles
8
Technological
had
had
and
II
paying
14
heard
15
in
he
terms
of
the
of
5,598,066,"
2O
as
have
21
in
dispute
25
at
hearing.
the
hearing,
Dr.
Tennessee
engineering.
assistance
making
to
this
expert,
him
to
available
are
Claims
Determining
the
to
the
meaning
Second,
Case 3:04-cv-00160
background
here,
Court,
me
and
hearing.
9,
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and
scope
Costco
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the
'066
claims
patent
patent
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remain
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JA 0035
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needed
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four
level
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plaintiff
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all
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number
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during
going
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Markman
court-appointed
immense
claims.
19
24
and
of
these
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infringed
hearing,
electrical
helpful
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for
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Filed 11/17/2005
claims.
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Page 4 of 27
I
4
1
have
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jury
trial.
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MR.
COOK:
3
THE
COURT:
4
case
5
construed
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infringement.
a
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read
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three
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accomplish
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the
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means
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element
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means
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the
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corresponding
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specification
and
each
25
claim
that
--
plus
function
Section
in
or
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recital
and
whether
for
of
the
Section
It
is
Case 3:04-cv-00160
in
for
so
as
a
to
specified
be
material
construed
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acts
to
in
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claim
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uses
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35
United
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quoting
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expressed
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without
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in
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first
thing
112/6
applies.
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or
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claims
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shall
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properly
Markman,
terms
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23
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107-2
Court
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claim
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limitation
Filed 11/17/2005
JA O036
is
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Page 5 of 27
1
actually
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decision
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8
word
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Section
112
10
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is
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central
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all
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rebutted
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the
following
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or
to
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material
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20
specify
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claim
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sufficient
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itself
24
25
presumption
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not
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use
The
use
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entirely
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Case 3:04-cv-00160
a claim
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structure
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"means"
claims
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DESA
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19
2003
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12
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7
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Document107-2
JA 0037
the
to
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where
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term
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claim
function.
terms
containing
material
Filed 11/17/2005
or
the
acts
so
Page 6 of 27
1
as
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rebut
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3
the
And
presumption
the
preponderance
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burden
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that
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Section
DESA
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5
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7
8
9
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13
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Section
112/6,
15
112/6,
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means
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is
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be
convenience
20
specified
in
21
thereof.
And
22
is
the
section
24
identify
25
explicitly
applies,
the
Case 3:04-cv-00160
a
price
a
quote
the
Court
as
in
the
the
OI
been
and
Document 107-2
JA 0038
use
of
possible
paid
for
to
of
means
equivalence
Corp.
case.
things:
means
then
use
the
determined
two
unreclted
apply
Section
permit
the
claim
the
do
to
all
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has
claim;
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be
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must
stated
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apparatus
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claimed
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in
intended
description
once
function
recited
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written
Accordingly,
23
was
limitation
_hat's
has
recitation
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However,
that
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federal
well
might
19
from
that
the
First,
that
identify
Filed 11/17/2005
is
the
Page 7 of 27
7
1
corresponding
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function
structure
set
3
With
4
the
5
function
6
explicitly
7
Chemicals.
8
claim.
in
does
claim
by
The
Ii
Court
12
--
13
patent.
resorts
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14
And
15
carefully
16
perform
17
determining
so
the
18
19
specification
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or
21
structure
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24
before
let
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me
give
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comes
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cited
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patent
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to
as
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structure
clearly
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function,
parts
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regard
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structure
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recited
prosecution
23
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is
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To
22
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9
25
forth
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claim.
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are
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that.
The
Case 3:04-cv-00160
Phillips
case
Document
--
I know
107-2
JA 0039
the
Markman
Filed 11/17/2005
-
hearing
Page 8 of 27
1
here
2
the
3
kind
4
makes
5
what
6
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Phillips
of
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walks
it
Court
finding
7
to
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are
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10
to
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usually
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in
view
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very
clear
that
specification
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14
the
specification
15
clear,
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concise
16
The
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and
21
construction.
of
And
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The
tried
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they
relevant
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vigorously
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to
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they
that
of
plaintiffs
statutory
be
stays
aligns
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to
are
be
in
in
that
full,
part.
to
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claim
patent's
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end
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correct
Phillips
specification.
this
limit
consistent
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instruction
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be
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true
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will
takes
importance
written
terms.
invention
Court
the
the
the
naturally
the
the
Case 3:04-cv-00160
by
of
most
description
24
claims
and
20
on
exact
construction
language
22
and
The
19
between
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specification
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the
court
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of
reference
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And
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13
23
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structure.
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dispositive.
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Phillips
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Document 107-2
plaintiff
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specification
Filed 11/17/2005
JA 0O40
this
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case
which
Page 9 of 27
1
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the
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The
24
preferred
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25
in
with
in
Case 3:04-cv-00160
column
that
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at
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drawings
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materials.
20
21
22
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condition
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Case3:04-cv-00160
no
to
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Document107-2
what
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Filed 11/17/2005
JA 0042
determined
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17
18
19
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21
22
23
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25
Case 3:04-cv-00160
Document 107-2
JA 0043
Filed 11/1712005
Page 12 of 27
12
1
2
3
4
5
6
7
8
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12
13
14
15
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18
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MS.
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11/17/2005
this
part
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Page
13 of 27
13
1
The
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MR.
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THE
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Case 3:04-cv-00160
the
claim
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6.
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find
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Document 107-2
JA 0045
Filed 11/17/2005
Page 14 of 27
14
1
MS.
MITP_OS:
2
MR.
COOK:
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THE
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25
Case 3:04-cv-00160
Document 107-2
JA 0046
Filed 11/17/2005
Page 15 of 27
15
l
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in
Case 3:04-cv-00160
other
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Document107-2
in
accent
mode,
Filed 11/17/2005
JA 0047
a motion
Page16
of 27
16
1
is
2
this
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detected;
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Case 3:04-cv-00160
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Document
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107-2
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Filed 11/17/2005
JA 0048
Dr.
Wherein
means
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Page 17 of 27
17
1
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3:04-cv-00160
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Document107-2
JA
control
means
half
Filed11/17/2005
0049
circui_
to
wave
means
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cycle
Page18
of
of 27
18
1
said
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And
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testimony
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Case 3:04-cv-00160
sign
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Document 107-2
we
the
must
find
structure
Filed 11/17/2005
JA 0050
the
for
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in
Page 19 of 27
19
1
2
Dr.
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ma'am.
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Document107-2
the
minimum
motion
and
of
of
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of
a
second
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Filed 11/17/2005
JA 0051
level
value
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Page 20 of 27
2O
1
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107-2
Filed
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Case 3:04-cv-00160
finds
Dr.
said
light
to
have
values
a
when
daylight.
11/17/2005
Page 21 of 27
21
1
So
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Filed 11/17/2005
JA 0053
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Page 22 of 27
22
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correcting
I
know
corresponding
I
two
that
that
you
markings,
right.
So
Filed 11/17/2005
JA OO54
sorry.
lines.
it
that,
I'm
had
and
thank
I
you
for
Page 23 of 27
23
1
that
correction.
2
Now,
3
the
4
many
5
ended
6
appear
7
construction,
8
plaintiff's
parties
I'm
because
different
up
going
the
there
were
to
--
and
these
are
plaintiff's
HIGGINS:
i0
THE
COURT:
reference,
12
added
13
I
14
Massengill's
15
appears
in
Claims
16
6.
K1
claim
17
appears
in
Claims
that
His
to
The
6.
20
is
in
21
in
II.
C2
is
I0
22
been
24
simply
25
announced
K
in
called
the
9,
upon
Case 3:04-cv-00160
by
the
the
aid
of
and
claims,
order
that
so
I
they
112/6
of,
I
believe,
the
to
K2
claim
9,
I0
and
is
in
i0
Document
and
I
then
6;
that
his
A
claim
And
I
claims,
say
the
but
Dr.
claim
appears
Cl
C3
ii.
be
findings
three-day
107-2
in
--
is
H
term
in
in
Claim
claim
is
in
Claim
10
and
ii.
ii,
and
C4
an
I
E
is
have
order
that
conclusions
hearing
Filed 11/17/2005
JA 0055
in
that
issuing
and
is
9,
constructions
will
my
this
is
ii.
claim
make.
of
6.
but
Ii.
reference
end
J
of
these
and
Claim
his
Claim
and
gave
Honor.
ease
with
quickly
II;
Your
for
started
in
in
the
just
Massengill
and
sorry,
are
I
appears
i0
G
correct,
So
very
I0
9,
those
at
Dr.
appears
Ii.
adopts
chart
claim
--
various
10
That's
through
Claims
and
So
23
go
page
the
charts
alternate
Okay.
that
"I"
18
19
was
letters
claim
these
in
for
brief.
MR.
II
on
and
many
proposed
starts
rebuttal
want
so
refer
9
just
through,
to
which
the
go
ways
taking
in
to
at
which
I
Page 24 of 27
24
1
have
heard
2
3
many,
And
dispositive
many
expert
next
phase
the
motions.
Will
4
MR.
COOK:
5
THE
COURT:
any
of
MS.
MITRAKOS:
THE
COURT:
6
deadlines
for
7
8
Your
after
this
ruling
12
a provision
13
discussed
you
should
16
management
17
filed
have
that
I suppose,
will
be
phase?
so.
I don't
have
believe
we've
set
any
we?
We
have
it
a
agreed
to
deadlines,
days
front
say
after
that
my
THE
keyed
off
a
COURT:
certain
COURT:
just
be
your
clocks
entering
Case 3:04-cv-00160
deadlines
rule.
Okay.
So
of
and
me,
That's
does
it
did
what
state
I don't.
dispositive
First,
number
THE
will
Those
days
have
we
conference.
Okay.
23
25
of
--
Does
motions
I
the
will
case
be
it's
expert
reports,
and
motions.
MITRAKOS:
start
number
ruling?
MS.
I would
to
the
22
24
days
MITRAKOS:
dispositive
2O
certain
Yes.
telephone
in
MS.
it's
60
COURT:
order
60
Is
something?
the
that
18
all
And
case,
to
I think
taking
THE
15
21
this
go
MITRAKOS:
during
14
then
we
that,
or
MS.
ii
19
of
testify.
Honor.
9
i0
witnesses
a
All
of
days
That's
So
this
today.
that
are
ruling?
Your
Honor.
made
today,
so
I say,
I
was
And,
adopts
Filed 11/17/2005
JA 0056
they
this
correct,
order
Document 107-2
But
after
ruling
running
brief
right.
as
by
Page 25 of 27
25
1
reference.
2
Anything
3
for
4
totally
5
appreciate
6
purpose.
your
else
excellent
that
We
your
are
can
presentations.
incomprehensible
all
we
in
to
work,
me
and
do
today?
Thank
made
something
You
comprehensible,
it
was
--
fulfilled
and
you
all
I
its
recess.
7
8
9
I0
ii
12
13
14
15
16
17
18
19
2O
21
22
23
24
25
Case 3:04-cv-00160
Document 107-2
Filed 11/17/2005
JA 0057
Page 26 of 27
26
1
REPORTER'S
CERTIFICATE
2
3
I,
4
for
5
of
the
United
the
8
2005,
9
LLC
I
in
and
the
hearing
12
accurate
14
and
at
on
in
of
an
was
record
for
of
to
the
do
stenotype
IP,
on
LLC,
vs.
Middle
District
certify:
shorthand
machine
typewritten
is
the
26
27,
3:04-0160;
connection
by
a
and
TECHNOLOGIES,
No.
form
transcript
25,
EML
in
to
Reporter
hereby
Case
proceedings
Court
October
proceedings
foregoing
the
Court
CORPORATION,
reduced
of
Official
court
DESA
excerpt
the
COLE,
Nashville,
the
open
WHOLESALE
That
13
offices
matter
That
the
District
held
COSTCO
"BECKY"
reported
proceedings
i0
15
with
That
7
E.
States
Tennessee,
6
ii
BEVERLY
me;
true
best
with
and
of
my
skills
abilities;
This
the
2nd
day
of
November,
2005.
16
17
18
Is
19
BEVERLY
E.
COLE,
RPR
CCR
20
21
22
23
24
25
Case 3:04-cv-00160
Document
107-2
Filed 11/17/2005
JA 0058
Page 27 of 27
APPENDIX
Case 3:04-cv-00160
Document
107-3
II
Filed
JA 0059
11/1712005
Page 1 of 7
Appendix A
MASTER
Ref.
Letter
SubRef.
Letter
Reference
Name
CLAIM
CHART
Clahns
Claim Text I
Preamble
An apparatus comprising
A
Sensor Means
sensor means for detecting
a predetermined
condition
external to said apparatus;
B
Lamp
a lamp which can emit a
first level of illumination
and which can also emit a
second level of
illumination substantially
greater than said first level
of illumination, said lamp
being capable of switching
rapidly fi'om said first level
of illumination to said
second level of
MassengiU
Conclusion
6,9,10,
11
9,10,11
§ 112 ¶ 6 applies
since, as Carlson
agrees for claim
elements I and J,
this claim
element recites
insufficient
structure to
perform stated
function.
Not stated in
m .eans plus
function claim
ilIurnination;
t "Means plus function" key: "means" [including
and response] underlined; function italicized).
"for"]
in bold; structure
[including
location
Defts. 44
Case 3:04-cv-00160
Document
107-3
Filed 11/17/2005
JA 0060
"
format.-§112
¶6
is presumed not
to apply.
Page 2 of 7
c(1)
Claim element
control circuit means
C(1) Control
coupled to said lamp and
responsive to said sensor
means for causing said
lamp to emit light at said
first level of illumination in
the absence of said
predetermined
condition,
and for causing said lamp
to emit light at said second
level of illumination in
response to detection of
said predetermined
condition, wherein said
control circuit means is
powered by an AC
Circuit Means
(el. 9, 10, 11)
C
C(2)
Sub-element C(2)
Switching Means
volta ege.s_(sic),and
wherein said control circuit
9,10,11
§112, ¶6 applies
since, as Carlson
agrees for claim
element K(1 ),
this claim
dement recites
insufficient
structure to
perform the
stated functions.
9,10,11
§112 ¶ 6 applies
since, as Carlson
agrees, this claim
element recites
insufficient
structure to
means includes_
means for selectively
permitting and preventing
the application of said A C
voltage to said lamp and
perform the
stated function.
C
C(3)
Sub-element
Means for
C(3)
Causing Switching
Means To Be
Actuated
[wherein said control
circuit means includes]
means for causing said
switching means to be
actuated for a selected
portion of each half wave
cycle of said A C voltage,
said portion of said half
waves being greater for
said second level of
illumination than for said
first level of illumination;
9,10,11
§112 ¶ 6 applies
since, as Carlson
agrees, this claim
element recites
insufficient
structure to
perform the
stated function.
2
Case 3:04-cv-00160
Document
107-3
Filed 11/17/2005
JA 0061
Page 3 of 7
C(4)
D
E"
Sub-element C(4)
Means Causing
Threshold To
Have Third Value
! said Circuit means
daylight.
a zero crossing detect
circuit for detecting zero
crossing points of said AC
voltage,
Zero Crossing
Detect
Means For
Producing Ramp
Wave Form
11
§112 ¶ 6 applies
since, as Carlson
agrees, this claim
element recites
insufficient
structure to
perform the
stated function.
10, 11
This claim
element is not in
means plus
function format;
§112¶6is
presumed to not
apply.
10, 11
§112 ¶ 6 applies
since, as Carlson
agrees, this claim
element recites
insufficient
structure to
including means
responsive to said light
sensing means for causing
said threshold voltage to
have a third value different
from said first and second
values when said light
sensing means is detecting
means for producing ramp
waveform having for each
half wave of said AC
voltage a ramp pulse which
is initiated in response to
detection of the zero
crossing point for the half
perform the
stated function.
wz2ve_
Comparator
a eomparator Which
compares said ramp pulse
to a threshold voltage, and
which actuates said
10, 11
switching means at a point
in time when the ramp
voltage In'st exceeds said
threshold voltage, and
This claim
element is not in
means plus
function format,
so §112¶6is
presumed not to
apply.
3
Case 3:04-cv-00160
Document
107-3
JA 0062
Filed 11/17/2005
Page 4 of 7
G
Mealls
for
Causing Threshold
To Have F
Second Values
[claim 10] means
responsive to said sensor
I,q causing said
frst threshold voltage to
have a first value in the
absence of said
predetermined condition,
and a second value in
response to detection
said predetermined
conditions;
10, 11
§112 ¶ 6 applies
since, as Carlson
agrees, this claim
element recites
insufficient
structure to
perform the
stated function.
11
§112 ¶ 6 applies
since this claim
element recites
insufficient
structure to
of
[claim 11] means re_.g_onse
(sic) to said sensor means
for causing said threshola g
to have a first value in the
absence of said
predetermined
condition,
and a second value in
response to detection
said predetermined
conditions;
H
Light Sensing
Means
of
light sensing means
responsive to light extemal
for
detecting the presence
absence of daylight,
and
perform the
stated function.
2 In claim 10 phrase corresponding to claim 1 l's "said threshold" is said first threshold voltage.
These phrases mean the identical thing. In claim 11, the orhitted word "voltage" is implicit,
since "said threshold" refers back to "threshold voltage" in the prior clause F. Similarly, in claim
10, the added word "first" is surplusage, since there is only one threshold voltage mentioned in
claim 10, at clause F. Accordingly, claim elements G [10] and G [11] have identical meanings.
Case 3:04-cv-00160
Document
107-3
Filed 11/17/2005
JA 0063
Page 5 of 7
First Sensor
Means
first sensor means for
detecting a first
predetermined
condition
external to said apparatus,
said first predetermined
condition being motion
relative to said first sensor
means of a person or an
object separate from said
apparatus
Second sensor means
Second Sensor
Means
K
K(1)
for
detecting a second
predetermined
condition,
said second predetermined
condition being a
predetermined
level of light
external to said apparatus
Claim element
Conlrol circuit means
K(I) Control
Circuit Means
6)
coupled to said lamp and
responsive to said In'st and
second sensor memas for
(Ct
causing said lamp to emit
light at said first level of
illumination in response to
said second predetermined
condition in the absence of
said first predetermined
condition, and for causing
said lamp to emit light at
said second level of
illumination in response to
detection of said first
predetermined
co-'_;_'_-
Case 3:04-cv-00160
Document
107-3
JA 0064
Filed 11117/2005
§112 ¶ 6 applies
since, as Carlson
agrees, this claim
element recites
insufficient
structure to
perform the
stated function.
§112 ¶ 6 applies
since, as Carlson
agrees, this claim
element recites
insufficient
structure to
perform the
stated function.
§ 112 ¶ 6 applies
since, as Carlson
agrees, this claim
element recites
insufficient
structure to
perform the
stated function.
Page 6 of 7
K
I
I
!I<(2)
Sub-element K(2)
Means Responsive
to Detection of
First
Predetermined
Condition
I
I
wherein said control circuit
means includes means
responsive to detection of
said first predetermined
condition for initiating
measurement of a
predetermined
time
interval, and responsive to
expiration of said time
interval for causing said
lamp to thereafter emit
light at said first level of
illumination in response to
said second predetermined
condition in the absence of
a recurrence ofsaidfirst
predetermined
condition.
§ 112 ¶ 6 applies.
As Carlson has
admitted, this
sub-element K(2)
recites
insufficient
structure to
perform the
stated functions.
6
Case 3:04-cv-00160
Document
107-3
Filed 11/17/2005
JA 0065
Page 7 of 7
APPENDIX
Case 3:04-cv-00160
Document
107-4
IH
Filed 11/17/2005
JA 0066
Page 1 of 15
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Case 3:04-cv-00160
Document
107-4
Filed 11/17/2005
JA 0067
Page 2 of 15
Case 3:04-cv-00160
Document 107-4
Filed 11/'17/2005
JA 0068
Page 3 of 15
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Document
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Filed 11/17/2005
JA 0069
Page 4 of 15
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Page 5 of 15
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7 of 15
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Document
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JA 0076
Filed 11/17/2005
Page 11 of 15
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JA 0077
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Document 107-4
JA 0078
Filed 11/17/2005
Page 13 of 15
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Document
107-4
Filed 11/17/2005
JA 0079
Page 14 of 15
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Case 3:04-cv-00160
Document 107-4
Filed 11/17/2005
JA 0080
Page 15 of 15
IN THE UNITED STATES DISTRICT
COURT FOR THE
MIDDLE DISTRICT
OF TENNESSEE
NASHVILLE
DESA,
DIVISION
IP, LLC,
Plaintiff,
Civil No.
V.
3:04-0160
Judge Trauger
EML TECHNOLOGIES,
LLC and
COSTCO
CORPORATION,
WHOLESALE
Defendants.
ORDER
A Markman
At the conclusion
For the reasons
hearing
of the hearing,
expressed
as if set forth verbatim,
"means
was held in this case on October
plus function"
the court announced
at the close of the hearing,
it is hereby
ORDERED
terms according
claim terms are construed
in accordance
25, 2005 through
its decision
which
October
on the pending
are incorporated
27, 2005.
issues orally.
herein by reference
that the claim terms are to be interpreted
to 35 U.S.C.
§ 112, Sixth Paragraph,
with the court's
and the disputed
oral ruling.
It is so ORDERED.
ENTER
this 31 st day of October
2005.
U.S. District
Case 3:04-cv-00160
Document
105
JA 0081
Filed 10/31/2005
as
Judge
Page 1 of 1
IN THE
FOR
UNITED
THE
STATES
DISTRICT
MIDDLE
DISTRICT
OF
NASHVILLE
DIVISION
COURT
TENNESSEI_0h
FEB 27
A,_ 10:06
U.S, DISTR!CT _" , "
MIDDLE _"_r.-,,_........
