Paper Entered: May 14, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 Paper Entered: May 14, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD HONEYWELL INTERNATIONAL INC. Petitioner v. HVAC MODULATION TECHNOLOGIES LLC Patent Owner Case IPR Before JOSIAH C. COCKS, MICHAEL R. ZECHER, and JUSTIN T. ARBES, Administrative Patent Judges. ZECHER, Administrative Patent Judge DECISION Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Honeywell International Inc. ( Honeywell ) filed a petition ( Pet. ) requesting inter partes review of claims 1-4, 6, 7, 9-12, and of U.S. Patent 5,590,642 ( the 642 patent ). Paper 1. Patent owner, HVAC Modulation Technologies LLC ( HVAC Modulation ), did not file a preliminary response. We have jurisdiction under 35 U.S.C The standard for instituting an inter partes review is set forth in 35 U.S.C. 314(a), which provides: THRESHOLD --The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. For the reasons set forth below, we conclude that the information presented in the petition demonstrates that there is a reasonable likelihood that Honeywell will prevail in challenging claims 1-4, 6, 7, 9-12, 14, 15, and as anticipated under 35 U.S.C. 102(b). However, under 35 U.S.C. 103(a), we conclude that the information presented in the petition does not demonstrate that there is a reasonable likelihood that Honeywell will prevail in challenging claims and 23 as unpatentable. Pursuant to 35 U.S.C. 314, we hereby authorize an inter partes review to be instituted as to claims 1-4, 6, 7, 9-12, 14, 15, and of the 642 patent. 2

3 A. Related Matters Honeywell indicates that the 642 patent is the subject of a series of actions currently pending in the U.S. District Court for the District of Minnesota. Pet. 1. Those actions include: (1) HVAC Modulation Technologies, LLC v. Lennox Indus., Inc., Case No. 0:12-CV MJD- JJG; (2) HVAC Modulation Technologies, LLC v. Trane U.S., Inc., Case No. 0:12-CV-02530; (3) HVAC Modulation Technologies, LLC v. Nordyne LLC, Case No. 0:12-CV-02531; (4) HVAC Modulation Technologies, LLC v. Goodman Global, Inc., Case No. 0:12-CV-02532; and (5) HVAC Modulation Technologies, LLC v. Carrier Corp., Case No. 0:12-DV Id. at 1, FN 1. B. The Invention of the 642 Patent (Ex. 1001) The invention of the 642 patent generally relates to control systems for burners used in heating, ventilation, and air conditioning ( HVAC ) systems, such as gas-fired burners for furnaces, boilers, heat pumps, and the like. Ex. 1001, 1:8-12. According to the 642 patent, the disclosed invention is capable of operating in numerous settings and is responsive to changes in building load or other operating conditions. Ex. 1001, 1: Figure 3 of the 642 patent illustrates the furnace portion of a gas-fired HVAC system. Ex. 1001, 4: Figure 3 of the 642 patent is reproduced below. 3

4 Figure 3 of the 642 patent illustrates a gas-fired furnace. The 642 patent discloses a modulating gas valve 22 controlling a combustion process that supplies heat to a plenum heat exchanger 24. Ex. 1001, 5: A sensor 26 located adjacent to the plenum heat exchanger 24 supplies an input to a controller 25, which uses conventionally known fuzzy logic algorithm 28 techniques (shown in Fig. 1) to process plenum temperature controls. Ex. 1001, 5: The sensor 26 also outputs processed information from the controller 25 via algorithm 28 to regulate the operation of the modulating gas valve 22. Ex. 1001, 5: The heat from the plenum heat exchanger 24 is transferred via ducting 27 to a circulating air medium to heat space 30 (shown in Fig. 1). Ex. 1001, 5:

5 The 642 patent further discloses that the controller 25 uses a plenum static pressure control algorithm 34 (shown in Fig. 1) to calculate information obtained from a space temperature sensor 32 (shown in Fig. 1) located in space 30. Ex. 1001, 5: In turn, the controller 25 uses the calculated information to control both the modulating gas valve 22 and an induced draft blower motor 40 to obtain a desired stoichiometric ratio 38 (shown in Fig. 1). Ex. 1001, 5: The 642 patent also discloses a circulating air blower 36 otherwise referred to as the indoor blow motor 36 that uses an electrically commuted motor ( ECM ) capable of adjusting or varying the speed of the blower. Ex. 1001, 5: According to the 642 patent, the modulating gas valve 22 is controlled based upon the speed of the indoor blower motor 36 and the feedback information supplied by the plenum temperature sensor 26. Ex. 1001, 6:1-4. The 642 patent also indicates that the modulating gas valve 22 is controlled by the combined results from the conventionally known fuzzy logic algorithm 28 techniques and the desired stoichiometric ratio 38. Ex. 1001, 6:5-7. C. Illustrative Claims Claims 1, 9, 16, and 23 are independent claims. Independent claims 1 and 16 are illustrative: 1. An apparatus for causing a circulating heat transfer medium to transfer heat and for delivering such heat to a space in response to a heating load being imposed on the space, comprising: 5

6 a burner for fluid fuels, operably connected to a source of fluid fuel; means for modulating the flow of fluid fuel from the source to the burner; means for enabling the transfer of heat from the burner to the heat transfer medium, operably associated with the burner; means for circulating the heat transfer medium from the means for enabling transfer of heat, to a position remote from the burner, for transfer of at least some of the heat from the heat transfer medium, at the remote position, and for circulating the heat transfer medium back to the means for enabling transfer of heat; means for modulating the operation of the means for circulating the heat transfer medium, for varying the amount of heat transferred from the heat transfer medium; and a modulating blower modulating a supply of combustion air to the burner, the modulation of the fuel flow, the modulation of the circulation of the heat transfer medium, and the modulation of the combustion air each being operably controlled by control means, between at least three respective rates of operation, other than zero flow rate, the modulation of the fuel flow, the combustion air, and the circulation of the heat transfer medium further being controlled so as to be capable of occurring during a single heating cycle towards a continuous balancing of heat being supplied to the space with heating loads being imposed on the space. Ex. 1001, Ex Parte Reexamination Certificate 1:27-61 (bracketing and emphasis omitted). 16. A method for controlling operation of a burner for fluid fuels, for heating a heat transfer medium to a desired temperature, for delivering heat to a space in response to a 6

7 heating load being imposed on the space, the method comprising the steps of: providing an initial amount of fuel to the burner and igniting the fuel to begin burner operation; supplying further fuel to the burner at a predetermined initial flow rate; modulating a blower to modulate a supply of combustion air to the burner; transferring heat from the burner to the heat transfer medium by passing the heat transfer medium through a heat exchanger heated by the burner; circulating the heated heat transfer medium along a predetermined flow path; monitoring the temperature of the heat transfer medium at the heat exchanger, at which heat from the burner is transferred to the circulating heat transfer medium; monitoring the temperature of the heat transfer medium at a position remote from the heat exchanger; substantially simultaneously modulating the rate of supply of the fuel to the burner, and modulating the rate of circulation of the heat transfer medium along the predetermined flow path, so as to control the temperature of the heat transfer medium to a predetermined temperature condition, the modulation of the fuel flow, the blower, and the circulation of the heat transfer medium being operably controlled by control means between at least three rates of operation, other than a zero flow rate, the modulation of the fuel flow, the combustion air, and the circulation of the heat transfer medium further being operably controlled so as to be capable of occurring during a single heating cycle towards a continuous balancing of heat being supplied to the space with heating loads being imposed on the space. 7

8 Ex. 1001, Ex Parte Reexamination Certificate 2:54-3:23 (bracketing and emphasis omitted). D. Prior Art Relied Upon Honeywell relies upon the following prior art references: Thompson US 4,648,551 Mar. 10, 1987 Ex Stroud US 3,967,614 July 6, 1976 Ex Rogers, III US 4,607,787 Aug. 26, 1986 Ex Modulating Furnace and Zoned Heating System Development, Gas Research Institute, Final Report July 1987-Dec (Jan. 1991) (Ex. 1002) (hereinafter GRI ). New Imperial Gas Furnace, Rheem Manufacturing Co. (1970) (Ex. 1005) (hereinafter Rheem I ). Solid-State Breakthrough, New solid-state Modulating Control System offers pacesetting advances in control!, Rheem Manufacturing Co. (Feb. 1969) (Ex. 1006) (hereinafter Rheem II ). E. Alleged Grounds of Unpatentability Honeywell seeks to cancel claims 1-4, 6, 7, 9-12, and of the 642 patent based on the following alleged grounds of unpatentability: 1. Claim 1-4, 6, 7, 9-12, 14-16, and as anticipated under 35 U.S.C. 102(b) by GRI. Pet and Claim 16 as unpatentable under 35 U.S.C. 103(a) over the combination of GRI and either Rheem I or Rheem II. Id. at Claims 17 and 23 as unpatentable under 35 U.S.C. 103(a) over the combination of GRI and Rogers, III. Id. at and