, OF TN
f
DESA
IP, LLC
a Delaware
Limited Liability
2701 Industrial
Drive
Bowling
Green,
Kentucky
Company
42102
Plaintiff,
Civil Action
Judge
V.
EML
TECHNOLOGIES
LLC
Magistrate
COSTCO
WHOLESALE
0
Judg__
JURY
-and-
No. ll_
0 4
_ _ _ ......
DEMANDED
CORPORATION
Defendants.
COMPLAINT
Plaintiff,
DESA
Defendants,
EML
(hereinafter
"Costco")
alleges
IP, LLC
(hereinafter
Technologies
LLC
(sometimes
"DESA"),
(hereinafter
collectively
by counsel,
"EML")
referred
and
for
Costco
its Complaint
Wholesale
to as "Defendants"),
against
Corporation
complains
and
as follows:
INTRODUCTION
1.
Two-Level
-patent
laws
infringement,
'066
Patent
999342.1
This
Security
of the
wherein
related
is an action
Lighting
United
for infringement
System
States.
Defendants
to a two-level
of United
(hereinafter
This
have
Complaint
infringed,
security
"the
States
'066
Patent"),
comprises
and
lighting
JA 0082
continue
system.
Patent
causes
No.
5,598,066
which
arises
of action
to infringe,
DESA
seeks
Plaintiff
entitled
under
for
the
patent
DESA's
preliminary
and
1.15 0
permanent
injunctive
infringement;
damages
relief;
all damages
awarded
fees, including
all gains,
sustained
to DESA
reasonable
profits
and
by DESA
as a result
attorneys'
laws
Plaintiff
of Delaware,
Green,
Kentucky
3.
fees, incurred
#300,
Berkeley,
Defendant
upon
liability
place
CT
is, upon
94526.
999342.1
the trebling
infringement;
its
of all
and all costs
and
in this action.
company
organized
of business
information
Upon
California
at 2701
is, upon
Costco
and
existing
Industrial
with
530
under
Drive,
and belief,
the
Bowling
and
belief,
place
business
Knoxville
place
Seltzer,
Esq.,
2000
organized
at 999 Lake
the State
37902
at 158
of process.
a corporation
within
company
of business
for service
of business
TN
liability
Eugene
Agent
its principal
Street
a limited
its principal
Registered
to conduct
Gay
belief,
having
information
is registered
Corporation,
and
information
is EML's
of Washington,
This action arises
and between
citizens
and/or
that EML's
willful
from
and
Drive,
of Tennessee
to receive
and
service
of
it with the State of Tennessee.
5.
6.
Defendants
PARTIES
JURISDICTION
1338(a)
by
of the infringement;
by DESA
the laws of California,
Costco
the laws
WA 98027.
designated
process
EML,
California
under
realized
42102.
Danville,
4.
has
its principal
under
Street
Issaquah,
is a limited
and existing
Briar Place,
existing
having
Defendant,
organized
Center
DESA
as a result
of the Defendants'
THE
2.
advantages
of different
under the patent
states.
AND
VENUE
laws of the United
Jurisdiction"
is proper
States,
35 U.S.C.
under 28 U.S.C.
§ 1 et seq.,
§§ 1331,
1332,
1391.
Defendant,
products
EML,
upon
information
are sold and offered
for sale
JA 0083
and belief,
throughout
transacts
the United
business
States,
nationwide
including
in
within
the state of Tennessee
belief,
certain
placed
in the stream
knowledge
Costco
of EML's
products,
United
States,
Specifically,
namely
including
Costco,
8.
this judicial
this judicial
infringement
10.
infringing
within
upon
EML
Upon
district,
in infringement
9.
the
district,
Patent
information
of the '066
On
Patent
District
belief,
within
and
of Tennessee
to, are
or otherwise
nationwide
with
including
business
referred
to, throughout
within
this judicial
a major
Costco
nationwide
warehouse
has offered
by
the
district.
store
in
to sell and has
to.
EML's
with
this district,
Costco,
Costco's
with EML,
as set forth
venue
properly
pursuant
transacting
of business
has resulted
within
and does result
as set forth below.
Defendant
this district,
belief,
hereinafter
Defendant
belief,
transacts
which
referred
and
district.
maintains
or in cooperation
within
and
referred
hereinafter
stores
and including
belief,
transacting
of business
has resulted
and does
within
result
in
below.
resides
to 28 U.S.C.
in the
United
§§ 1391(b)
and
States
District
(c), and/or
28
§ 1400(b).
THE
11.
by the United
999342.1
Lights
on information
with Costco
at Costco
and belief,
or in cooperation
separately
information
for the Middle
and
Lights
this judicial
from and through
separately
either
and
hereinafter
information
of the '066
Upon
district
Lights
either
information
information
EML
re-sold
and within
EML
Specifically,
its relationship
the state of Tennessee
this judicial
sold the infringing
through
for sale and/or
upon
district.
the infringing
by EML
Costco,
including
within
this judicial
the state of Tennessee
Defendant,
selling
U.S.C.
products,
of commerce
within
7.
Court
within
that they will be offered
stores
Tennessee
and including
DESA
States
is the owner
Patent
'066 PATENT
of, and claims
and Trademark
Office
rights
under,
("PTO")
JA 0084
the '066
on January
Patent,
28,
which
1997
was
issued
in the names
of
inventors
David
lighting
L. Wiesemann,
system,
of February
said '066
13,
incorporated
assigned
1996.
Assignment
was
Frame
Company
title and
0030.
being
recorded
owner
of the '066 Patent.
13.
and
inventions
to sell,
and
'066
Patent.
DESA
import
any device
By virtue
import
and further
15.
without
Plaintiff
states
sell
to the
'066
a filing
date
"A"
and
as Exhibit
EML
Patent
the
No. 0866,
'066
Brite"
of the '066 Patent
to Heath
'066
By various
Patent
Company,
became
Patent,
DESA
to sell,
and
or Costco
at Reel
issued
to Heath
thereafter,
the most
to make,
Security
use,
right
embodiments
entity
Sensor
No.
and now is the record
import
to make,
which
has the exclusive
a related
Motion
was
assignments
DESA
has authorized
"Dual
the inventors
of the PTO on July 29, 1994
assignment
or offer
DESA
not authorized
Lights
sell or offer
to,
of the
use, sell or
under
the
to sell,
or
the '066 Patent.
I--INFRINGEMENT
repeats
and realleges
information
or license
for sale, and unlawfully
99934z.1
hereto
having
security
OF THE
the forgoing
'066 PATENT
paragraphs
as if fully
set forth
herein,
as follows:
Upon
permission
is attached
Records
of the
use,
Patent.
COUNT
14.
no. 600,823,
of the '066 Patent,
in and
of that
Heath-Zenith
has
under
P. Ko, for a two-level
serial
Patent
of the '066 Patent.
to, make,
in the '066
offer
interest
of its ownership
others
claimed
'066
at Reel No. 013964/Frame
By virtue
to authorize
of the
in Assignment
on the face
salient
from application
the time of filing
duly recorded
as shown
and Wai-Shing
herein.
right,
No.
E. Schaaf,
issuing
A copy
At or around
all their
007088
Patent
by reference
12.
Daniel
from
imported,
and
belief,
DESA,
Defendant
has unlawfully
and is now making,
JA 0085
EML,
through
and wrongfully
selling
or offering
its
agent
made,
or
agents,
sold or offered
for sale, and unlawfully
importing,
in direct
competition
Electro-Optical
Motion
A copy
packaging
of the
reference
herein.
claimed
loss and injury
Lights
Upon
for EML's
United
is attached
embody
of DESA's
States,
Thermal
(hereinafter
as Exhibit
and employ
exclusive
"the
EML
Range
Lights").
and
incorporated
by
the invention(s)
described
and
rights
"B"
True
thereunder,
and
to the great
within
and
to sell,
belief,
Defendant
and has unlawfully
and for the benefit
this judicial
district,
EML
has
imported
into the
of Defendant
in direct
sold
Costco,
violation
or offered
United
States,
including
of DESA's
to sell,
the
regular
exclusive
and
EML
sales
rights
of
under
Patent.
17.
without
contain,
the
No. E100WSB-C
Lights
in violation
own benefit
Lights
the '066
Lights
within
Model
EML
information
to sell or offer
the EML
Lights,
of the
Patent,
DESA
to DESA.
16.
continues
Sensor
The EML
in the '066
with
Upon
information
permission
or license
sale, and unlawfully
in direct
sales
of same
and/or
sold
with
within
and/or
judicial
district
Patent,
in violation
from
imported,
competition
and
contain,
DESA,
DESA
within
embody
of DESA's
the
The
and employ
exclusive
States,
EML
used
the invention(s)
rights
for sale,
the
Lights
within
thereunder,
through
its agent
and wrongfully
or offering
United
and/or
Costco,
unlawfully
selling
district.
to be sold
Defendant
has
and is now
this judicial
offered
belief,
Lights,
imported
States
described
and
or offered
and unlawfully
EML
United
sold
or agents,
to the
into
importing,
including
the
for
regular
United
States
including
within
this
and claimed
in the
'066
great
loss and
injury
of
DESA.
18.
importation;
importation;
999342.1
Defendant
or contributing
or unlawfully
EML's
unlawful
to the
inducing
making,
making,
others
using,
to make,
JA 0086
selling
selling
or offering
or offering
use, sell or offer
for
sale,
and
unlawful
to sell,
and
unlawful
to sell,
or import
the EML
Lights
within
constitutes
the
United
infringement
19.
States
Defendant
Costco's
or contributing
importation;
or inducing
the
United
infringement
20.
products
DESA
has
advantages,
including
be, deprived
and
999342.1
gains
district,
infringement,
derived
selling
or
within
this
judicial
for
sale,
and
offering
making,
using,
use, sell
or offer
sales
the required
district
selling
of same
or offering
to sell,
within
unlawful
to sell, or unlawful
or import
the EML
this judicial
district
Lights
constitutes
infringement
profits
and
in amounts
from
statutory
notice,
pursuant
Defendants
of the
advantages
to be proven
have
'066
derived,
Patent,
from
at trial.
As
all the gains
and received,
if such
and profits
further
to which
but for the aforesaid
JA 0087
received,
substantial
regular
has been, and will be, greatly
receiving,
to 35 U.S.C.
§ 287
on
the '066 Patent.
and belief,
DESA
prevented
by this Court,
have
placed
the aforesaid
the aforesaid
they would
regular
of same
of the '066 Patent.
information
from
enjoined
including
and sold by it under
Upon
this judicial
unlawful
to make,
of at least one claim
and receive
within
others
sales
of the '066 Patent.
to the unlawful
States
manufactured
21.
regular
of at least one claim
importation;
within
including
sales
a direct
damaged
profits,
infringing
result
and has been,
of
and will
is not restrained
entitled
and
devices
and proximate
is lawfully
infringement
gains,
of
infringement
DESA
and will derive
and
and which
by the Defendants.
COUNT
22.
and further
Plaintiff
states
23.
'066
Patent
offered
but despite
and/or
of the '066
Patent
and/or
has
notice
and/or
belief,
paragraphs
and
Defendant
knowledge
imported
has
induced
the
others
EML
has
EML
as if fully set forth
had
notice
deliberately
Lights,
to infringe
to the infringement
information
such
imported
others
and belief,
notice
herein,
and
and knowledge
made
and
and/or
thereby
has
continues
and continues
Because
or contributed
thereof,
the
to the
Lights,
to infringe
and
and
to the infringement
Defendants'
infringement
of the
sold
and/or
infringed
to induce
to contribute
of
disregard
to induce
them,
of DESA's
'066
'066
and/or
Patent
for the rights
and
others
to
to infringement
have
others
has
been,
and
and/or
to sell
offered
to infringe,
and/or
has
of the '066 Patent.
or
despite
inducement
of the
to infringe,
infringed
Patent
and knowledge
and continues
to infringement
of DES under
JA 0088
sold
has infringed
to contribute
each
had notice
has deliberately
continues
infringement
of the
Costco
and thereby
and continues
Defendants,
and in conscious
Defendant
and knowledge
the EML
to the infringement
contributing
deliberate,
notice
has contributed
induced
27.
infringe
such
and
unlawfully
but despite
unlawfully
aaa342._
and/or
Upon
and/or
contributed
the forgoing
Patent.
24.
'066
information
to infringe,
infringe,
and realleges
INFRINGEMENT
as follows:
Upon
to sell
continues
repeats
II--WILLFUL
of
induced
notice
the '066
Patent.
to
and knowledge
infringement
continues
others
to be,
and/or
willful,
COUNT
28.
Plaintiff
and further
states
29.
an order
selling
repeats
and realleges
under
a finding
35 U.S.C.
or offering
§ 283
a finding
under
or offering
for sale and unlawfully
Plaintiff
states
32.
Lights
which
infringement
999342.1
and
infringe
the '066
preliminarily
importing
importing
is in need
result
DESA
as a consequence
which
as if fully
set forth
herein,
and
Lights
infringe
preliminarily
the EML
EML
the '066
Lights
IV--ACCOUNTING
realleges
the forgoing
is entitled
from
into the United
Patent,
and permanently,
COUNT
DESA
permanently,
the EML
Lights
Patent,
into the United
paragraphs
making,
States.
DESA
Costco
to
is entitled
from selling
States.
as if fully
set forth
herein,
of an accounting
making,
selling
in infringement
of all earnings
or offering
of the '066
achieved
to sell,
Patent,
and
by Defendant
unlawful
and any other
EML
importation
products
as
of the
which
result
of the '066 Patent.
33.
Lights
enjoining,
§ 283 enjoining,
repeats
of EML's
in infringement
paragraphs
as follows:
DESA
a consequence
EML
35 U.S.C.
Lights
that the EML's
to an order
and further
the forgoing
that the EML
for sale, and unlawfully
Upon
31.
RELIEF
as follows:
Upon
30.
III--INJUNCTIVE
result
is in need
of Costco's
of an accounting
selling
in infringement
or offering
of the
'066
of all earnings
to sell,
Patent,
of the '066 Patent.
JA 0089
and
and
achieved
unlawful
any
other
by Defendant
importation
products
Costco
of the EML
which
result
in
WHEREFORE,
A.
DESA
That
pursuant
respectfully
demands:
to 35 U.S.C.
§ 283,
issued
restraining
and
enjoining
officers,
agents,'
servants
and
made,
offering
for sale, selling
in accordance
including
with
realized
by
EML
EML
from
infringement
of the '066
by the
Patent,
'066
necessary
Patent
accessories
realized
EML
That
beginning
be directed
Costco's
invention(s)
patented
in and
Lights,
other
products
which
products
infringe
the
and
injunctions
and
making
or causing
forth
to DESA
and
their
claimed
be
respective
or causing
to be used
therewith,
marketing
the
and
to accountto
and
'066
or necessary
Patent
for all gains,
the
use and practice
of the
by the
'066
set
of marketing
selling
in infringement
of them,
or indirectly
to be
any product
in the
'066
Patent,
Patent,
and
EML
DESA
Lights,
products
for all gains,
to sell,
Patent
from
accessories
EML
and advantages
Lights
resulting
patented
and
other
which
in
in and
products
infringe
or
the '066
the time of triali
offering
'066
profits
of the invention(s)
other
up to and including
resulting
and
to account
and unlawful
sold therewith,
from
permanent
Lights.
manufacturing
the
Costco
by Costco
Lights
invention(s)
sold in connection
and accessories
C.
any
directly
each
to be sold, or using
Patent
from
and
or causing
be directed
its
Costco,
from
to the EML
That
and
and/or
employees
or embodying
but not limited
B.
EML
preliminary
and
the
sold
accessories
and
profits
unlawful
unlawful
beginning
in connection
sold therewith,
and advantages
importation
use
and
practice
of marketing
therewith,
up to and
of the
of the
the
EML
and
other
including
the
time of trial;
D.
That,
DESA
such damages
and/or
Costco
999342.1
in addition,
as have
EML
been
and
sustained
Costco,
jointly
by DESA
up to the time of trial;
JA 0090
and
as a result
severally,
be ordered
of said infringement
to pay
to
by EML
E.
That
F.
That
all damages
awarded
to DESA
be trebled
by the Court
pursuant
to 35 U.S.C.
§ 284;
severally,
pursuant
G.
reasonable
H.
DESA
proper
That
attorneys'
That
DESA
recover
to 35 U.S.C.
EML
prejudgment
interest
§ 284 on damages
and
Costco,
fees pursuant
DESA
recover
DESA
have
jointly
awarded
and
to 35 U.S.C.
all its other
from
EML
and
Costco,
jointly
to DESA;
severally,
be ordered
to pay
to DESA
its
be incurred
by
§ 285;
costs
and disbursements
that may
in this action;
I.
That
J.
That the Court
trial by jury on all issues
grant to DESA
so triable;
such other
and further
Respectfully
submitted,
and
relief
as it may deem
and equitable.
Robb
S. _(TN
Bar No. BPR
WALLER,
LANSDEN
DORTCH
Nashville
City Center
511 Union Street, Suite
Nashville
TN 37219
Phone:
Fax:
11519)
& DAVIS,
PLLC
2100
(615) 244-6380
(615) 244-6804
James R. Higgins, Jr. (KY Bar No. 31790)
Robert J. Theuerkauf
(KY Bar No. 89068)
MIDDLETON
REUTLINGER,
2500
and Williamson
Brown
401 South Fourth
Louisville,
Avenue
KY 40202-3410
Phone:
(502) 584-1135
Fax:
(502)
Attorneys
999342.1
and
JA 0091
561-0442
for Plaintiff
PSC
Tower
just,
RECEIVED
26
UNITED
STATES
DISTRICT
COURT
THE MIDDLE
DISTRICT
OF TENNESSEE
NASHVILLE
DIVISION
FOR
DESA IP, LLC
a Delaware
Limited Liability
Company,
Bowling
Green, Kentucky
42102
CASENO.
8 04
0160
JUDGE
TRAUGER
MAGISTRATE
JUDGE
Plaintiff,
BROWN
V°
EML
TECHNOLOGIES,
LLC
-andCOSTCO
WHOLESALE
CORPORATION
Defendants.
ANSWER
TO
Defendant
Costco
answers
Desa
5,598,066
5,598,066
("Desa")
paragraphs
Admits
BY COSTCO
Wholesale
'066 Patent")
numbered
1.
patent
IP, LLC's
("the
specific
COMPLAINT
Corporation
Complaint
filed February
entitledTwo-level
laws of the United
specifically
denies
to infi'inge,
the '066 patent,
Security
States,
27, 2004
that the defendants,
and specifically
by and through
its counsel,
States
(the "Complaint").
Patent
Costco
hereby
Number
responds
to the
as follows:
System
of them,
denies
of United
States
(the '066 patent),
the remaining
or either
CORPORATION
of United
for infi'ingement
Lighting
but denies
(" Costco"),
for Infringement
of the Complaint
that this is an action
WHOLESALE
Allegations
JA 0092
which
is entitled
Number
arises
of paragraph
have ever infringed,
that Desa
Patent
under
1, and
or are continuing
to any of the relief
the
requested
and further
denies
that the relief
is without
knowledge
requested
constitutes
appropriate
remedies
for patent
infringement.
2.
EML
the allegations
of paragraph
3.
Is without
allegations
4.
5.
Admits
that this action
arises
the patent
denies
and is without
knowledge
allegations
allegations
that EML
knowledge
of paragraph
specifically
denies
7.
that it transacts
including
within
from and through
Denies
sufficient
lights
allegations
denies
Lights
referred
information
35 USC
all wrongdoing
denies
denies
those
and
as to the
same.
to in the Complaint
to form a belief
and, therefore,
States,
to form a belief
and, therefore,
business
nationwide
Costco
warehouse
has offered
of paragraph
by selling
and including
to Costco,
as to the remaining
allegations,
products
within
store in Tennessee
and
throughout
the
this judicial
within
to sell and has sold the EML
this judicial
Lights;
but
7.
the allegations
of paragraph
8 of the Complaint.
of paragraph
9 of the Complaint.
"
i
9.
Denies
the allegations
10.
Admits
that venue,
Court
for the Middle
USC
§1400
(b).
as to the
are infringing.
a major
which
as to
allegations.
to form a belief
information
the State of Tennessee
and that it also maintains
8.
sufficient
has sold the EML
and lacks
those
laws of the United
and further
5 of the Complaint
that the EML
the remaining
of the claim
6 of the Complaint
Admits
States,
under
and lacks
of paragraph
Admits
but is without
the substance
to form a belief
same.
of paragraph
6.
denies
denies
denies
information
the allegations
remaining
District
3 and, therefore,
sufficient
Admits
liability;
District;
and lacks
information
and therefore
4.
§I et seq.; however,
United
2 of the Complaint,
knowledge
of paragraph
and lacks sufficient
District
Costco
as to Costco,
of Tennessee
is without
as to the truth of the remaining
pursuant
knowledge
allegations
propei'ly
resides
in the United
to 28 USC §§1391
and lacks sufficient
of paragraph
JA 0093
States
Co) and (c), and/or
information
10 and therefore
District
denies
28
to form a belief
same.
11.
office
Admits
("PTO")
E. Schaaf,
Patent
1996;
that the '066 Patent
on January
and Wai-Shing
issuing
from
and a copy
28, 1997 in the names
P. Ko, entitled
application
and lacks sufficient
allegations
of paragraph
truth
Is without
truth
contained
Is without
of the allegations
14.
lighting
and lacks
in paragraph
to paragraph
Lighting
823, having
a filing
a belief
denies
12 and, therefore,
date of February
13,
"A", but is without
any allegation
that the '066
to form a belief
denies
information
13 and, therefore
14, repeats
said '066
generally.
information
sufficient
System",
Daniel
as to the truth of the remaining
systems,
sufficient
and trademark
L. Wiesemann,
as Exhibit
and specifically
in paragraph
contained
In response
same,
and lacks
knowledge
Security
patent
David
to the Complaint
to form
security
knowledge
of the allegations
13.
information
States
of the inventors
600,
is attached
of two-level
by the United
"Two-level
number
11 and denies
is for invention
•12.
serial
of the '066 patent
knowledge
patent
was issued
same.
to form a belief
denies
and realleges
as to the
as to the
same.
the foregoing
paragraphs
as if
fully set forth herein.
15.
truth
Is without
of the allegations
from EML
within
knowledge
contained
the United
No. E100WSB-C
(hereinafter
Lights
as Exhibit
is attached
any valid
claims
16.
that Costco
denies
in paragraph
States,
Admits
"The EML
information
15, except
True
Lights");
"B" to the complaint,
that EML
to form a belief
that it admits
Range-Optical
and denies
as to the
that it has purchased
Motion
and that a copy
has sold and continues
has sold and continues
Admits
for sale, the EML
Thermal
sufficient
Sensor
Lights,
of the packaging
that the EML
Lights
Model
of the EML
the infringe
of the '066 patent.
the remaining
17.
and lacks
allegations
to sell the EML
of paragraph
that Costco
Lights,
Lights
within
Lights
this judicial
to Costco,
District,
and
but
16.
has sold and offered
but denies
to sell the EML
the remaining
for sale, and is now selling
allegations
18.
Denies
the allegations
of paragraph
18.
19.
Denies
the allegations
of paragraph
19.
JA 0094
of paragraph
17.
and offering
20.
truth
Is without
of the allegations
knowledge
contained
21.
Denies
22.
In response
and lacks sufficient
in paragraph
the allegations
20 and, therefore,
of paragraph
to paragraph
information
22, repeats
to form a belief
denies
as to the
same.
21.
and realleges
the foregoing
paragraphs
as if
fully set forth herein.
23.
It is without
truth of the allegations
the EML
Lights
knowledge
and lacks sufficient
in paragraph
infringe
23 and, therefore,
information
denies
same,
to form
a belief
and specifically
as to the
denies
that
the '066 patent..
24.
Denies
the allegations
of paragraph
25.
States
that paragraph
25 is missing
from the complaint.
26.
States
that paragraph
26 is missing
from the complaint.
27.
Denies
28.
In response
the allegations
of paragraph
to paragraph
28, repeats
24.
27.
and realleges
the foregoing
paragraphs
as if
the foregoing
paragraphs
as if
fully set forth herein.
29.
Denies
the allegations
of paragraph
29.
30.
Denies
the allegations
of paragraph
30.
31.
In response
to paragraph
31, repeats
and realleges
fully set forth herein.
32.
remedy
Denies
is available
33.
remedy
the allegations
under
Denies
is available
the patent
the allegations
under
the patent
of paragraph
32, and specifically
laws of the United
of paragraph
AFFIRMATIVE
EML,
information
for its further
and belief,
avers
and separate
defenses
that any such
denies
that any such
States.
33, and specifically
laws of the United
denies
States.
DEFENSES
to the allegations
as follows:
JA 0095
of the Complaint,
on
FIRST
The Complaint
AFFIRMATIVE
fails to state a claim
SECOND
Each
claim
of patentability
U.S.C.
of the '066 Patent
specified
§§ 101,102,
103 and/or
equivalents
induce
others
claims
applicable
for damages
Code,
including,
of the conditions
but not limited
to, 35
infringe,
contribute
or by application
to the infringement
of the doctrine
of
of the '066 Patent.
AFFIRMATIVE
DEFENSE
are barred
AFFIRMATIVE
is barred,
either
by the defense
ofestoppel.
DEFENSE
in part or completely,
by operation
of the
statutes.
SIXTH
Desa
U.S.C.
to meet one or more
DEFENSE
literally
for relief
FIFTH
claim
States
or otherwise
either
any claim
FOURTH
Desa's
DEFENSE
AFFIRMATIVE
to infringe,
Desa's
can be granted.
112.
or non-equivalents,
By its conduct,
relief
for failure
in Title 35 of the United
has not and does not willfully
of, or actively
which
AFFIRMATIVE
is invalid
THIRD
EML
upon
DEFENSE
has brought
this action
§ 285, and entitles
Costco
AFFIRMATIVE
in bad faith,
to recover
Costco
prays
Complaint
making
its attorneys'
PRAYER
WHEREFORE,
DEFENSE
FOR
this an exceptional
fees incurred
case under
in defending
35
this action.
RELIEF
for judgment
against
Desa
be dismissed
with prejudice;
as follows:
ao
that Desa's
b.
that the claims
of the '066 Patent
be adjudged
and declared
not infringed
C.
that the claims
of the '066
be adjudged
and declared
invalid;
d.
that the Court
by
Costco;
defending
this action;
award
Patent
to Costco
its expenses,
and
JA 0096
costs and attorneys'
fees incurred
in
e.
that the Court
award
Costco
may deem just and appropriate.
Dated:
April
such other
relief
in law and in equity
as the Court
:y
23, 2004
Steven'A.
Riley (TN Bar No. 6258)
Nathan E. Morgan (TN Bar No. 022945)
BOWEN
RILEY WARNOCK
& JACOBSON,
1906 West End Avenue
PLC
Nashville,
TN 37203
Tel: (615) 320-3700
Fax: (615) 320-3737
Roger L. Cook (CA Bar No. 55208) (pro hac vice
application
pending)
TOWNSEND
and TOWNSEND
and CREW LLP
Two Embarcadero
Center, 8th Floor
San Francisco,
CA 94111
Tel: 415-576-0200
Fax: 415-576-0300
Attomeys
for Defendants
EML Technologies
LLC., and
Costco Wholesale
Corporation
CERTIFICATE
I hereby
and
first-class
certify
mail,
that
postage
a copy
pre-paid
of the
Phone:
has been
PLLC
TN 37219
(615)
Fax: (615)
E-mail:
foregoing
upon:
Robb S. Harvey (TN Bar No. BPR 11519)
WALLER,
LANSDEN
DORTCH
& DAVIS,
2100 National
City Center
511 Union Street
Nashville
OF SERVICE
244-6380
244-6804
rharvey@wallerlaw.com
JA 0097
served
via electronic
mail
James R. Higgins, Jr. (KY Bar No. 31790)
Robert J. Theuerkauf
(KY Bar No. 89068)
MIDDLETON
REUTLINGER,
PSC
2500 Brown and Williamson
Tower
401 South
Louisville,
Phone:
Fax:
Fourth
KY 40202-3410
(502)
(502)
E-maih
Avenue
584-
1135
561-0442
jhiggins@middreut.com
rtheuerkauf@middreut.com
ATTORNEYS
FOR
DESA IP, LLC
this the "L__._day
PLAINTIFF
of April,
2004.
JA 0098
UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF TENNESSEE
NASHVILLE
DIVISION
DESA IP, LLC
CIVIL
Plaintiff,
ACTION
NO. 3 04 0160
JUDGE ALETA A. TRAUGER
MAGISTRATE
JUDGE JOE B. BROWN
V.
EML TECHNOLOGIES,
LLC
WHOLESALE
CORPORATION
and COSTCO
Defendants.
AMENDED
Defendant
its amended
5,598,066
patent
5,598,066
Admits
entitled
("the '066 Patent")
numbered
denies
to infringe,
requested
Two-level
Complaint
Security
States, but denies
the '066 patent,
denies
System
the remaining
of United
States
(the '066 patent),
Allegations
constitutes
EML
States Patent Number
which
arises under the
of Paragraph
denies that Desa is entitled
that the relief requested
of United
submits
as follows:
or either of them, have ever infringed,
and specifically
hereby
27, 2004 (the "Complaint").
of the Complaint
Lighting
LLC
its counsel,
for Infringement
filed February
paragraphs
that the defendants,
and further
by and through
that this is an action for infringement
laws of the United
specifically
BY EML TECHNOLOGIES
LLC ("EML"),
to Desa IP, LLC's ("Desa")
to the specific
1.
TO COMPLAINT
EML Technologies
answer
Patent Number
responds
ANSWER
1, and
or are continuing
to any of the relief
appropriate
remedies
for patent
infringement.
2.
the allegations
3.
EML is without
of paragraph
Admits
knowledge
and lacks sufficient
2 of the Complaint,
the allegations
and therefore
of paragraph
information
denies
3 of the Complaint
JA 0099
to form a belief as to
those allegations.
4.
EML is without
the allegations
5.
of paragraph
Admits
§ 1 et seq.; however,
and liability.
is without
allegations
specifically
Admits
knowledge
denies
allegations
specifically
knowledge
and lacks sufficient
and further denies
information
and, therefore,
denies those allegations,
and lacks sufficient
information
7 of the Complaint
to in the Complaint
and, therefore,
denies
9.
Denies
the allegations
of paragraph
9 of the Complaint.
10.
Denies
that venue,
office ("PTO")
E. Schaaf,
from application
lacks sufficient
pursuant
knowledge
resides
to 28 U.S.C.
and lacks sufficient
of paragraph
in the United
§§1391
information
10 and therefore
28, 1997 in the names
P. Ko, entitled
serial number
is attached
information
and
denies
of the inventors
"Two-level
Security
600, 823, having
to the Complaint
same.
States patent and trademark
David L. Wiesemann,
Lighting
System",
a filing date of February
as Exhibit
Court
to form a belief as to the
Daniel
said '066 Patent
13, 1996; and a
"A", but is without knowledge
to form a belief as to the truth of the remaining
JA 0100
States District
Co) and (c), and/or 28 U.S.C.
that the '066 Patent was issued by the United
and Wai-Shing
copy of the '066 patent
as to EML, properly
of Tennessee
on January
but
Lights are infringing.
8 of the Complaint.
Admits
to Costco,
those allegations,
of paragraph
11.
and
to form a belief as to the remaining
the allegations
allegations
but
lights are infringing.
Denies
truth of the remaining
to Costco,
to form a belief as to the remaining
that it has sold the EML Lights referred
EML is without
denies same.
to in the Complaint
8.
§1400 (b).
all wrongdoing
to form a belief as to
and, therefore,
Lights referred
information
6 of the Complaint
that the EML
for the Middle District
issuing
denies those allegations.
and lacks sufficient
5 of the Complaint
to form a belief as to
laws of the United States, 35 U.S.C.
of the claim
that it has sold the EML
of paragraph
denies
knowledge
that the EML
Admits
the substance
of paragraph
of paragraph
7.
is without
EML denies
information
and therefore
that this action arises under the patent
allegations
6.
and lacks sufficient
4 of the Complaint,
EML is without
the remaining
knowledge
allegations
of
and
paragraph
11 and denies
invention
of two-level
12.
same, and specifically
security
Is without
truth of the allegations
13.
14.
knowledge
contained
Is without
truth of the allegations
lighting
contained
In response
systems,
any allegation
to paragraph
information
12 and, therefore,
and lacks sufficient
in paragraph
that the '066 patent
is for
generally.
and lacks sufficient
in paragraph
knowledge
denies
denies
information
13 and, therefore
14, repeats
to form a belief as to the
same.
to form a belief
as to the
denies same.
and realleges
the foregoing
paragraphs
as if
fully set forth herein.
15.
Admits
that it is selling within the United
Sensor
Lights,
Model No. E100WSB-C
Motion
partial
copy of the packaging
denies
the remaining
infringe
16.
paragraph
Admits
(hereinafter
of the EML Lights is attached
allegations
any valid claims
States,
of paragraph
Thermal
True Range-Optical
"The EML Lights");
as Exhibit
14, and specifically
and that a
"B" to the complaint,
denies
but
that the EML Lights
of the '066 patent.
that it is selling the EML Lights, but denies
16, and specifically
denies
the remaining
that the EML Lights infringe
allegations
of
any valid claims of the '066
patent.
17.
Admits
for sale, the EML
denies
that Costco has sold and offered
Lights,
but denies the remaining
that the EML Lights infringe
allegations
Denies
the allegations
of paragraph
18.
19.
Denies
the allegations
of paragraph
19.
20.
Is without
truth of the allegations
contained
21.
Denies
22.
In response
of paragraph
17, and specifically
any valid claims of the '066 patent.
18.
knowledge
for sale, and is now selling and offering
and lacks sufficient
in paragraph
the allegations
to paragraph
information
20 and, therefore,
of paragraph
to form a belief as to the
denies
same.
21.
22, repeats and realleges
fully set forth herein.
__.4 )
JA 0101
the foregoing
paragraphs
as if
23.
Admits
the EML Lights,
that the EML
but denies
the remaining
Lights infringe
24.
Admits
that the EML Lights
lacks sufficient
in paragraph
that it had knowledge
allegations
any valid claims
that Costco
infringe
information
of the '066 Patent
and that it has sold and is selling
of paragraph
23, and specifically
of the '066 patent.
has sold and is selling the EML Lights, and specifically
any valid claims
of the '066 patent,
and is without
to form a belief as to the truth of the remaining
24 and, therefore,
denies
denies
knowledge
allegations
denies
and
contained
same.
25.
States that paragraph
25 is missing
from the complaint.
26.
States that paragraph
26 is missing
from the complaint.
27.
Denies
28.
In response
the allegations
ofp_ragraph
to paragraph
27.
28, repeats
and realleges
the foregoing
paragraphs
as if
the foregoing
paragraphs
as if
fully set forth herein.
29.
Denies
the allegations
of paragraph
29.
30.
Denies
the allegations
of paragraph
30.
31.
In response
to paragraph
31, repeats
and realleges
fully set forth herein.
32.
remedy
is available
33.
remedy
Denies
under the patent
Denies
is available
the allegations
the allegations
under the patent
of paragraph
laws of the United
of paragraph
and belief,
33, and specifically
States.
AFFIRMATIVE
DEFENSES
defenses
to the allegations
denies
fails to state a claim
upon which
JA 0102
that any such
of the Complaint,
avers as follows:
FIRST AFFIRMATIVE
The Complaint
denies that any such
States.
laws of the United
EML, for its further and separate
information
32, and specifically
DEFENSE
relief can be granted.
on
SECOND
AFFIRMATIVE
Each claim of the '066 Patent is invalid
of patentability
U.S.C.
specified
§§ 101,102,
AFFIRMATIVE
EML has not and does not willfully
equivalents
induce
others
to infringe,
or non-equivalents,
applicable
claim
or otherwise
infringe,
either literally
Desa's
AFFIRMATIVE
claims for relief
for damages
of
DEFENSE
are barred
by the defense
of estoppel.
DEFENSE
by operation
of the
On information
EML to recover
and Trademark
for prosecution
of those patent
misrepresented
information
§ 103, material
and/or
rendering
the claims
conduct.
On information
this an exceptional
fees incurred
AFFIRMATIVE
applications
intentionally
of the claims
persons
violated
of the '066 Patent unenforceable
and belief, the subject
of a two-level
its product
security
literature,
in defending
of patent applications
and/or
withheld
that was, in view of the requirements
other responsible
this action.
for the '066 Patent
other persons
and/or
of 35 U.S.C.
their duty of utmost
candor,
under the equitable
includes,
light manufactured
and/or
in
responsible
intentionally
§§ 102(a),
of those patent applications,
information
without
(b)_ (e)
whereby
the
thereby
doctrine
of inequitable
limitation,
sold by Nippon
prior to the time that the inventors
JA 0103
case under 35
DEFENSE
Office, the inventors
to the patentability
inventors
Co., Ltd., including
its attorneys'
and belief, during prosecution
States Patent
knowledge
DEFENSE
this action in bad faith, making
§ 285, and entitles
inventors'
of the doctrine
is barred, either in part or completely,
SEVENTH
and/or
to the infringement
statutes.
Desa has brought
the United
contribute
or by application
SIXTH AFFIRMATIVE
U.S.C.
to, 35
DEFENSE
FIFTH AFFIRMATIVE
Desa's
but not limited
any claim of the '066 Patent.
FOURTH
By its conduct,
States Code, including,
112.
THIRD
of, or actively
for failure to meet one or more of the conditions
in Title 35 of the United
103 and/or
DEFENSE
the
Ceramic
made the alleged
inventions
o f the claims
the structure
of the '066 patent
and operation
and operation
of, including
manufactured
and/or
alleged
inventions
and/or
of said Nippon
the circuit
prior to filing the subject
Ceramic
diagram
sold by Heath Company
two-level
for, the Reflex
security
patent applications;
light; and, the structure
5315 single level security
prior to the time that the inventors
made the
of the claims of the '066 Patent.
PRAYER
WHEREFORE,
FOR
EML prays for judgment
against
b.
that the claims of the '066 Patent be adjudged
and declared
not infringed
c.
that the claims
of the '066 Patent
be adjudged
and declared
invalid;
d.
that the claims
of the '066 Patent be adjudged
and declared
unenforceable;
e.
that the Court award to EML its expenses,
f.
be dismissed
Desa as follows:
that Desa's
this action;
Complaint
RELIEF
a.
defending
light
with prejudice;
costs and attorneys'
by EML;
fees incurred
in
and
that the Court award EML such other relief in law and in equity as the Court may
deem just and appropriate.
Dated:
February
1, 2005
Respectfully
submitted,
By:
Steven A. Riley (TN Bar No. 6258)
Nathan E. Morgan (TN Bar No. 022945)
BOWEN RILEY WARNOCK
& JACOBSON,
1906 West End Avenue
Nashville, TN 37203
Tel: (615) 320-3700
Fax: (615) 320-3737
PLC
Roger L. Cook (CA Bar No. 55208) (admitted
hac vice
rlcook@townsend.com
Angus M. MacDonald
(CA Bar No. 212526)
(admitted pro hac vice)
ammacdonald_townsend.com
pro
TOWNSEND
and TOWNSEND
and CREW
Two Embarcadero
Center, 8th Floor
San Francisco, CA 94111
LLP
JA 0104
Tel:
Fax:
415-576-0200
415-576-0300
Attorneys for Defendants
EML Technologies
LLC and
Costco Wholesale Corporation
6020013J
vl
JA 0105
F LED
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT
OF TENNESSEE
NASHVILLE
DIVISION
2005 FEB I $
U-,% I)I_TK]CT
DESA
IP, LLC,
Civil Action No. 34)4-0160
Judge Aleta A. Trauger
Magistrate Judge Joe B, Brown
Plaintiff,
EML TECHNOLOGIES,
LLC and COSTCO
WHOLESALE
CORPORATION,
Defendants.
STATEMENT
OF STEVEN
B. CARLSON
Personal
t.
2.
3.
UNDER
and Professional
LOCAL
RULE
12(c)(6)(c)
Background
My name is Stereo B. Carlson.
I have been retained in connection with the abovenamed lawsuit as an expert in the field of lighting control systems ar,d their design.
I received my undergraduate
Bachelor of Arts degree m Physics from Whitman
College in 1974.
[i have over 30 years exponent*
m me aestgn
anct aeve,,iopmcnt
_ntr,-_ I
of _
Many of these products were the
to
err type, including the.first
computerized
lighting control system used on Broadway,
the first microprocessorbased lighting theatre lighting control system, and the first microcomputer-controlled
wall box dimmer, among others. My exl_rience
extends to project, group, and
corporate managemeaat.[l
mt listed _ ma mvet_tor on 9 patents m tlae _tectroru_
fleid I
4.
[Ismtl_t_rotroq_r40_pap_,
.
lig,htia 8 _asuhul lad _mi._
_,ttklu_;.
• Residential
Ethemet Stu(ty Gro_EE
.........
e_,aaungt_ ]
I Additionally,
I am currently Cnatrman
802.3. Our committee
is charged with
me
setting standards for local and metropolitan
area computer networks.
As Chairman,
my duties are to move the project forward in a timely fashion while adhering to all
rules of the IEEE Standards
Association.
I also serve as the Executive
Secretary of
IEEE 802.3, and was the Chair of 802.3af, the Power-over-Ethemet
standard. I also
served as the Co-Chair of the Entertainment
Services and Technology
Association
Control
5.
Protocols
Working
Group
Network Task Group.
I currently am the President
and was the Chair of the ESTA
of High Speed Design,
Inc. (HSD).
Advanced
Control
HSD is a high-tech
consulting firm foo.ming on embedded networking
for industrial control applications.
In addition, HSD provides product design and business consulting
for companies in
the architectural
lighting/energy
management
and entertainment
lighting indush3,.
Clients include Nortel Networks,
Strand Lighting, Pathway Connectivity
and the
Lagrande
Group,
among
others.
JA 0106
CO;
,_
,
I did not participate
(the "'066 Patent").
Plaintiff
.
in the preparation
or prosecution
of U.S. Patent
Further, [ am not related or have any affiliation
or the Defendants
[ understand
to arrive
I have reviewed
the '066 Patent.
9.
I have
been
the '066
asked
of My Testimony
will conduct
Patent
circuits,
of the '066
Patent
Will Raper.
Moreover,
I have been
asked
The ix
In my experience,
all control
that desired
buildings
are conscious
occupied.
Buildings
logic
Logic
problems
result
of the amount
and couple
the output
of that sensor
so that when
the room
is not occupied
lights
to a clock,
block
is
hearing,
relating
to teach
diagrams,
of the
terms
by
found
in the
to the
Circuits
by first determining
the desired
As an example,
used to light rooms
when
through
in
and to be demonstrated
to a problem.
to detect
the sensor
disclosed
skill in the art relevant
and Control
begin
of which
been asked
as to what certain
of ordinary
in) a room,
consequently
the building
simplest
form, the desired
circuit
of electricity
sensors
I have
constructed
is a solution
use occupancy
circuitry
the Markman
Further,
in control
to a person
of Control
result.
often
during
to give my opinion
mean
the purpose
of the '066 Patent.
the electrical
technology.
as well as the device
claims of the '066 Patent
'066 Patent.
Most
information,
as expressed
hearing"
terms
and I understand
and the relevant
in this case.
a "Markman
of the claim
to give tutorial
the logic of control
ll.
Purpose
interpretation
to the '066 Patent
10.
than my participation
that the Court
at a proper
8.
claims
other
No. 5,598,066
to either the
people
a control
the lights
which
many
are not
are in (or are not
circuit
are turned
responsive
to
off and
uses less electricity
and its operating
cost is less. In its
control result would be achieved by simply wiring the
so that after
a certain
time (say, 6:00 PM) the lights
are turned
out.
The following
diagrams
are drawn in Orcad 9.2, the electronic
design program
that I
use on a daily basis to do circuit design work. The term "Control
Function",
wellknown electronic
engineering
term, is used to indicate the concept
Desired."
The control logic of such a device would be:
of "Control
Result
LAMP
CONTROL
FUNCTION:
THE TIME
AFTER
IF YES, THEN TURN
THE UGHT
12.
many
so simply
turning
occupancy
sensor
would
OFF
SWITCH.
However,
which
IS
6PM?
times
in an office
the lights
could
building
find it necessary
off after 6:00 PM is not acceptable.
be a set of contacts
send a response
people
signal
to detect
to turn the lights
JA 0107
when
to work
at night,
To address,
this, an
the door
on or off.
is swung
The lights
open,
would
be
turned on when the door is first swung open because an open door is an indication
occupancy. The control logic of this simple device is:
CONTROL FUNCTION:IS
THE DOOR SWITCH
OPeJq?
13z
_o
IF YES, THEN TURN ON
THE LIGHT SWITCH.
of
s_
R _//ITOq
This straightforward
control, or "on-off."
13.
sort of control
logic is known in the trade as "bang-bang"
However, this control logic cannot tell if someone has just entered the room or has
left the room, because the detected condition (door movement making or breaking the
contacts)
is the same for both entering
t _c.,alaon
and leaving. I I'hus, an ira:teased
ts necessary to consistently
room is .or oe=t ,
_vet
o1_ l
act"d.evethe _lm_lllt-_t_lt
j
14.
A manual
occupied
approach
occupant
15.
The next level of sophisticationmight
be to add a counter to the contacts, so that the
lights would be turned off only after every other door swing (first door swing, turn on
lights because person entering room; second door swing indicates person left room so
turn off lights). The control logic for this control would be ex 9ressed as:
over-ride switch could add_ss this problem, so that when the room is
the user can "lock out" the control circuit and keep the lights on. This
is helpful but does not address the problem of what happens when the
leaves and forgets to turn off the lights or the manual over-ride.
CONTROL
FUNCTION:TURN
UGHTS ON ON FIRST
__
°_
SWITCH
16.
DOOR COUNT;TURN
LIGHTS OFF ON
SECOND DOOR
COUNT.
SWING
COUNTER
Note that the desired result (lights off when room unoccupied) is the same as in the
second level of sophistication
(occupancy sensor in the form of electrical contacts).
This new level of sophistication has problems as well. For example, if a second
person enters the room while the first person is still in the room, the control circuit is
JA 0108
LAMP
will only record the second door swing, and the lights
false detect of an "exit."
Although
the desired control
will turn off. This would be a
result is still the same (lights
off when room unoccupied),
this second level of sophistication
does not consistently
achieve the control result because of the possibility
of a false detection.
17.
A further
level
of sophistication
lights on for a period
and keep
would
a timer,
of time after the first door swing.
them on for the specified
The control
be to employ
time no matter
logic of this approach
would
which
This would
how many
times
would
keep
the
turn on the lights
the door swung.
be:
CONTROL
LAMP
FUNCTION:TURN
LIGHTS ON ON FIRST
DOOR SWING;LEAVE
ON UNTIL TIMER
EXPIRES.
02
R SWITCH
___
SWITCH
02
TIMER
While
this would
desired
control
address
result.
J
the false detect
For example,
problem,
if the timer
it may or may not achieve
kept the lights
the
on for five minutes
and the person left the room after one minute, the control result (lights off when room
unoccupied)
would not be achieved 80% of the time period.
Even worse, the timer
could
18.
turn the lights off while
A still more sophisticated
room. When the motion
the lights.
someone
control circuit
sensor detected
As long as the motion
This solves
was in the room.
the problem
would be to use a motion sensor
motion, it could close the circuit
detector
sensed
of false detects
the lights going out while the room
logic of this approach
would be:
(second
motion,
the lights could
door swing)
was still occupied
(time
inside the
to turn on
stay on.
and also the problem
expired).
of
The control
LAMP
CONTROL
1
FUNCTION:WAS
THERE A MOTION
MOTION
DETECTOR
EVENT?
--
02
IF YES, THEN TURN
ONTHE
SWLTCH
LIGHT
SWITCH.
Note that the control
(electrical
lights).
contacts
achieving
responsive
to swing
The only difference
door swing
occupant
logic is the same as for the first occupancy
(the sensor
is likely
would
to be).
the control
event
of door
is that the "sensor"
be placed
The control
is enhanced,
to send a signal
is detecting
sensor
to turn on/off
motion
so that its field of detection
result
is the same
because
JA 0109
device
other
is where
but the consistency
the sensor
the
than the
the room
of
is more sophisticated.
19.
Again, the lights don't know the difference--they
are being turned on or off no
matter what sensor is employed.
The motion sensor control is not a complete answer, for thelmou_ seasm detects I
lmotion of both a person and an object, tThus the motion sensor may not be able to
discriminate between motion of a person and the motion of the opening door. And
sometimes a person will remain motionless for a sufficiently long time that the time
will expire. Or perhaps there is a barrier in the room which blocks the energy of the
person in motion, so that the motion sensor does not detect motion and in the absence
of detection "thinks" the room is unoccupied.
The lights would be turned of, which is
another form of false detect. This false detect can be addressed by placement of
multiple motion sensors to increase the field of view of the motion sensors. In this
situation the control logic will be:
DETECTOR
I MOTION
#1
DETECTOR
I MOTION
_2
-LAMP
--
CONTROL
FUNCTION:WAS
THERE A MOTION
EVENT ON ANY OF
THE MOTION
SENSORS?
IF YES, THEN TURN
ON THE LIGHT
O_;
swnc_
SWITCH.
DETECTOR
I MOTION
#3
--
This control logic will materially reduce false detects, but note once again that
controlled component doesn't know the difference. The lights are only being
switched on and off. There is a drawback to this approach, because the motion
can only sense motion of the room occupier after he/she has entered the room.
for a period time the room will remain dark until the person is fully in the room
the morion detectors have "seen" them.
20.
the
sensor
Thus,
and
] A_10auonai revels ot soplu_ucatton]can be built into the occupancy sensor. For
example, the motion sensor can be a pressure wave sensor to detect when the door is
opened (the opening of the door will create a "woosh" of air) to first turn on the
lights. This will turn on the lights before the person has entered the room. In this
situation the sensor could also include a motion detector aimed to detect motion in an
area away from the door where a person is likely to be. Thus, the ultrasonic wave
sensor of this device would turn on the lights when the "woosh" from door was
sensed as the door was opened, and keep the lights on as long as the motion detector
sensed motion of a person in the room. The control logic of this device would be:
JA 0110
HUMAN BODY
DETECTOR
MOTION
Jl- PIR
I
LAMp
CONTROL
FUNCTION:WAS
THERE A MOTION
EVENT ON ANY OF
THE MOTION
SENSORS?
IF YES, THEN TURN
ON THE LIGHT
SWITCH.
IL_OTION
ECTOR
"]'RASONIC
DOOR'WOOSH"
O 2
SW_CH
Note again that the controlled event is the same. Only the level of sophistication
of
the sensors used, coupled with control circuitry to avoid false detects arid make the
device more user friendly (lights turned on before entering room) has changed. Note
also that the action of the lights responsive to the sensors as controlled by the control
circuit (lights on while room occupied, lights off when not occupied) remains the
same.
21.
The foregoing discussion is relevant to interpretation of the claims of the '066 Patent.
In keeping with the above discussion, and consistent with my experience as a
designer of electronic control circuits, I note that the control logic for claim 6 is as
follows:
MOTION
DETECTOR
'...SENSOR
--
ARRANGEMENT...'
LIGHT
SENSOR
CONTROL FUNCTION:
IS IT DARK OUTSIDE? IF YES,
TURN ON THE LAMP TO A LOW
LEVEL.
IS THERE A MOTION EVENT? IF
YES, QUICKLY TURN THE LAMP
TO HIGH LEVEL.
KEEP THE LAMP AT THE HIGH
LEVEL UNTIL THE TIMER
EXPIRES IF NO MORE MOTION
EVENTS ARE SEEN. WHEN THE
LJumP
1
TIMER EXPIRES, RETURN TO
THE LOW LEVEL.
'..CONTROL CIRCUIT COUPLED TO THE LAMP
AND RESPONSIVE TO THE ,SENSOR
ARRANGEMENT.,.'
'...LAMP WHICH CAN EMIT
A FIRST LEVEL OF
ILLUMINATION..."
NOTICE THAT THE CONTROL LOGIC
OF CLAIM 6 DOES NOT REQUIRE
"PULSE COUNTING" TO MAKE THE
INVENTION O P EP,ATIONALI
22.
The '066 patent describes a clever idea capable of being carried out by relatively
simple electronics. The '066 patent is not overly tecbr/ical. I believe a person of
ordinary skill in the art, withlreference to the '066 Patent, would be a person who
JA0111
,
i
5_
k
..........
and two years of pr-acti___
orapersonwlt
a g sc to
egree
and about five years industrial
cxt)erience in building electrical lighting products which contain basic control circuits
wolEkt also possess ordinary skill in the art. These persons are fully capable of
t_n:terstanding and Lrnplementing the technology of the '066 patent. In my consulting
bt:_iness I have trained junior design engineers in the use of PIR detectors, control
circuits, and microcontroller
design. These individual's had bachelor's degrees in
electrical engineering and one to two years' industrial experience.
When I first read
_.l_e'066 patent, the abstract was sufficient for me to understand the nature of the
itavention. I then read the claims, which set for a specific invention for each claim and
how :hey were related. I read the specification last. In my professional capacity
p_-jvi(ting consulting services I frequently read and comment on patents. I have found
_f_t_'it is best to read the abstract, then the claims, and finally the specification. The
s pecitication is simply an example of ONE possible embodiment of the invention.
;..i::ing _he '066 patent as an example, ifI were to implement a design to the claims of
_hc patent today, i_ would be done utilizing a microcomputer
rather than analog
control circuitry.
i b.ave been asked to explain the difference between analog and digital circuitry.
:\_:dog circuits operate with continuous (sometimes called linear) values of voltages
a,d currents. The magnitude and frequency of these voltages and currents is generally
:_n,_!,)gous to some physical phenomenon--sound,
light, heat. acceleration, velocity,
e',c. Most early electronic devices were analog in nature. For example, the
cer_?,c.:_t_re of a vat in a chemical plant might be monitored by a thermocouple.
A
_err_._ocoupte is a device that produces a voltage that is roughly proportional to its
_cm?erature. This voltage may be connected to a sensitive voltmeter, with the dial
calibrated in units of temperature. The voltage produced by the thermocouple
is
a_alogous to the temperature. The thermocouple
voltage might also be connected to a
voltage comparator circuit to provide an alarm or automatic shutoff if the temperature
reaches a defined condition. This would be an example of an analog control circuit.
Miltions of similar circuits are in used everyday in automobiles, office buildings,
factories, etc. to do simple controls. Digital circuitry does not.use continuous voltages
or currents to represent physical quantities. Rather, two voltage and current levels are
defined, corresponding
to "on" and "off." The exact values of the voltages or currents
z_re not important. A popular logic family in use for over thirty years defines a voltage
of between zero and 0.8 volts as "off", and a voltage greater than 2 volts as "on."
Thc.se voltages levels define logic levels, with "off" being logic 0 and "on" being
logic "one." One advantage of digital logic is the wide tolerance in the signal levels
that represent the 1 and the 0. As an example of digital logic, consider this problem.
A l_omeowner wishes to have art electrically operated garage door, but only wants the
door control to be operational if the garage lights are switched on. This real-world
exavapl¢il/ustr'ates
a common logic function, the "logical AND."
The problem
JA0112
would be stated thusly: "Open (turn ON) the garage door only if the garage door
button is pushed AND the garage light is ON." This would be written as a logical
equation
in this way:
GARAGE_DOOR_ON
= GARAGE_BUTFON_ON
If GARAGE_BU'YrON_ON
+ GARAGE_LIGHT
is 1 (true), and GARAGE_LIGHT_ON
ON
= 0 (false), then
GARAGE DOOR_ON is 0 (false), and the door stays closed. The logical AND has
not been satisfied.
24.
Digital logic makes decisions based upon ON, OFF, l's and O's, TRUE and FALSE.
There are only two possible quantities. From tNs humble beginning comes the digital
device that has become the workhorse of the modem world: the digital computer.
Computers are made up of vast amounts of logic circuitry that can respond to
program instructions to perform various computational
and control tasks. A
spreadsheet program on a computer can calculate complex financial data, while a
word processing program running on the same computer can perform calculation to
precisely format the text on the screen. The same computer, running a different
program, can provide entertainment
in the form of a realistic adventure game with the
computer calculating the position of billions of picture elements each second to create
the illusion of a living, moving world. Irt each case, the electronic hardware of the
computer is the same. Running different software programs performs the different
functions. Analog and digital electronics are two different ways to solve problems. It
is not a question of one being superior to the other. Many electronics devices are a
combination of the two.
25.
I have been informed that there is a dispute over whether certain terms of the '066
Patent are to be interpreted as "means-plus-function"
terms or as structural terms.
The following is my opinion as to how persons skilled in the electronics art interpret
the identified terms.
26.
[ Control Circuit Means - As a person skilled in the electronics arts, I am familiar with
the way that electronics patents are generally written, and the term "control circuit
means" connotes structure to me. The term refers to the intemonnection
of a number
of electrical devices and/or components
to achieve a desired result. Not only that, but
"control circuit means" also indicates to me that many different structures are
27.
-
"
- As a person skilled in the electronics
means" most certainly
connotes
structure
arts, the termT'switching
to me.
are very
gners o power electronics
JA 0113
will use the term "switch"
to ]
,Le,.
A am,theadditioa
of"means"
28.
componen
an
IGBT, for example, and the method of its construction, are the province of the
semiconductor
process engineer. The power engineer who uses them simply must
understand their terminal characteristics,
daeir "black box" behavior as it were. The
29.
same is true for a photocell. It is enough to understand that the resistance of the
device changes as a function of the amount of light falling on its surface.
M..e.ans Responsive to Detection - As a person skilled in the arts of eiectromcs, the
term "means responsive to detection" connotes structure to me. There is some
structure present that responds, i.e., reacts to changes in the circuit's operating
condition. For example, the most widely udiizcd computer networking standard in the
world, Ethemet, has the formal name of "'Collision Detect Media Access]Carder
Sense"
(CSMA/CD).
In simple English,
this says "The Ethemet
circuitry
detects
(responds to) data collisions by sensing (discovering or detecting the existence of) the
presence of a carder signal". Again, the addition of"means"
does not subtract from
or change the connotation to me. I am therefore of the opinion that the terms
"detection" and "responsive" have their ordinary meaning. An example is found in
Claim 6, where control circuitry is present torespond to the output of the motion
sensor, the daylight sensor, and the timer circuitry to propedy return the level of the
lamp to the low level of illumination, once the time interval has passed, no further
motion has been detected, and it is still dark outside.
30.
Means for causing such switching means to be actuated - As a person skilled in the
arts of electronics, the term "means for causing such switching means to be actuated'"
connotes structure to me, due to the active verbs "causing" and "actuated." As has
been previously stated, there are many types of switches that may be used to make or
JA 0114
,4
break
the path of current
structure
tbr making
base of a transistor;
in an electrical
circuit.
the switch
operate--e.g,
the circuitry
to supply
To "actuate"
the circuitry
a voltage
a switch
to supply
terms
from or change
"switching
example
the switch
at various
illumination
31.
means
to me. I am therefore
to be actuated"
simply
Means
in Claims
points
9,10,
indicates,
and 11 where
in the line half-cycle
into the
or
link; or the simple
of"means"
does not
of the opinion
"to control
circuitry
to provide
that the
the switch."
is provided
various
An
to turn on
levels
of
from the lamp.
responsive
electronics,
to
the term "means
me. There
is electronic
This may be some
output
(respond)
contained
when
within
means
- As a person
skilled
responsive
to said sensor
means"
circuitry
sensor.
of some
comparator
from the sensor
may be applied
a microcomputer
in the arts of
connotes
type that will respond
sort of analog
the input
the output of the sensor
circuit,
exceeds
structure
to the output
which
(ADC)
an
Alternatively,
converter
chip. The analog-to-digital
of the
will produce
its threshold.
to the analog-to-digital
to
circuitry
converter
measures
the input voltage
voltage. A simple example
and translates
it into a digital value that represents
that
would be an input voltage that may range from zero to 10
volts.
this range
[f the (ADC)
100%),
divides
then an input
This digital
voltage
number
microcomputer's
code
memory,
from or change
term "means
electronics
in Claim
provided
Light
presence
sensing
the presence
and absence
that may utilize
circuitry
"means"
that the term "light
apparatus
structure
phototransistors,
the output
absence)
dictionary
sensing
and photodiodes.
to achieve
means
definition,
devices
that the
of the
of such a response
and daylight)
outputs.
the
in the arts of electronics,
the
to said apparatus
to me.
output
for detecting
Circuitry
is coupled
is present
to control
responsive
external
to said
to the apparatus)
of such light sensors
a desired
circuit
circuitry
response.
lighting
JA 0115
would
include
can determine,
level of daylight
the fight of day provided
in the architectural
to light external
of the
and absence of daylight"
simply indicates the
to produce the desired response.
The sensor
The control
sensor,
the desired
of the opinion
for detecting
structure
the light (light
it. Examples
of the daylight
does not
or absence of daylight."
Again, the addition of
or change the connotation
to me. I am therefore
so as to allow
to fall upon
(motion
whose
The program
the structure
to said apparatus
skilled
connotes
action.
the level of illumination
to light external
of light sensors,
for detecting
the presence
of the electronics
required
be arranged
(daylight)
- As a person
of daylight"
types
sensor
of 50.
in the
of "means"
An example
determines
to various
responsive
to "detect the presence
does not subtract from
opinion
common
various
response.
to light external
stored
will take some
indicates
to zero to
to a value
number
the addition
simply
circuitry
of daylight
means
code
the desired
in response
be converted
to me. I am therefore
means"
control
responsive
and absence
term "light
would
to produce
(corresponding
digital
Again,
the connotation
10 where
means
to another
and the program
to sensor
by the lamp
sensin_
level of 5 volts would
to the sensor.
responsive
required
is found
into 100 values
may be compared
will "be responsive"
subtract
32.
the connotation
of this is found
current
a
to the gate of a MOSFET
[GBT; to produce a light beam to activate an optically
coupled
closing of the contacts
of a switch by hand. Again, the addition
subtract
connotes
"Daylight"
(including
by measuring
its presence
is used in its ordinary
by the Sun. "Daylight"
industry,
of the Sun
photocells,
sensors
and are used in many
are
lighting
or
33.
control systems to measure the amount of external illumination (daylight) in a space.
In fact, this term is so common that it is used by the U.S. Department of Energy at the
Lawrence Berkeley National Laboratory
(http'.llwindows.lbl.govldayli_htingi3
in
their energy conservation group. If there is sufficient daylight illumination,
the
lighting system will reduce the amount of artificial light, or turn it off altogether in
order to conserve energy. Therefore, a person skilled in the art would understand the
concept of daylight and the requirement for a daylight sensor/detector
device.
Enhancements
to the basic device - In any electronic circuit, enhancements
can
always be made to improve and enhance its performance. Enhancements
are done to
insure that the de,sired performance result is met, but may not be needed or desired for
applications that have a different requirement. This is ce_ainly seen in the wide
variety of choice in the consumer electronics field. Loudspeakers may be found
costing a few tens of dollars per pair, all the way up to several tens of thousands
dollars per pair. Yet they are both loudspeakers,
and the inexpensive speakers-may
perform to the satisfaction of a great majority of listeners. The enhancements
provided by the expensive speakers may not be necessary for loudspeakers
used on an
outside patio deck, for example. In the same way, patent claims may be written to
provide for enhancements
that are not required to provide the basic functionality of
the inventionJ___,_
34.
_
__
l
Mat pulse counting as set torth in the specification ot _recited
in
Claim 12. I further note that pulse counting of Claim 12 is recited as part of the
control circuit and not as part of any sensor. In my experience with patents and
electronics, pulse counting is an enhancement
to improved the performance of the
device described in the '066 patcnt. The fact that "'pulse counting" is recited in claim
L2 and not in any other claim expresses intent to omit the enhancement of "pulse
counting" as a required element of the claims where pulse counting is not recited.
Based on my reading of the opening and rebuttal Markman briefs in this case, I
understand that the Defendants in this case contend that the claims should be
interpreted according to 35 U.S.C.§ 112 (paragraph 6). I have had explained to me
the requirements of interpreting claims under 35 U.S.C. § 112 (sixth paragraph)
which the lawyers have called either "means plus function" claims or "112/6" claims.
35.
112/6 claim term, one must identify
36.
the function
a means
that is being performed
and then
point to structure in the specification of the patent (text or drawings) which performs
that structure.
While [ continue to believe that 112/6 should not be applied to interpret the disputed
claim terms of the '066 Patent, I have participated
JA0116
with DESA's
lawyers
and
37.
.
.
. the disputed claim terms as if 112/6 were to apply, hath,at
an_ysis, we have created a PowerPoint presentation reciting [1] the claim term, [2]
the function performed by the recited claim term and [3] the structure set forth in the
specification of the '066 Patent (drawing reference(s) or tex0 which carries out the
recited fimetion. This presentation is attached.
As a person of ordinary skill in the electronics art, I also state that a person (myself or
the engineers whom I have trained) could create different, but equivalent, structure to
carry out the functions recited in the claim terms. [For example., while the "sensor
means" of claim I is sensing motion of a person or object by fine well known passive
infrared sensor ("PIP,"), the same function could be performed by the equally wellknown break beam, where a signal is interposed between two sensors and motion is
detected when that signal is "broken" by a person or object_ _A common example of a
break beam detector is the safety device on an automatic garage door, which when
broken by a child or a pet will prevent the garage door from closing on the. child or
pet. The employment of a PIP, or a break beam sensor is one of mere choice, to a
person of ordinary skill in the art, and they are interchange.ably equivalent.
CERTIFICATE
OF SERVICE
It is hereby certified that a copy of the foregoing Statement was served, via first class
U.S. mail, postage prepaid, and by e-mail (.pal0 upon Stereo A. Riley, Bowen Riley Wamock &
Jacobsen, PLC, 1906.West End Avenue, Nashville, Tennessee 37203; mad upon Roger L Cook,
Arigus lvl. MacDonald, Townsend, Townsend & Crew, LLP, Two Embarcadero Center, Eighth
Floor, San Francisco, California 94111-3834, Counsel for Defendants, this
1_
_ day of
c., ,'_/,
2005.
C_F,
JA0117
DESA IP, LLC
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F LED
2005 FEB 1 8
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF TENNESSEE
NASHVILLE
DIVISION
U.S.
DI,_;TJRICT
MIDDLE
DESA
COUR"
DISTRICT
O[2
IP, LLC,
Civil Action No. 3-04-0160
Judge Aleta A. Trauger
Magistrate Judge Joe B. Brown
Plaintiff,
V.
EML TECHNOLOGIES,
LLC and COSTCO
WHOLESALE
CORPORATION,
Defendants.
STATEMENT
OF MARK
J. PATTERSON
Personal
°
and Professional
My name is Mark J. Patterson.
the highest
court in the State
Registered
PatentAttomey
Office
("PTO"),
& Patterson
Alabama.
I have
of Tennessee,
practiced
has
RULE
12(C)(6)(C)
at law and licensed
"IN Bar No. 7186.
to practice
No. 30,412.
which
LOCAL
Background
I am an attomey
licensed
Registration
Waddey
UNDER
before
Additionally,
the U.S. Patent
I am a shareholder
offices
in Nashville,
intellectual
property
Bachelor
of Science
to practice
before
I am a
& Trademark
in the law firm of
Tennessee
law, particularly
and Huntsville,
including
patent
law, for the past 24years.
.
I received
(EE)
.
from
my un(tergraduate
Comell
University
Florida State University
in 1980.
From 1973-1977,
a design
with
Motorola
devices
(i.e.,
I'was
I designed
'
pagerdbeepers).
in 1973
I received
I became
engineer
analog
and
When
degree
a Registered
for Motorola,
digital' circuits
I left Motorola
JA 0135
in Electrical
my Juris
Doctor
Patent Attorney
Inc.
During
for portable
my title was
Engineering
degree
from
in 1981.
my employment
communications
Senior
D,3
Design
-:"
Engineer.
From
1986 - 2002, I was an Adjunct
School of Law, teaching annually
.
In my law practice,
"prosecution"
I regularly
of a patent
their inventions.
of my patent
eleel_onie,
prosecution
software
protection
in countries
°
A patent
is a grant
through
Office
the
("PTO").
"patentee")
A patent
into the United
performs
any
"without
permission"
"infringer."
°
Assuming
of these
grants
acts relative
protection
for
much
for electrical,
been
to the issuance
directly
of more than
to secure
patent
that
of the U.S.
owner
to a patented
government,
Patent
(sometimes
using,
are covered
holder,
States
Trademark
referred
selling,
law
to as the
offering
by the patent.
invention
U.S. patent
and
issued
to sell or
If anyone
in the United
terms
such
States
person
an
35 U.S.C. § 271.
an invention
of a "bargain"
exclusionary
authority
items
protection
and experience,
inventors
called
States Patent
others l_om making,
States
patent
that I have
from the United
the patent
of the patent
102], utility [35 U.S.C.
product
administrative
Secrets.
States.
and Parts of a United
the right to exclude
impoIting
I estimate
I and my firm represent
fights
and Trade
States
patent
leading
University
the PTO (a process
training
seeking
inventions.
of exclusive
delegated
United
engineering
other than the United
The Nature
before
to secure
of patent applications
In addition,
at the Vanderbili
Trademarks,
inventors
work has involved
in the prosecution
200 U.S. Patents.
represent
of my electrical
and computer
involved
a course in Patents,
application)
Because
Professor
rights
meets the requirements
of patentability
§ 101] and nonobvionsness
between
of the patent
the inventor
[35 U.S.C.
§ 103]), a patent
and the government.
grant, the inventor
JA 0136
[35 U.S.C.
(novelty
must provide
In exchange
§
is the
for the
in a "specification'
portion
of his/her
application
the manner
of making
will enable
a person
make
of ordinary
the "inventor's
skill
undue
bargain"
§ 112, first paragraph,
.
The written
description
out the invention,
if the inventor
.
A patent
"property"
the specification
description,
(35 U.S.C.
comes
disclosure"
by the patent
disclosure,
§ 112 first paragraph).
legal description
inside metes.! and b_unds
[a] the claims
The claims
which
of real property
world
a patent.
of carrying
35 U.S.C.
patent
§
after
the scope of the
paragraph),
and [b]
sets forth the written
part of the patent
are analogous
conveyed
without
exists.
define
in the "teaching"
of the real property
In
embodiment."
§ 112 second
of a patent
mode"
the printed
by statute are part) which
and best mode
§ 112.
and why 35 U.S.C.
the "best
becomes
(35 U.S.C.
to
of the invention.
that such a best mode
(which
pertains
the relevant
document"
is often referred to as the "preferred
(of which the claims
enablIng
and bounds
believes
into two basic parts,
rights granted
teaches
must also disclose
In the application
the "best mode"
is divided
an "enabling
35 U.S.C.
terms as
will grant the inventor
to as a "teaching
of the patent
112, first paragraph.
allowance),
is, if the inventor
is said to require
the invention
experimentation.
the government
is often referred
and must describe
in such full, clear and concise
in the art to which
without
how to make and use the invention,
That is why a patent
description of the invention,
and Using the invention
and use the invention
other words,
a written
by a deed.
the permission
to the metes
If a person
of the
owner_
I
real estate law labels sucti person a "trespasser;"
sells a product
owner,
patent
which
is ihside
law labels
the claim
such person
terms
similarly
without
an "infringer."
JA 0137
ifa person
makes,
the permission
When
infrIngement
uses, or
of the patent
is believed
to exist, patent
attomeys
often
will say that a patent
claim
"reads
on" an "accused"
product.
9.
With reference
describe
to U.S. Patent No. 5,598,066
the different
sections
of a patent
The "Audience"
10.
Patents
are written
art to which
the invention
pertains,
skill in the art (oRen shortened
similar
to a "reasonable
• general
public,
advanced
with standing
or judges
A claim
useful
in an issued
invention
accomplished
invention
12.
A patent
of a Patent
patent
(although
as possible
by claiming
a judge
The person
of ordinary
are not written
person,
to teach
the
or jury may often be charged
skill in the art).
(35 U.S.C.
Sentence"
Rule
(and sometimes
the function)
§ 102) and non-obvious
The goal of drafting
a patent
while
it over
elements
ordinary skill inthe
skill in the art (such as those with
the structure
an operative
and by including
112.
Patents
of ordinary
defines
having
skilled in the art") is a hypothetical
Claim and the "Single
to the prior art.
as broadly
@ecifieation
or juries
in a way that is novel
§ 103) compared
invention
in Section
in tort law.
in the shoes of a person
The Nature
11.
as stated
or those with advanced/exceptional
degrees)
I will point out and
a Patent is Directed
to those persons
to "person
person"
Patent"),
document.
to Whom
to teach the invention
(the '"066
distinguishing
invention
claim
(35 U.S.C.
is to define
the prior
that is properly
of a
art.
described
This
the
is
in the
or limitations
in the claim that distinguish
in varying
scope to set forth the invention
the
from the prior art.
drafter
several different
will often present
ways to distinguish
claims
the invention
JA 0138
from the prior art.
in
13.
Patent
claims
are usu_ly
or "limitations."
consequently
sl_ucture.
For example,
this element
As a further
four elements.
means,
limits
four
An example
describing
the lamp ("which
limitations
during
In order
for a patent
element
and limitation
are
two
doctrine
a.
types
referred
a certain
to cover
Patent,
are: [1] first sensor
circuit
of a further
means.
broadly
claim
in claim
out to the Court
6, 9, 10, 11 and 12 of the'066
claim
to be infringed,
(either
literally
of infringement,
having
that
speaking,
has
[2] second
sensor
6 contains
further
...").
language
If requested,
all of the
elements
I
and
Patent•
the accused
or an equivalent)
literal
and
6 is the further
can emit a first level of illumination
to point
element
devices
means,
However,
limitation
structural
only those
6 of the '066
to as "elements"
infringement
device
must contain
of one asserted
and
every
claim.
infringement
There
under
the
of equivalents,
Literal
element
b.
claim
elements
the tutorial
of Claims
may recite
the claims
[3] a lamp and [4] control
limitations.
in what are sometimes
a claim
example,
These
am prepared
14.
presented
infifingement
and limitation
Infi-ingement
prevent
occurs
insubstantial
particular
the doctrine
that claim
doctrine
where
changes.
structural
the accused
(see ¶ 13 above)
underthe
the situation
when
element
]
of equival6nts,
if the accused
is a judicially
words
In other words,
of a patent
an accused
as litemUy defined
however,
product
literally
as recited in the asserted
equivalents
the literal
device
the accused
includes
device
contains
claim.
created
doctrine,
are avoided
to
by making
may not incorporate
by the words
of the claim.
device will nevertheless
a structure
every
a
Under
infringe
that is "equivalent"
to the
i
claimed
structural
element.
An element
JA 0139
in an accused
product
is equivalent
to a
claim
limitation
ordinary
if the differences
skill
in the art.
dement
in an accused
product
performs
obtain
substantially
to demonstrate
example,
joined
deemed
15.
Under
invention.
other
16.
by
patent
could
include
a claim
when
in substantially
it is possible
language
are not infringed.
are other ways
For
plates
plates
a rivet
is not
a pair of metal
literally
a "screw",
the
of skill in the art that the rivet is
screw.
of a patent
that one claim
the same way to
such as "a pair of metal
Although
claim
an
is the most prevalent.
may have
to the claimed
and
in the accused
There
product
to a person
to one of
limitation
the element
An accused
a rivet.
law,-every
sets
forth
in a patent
To find infifngement
a separate
would
patented
be infringed,
of a patent,
while
only one claim
of
need be infringed.
Also under U.S.P.T.O.
in a single
are insubstantial
may be so insubstantial
patent
claims
that patent
claim
by a screw."
Thus
between
but "function-way-result"
to be an "equivalent"
U.S.
differences
the same function
equivalence,
together
the two are "insubstantial"
the same result as the claim limitation.
a patent
differences
product
substantially
together
joined
The
between
sentence.
claims,
procedure
a patent
Because
the terminology
claim
is required
of the single sentence
and syntax
to set forth an invention
rule, to those
used in a patent
claim
unfamiliar
with
may at first appear
tortured.
Independent
17.
Most
U.S.
independent
without
patents
claim
reference
include
Claims
both
is one which
and Dependent
"independent"
is. complete
to any other claim.
Claims
and
(contains
The independent
JA 0140
"dependent"
all limitations)
claims
claims.
An
on its own,
of the '066 Patent
are
_..,_'_s 1, 6, 7, 9, 10, 11, 12 and
. _::l-readent claim.
The
_..i...L-,endentfrom claim
.' Jxclt a dependent
: _,,:._t contains
A dependent
dependent
claims
claim refers
to another
'066
Patent
claim,
elements
refers
are
to an
claims
2-6
it incorporates
the
the limitations
or
from claim 7).
of the dependent
all of the structural
is one which
claim, by such referral
of the independent
in the body
claim
of the
1) and claim 8 (dependent
,cats or limitations
,l...,,_e._ts set forth
13.
then
it adds
claim.
of claim
Thus,
claim
2 of the
1 plus that structure
'066
which
is
.. _:d -tfter the word "includes".
,,..y aspect
<.,.-
of U.S. patent
ended"
claim.
practice
and claim
If a patent
claim
interpretation
is introduced
. ,_.t'_ri:rng", such claim is said to be open ended.
•: _.r,,-_.d to encompass
.,
_._t_ition to those
'l __,'t_iag
system
products
set forth
I,r.,_.sented in open-ended
'
_.6"iaigo a dependent
."_,:pendent
a nut
For
and a bolt"
claim,
the accused
1 plus the structure
,: l-;_hag from the accused
device,
independent
:_,'_,dact will be missing
such
as
that the claim can be
functions,
example,
a word
of an
or other elements
a patent
can be infringed
All of the claims
claim
for a
by an accused
in the '066 Patent
form.
product
must
recited in the dependent
claim is not infringed
.i,o non-infringed
claim.
with
This means
structures,
a nut, bolt and a washer.
.'
rc,-_._d in claim
in the
comprising
, ,. _J.t_t that combines
p
that include
is the concept
because
a recited
then as a matter
claim
the same
is likewise
structure
JA 0141
contain
claim.
structural
all the structure
Conversely,
element
or limitation
of law every claim dependent
not irfffinged,
as was
missing
if an
because
is
from
the accused
fi'om the independent
theDescribedEmbodiment
21.
As notedabove,thespecification
of a U.S.patentisrequiredto setfortha written
description
thatisan enabling
disclosure
oftheinvention
which inturnsetsforth
the
bestmode (ifknown) forcnazying
outtheinvention.
The specification
must de.scribe
at leastone "embodiment" of the invention.In some patents,
more than one
embodimentisde.scribed.
Howcve* the*eisno rexluirement
best mode o_ be limited to any particular embodimcut
of the inv_ntiom
•• • _ In f,_t, most
of the time thepatentclaimsavoid sattngforthallthe features
of a disclosed
eanbodimcnt.
Thisisbecauseetch time.a preferred
embodimentmode willcontain
featur_which go beyond what isnecessary
to definetheminimum structure
of an
invention
whichmakes theinvc'aton
patentabtc
overthepriorart.
....
...,.____......
.................
_. _:
_
lmlMg
= __m_ulpMttmmm_
_:- _
¢ta_l
--
[ Recall that the patent draRer's goal
is to obtainas broad patentprotection
as _c
priorartwiU allow. This is
accomplished
by da-af_gindcpcndcntclaimswhich minimallysetforthpatentable
subject
matte,,
withoutreciting
¢xtran_uselementsor limitations.
For example,in
the '066 Patent the specification describes an erabodiment of a lighting device having
many features,-incl.uding: [1] a manual override switch (Column 4, Lines 26-37); [2]
"slow un-n on" circuitry which avoids the imposition of immediate "on rush_ current
when the lamp is first activated to "bright mode"
(Column 5, Lines 31-48); [3]
circuitry which operates the device using "zero crossing detect" circuitry (Column 4,
Line 56 - Colunm
5, Line 6); [4] pulse counting
JA 0142
circuitry which avoids f.Msc
detections
(Column 3, Line 62 - Column 4, Line 5); and [5] circtfitry to limit the
illumination
of the lamp to 95% of full brightne_
(Column 5, Line 58 - Column 6,
Line 42).
23.
Not all of the features of the preferred embodiment
recited in paragraph
22 may be
necessary to patentably distinguish the invention(s) in the '066 Patent over the prior
art. In fact, it would be generally contrary to good patent drafting practice to include
every feature of the preferred ¢mbodirnent/best mode in every claim.
under standard U.S. patent
Consequently,
claiming practice, patent claims could and should be
presented which do not include all of these feat-arcs. For example, in the '066 Patent,
certain claims do contain the 'hnanual override _ feature of the preferred embodiment
(e.g., claims I-5, 7, 12 and 13) while othe_ do not (e.g., claims 6, 9, 10 and 11);
certain claims do contain "zero cros._ug detect" (e._, claim 10), while other claims
do not (e.g., claim.s I-5, 6, %8, 9, 12 and 13); and claim 12 recites/includes
count" feature while
,
the "pulse
(e._, claims 1, 6,. 9, 10, 11 and 13) do not recite
suchfcatme.
24.
Sometimes
patent.
features about the preferred embodiment do not get claimed at all in a
On the oth_r hand, if all of the fmtures of a disclosed ._mbodiment of the
inventionare included in a singlepatentclaim,such a claim is called a '_pictm_
claim" because it contains every feature of the preferred embodiment/best mode, oven
if all such feature_ arebeyond
what is minimally necessary to claim theinvention
manner to make it patentable over the prior _rt.
Pi'L'D_
""
JA 0143
in a
25.
As
an attomey
("PTO"),
registered
[ am entitled to represent
their invention(s).
the individual
PTO)
must qualify
the PTO is governed
and
("MPEP").
inventors
First,
bar examination
guided
In my practice,
by
I meet
"novel")
b.
Then
Office
before
to the
Practice
Rules,"
before
37 C.F.R.
Examination
a patent
the PTO,
satisfactory
by the PTO.
("Patent
in the following
to learn
background
grant for
§ 1.1,
Procedure
application
consistent
general way.
how the invention
believes
works,
how
is new (or in patent
the
terms,
about the invention.
I conduct
has
or have
conducted
conducted
his/her
is novel
(35 U.S.C.
§ 103) compared
If the invention
description
(35 U.S.C.
is patentable,
search)
would
prior
to determine
(35 U.S.C.
I work with the inventor
with the inventor
description
of the
art (or perhaps
if the
the
invention
as
§ 101) and nonobvious
to the prior art.
of the inventio n, including
Working
the written
own
a search
§ 102), useful
Ordinary skill in the art to which
the best mode
(who commonly
the invention
be understood
art.
JA 0144
.4
& Trademark
inventors
of Patent
and what the inventor
understood
out.
administered
and prosecute
with the inventor(s)
is structured
inventor
c.
to represent
the Manual
I prepare
Patent
before the PTO to seek a patent
by the Rules of Patent Practice
is further
invention
the U.S.
for (i.e., have a technical
with the Patent Rules and the MPEP
a.
before
In order for an individual
and pass a patent
et seq.)
to practice
to create a detailed
written
(if known)
for carrying
it
but not always
is a person
of
pertains)
by a person
I strive
to make sure that
of ordinary
skill in the
d.
I prepare
a set of claims,
each claim
drawn to patentably
invention
from the prior
art, making
sure that claim
otherwise
be understood
not
claim
too
Depending
on the circumstances
before
Ideally,
at least
renders
the claim
separate
of elements
elements
combination
the
Group.
described
examiners
inventions.
training;
etc.).
claim
to the PTO.
There
is supposed
in the application
with
relevant
_re:examine_
electronic
education,
by those having
inventions
In other words,
new feature
are examined
_ person
having
or
in the claim
is sometimes
of the
each of the
art, the
particular
is not found in the prior art.
drawings
inventions
and
and
claims),
of the technology
are examined
knowledge
by chemical
pharmaceutical
pharmaceutical
having
it is
in an Examining
experience;
by those
technical
art.
element
is novel because
in the prior
relevant
what
the prior
only one
to a Patent Examiner
training
is
over
to be knowledgeable
(e.g., chemical
beyond
of that element
(specification,
it is assigned
to
That is, even though
taught in the patent
is completed
Examiner
include
That
may be found
application
It is important
of the invention.
In many cases, an invention
of those elements
The
parlance.
or would
case, I may draft one or more
would
into a single invention.
of the
features
The addition
in patent
"point of novelty."
combination
submitted
claims
the claimed
are defined
the invention
written description
One of the patent
"novel"
by including
of each particular
a detailed
terms
skill in the art.
distinguish
that is not in the prior art.
caliedthe
Once
to patentably
I prepare
of ordinary
narrowly
necessary
limitation
f.
invention
minimally
claims
e.
the
by a person
distinguish
education
and
skill in electronics,
in the field of the
/
invention
examines
the i_atent application.
JA 0145
Byassigning
applications
related
to a
particular
Group
technology
can acquire
many patents
g.
a high level of familiarity
The PTO Examiner
novelty,
utility
examines
and
will search
PTO materials
in a written
Office Action
deficiencies
in the description
• and, in a practical
Examiner
meets
all
of
the
the Examiner
Any deficiencies
found
by the
or in the patentability
issued by the Examiner
the invention,
of
and sent to
amendments
of a patent
sense,
a negotiation
a patent
is satisfied
in a first Office
of application
invention.
Sometimes
and sometimes
to file one or more responses
may include
becomes
claims
to portions
of the claimed
analyzes
the applicant
object
The prosecution
for which
the PTO
amended)
will
to agree upon what is required
an invention
When
correctly
Such a response
of the application.
with
process,
one or more patent
perceived
• Action.
and 103--
attorney.
an Examiner
permit
[a] compliance
§§ 101,102
compliance
of the specification
Sometimes
PTO procedures
(35 U.S.C.
prior art.
that the PTO will reject
Action
and with the
in two basic areas:
[b]
in that
area.
As part of this examination
Action.
Office
the Examiners
with the technology
and
for relevant
or applicant's
It is common
PTO
i.
112.
in the sufficiency
any claim, are noted
the applicant
Group,
for patentability
non-obviousness);
of Section
either
the application
requirements
requirements
Examiner,
Examining
that have been issued in that technology
with the statutory
h.
to a particular
to the claims
application
between
in the application
for
the
it does not.
to the Office
or to other parts
is an ex parte
process
the applicant
and the
to describe
and claim
can be granted.
that the application
all of the requirements
JA 0146
(as originally
for a patent,
applied
for or as
the PTO will issue a Notice
of Allowance.
After payment
patent
number
is assigned,
patent
document
_atd drawings
prosecution
the patent
fee, the patent
is "issued"
is sent to the applicant.
of
the
original
and published
The patent
patent
grant is completed.
application,
document
as
A
and the formal
contains
amended
the text
during
the
of the patent.
The PTO examination
in patent
of the issue
process
is conducted
law and rules and having
_t_e invention
,n,entions
pertains.
technical
The process
are granted as patents
and administered
by persons
knowledgeable
is intended
trained
in the filed to which
to be rigorous
to ensure
and that the rights of exclusion
that true
are not carelessly
_:_ted.
"Means-Plus-Function"
:v _LS. Patent
.,
Claims
Act, 35 U.S.C. § 112 sixth paragraph
_;taim his/her
invention
by reciting
,_.-_-'i_:olarstructure.
An example
. .1i6 recite "means
for fastening"
=c_,_ttable presumption
the
function
is, instead of reciting
(function).
that 112/6 applies.
("112/6"),
of an element
a "screw"
However,
_,ioreover,
the ambit
:_,,._note a "specific"
to fall outside
or "particular"
'.,_Jriety of structures).
A patent
"means plus function
form"
"'means plus function"
form.
structure,
claim
merely
can include
in combination
JA 0147
rather than
(structure)
if a term connotes
is rebutted
in order
an applicant
and 112/6
of 112/6,
structure
elements
with elements
its
the claim
The use of the term "means"
, ._,,.:of ordinary skill the art, the presumption
the term,
permits
raises
structure
a
to
does not apply.
does no._.At
have
to
(in fact, it can connote
that are expressed
in
that are not expressed
in
27.
If 112/6 applies to one or more elements in a patent clmm, special rules apply to
determine
infringement
of that claim.
structure that is identified
in .the patent specification
ftmetion, as well as equivalents
infringe a claim governed
device must perform
to the disclosed
by 112/6, additional
the identical
structure as set forth in thepatentor
28.
The "means plus function"
term covers the
for perform Jag the claimed
structure.
Therefore,
inquiry is required.
in order to
The accrued
function recited in the claim, using the same
equivalents to that structure.
If 112/6 does apply, the statute says the claim will be construed to cover the stn_mre
desen'bed in the specification
"and equivalents
thereof."
the patent actually disclose any or all such '_equivalents."
There is no requirement
What is an "equivalent"
that
to
the structure disclosed in the patent is an inquiry that is answered by those of ordinary
skill in the art to which the patent pertains:
29.
Despite
the use of the word "equivalents
paragraph),
infringement
thereof" in 35 U.S.C.
under 112/6 is initially an inquiry of literal infringement,
not infringem¢'nt under the doctrine of equivalents.
between "equivalence
30.
And although there is a difference
under the doctrine of equivalents
the "f-traction-way-result"
§ 112 (sixth
and equivalents under 112/6,
compai-ison may be used in both situations.
In my experience as a patent attomoy working with both electronic
inventions and
JA 0148
and mechanical
device, or circuit.
Cousequenfly,
in my experience, tbe use of the word =means"
and/or a "means plus function" clause in a patent claim has been mote common over
the years in claims directed to electronics inventions.
This is because
a patent
attorney is always concerned with obtaining the broadest pos_'ble claim coverage for
an inventor's
invention.
For example,
a patent attorney claiming an electronic
component that switches electric cun-ent on and off would likely have used the phrase
"switch meaus" rather than morn specific terms such as transistor, SCR, or triac (_ach
of which is a type of electronic switch).
term such as "transistor"
This is because a patent claim using a single
would be too narrow and too easily designed
around by
using other devices in the electronic field to accomplish the same electronic task as
performed by the transistor. In this context, the phrase "switch means" would be used
in the cla/rn as a convenient
shorthand
electronic devices (i.e., structures)
the claim or even necessarily
reference
to a broad
class of different
that switch current, without intending to narrow
to invoke the 'hneans plus function"
provisions
of §
112. In more recent years, patent attorneys have become aware that some courts were
applying highly restrictive
interpretations
to 'hucans plus function" claim el_memts.
Accordingly,
in our current
practice
we have sabstantiaUy
reducedtheuse of the
word "means" in patent claims to avoid a narrow interpretation of the claims that was
unintended.
3],.
In addition, from my experience as an clcctrical engineer and then as a patent attorney
working with electrical engineers, I have learned that persons of skill in the electronic
artsunderstandthat the use of.many terms presentedas ''means"terms arc
"sca'uctuml" terms. Depending, of course, on the overall context in which the term or
JA 0149
CP__RTIFICATE OF SERVICE
_rstclass
U.S. m_l, postageprepaid,and by e-mail (.pdf)up-onSteven A. Riley,BowcnRiley Wamock &
Jacobson,PLC, 1906 West End Avenue, Nashville,Tennessee 37203; and upon Roger L. Cook,
Angus M. MacDonald, Townsend, Townsend & Crew, LLP, Two Embarcadero Center,Eighth
Floor,San Francisco,California
94111-3834, Counsel forDefendants,this
__
day of
_'h,
r,s e_
, 2005.
C
JA 0150
DESA
IP,LLC
UNITED
MDDLE
DESA
STATES DISTRICT
COURT
DISTRICT
OF TENNESSEE
NASHVILLE
DIVISION
_,LLC,
Plaintiff,
Civil Action
No. 3-04-0160
Judge Aleta A. Trauger
Magistrate
Judge Joe B. Brown
g.
EML TECHNOLOGIES,
LLC and COSTCO
WHOLESALE
CORPORATION,
Defendants.
Statement
of William
C Raper
Personal
My name
is William
Raper.
Products
(Heath®/Zenith
LEG ("DESA").
I received
Under
and Professional
I am a Senior
Division)
my undergraduate
Rule
12@)(6)@)
Backm-ound
Product
of Bowling
Bachelor
Local
Engineer
Green
of Science
for DESA
Specialty
KY, an affiliate
("B.S.")
degree
ofDESA
IP,
in Electrical
Engineering
("EE") from Tennessee
Technical
University
(TTU) in 1991, with
emphasis
in the areas of digital electronics
and microprocessors.
In addition,
I am a
registered
Engineer
in Training,
and Engineering
examiners.
During
my junior
technician
division
and senior
in the industrial
of S.C. Johnson
"EIT",
with the Tennessee
years at TTU,
inkjet
Wax.
printing
Since
I worked
of Architectural
part time as an electronics
field for Porelon,
Porelon
Board
was a leading
Incorporated,
developer
which
printing technology
for industrial
use, I helped to pioneer the technology
hardware
and software designs. After graduating
from TTU, I continued
Porelon,
started
Inc. for an additional
writing
software
self taught
programming
Also prior
to my position
Incorporated
inkjet
printing
(six years)
technology.
two years
as an electrical
to test my analog,
basis using
at DESA,
engineer.
I also worked
engineer
at Imaging
at Imaging
principally
Technologies
with
on at
During
and microprocessor
C and C++ programming
as an electrical
While
digital
was a
in inkjet
this time,
designs
on a
languages.
Technologies,
working
on industrial
and Porelon,
I developed
both software and hardware
for real time interfaces
and processing
applications
using
non-impact
inkjet equipment.
This required consultation
with companies
such as
Procter & Gamble, Champion
Labs, Philip Morris, Imperial
Electric,
Philips Lighting,
S.C. Johnson Wax, and others.
Tobacco,
General
Since coming to DESA Specialty
Products
over five years ago, I have either overseen
the design of or designed
mechanical,
electrical,
and electronic
hardware
and
JA 0151
I
software for products which are currently on the market or are about to be released to
the market. These include products in both lighting and wireless controls categories.
I am an inventor and am currently
DESA Specialty Products.
listed on three patents
or applications
for
Prior to his retirement, I reported to Dennis ComeR, who has provided a Declaration
in this case. Because of my education and experience I consider myself one of
ordinary skill in the art relative to U.S. Patent No. 5,598,066 ("the '066 Patent").
I did not participate in the obtaining of the patent-in-suit in this case, U.S. Patent No.
5,598,066 ("the '066 Patent"), so what I state in the following is based on my general
experience as one skiUed in the electronics art of motion sensor lights, augmented as
necessary by what I learned from reading the '066 Patent.
rite = is a trademark-for'th0se
l_r_A
which turn on at dusk to a low level
("accent") light, but automatically switch to a brighter level when the device detects
motion of a person or object (such as a car). As part of my duties as an electrical
engineer for DESA I am familiar with the design and manufacture ofDual-Brite ®
motion sensing lights.
I understand
Purpose of My Testimony
that the Court will conduct a "Markman hearing"
to arrive at a proper interpretation
the Markman hearing in this case,
calls for tutorial portion to explain
one skilled in the electronics art, I
the purpose
of which is
of the claims of the '066 Patent. In preparing for
I note that the Case Management Plan and Order
"the '066 Patent and its relevant technology."
As
believe the best way to teach about "the '066
Patent and the relevant technology" is to build simple devices to demonstrate [a] the
nature of an electrical signal, [b] the electrical signal generated by a motion sensor at
rest (no motion) and activated (sensing motion); [c] the electrical signal generated by
a photocell at rest (daylight) and when sensing varying levels of light, including the
absence of daylight; how the output of the photocell and the output of a motion sensor
can be coupled with a lamp that is responsive to their outputs; and how the signal
from the photocell and the signal from the motion sensor can be managed (via control
circuit logic) to produce a"Dual-Brite®"
result.
In preparing
for the tutorial portion of the Markman
proceedings
in this case, I built
simple devices using a basic lamp (flashlight bulb) and the bare sensors mentioned in
the '066 Patent (PIP, motion sensor and photocell daylight sensor). My devices show
how an electrical signal is generated as an output of both the motion and photocell
sensor components, and finally how such sensor output signals may be coupled to a
lamp to achieve a desired result by the use of a control circuit responsive to the
sensors' output and coupled to the lamp. I intend to demonstrate my device to the
Court during the tutorial phase of the Markrnan heating.
The Nature of Electrical
JA 0152
,4
Signals
There
aretwotypesofelectrical
signals,
direct
current
(DC)andalternating
current
(AC).Anelectricalsignalcan be sensed and displayed by a device known as an
oscilloscope. Presently there are two types of oscilloscopes, an "analog" type which
displays
the signal
in real time,
and a "digital"
oscilloscope
which
displays
a digital
depiction of the signal in real time.
Belowis a screencaptureof a DC signal,as generatedbytwostandard
"D"cell
batteriesconnectedin series,and depictedby a digitaloscilloscope,
Notice
that the measured
voltage
comer. This is the battery voltage
connected
to a circuit, the battery
'load' connected
to it.
Below
is the screen
household
capture
wall receptacle,
is shown
without
voltage
to be 3.20 volts in the top right hand
a 'load' connected.
If the battery were
would drop according
to the size of the
of an AC signal,
displayed
as generated
by a digital
by connecting
oscilloscope.
to a typical
Noticein the imageabovethatthe peakvoltageshownis about 178volts.This is the
truepeakvaluefor a 120Volt AC wall receptacle.The 120Volt referenceis the rootmean-square
(rms)valueof the AC wall receptacle.The 'rms' valueis the valueat
which theaveragepowergeneratedby theAC circuit would equalthepower
generatedby anequivalentDC circuit.
Whenelectricalcomponentsareconnectedin a closedloop,a "circuit" is created.
Dependingon thecomponentsconnectedin the loop,differing resultsmaybe
achievedby the circuit. Forexample,electricalpowermay beusedto opena door.
Whenthe dooris closed,the "circuit" is "open" suchthatelectricalpoweris not
connectedto thedooractivationcomponent.Whenthecircuit is closed,suchaswhen
a pressureswitch is triggeredundera rubbermatasit is steppedon, the circuit sends
electricalpowerto the dooractivationdeviceandthe dooris opened.
Therearetwo typesof electricalcircuits,an"analog" circuit anda "digital" circuit.
a. An analogdeviceis a devicewhich producesa signalthatis both continuousand
analogousto thevaluebeingmeasured.A commonexampleof an analogdevice
is a phonographthatis usedto play a vinyl record. A stylus("needle")is placed
in the physicalgroovesof the record.The groovesproducephysicalmovementof
the stylusandasa resultanelectricalsignal,which is continuousandanalogous
to the soundrecordedon therecorddisk, is created.Whentheelectricalsignals
from the stylusarefed throughanamplifier andmultiplied to largeramplitudes,
theelectricalsignalscanthenbeusedto produceaudiosignals.By connectingthe
amplifiedsignalto a speaker,soundis heardby the listener.
b. A digital circuit is onewhich usesdigital approximations,derivedfrom a finite set
of data,which arecomprisedof binarydata.This datais binary,eithera "1" or a
"0", andstoredin certainprogrammed
formatby a digitalcontrolcircuit
hard wired or a microprocessor)
producing
possible.
capable of interpreting
the analog circuit and
a numerical value as precisely representative
In the phonograph
stored digitally,
sample discussed
on a Compact
digital representation
the original
resolution,
value as
the same music can be
Since the music is a binary
of the analog signal, it is not exact. However,
analog signal is sampled with sufficient
closely approximate
difference.
of the measured
previously,
Disk (CD) for example.
(either
if the original
the digital result will so
that a person listening cannot perceive
the
Generally speaking it is more "modern" to use digital circuits, but in the electronics
field, analog circuits and digital circuits are interchangeable
in most cases because
they both produce an acceptable result. A common example of a digital device
replacing an analog device is the Compact Disk (CD) replacing the phonograph
record. The phonograph would be "analog" and the CD "digital," but both are
perceived produce the same output-- audible sound.
Powering
a"Dual-Brite_"
and
Lamp
The first demonstration
is a lamp that may be illuminated to two different brightness
levels. I used a standard 2.3 VDC, 500 mA fla_lalight bulb connected to either one or
two "D" Cell 1.5-volt DC batteries
devices
and are commonly
that are used to power simple portable
fo
When the bulb is connected
single battery, it glows dimly;, when the bulb is connected
input into the bulb is increased
electrical
to both batteries
to a
the power
and causes the bulb to glow brighter.
Electrical Signals Generated by Sensors
The next demonstration
is the electrical output of a passive infsa-red ("PIR") mot[on
sensor. I used a Heimann model LHI-778 PIR or an equivalent, which is the type PIR
used in the conmlercial
embodiment
of DESA's
DuaI-Brite®
motion
light product.
[ In my experience I am aware that a PIR is actually sensing a difference in infrared
energy, in the form of temperature, produced by a moving body against a reference
background,butthoseskilled
intheartcommonly
refer
tothis
as themotion sensor
detecting
motion.]Below isa screencapturefi_oma digital
oscilloscope
of the
electrical
signalgeneratedby a PIR when itisatrestand issensingno motion.
JA 0155
The next demonstration
sulfide photocell,
is of the electrical
output of a photocell.
which is the same type as used in DESA's
6
JA 0156
I used a cadmium-
commercial
Dual-Brite_
products.
Below
isascreen
capture
oftheelectrical
signal
generated
bysuchaphotocell
whenthe photocellis at "rest" (i.e.,it is daylightandthe outputof the photocellis
"low"). Note thepositionof the output'line' withrespectto the markeron the left.
Below
is a screen-capture
of the electrical
signal
generated
a reduction
in the available
light (i.e., dusk or night).
output 'line' with respect to the marker on the left.
JA 0157
Again,
by a photocell
when
note the position
it senses
of the
Sincethe abovescreen-capturesareuneventful,the following
screen-capture
willhelpto
clarifythe transition.The followingis a recordedtransitionof thephotocellwhen it is
moved
level
immediately
from a setting
As part of the control
circuit
demonstration,
photocell
is connected
through
(i.e., the output of the photocell
simulated
reduced
light
of reduced
I will show
of my work day activity
result.
and coupling
development
of Control
what results
when
the
(Le, the output
involves
in certain
circuit"
ways,
involves
creating
understanding
circuits,
to accomplish
to interconnect
in such a way as to achieve
circuit
of the photocell
Circuitry
engineer
components
a "control
components
of a control
night) to a daylight
illuminated).
as an electrical
electronic
This is done by designing
and other electronic
the court
level such as that at dusk/nightfall
The Nature
arranging
level (i.e., dusk or
control logic to the flashlight
bulb at simulated
daylight
will be such that the bulb will not be illuminated)
and a
will be such that the bulb will be dimly
Much
light
a desired
the output
a desired
the nature
of sensors
result.
The
of an electrical
output
from a type of sensor, and controlling
such output through circuitry
(arranging
electronic
components
such as resistors,
capacitors,
amplifiers
and the like) to sense, scale or
otherwise
manipulate
or translate
the desired
produced
as a result of such activity
to achieve the desired result.
In the simple
bulb)
device
be off during
reduced
discussed
the desired
the day; [b] illuminate
to a predetermined
illumination
above,
level;
activity
and coupled
results
the lamp
[c] while
of the lamp from dim to bright
into a new control
to the "final"
JA 0158
signal(s)
a security
the available
light level,
event
which
component(s)
are [a] have the lamp
dimly when
at the reduced
when
controlled
change
(flashlight
light is
the
(e.g., motion)
is
is
detected; [d] return the lamp to dim illumination when the motion has passed; and [e]
return the lamp to "off" status when fight returns to a level predetermined
to be daylight.
An additional desired result is [f] to not have the lights be activated by sensing motion
during the day.
Results [a] and [b] are accomplished
by having the lamp connected to a photocell, such
that {i} when the photocell senses daylight the lamp is off, but (ii} when the photocell
detects a level of light which is predetermined
to be dusk, the lamp will come on but only
to dim; result [c] is accomplished by having the output of a PIR motion sensor connected
or coupled to the lamp such that when motion is detected the power to the lamp is
increased and the lamp glows brighter; resuIt [d] is accomplished by connecting a timer
to the motion sensor such that ira certain time period elapses after detection of the
motion without detecting further motion the output of the motion sensor is disconnected
from the lamp, so that now it is only being fed by the photocell so it glows dimly; and
result [e] can be accomplished
by having the photocell uncouple (disconnect) the lamp to
turn it offwhen daylight is detected again. Additional result [f] is accomplished
by
having the connection between the motion sensor and the lamp be not activated when the
photocell senses daylight.
Note that the results set forth above are consistent with the objectives of the '066 Patent
stated at Column 2, lines 8-22, and that those objectives are accomplished
by my simple
device, although admittedly not as efficiently.
The following
electrical
circuit diagram expresses
JA 0159
the simple device as defined
above.
==
P
:::
,3
JA 0160
_=i
This is the control circuit of the simple device I have built and will demonstrate
hearing.
technology
Note that the control circuit accomplishes
(and the objectives
control circuit.
the main functions
at the Markrnan
of the Dual-Brite@
of the '066 Patent) without any pulse eotmting component
This circuit is an example
of art"analog"
control circuit because
in the
the components
produce
andoutput
that
iscontinuous
andanalogous
tothe
input.
A person
skilled
inthe
electronics
artscouldimplementthesame control
circuit
in a multitudeof ways, including
implementationin a "digital"
controlcircuit
usingwell-knowndigital
components.
De_
".
:
__
• _
_Device
During the tutorial, I will set up and demonstrate the operation of a Model 5318 Dual-Brite ®
device. This commercial model accomplishes the same basic results [a] through If] as set forth
above, but is much more sophisticated than the simple device I have built. For example, the
commercial model has much more powerful lamps and includes a manual override switch, w_ch
can lock out the Dual-Brite@ feature. The commercial model also has a more sophisticated
timing that the diode and resistor circuit I used in my simple model. Finally, the commercial
model has a pulse-count component in the control circuitry to reduce the potential number of
false motion triggers.
The control circuitry of the commercial Dual-Brite@ product is basically set forth in the '066
Patent at Figures 2A and 2B (this is really one electrical diagram which has been split in two to
facilitate printing). Figures 2A/2B set forth the preferred embodiment of the '066 Patent.
How I Interpret the Terms Used in the '066 Patent
I have been informed that there is a dispute over whether certain terms of the '066 Patent are to
be interpreted as "means-plus-fi.mction"
terms or as structural terms. The following is how I
interpret the terms identified to me.
I
[Sensor Means. As a person skilled in the electronics
structure
tome
word "means"
art, the term "sensor means"
connotes
does not detract from the structural
s to me when I read or hear the term "sensor." To me and my
colleagues, in our experience, the term "sensor" and "sensor means" are the same and they
both eormote structure.
.
Control Circuit Means. As a person skilled in the electronics art, the term "control
means" connotes structure to me, that structure being the coupling or electrical
JA 0161
circuit
.
4.
Means for causing numerous devices to activate
a switch. For example,
.....
I am aware of
op-amps, microprocessors,
and digital
gates. This structure could be a variety of electrical components. Nonetheless, the term
means "electrical circuitry (a circuit being the interconnection
of electrical components)
which causes a switch to be activated.'"
5.
Means for producing a ramp waveform (10, 11"}. This can be a variety of electrical
components. Nonetheless, the term means "electrical circuitry (a circuit being the
interconnection
of electrical components) which produces a ramp waveform_ Here, he
I_
rmBR (ramp waz¢_¢oli!__
¢1 _
sll_,'¢
•, •
. . • . w-w-w-Wl_efi--_--_evea ramp wave _
resistors and diodes.
6.
Means responsive
to said sensor means for causing.said
I
m me,_ and I am aware of
exile,
op-amps, capacitors,
first threshold
voltage...
(10, 11).
this
s ct,ar'--=
refer:to
avariety
ofelecm'
"'" 'cal
com nents,
t-he
ter
meaus "electrical
circuitry (a circuit being the intcrcormection
of electrical
components)
7.
which responds to the sensor and produces two different levels of voltage depending on
whether the sensor detects the presence or absence of a condition."
Lip/at sensing means (11). Similar to "sensor", except that the additional words "light
8.
sensing" provide information that allows one skilled in the art to know that it is a photocell
other device that detects light.
sensing means for causing said
threshold voltage
I ¢ii_Lt's_=_
or
to have a t_'rd value (11). _i__
P_==-
= '"
-S,.r_
__ U_.fT_s
is stnular to me anove
- it refers to a variety of electrical components. The term means" electrical ctrctutry (a cu'cult
being the intereonneetion
of electrical components) which responds to the light sensor and
produces a third level of voltage different from those levels discussed above when the sensor
is detecting daylight."
JA 0"f62
9.
I participated
in the definitions used in DESA's briefs, and I subscribe to the definitions
forth in both briefs (including the so-called "means-plus-function"
terms).
CERTIFICATE
It is hereby certified
set
OF SERVICE
that a copy of the foregoing
Statement
was served,
via first class
U.S. mail, postage prepaid, and by e-mail (.pdt') upon Steven A. Riley, Bowen RileyWamock
&
Jacobson, PLC, 1906 West End Avenue, Nashville, Tennessee 37203; and upon Roger L. Cook,
Angus M. MacDonald, Townsend, Town_end & Crew, LLP, Two Embarcadero
Center, Eighth
Floor, San Francisco, California 94111-3834,
Counsel for Defendants,
this
1 6'
day of
COUNSEL
JA 0163
F_,
DESA
IP, LLC
F LEE
UNITED
STATES
MIDDLE DISTRICT
NASHVILLE
DESA
DISTRICT
2/905 FEB 1 8
COURT
OF TENNESSEE.
D/VISION
U._.
_IDDlbE
DISTRICT
DISTRICT
IP, LLC,
Civil Action No. 3-04-0160
Judge Aleta A. Trauger
Magistrate Judge Joe B. Brown
Plaintiff,
V.
EML TECHNOLOGIES,
LLC and COSTCO
WHOLESALE
CORPORATION,
Defendants.
Statement
of Thomas
J. Paulus Under Local Rule 12(c)(6)(e)
U. S. Patent
Personal
5,598_066
and Professional
Background
My name is Thomas J. Paulus. I am professionally
known as TJ Paulus. I have been
retained in connection
with the above-named
lawsuit as an expert in the field of
electronics.
I received my undergraduate
Bachelor of Science degree in
the University of Tennessee in 1962. I received my Master
Electrical Engineering
from the University of Tennessee in
Electrical Engineering
from the University of Tennessee in
Electrical Engineering
from
of Science degree in
1968. I received my Ph.D. in
1974.
I have over 42 years experience in the design and development
of electronic
instrumentation,
project and group management,
service as technical resource and expert
witness in patent matters, and university level teaching.
I have been retained as an expert
in four patent.cases,
and my testimony has been accepted as expert testimony in one case.
The other three cases for which I was retained as an expert were settled before I had the
opportunity
to testify before
the Court.
As an Instructor in the Electrical Engineering
Knoxville
from 1965-1972 1 taught a variety
courses, including oircuitry courses.
As a part-time
Tennessee
TJ Paulus
Instructor
in the Electrical
Department
at the University of Tennessee
of basic as well as upper level electronics
Engineering
Department
from 1980 to 1985 1 taught upper level electronic
Page 1
JA 0164
at the University
of
courses.
2/18/2005
COU'
O1
_.
I am the author of over 50 teclmical papers, seminars
electronics.
Additionally,
I co-authored
the textbook
and presentations
relating to
Applied Electronics
which is still
utilized at the University
of Tennessee
Knoxville.
Additionally,
I have taught numerous
short courses under the auspices of the Institute of Electrical
and Electronic
Engineers
(IEEE)
and with Dr. Glenn
Knoll,
a noted
nuclear
instrumentation
I am currently
an Adjunct Professor
in the Electrical
Department
at the University
of Tennessee
Knoxville
undergraduate
electronic
courses•
I am also currently
the President
high-tech
small business focused
volume,
high performance
seminars,
courses
and Computer
Engineering
teaching
graduate and
of Paulus Engineering
Company
("PEC").
PEC is a
on the design, development
and manufacture
of small
electronic
and workshops
expert.
instrumentation.
related
to electrical
Additionally,
PEC
and electronic
conducts
circuits
and systems.
I did not participate
in the preparation
or prosecution
of U.S. Patent No. 5,598,066
(the
"'066 Patent").
Further, I am not related or have any affiliation
to either the Plaintiffor
the Defendants
other than my participation
in this case.
Purpose
of My Testimony
I understand
that the Court will conduct a "Markman
heating"
the purpose
arrive at a proper interpretation
of the claim terms of the '066 Patent.
I have reviewed
'066 Patent•
the '066
Patent
and I understand
the electrical
circuitry
of which
disclosed
is to
in the
Introduction
I have been asked to give tutorial information,
the '066 Patent and the relevant technology•
during
the Markman
hearing,
relating
to
The patent at issue describes
various electrical circuits, signals and components.
My
objective
in this tutorial is to describe and define the relevant terms and conditions
in
order
to better
we proceed
dispute.
understand
through
the teachings
a simple
of the '066 patent.
demonstration
Electrical
We encounter
television
a wide variety
and radar.
of electrical
However,the
current. Using the early definitions
Kemmerly,
4 th Edition:
TJ Paulus
This will be done
of the technology
and the patent
in stages
claims
as
in
Signals
signals
most common
in our daily
electrical
from En_ineerin_
JA 0165
Circuit
lives such
signals
as radio,
are voltage
Analysis,
by Hayt
and
and
2/18/2005
X:oltage:
viewed
The electrical
as the "force"
potential
between
in an electrical
two points
circuit.
(p14).
The symbol
common way to view a vol!age is with an oscilloscope.
, ,,;cilloscope
at various times during this tutorial.
_-
Current:
The motion
vehicle for transferring
\:,,i_,_,c
is a common
quantity
Voltage
of voltage
can be
is V, A
We will use an
of electrical
charge (pl0). Current can be viewed as the
energy in an electrical
circuit. The symbol for current is I.
in daily
life. The most
common
forms
are "DC"
and "AC".
I)C Voltage:
A wide variety of batteries
are common
in our daily lives including
%A",
"D-Cells',
"9-Volt"
and car batteries.
Each of these is a little chemical
t)_a:ory that converts chemical
elements
into elecfricity.
Generally,
hasa fixed value. A graph ofa D'C voltage is shown in Figure 1.
Figure
1. DC Voltage.
AC Voltage:
{H_.) available
The AC voltage most common
from our wall outlets. Another
Hz, available
for our stoves.
These
a DC voltage
in the USA is the 120 V, 60 cycles
familiar AC voltage is the 220 V, 60
AC voltages
generally
follow
a sine wave
pattern going positive, reaching
a maximum
positive amplitude,
then going
negative
direction,
passiiag through zero, reaching
a maximum
negative
:amplitude,
the cycle.
is shown
TJ Paulus
then going
Often
in a positive
the symbol
in Figure
direction,
for an AC voltage
passing
is v(t).
through
A graph
zero,
in a
and repeating
of an AC voltage
2.
JA 0166
2/18/2005
Figure2. AC Voltage.
Other Waveforms: The '066 patentteachesa varietyof otherwaveforms.These
otherwaveformswill beintroducedasthey areencounteredin thestudyof the
variousclaims.
Electrical current is a lesseasilyobservedthanvoltage.However,if you haveever
Caughta bareAC wire in yourhand,you knowthatsomething"hit" you.This wasthe
effect of currentflowing throughpart of yourbody.Justlike voltages,AC currentcanbe
DC, AC or someotherwaveform.
Electrical
Signals:
In addition to being a voltage or a current, electrical
signals can be
characterized
by their frequency
content. The human ear can hear frequencies
from about
20 Hz to over
sound systems
10,000 Hz. Thus humans
include a filter to reduce
can "hear" the electrical
60 Hz hum.
Electrical
Electrical
circuits:
least one closed
Most often
"an intercolmection
path in which
there
is a voltage
current
source,
various electrical
- or electronic
"passive"
or "active" devices.
at 60 Hz. Often
Circuits
of simple
may flow"
electrical
(Hayt
devices
These
in which
and Kemmerly,
AC or DC, in an electrical
- devices.
power
can generally
circuit.
there
is at
p 3).
There
be classified
are also
as either
Passive Devices:
Generally
capable of only receiving
electrical
power (Hayt
Kemmerly,
pl 9). Examples
encountered
in the '066 patent include resistors,
capacitors,
switches and lamps.
•
Active
Devices:
device
(Hayt
TJ Paulus
Generally
and Kemmerly,
capable
p19).
of delivering
Examples
JA 0167
electrical
encountered
power
to some
and
external
in the '066 patent
2/I 8/2005
include
passive
various
infrared
electronic
devices including
sensors and transistors.
operational
amplifiers,
comparators,
Other devices:
Sometimes
the line between passive and active devices is a bit
blurred.
Examples
in the '066 patent include photo cells, diodes and triacs.
However,
these devices can be easily understood
by the relationship
voltage across them and the current through them.
Next
we will take a brief
look at the various
electrical
and electronic
between
devices
the
encountered
in the '066 patent.
Passive
Resistor:
The voltage
flowing
through
across
many
the material,
Devices
materials
is directly
and the constant
resistance
of the material. This relationship,
(Hayt and Kemmerly,
p25):
proportional
of proportionality
known
as Ohm's
to the current
is R, the
Law, is given
below
R = V/I.
The symbol
for a resistor
is shown
in Figure
Figure
Capacitor:
A capacitor
Kemmerly,
p128).
another. However,
applied
"filters",
4.
across
3. Resistor
is an electrical
A capacitor
AC current
the capacitor.
a concept
3.
device
capable
of storing
energy
(Hayt
and
can also be used to isolate one DC voltage from
can flow through a capacitor
if an AC voltage is
In the '066 patent,
discussed
symbol.
later. The symbol
capacitors
are also used as
for a capacitor
is shown
in Figure
G
Figure
Simple
Switch:
4. Capacitor
One of the most common
wall switch that controls lights, garage
items. A switch simply opens or closes
light is ON, and in the other
o,pen switch
TJ Paulus
is shown
position
in.Figure
I
electrical
elements
is our home
is the
door openers, dish washers and other
an electrical circuit. In one position the
the light is OFF. The symbol
for a simple
5.
JA 0168
i
symbol.
2/18/2005
Figure
Multi-position
multi-position
switch
Switch:
or rotary
5. Simple
switch.
Another type of switch is taught in the '066 patent., the
switch. This switch is similar to the TV channel select
in the days before
remote
controls.
In this switch,
be connected
to a.variety of other electrical
wires
for a multi-position
switch is shown in Figure 6.
one electrical
and components.
wire can
The symbol
O.-.----------.--iI,
Figure
6. Multi-position
Switch
Lamp: A lamp is a familiar object to us. It can be AC powered
as in our homes,
or DC powered
as in our flash lights. In either case, the purpose
of a lamp is to
provide light. In the '066 patent, a lamp is a special form of resistor that is heated
white-hot
by electrical
current.
Active
At the heart of the wide range of useful
devices. Computers,
home entertainment
Devices
and
electronic
systems,
other devices are available
for our use. Modem
transistors.
It is the arrangement
and connection
Circuits
products
available
today are active
digital cameras and a whole host of
active devices
of transistors
determines
the function of the active device. In additional
teaches the use of other electrical
and electronic
devices.
Transistors:
capable
Transistors
of functioning
are made
to transistors,
from semiconductor
as an amplifier
are built using a variety of
and passive devices that
or as a switch.
materials.
the '066 patent
They
As an amplifier,
are
they
convert a small signal at their input into a larger signal at their output. A typical
example
is the amplifier in our radios and sound systems. Transistors
can also
serve as a switch much like the mechanical
switch
configured
as a switch, they act as an open switch
switch in the other state.
TJ Paulus
JA 0169
shown in Figure 5. When
in one state andas a closed
2/18/2005
,
i
Operational
Amplifiers:
Operational
One convenient
Amplifier.
Many
chip. The amplification
(gain)
are dependent
the operational
Figure 7.
amplifier.
Amplifier:
As noted
connected
earlier,
Amplifier
electrical
frequency
as well as voltage or current.
"treble" controls to provide suppression
reduces low frequencies,
and the treble
semiconductor
to the inputs
amplifier
and outputs
of
is shown
in
symbol.
can be characterized
by
Sound systems often have "base" and
of unwanted
sounds. The base control
control reduces the high frequency
signals. One arrangement
of a filter amplifier
RiCi determines
the low-frequency
response,
high frequency
signals
an
of the final configuration
for the operational
7. Operational
is called
in a small
characteristics
devices
The symbol
of transistors
are configured
and other
only on the passive
Figure
Filter
transistors
package
is shown in Figure 8. The product
and the product R2C2 determines
the
response.
I(
C.z.
i
Figure
Logic
Circuits:
functions.
They
transistors
operate
Transistors
are often
Amplifier
can also be arranged
referred
as switches.
"high"
or "low",
output
is "1" only if both inputs
TJ Paulus
8. Filter
to as Logic
In a logic
and often referred
circuit.
to perform
Gates.
circuit,
various
the inputs
JA 0170
the
and outputs
to as "1" or "0". In a 2-input
are "1 ". In a 2-input
logic
In this application
AND
are either
Gate,
OR gate, the output
the
is "1" if
2tt 8/2005
eitherinputis "l". In an INVERTER,the outputis '<1"if the input is "0", andthe
outputis "0" if the input is "1". Thesymbolfor an inverteris shownin Figure9.
Figure9. Invertersymbol.
Comparators: A comparatoris a specialformof anoperationalamplifier that
actsmuchlike a logic gate.Ratherthanamplify the input signal, the output is
either
"0" or "1" depending
on the relationship
of the two input signals.
A
comparator
and its waveforms
are shown in Figure 10. In this example,
the "+"
input is an AC waveform,
vl, and the "-" input is a DC voltage, V2. When vl has a
value
less than V2, the output
of the comparator,
than V2, Vo is "1". A comparator
allows
Vo, is "0". When
the comparison
v_ is greater
of a varying
reference
signal. The output from the comparator
is a Pulse waveform.
case, each pulse has the same height, "1", but the width of each pulse
on how long the vt is of greater
amplitude
Passive
Infrared
infrared
energy
in motion
coupled
A small
Sensors
given
detectors.
TJ Paulus
offby
Passive
humans
In simplest
symbol
infrared
they consist
"
_-
and waveforms.
sensors
and other objects.
form,
In this
will depend
ofa
can detect
They
the heat or
are in common
pyroelectrical
use
material
to a special transistor. The pyroelectrical
material is built like a capacitor.
current flows as the infrared energy changes.
This small current flows
into a very large
voltage
10. Comparator
(PIR):
to a
than V2.
0
Figure
signal
signal
resistor
producing
to the external
a voltage
electric
signal.
A transistor
couples
this
circuit.
JA 0171
2/18/2005
Photo
Cell:
A photo
cell is a resistor
whose
value
changes
with the illumination
,,, level of light. A simple electric circuit using a photo cell is shown
and consists of a battery V, a resistor R, and a photo celt Rpc.
\/
in Figure
11
Y
Figure
]
11. Simple
qh_: voltage V is divided between
resislance
value. A mathematical
circuit
suing
a photo
cell.
the two resistors
in proportion
expression
for Vpc is
to their
Vpc = V x Rpc/(R + RPc).
!fthe
value
of Rvc is much
V. IT the valueof
zero. This type of simple
sig_aal depending
Timer:
period
circuit
can be coupled
timers
are familiar
are a convenient
method
features
the photo
on modem
equal to
of Vpc will approach
to a comparator
of turning
- Demo
Discussion
The demonstration
by Mr. Will Raper
can be arranged
can l::c described
T.1 Paulus
of Vpc is nearly
to produce
a logic
cell.
stoves
on the appliance
and microwave
for a fixed
of time.
(Break
components
than R, then the value
less than R, then the value
on the level of light illuminating
Electronic
...,vens. They
larger
Rpc is much
using
of Demonstration
shows
to produce
the block
Circuit)
diagram
that simple
a useful
shown
JA 0172
result.
electrical
The circuits
in Figure
and electronic
used by Mr. Raper
12.
2/18/2005
Control Circuit
....................................
Sensor
.............
•.1
i
Motion
"1
'
',
/
I
I .
1
,
, : IResPonsel
I. ,_
::1
HI- -
I
Demonstration
Figure 12
The input power
to the demonstration
detected both the motion
Cell detected the change
circuit
was in the form of batteries.
The PIR Sensor
of Mr. Raper's hand and the motion of an object. The Photo
in the level of light. The Response
Circuit includes the filter
amplifier,
comparator
and logic circuits. The Lamp changed from one level of
illumination
to a second brighter
level depending
on the state of the PIR and Photo
Cell.
This change
and
in illumination
was first accomplished
then automated
using transistors
operating
the second and higher level of illumination
after a few seconds.
TJ Paulus
using
the three
position
switch,
as switches. The Timer returned the light
to the first and lower level of illumination
JA 0173
from
2/18/2005
I
Control
Circuit
....................................
Input
__
Voltage
Sensor
.............
7
I
Moti0n
!P'R
f
.,_
[---'-_
i=
t
Photo
"
-
Cell
Ii
"_
._
I
I ! :
|
i
"
_
.espo_nse
I;'_-_ght'
• .............
Timer
iI
;
i
i............................
-4 .......
Demonstration
I_
Figure
•
'_P_
13
The block diagram of the demonstration
shown in Figure 12 can be made more general as
shown in Figure 13. Here the three position switch is replaced by a general Switch block
indicating
that the Switch
batteries
are replaced
voltage
can be either
power
will be provided
function
by the more
can be achieved
general
DC or AC. Further,
I have
study Claim 6 of the '066
describe the demonstration.
TJ Paulus
Voltage
this general
signal
Input
of ways.
indicating
Voltage
Also,
the
that the input
can indicate
that
to all parts of the circuit.
Claim
Based on material
Input
in a variety
discussed,
6 of the '066 Patent
and the demonstration
by Mr. Raper,
we can begin
patent. I will use block diagrams similar to those used
Please refer to Figure 14 in the following
discussion.
JA 0174
to
2/18/2005
to
Control Circuit
....................................
Input
Voltag_
Sensor
I,stSensor _
L Motion
Timer
I :
Response
[2 nd Sensor
[__ 2
[
I :'
Light
t
=
• .............
C rcu t
.....................................
Figure 14
Claim6
states:
An apparatus
1. first
comprising.
sensor
external
means for detecting
to said apparatus,
a first
said first
predetermined
predetermined
being motion relative to said first sensor means
objective separate from first said apparatus;
The
first element
located
in Claim
in the Sensor
6 can be represented
shown
in Figure
by a block
labeled
condition
condition
of a person
1st Sensor
or
- Motion
14.
second sensor means for detecting a second predetermined
condition,
said second predetermined
condition
being a
predetermined
level of light external
The second element of Claim 6 can be represented
located in the Sensor shown in Figure 14.
a lamp
which
emit a second
first
rapidly from
illumination,
TJ Paulus
by a block
can emit a.first
said first
and
labeled
said lamp
substantially
being
level of illumination
JA 0175
2 "a Sensor
level ofilhtmination
level of ilhtmination
level of illumination,
to said apparatus;
- Light
and which
greater
capable
can
than said
of switching
to said second
level
of
2/18/2005
This portion of the third element of Claim 6 can be represented
shown in Figure 14.
.
by a block labeled Lamp
control circuit means coupled to said lamp and responsive to said
first and second sensor means for causing said lamp to emit light
at said first level of illumination in the absence of said first
predetermined
condition in response to said second predetermined
condition,
This portion of the fourth element of Claim 6 can be represented by a block labeled
Response
Circuit that is coupled to and accepts input signals from both the 1_ Sensor Motion and the 2 "d Sensor - Light, and provides an output signal that is coupled to the
Switch which in turnas connected to the Lamp. The Response Circuit and Switch blocks
are part of the Control Circuit shown in Figure 14. In this instance, the Lamp will operate
at the first or low level ofilhimination
if no motion is detected, and a predetermined
level
of light is not detected.
and for causing said lamp to emit light at said second level of
illumination in response to detection of said first predetermined
condition,
In a similar manner, this portion of the fourth element of Claim 6 can also be represented
by a block labeled Response Circuit that is coupled to and accepts input signals from
both the 1 st Sensor - Motion and the 2 na Sensor - Light, and provides an output signal
that is coupled to the Switch winch m turn is connected to the Lamp. The Response
Circuit and Switch blocks are part of the Control Circuit shown in Figure 14. In this
instance, the Lamp will operate at the second or high level of illumination if motion is
detected, and a predetermined
level of light is not detected.
wherein said control circuit means inc
means responsive to
detection of said first predetermined
condition for initiating
measurement of a predetermined
time interval, and responsive to
expiration of said time interval for causing said lamp to thereafter
emit light at said first level of ilhlmination in response to second
predetermined
condition in the absence
first predetermined
condition.
of a recurrence
of said
The fifth element of Claim 6 can be represented by a block labeled Timer that is coupled
to and accepts input slgnals from the Response Circuit, and provides and output signal
that is coupled to the Switch that controls the Lamp. The Timer, Response Circuit and
Switch blocks are part of the Control Circuit shown m Figure 14. In this instance, the
Lamp will switch from the second or high level of ilhimination to the first or low level of
illumination at the end of the time set by the Timer if additional motion is not detected.
TJ Paulus
JA 0176
2/18/2005
identical.Claim6 canbeimplemented
usingthecircuitsfrom
the Demonstration.
More
complex circuits can also be used, and we will observe increased complexity as we
examine other claims in the '066 patent. Prior to examining these claims, I will introduce
a few more topics and concepts that will be encountered.
Additional
Electrical
Signals
Earlier I discussed three forms of electrical signals; DC voltage, AC voltage generally in
the form of a sine wave, and a Pulse waveform such as the output ofa Comparator. Three
other wavefomas are taught in the '066 patent; a Zero Crossing Signal, a Ramp
Waveform and a Partial or Gated Sine waveform.
V'_4=- " ...........
---
.....
7
_J
t/
"
(e)
Figure 15.Additi
The waveform shown In Figure 15(a) is the same AC sine wave studied earlier. Recall
that the sine wave follows the pattern of going positive, reaching a maximum positive
value, turns to go in a negative direction, passes through zero, reaches a maximum
T1 Paulus
JA 0177
2/18/2005
negative
cycle.
value,
turns
to go in a positive
One convenient
way to synchronize
common
signal.
timing
direction,
the actions
The zero crossing
time. The waveform
shown in Figure
AC signal passes through zero.
the Zero
Cross
signals.
through zero,
in an electrical
a pulse
and repeats
circuit
time of a sine wave
15(b) shows
The Zero Cross signal is a course measure
minutes,
lfa more accurate time measure
time between
passes
is to have
the
a
is one such a convenient
that is generated
each time the
of the time in a circuit. It is like counting
is needed, there must he a way to interpolate
One method
of doing
this is using
a Ramp
waveform.
The waveform
shown
going
positive
at the zero crossing
until
the next zero crossing
manner
in Figure
process producing
a saw-tooth
generated
by careful selection
taught
in the '066
In addition
15(c) is Ramp
time when
the Ramp
VRetl
As shown,
increasing
the Ramp
in voltage
it is reset back
like wavefonn.
A Ramp
of a DC voltage, resistor
starts
in a linear
to zero. Then
it repeats
Waveform
can be easily
and capacitor.
Such a circuit
to the Ramp
Waveform,
a Reference
exceeds
Voltage
is needed
to interpolate
the time
the Vg,n,
the Comparator
and "0" when
output
ever the Ramp
will be "1" when
voltage
is less than
patent
is the gating
and Reference
The signal
shown
Waveforms
in Figure
taught
in the '066
15(d) is such a Gated
Sine waveform.
the Ramp
Waveform
The amount
Voltage.
in value
Gated Sine Wave
Sine Wave.
some
than the largest
never
exceeds
TJ Paulus
in Figure
is available
value
in Figure
value
the Reference
Voltage
Voltage
VRej_ results
is a much
Voltage
In this instance,
will not be a Gated
,JA 0178
by the value
VRet2, which
exceeds
of the AC waveform.
can be set to a value
Voltage.
and there
Voltage,
the Ramp
to set the Reference
Voltage
of the Ramp
can be controlled
of Reference
15(d),
15(e). Using
it may be desirable
15(c), the Reference
larger
a second
of time near each zero crossing
is shown
conditions
in Figure
Sine Wave
Consider
than VRen. As shown
for only a short period
that
is less than VRefL
or time that the Gated
of the Reference
of
In this
waveform,
that portion of the AC waveform
that occurs while the Ramp Voltage is
greater than VRe_'_is available. The value of the Gated Sine wave is zero for all times
shown
ever
•
an AC signal.
Under
is
a reference
voltage is shown as part of the waveform
VRen to the "-" input ofa Comparator,
and the Ramp
to the "+" input of a Comparator,
voltage
One use of the Ramp
greater
the
patent.
between
zero crossing signals. Such
in Figure 15(c) as VRetl. If we apply
waveform
Waveform.
time. It continues
is
VRet_
The resulting
shorter
even
higher.
VR_f3, which
the Ramp
Sine Wave
Gated
As
has a
Voltage
signal.
2/18/2005
Additional
Active
Devices
and Circuits
Diodes: A diode is a semiconductor
with only 2 leads or wires. In simplest
a diode can operate like a switch. When voltage is applied in one direction,
diode
is like a closed
direction,
switch
the diode
equivalent
Reference
Diodes:
or ON switch.
When
voltage
is like an open or OFF switch.
circuit
are shown
Figure
16. Diode
A reference
in Figure
symbol
diode
is applied
in the other
The diode
symbol
terms,
the
and its
16.
and switch
is a special
equivalent.
purpose
diode.
When
properly
used, it acts as a fixed voltage much like a battery. The value of the fixed voltage
depends on the specific referenced
diode selected. The symbol for a reference
diode and the equivalent
battery is shown in Figure 17.
I"2
Figure
17. Reference
T-
diode
symbol
and battery
equivalent.
Triac: A triac is a special type of semiconductor
diode. Unlike a regular
triac can conduct
in either direction,
but only ifa Gate Signal starts the
conduction.
two terminals
Wa'be.
Also, a triac will cease
conducting
goes to zero. The triac is a good
The triac will not conduct
unless
once
the voltage
choice
the gate signal
across
diode,
its other
for generating
a Gated
Sine
is present,
and will stop
conducting
when the voltage across it goes to zero, such as when the AC signal
passes through Zero. The symbol for a triac is shown in Figure 18.
TJ Paulus
JA 0179
a
2/18/2005
Figure 18.Triac symbol.
Window Comparator: A Window Comparatoris a specialcircuit formedby a
Comparator,2 diodesand4 resistors. The resistors establish two Reference
Voltages,
VLow and VHi, where
Viow is a lower
voltage
than VHi. The Window
Comparator
produces
an output whenever
the input signal is greater than VHi or
less than V_w. A circuit diagram
for a Window Comparator
is shown in Figure
19.
Figure
TJ Paulus
19. Window
comparator
JA 0180
circuit.
2/18/2005
)
Claim
The elements
20.
of Claim
9 of the '066 Patent
9 will be described
in terms
Control
of the block
diagram
shown
in Figure
Circuit
....................................
AC
Voltage
Sensor
• .............
)
Figure
Claim
.............................
, .......
.
20
9 states:
An apparatus
l.
comprising.
sensor means for detecting
to said apparatus;
The first element in Claim 9 can be represented
Sensor
shown in Figure 20.
.
a lamp
which
a predetermined
by a block
can emit afirst
labeled
condition
Sensor
within
level of illumination
can emit a second level of illumination
substantially
than said first level of illumination,
said lamp being
switching
rapidly from said first level of illumination
second level of illumination;
and
This portion of the second element
Lamp shown in Figure 20.
3.
control
of Claim
circuit
said sensor
TJ Paulus
9 can be represented
means
coupled
means.for
causing
JA 0181
by a block
to said lamp
said lamp
external
the
and which
greater
capable of
to said
labeled
and responsive
to
to emit light at said
2/18/2005
first level
condition
of illumination
in th_ absence
of said predetermined
I
This portion
Response
of the third element
Circuit
provides
Response
of Claim
that is coupled
9 can be represented
to and accepts
input
by a block
signals
an output signal that is coupled to the Switch
that controls
Circuit and Switch blocks are part of the Contkol Circuit
In this instance,
predetermined
the Lamp
Sensor
will operate
condition
at the first or lowllevel
illumination
of the third element
above.
In this instance
since
the in the presence
the Lamp
block,
the Lamp. The
shown in Figure
of illumination
since
and
20.
the
has not been detected.
and for causing
This portion
labeled
from the Sensor
said lamp
in response
of Claim
to said predetermined
9 can be represented
will operate
at the secohd
of the predetermined
wherein
to emit light at said second
Sensor
said control
level
of
condition,
by the same blocks
as
or high level of illumination
condition.
circuit
means
is powered
by an AC
voltage, and wherein said control circuit means include
switching
means for selectively
permitting
and preventing
the
application
of said A C voltage to said lamp and rneans for a
selected
portion
of half waves
illumination
This final portion
of Claim
Diagram
of using
TJ Paulus
between
of Claim
gated
the BIock
9 shown
sine waves
said portion
level
of
level of illumination.
by the same
we can recognize
the two versions of the Gated
with Figure 15. The Low Waveform
corresponds
Diagram
in Figure
to power
of A C voltage,
for said second
9 can also be represented
the waveform
shown in Figure 15(e), and the High
waveform
shown in Figure 15(d).
A comparison
half cycle
greater
than for said first
of the third element
blocks shown in Figure 20. However,
Sine Waves described
in relationship
of each
being
of Claim
20 shows
Waveform
6 shown
that Claim
the first and second
JA
0182
corresponds
in Figure
14 and the Block
9 has the added
levels
to the
sophistication
of illumination.
2/18/2005
to
Claim
The
elements
Figure
of Claim
10 will
10 of the
be described
'066
Patent
in terms
of the block
diagram
shown
in
21.
Control
__
i
i
i
AC
Voltage
Circuit
...................................
Zero C¢oss
' Deiect0r ]
i
l
_',
t
:
Sensor
.............
"i- Sensor
" ' "
.[
:
_tator
i
t
"" i
r----'_ ' TT
I[TI;,reshold]
_
I
i
]
_-_t;°mparat°rl
I::',' -', .' .". " "l
L
J
R_espons_e
_-__
i l Circa.I
• .................................................
i
J
Figure 21
Claim
10 states:
An apparatus
l.
sensor
comprising.
means
external
The
first
element
Sensor
shown
in Claim
in Figure
10 can
to said
a lamp
can
condition
apparatus,
by a block
which
afirst
emit
than
capable
illumination
element
a predetermined
be represented
also
greater
Figure
determining
labeled
Sensor
within
the
21.
.
Thesecond
for
of Claim
can
emit
a second
level
said first
of switching
to said
level
10 can be represented
of illumination
of illumination,
rapidly
second
level
of illumination
from
level
said first
and
which
substantially
said
lamp
level
of
being
of illumination;
by a block
labeled
Lamp
shown
in
21.
TJ Paulus
JA 0183
2/I 8/2005
control
.
circuit
said sensor
means
coupled
means for
causing'said
first level of illumination
condition,
!b_c !i_:q_portion
of the third element
of Claim
to said lamp
lamp
in the absence
and responsive
to emit light at said
of said predetermined
10 can be represented
by a block
R_.sp_mse Circuit
that is coupled to and accepts input silgnals from the Sensor
p_, _, ,de.'. ;m output signal that is coupled to the Switch that controls the Lamp.
'.:,'.."i','a ,c Circuit
and Switch
i_ ,_:.. :_,-r:ume, the Lamp
,,-_ ,i, *;,.v,, reed Sensor
blocks
emits
condition
are part of the Control
Circuit
shown
and for causing
labeled
block,
The
in Figure
light at the first or low level of illumination
has not been
to
since
and
21.
the
detected.
said lamp
to emit light at said first
level
of
illumination
in the absence of said predetermined
condition,
and for causing said lamp to emit light at said second level
illumination
condition,
in response
to d{tection
I_- pr,,ttor: of element three of Claim 10 can also be represented
by a block labeled
q'v_o,',.'_e ,'i?ireuit that is coupled to and accepts input signals form the Sensor
block,
.>.,
,, :....
_, uutput
signal
that is coupled
to the Switch
of
of said predetermined
that controls
the Lamp.
and
The
i.' c."! ,,:_q,' ¢,_ircuit and the Switch blocks are part of the Control
Circuit shown in Figure
' ! _*,_,_:, iustance, the Lamp emits light at the second or high level of illumination
since
_:w .v,_det,'m-fined
Sensor condition
has been detected.
wherein
said control
voltage
and wherein
circuit
means
said control
is powered
circuit
by an AC
means
includes
switching
means for selectively
permiting
(sic) and preventing
the application
of said AC voltage to said lamp and means for
causing
said switching
portion
portion
of each half wave cycle of said A C voltage, said
of said half waves being greater for said second
of illumination
means
to be actuated
than for said first
level
of illumination;
Thi_ p_rlion of the third element of Claim 10 can also be represented
dt:,_ribed
above and shown in Figure 21. However,
we can recognize
the Gatetl
Sine Waves
described
in relationship
with Figure
for a selected
level
and
by the same blocks
the two versions
of
15. The greater
portion
of
/h,. hall cycle for the second or high level of illumination
corresponds
to the wavefomq
sh,,,',,_ _a Figure 15(d). The lesser or lower level of illumination
corresponds
to the fifth
,:,a.'et_,ln
shown
in Figure
4.
15(e).
a zero crossing
detect
circuit
for detecting
zero crossing
points
of said A C voltage,
7'.I P_uius
JA 0184
2/18/2005
This portionof the fourth elementof Claim 10canbe represented
by a block labeled
Zero CrossDetector in the Control Circuit shown in Figure 21. The output signal of
Zero
Cross
Detector
can be of the form shown
in Figure
means for producing
a ramp waveform
having for each
wave of said A C voltage a ramp pulse which is initiated
response
wa ve,
This portion
Ramp
Ramp
of the fourth
Generator
Generator
to detection
element
of Claim
in the Control
Circuit
a comparator
of the zero erossing
10 can be represented
shown
can be of the form shown
in Figure
in Figure
which
the
15(b).
half
in
point for the half
by a block
21. The output
labeled
signal
of the
15(c).
compares
said ramppulse
voltage and which actuates said switching
time when said ramp voltage first exceeds
to a threshold
means at a point
said threshold
in
voltage,
This portion
Comparator
accepts
of the fourth element of Claim
that is coupled to and accepts
threshold
voltages
from the block
10 can be represented
by a block labeled
input signals from the Ramp Generator,
and
labeled
Threshold,
and provides
an output
signal that is coupled to the Switch that controls the Lamp. The Comparator,
and Switch blocks are part of the Control Circu# shown in Figure 21.
and means
first
responsive
threshold
voltage
to said sensor
means for
to have a first
value
Threshold,
causing
in the absence
said predetermined
condition
and a second value
to detection
of said predetermined
condition.
This last portion of the fburth element
Threshold
block the threshold
values
said
of
in response
of Claim 10 can be represented
by adding to the
T1 and T2. The threshold
value T1 corresponds
the
absence of the predetermined
Sensor condition,
and the threshold
value T2 corresponds
the detection of the predetermined
Sensor condition.
Further, the Threshold
block is
coupled to and accepts input signals from the Response
Circuit to learn if the
predetermined
Sensor condition
has or has not been detected.
The use and effect
thresholds
is illustrated
Comparison
further
of Fignre
sophistication
in Figure
21 for Claim
in design
of two
15.
10 to Figures
taught
in Claim
14 and 20 for Claims
10. Specific
improvements
6 and 9 indicates
include
the
use of a Zero Cross Detector,
Ramp Generator
and multiple Thresholds
to generate
various AC waveforms
to drive the Lamp at various levels of illumination.
This involves
the generation
TJ Paulus
and use of more
complex
waveforms.
JA
0185
2/18/2005
to
Claim
The elements
Figure
22.
of Claim
Review
11 of the '066 Patent
11 will be described
of Claims
in terms of the block
10 and 11 shows
are identical to the four elements of Claim
relating to Claim 10 and Figure 21 applies
of Claim I l is discussed below.
diagram
shown
that the fi_rst four elements
in
of Claim
1l
10. Consequently,
the discussion
above
to Claim 11 and Figure 22. The fifth element
Control
Circuit
............................
_ ........
Zero Cross
AC
De_te6f0"t-
,1
Voltage
I Ge'he_ator
Ramp':
"
Sensor
.............
1
,
'
iThresholdl
'
Sensor
_
r_
:l
T
I
i
'
l_
_T
T
i
.
]
[-_t'°mparal°rl
''='3''
'
;,,
i
2'_ Sbnsor
L
i
Light
|:
i
• .............
i
'066
I
Figure
Starting
with the fifth element,
5.
This portion
Sensor
22
block
signal
This third threshold
the addition
TJ Paulus
means
the presence
and absence
of Claim
in the Sensor
Light discussed
has an output
11 states:
light sensing
of the fifth element
- Light
Sensor-
Claim
in Figure
to Claim
said circuit
means
sensing
causing
for
from
sensing
means
condition
of Ta to the Threshold
Block.
is identical
14. The 2 "d Sensor-
ofa
2 "d
to the 2 "d
Light
Circuit.
including
means
said threshold
to said light
to have a third value
values
when
said light
daylight.
in the Block
Referring
responsive
voltage
and second
is detecting
can be represented
by the addition
22. This block
6 and Figure
said first
for detecting
of daylight,
to the Response
different
to said apparatus
11 can be represented
shown
with respect
that is coupled
responsive
back
Diagram
to Figure
in Figure
22 by
15(c), threshold
2/18/2005
JA 0186
I
value T3correspondsto VRenwhich is of highervaluethanVRer=or VRm.Also, VR_t?is
largerthanthelargestvalueof theRampWaveform.Consequently,theAC Sinewaveis
nevergatedon. in termsof Claim 11,this meansthatno signalif appliedto the Lamp
whenthe2naSensordetectslight andtheThresholdCircuit setsthe Thresholdvalueto
T3.
Comparing
Claim
particular,
Claim
11 to the earlier
11 teaches
claims
show
a continued
the use of a third threshold
level of sophistication.
T3 to turn off the Lamp
In
during
daylight.
Claim
The
elements
Figure
23.
12 of the '066 Patent
of Claim
12 will be described
A comparison
of the elements
in terms
of the block
of Claim
and 11 shows some similarity.
For example,
identical to the first three elements
of Claim
diagram
12 to the elements
the first thee elements
6. Thus the I st Sensor
in
6, 9, I0
of Claim 12 are
- Motion,
2 "a Senor
- Light, and the Lamp blocks in Figure 14 are repeated
in Figure
of Claim 12 differs from the other claims and is discussed
below.
Control
shown
of Claims
23. The
fourth
element
Circuit
.....................................
1
|
Voltage
[ Zero Cross
I Detector
__
Sensor
] Generator
Ramp
1
Input
--
.............
"3
I
j_
lst Sensor'S__
Motion
J ',
_Thresholdl
IRespons_
[_
_
1
_-_
_..
]
Circuit
Light
l
; '
No Vo,,age--_
hi
tC
i
= .................................................
,
Figure
Starting
with the fourth
23
element,
4.
Claim
control
said first
circuit
12 states:
means
and second
emit light at said first
TJ Paulus
JA
coupled
to said lamp
and responsive
sensor means for causing
level
0187
qf illumination
said/amp
in response
to
to
to said
2/t 8/2005
°",
t
second predetermined
condition
predetermined
condition,
This portion
block which
of the fourth
is connected
of said first
element of Claim 12 can be represented
by a Response
Circuit
to and accepts inputs from the 1 _t Sensor - Motion,
and the 2 ''d
Sensor
controls
- Light,
and provides
and output
the Lamp. The Response
Circuit
Circuit
shown
in Figure
in the absence
signal that is connected
to the Switch
that
and Switch blocks are part oft.he Control
23.
said control circuit means including
selectively
actuable
manual override
means for selectively
overriding
said first
second
to emit
sensor means by manual
actuation
to cause
light at said second level of illumination,
and
said lamp
This portion of the fourth element of Claim 12 can be represented
by a Manual
Switch
block in the Control
Circuit shown in Figure 23. The Manual
Switch is connected
between
the Switch
and the Lamp
blocks.
One input
Voltage
which, when selected by the Manual
the second or higher level of illumination.
Switch:
to the Manual
will cause
Switch
the Lamp
said manual
override
means including
means for
lamp in the absence
of said second predetermined
This portion
of the fourth
to the Manual
Switch
after said manual
override
element
12 can be represented
shown
of Claim
m Figure
wherein
said
generating
condition
connected
said
has been selected,
by a No Voltage
input
control
circuit
means
includes
means for
a pulse for each time said first predetermined
is detected
and further
including
means for counting
said lamp from emitting
at said
unless two or more pulses are
of the fourth element of Claim 12 can be represented
by the Pulse Counting
in the Control
Circuit shown in Figure 23. The Pulse Counting
block is
to and accepts
an input
and produces
and output
signal
The principle
difference
between
TJ Paulus
disabling
condition
at
23.
said pulses and preventing
second level of illumination
counted.
This portion
block shown
means
is Input
to emit light
signal
from
the Response
Circuit,
and is connected
to
to the Switch.
Claim
12 and the elements
JA
0188
of Claims
6, 9, 10 and 11 is
2/18/2005
CERTIFICATE
It is hereby
certified
OF SERVICE
that a copy of the foregoing
Statement
was served,
via first
class U.S. mail, postage prepaid, and by e-mail (.pdf) upon Steven A. Riley, Bowen Riley
Warnock & Jacobson, PLC, 1906 West End Avenue, Nashville, Tennessee
37203; and
upon Roger L. Cook, Angus M. MacDonald, Townsend, Townsend & Crew, LLP, Two
Embarcadero
Center, Eighth Floor, San Francisco, California 94111-3834,
Counsel for
Defendants,
this __J I_
day of _7e-.,u,r.,-c..-ff, 2005.
COUNS_LA1NTIFF,
LLC
___...//
TJ Paulus
JA 0189
DESA
IP,
2/18/2005