9 4. Claim 18 as unpatentable under 35 U.S.C. 103(a) over the combination of GRI and Stroud. Id. at Claims 1, 2, 4, 6, 9, 10, 12, 15, 18, and as anticipated under U.S.C. 102(b) by Thompson. Id. at and Claim 16 as unpatentable under 35 U.S.C. 103(a) over the combination of Thompson and either Rheem I or Rheem II. Id. at Claims 17 and 23 as unpatentable under U.S.C. 103(a) over the combination of Thompson and Rogers, III. Id. at and II. CLAIM CONSTRUCTION Consistent with the statute and legislative history of the Leahy-Smith America Invents Act, Pub. L , 125 Stat. 284, 329 (2011) ( AIA ), the Board construes claims by applying the broadest reasonable interpretation in light of the specification. 37 C.F.R (b); see also Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012). There is a heavy presumption that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history. Id. Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we must be careful not to read a particular embodiment 9

10 appearing in the specification into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) A. Means-Plus-Function Limitations When construing a means-plus-function limitation under 35 U.S.C. 112, 6, 1 we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, (Fed. Cir. 2004) (citations and quotation marks omitted). Honeywell identifies several claim limitations recited in claim 1 as means-plus-function limitations invoking 35 U.S.C. 112, 6, and identifies their corresponding structures for performing the claimed functions. Pet and At the outset, we note that, in the instance of each of the five terms identified below, we conclude that each of them is a 1 Section 4(c) of the AIA re-designated 35 U.S.C. 112, 6, as 35 U.S.C. 112(f). Because the 642 patent has a filing date before September 16, 2012 (effective date), we will refer to the pre-aia version of 35 U.S.C

11 means-plus-function limitation for the reasons set forth. 1. Means for modulating the flow of fluid fuel from the source to the burner (Claim 1) The claimed function for this means-plus-function limitation is modulating the flow of fluid fuel from the source to the burner. Honeywell contends that the corresponding structure is a modulating gas valve controlled by an electric signal. Pet. 20. Honeywell relies upon the following portion of the 642 patent to support its contention: In a preferred embodiment, the means for modulating the flow of fluid fuels from the source to the burner comprises a modulating gas valve. The modulating gas valve is contemplated to be controlled by a pulse width modulated control signal although other control signals could be used for operable modulation including direct current and multi-step functioning valves. Ex. 1001, 2:9-15 (emphasis added), see also Ex. 1001, 3: Figure 3 of the 642 patent, which is reproduced above, provides an illustration of the modulating gas valve 22. Ex. 1001, 5: For purposes of this decision, we identify the corresponding structure for performing the recited function namely modulating the flow of fluid fuel from the source to the burner to be modulating gas valve Means for enabling the transfer of heat from the burner to the heat transfer medium (Claim 1) The claimed function for this means-plus-function limitation is enabling the transfer of heat from the burner to the heat transfer medium. Honeywell contends that the corresponding structure is a heat exchanger. 11

12 Pet. 21. For this, Honeywell relies upon the description in the 642 patent that heat [is transferred] from the burner to the heat transfer medium by passing the heat transfer medium through a heat exchanger heated by the burner. Ex. 1001, 3:47-49 (emphasis added). Figure 3 of the 642 patent, which is reproduced above, provides an illustration of the plenum heat exchanger 24. Ex. 1001, 5: For purposes of this decision, we identify the corresponding structure for performing the recited function namely enabling the transfer of heat from the burner to the heat transfer medium to be the plenum heat exchanger Means for circulating the heat transfer medium from the means for enabling transfer of heat, to a position remote from the burner, for transfer of at least some of the heat from the heat transfer medium, at the remote position, and for circulating the heat transfer medium back to the means for enabling transfer of heat (Claim 1) The claimed functions for this means-plus-function limitation are: circulating the heat transfer medium from the means for enabling transfer of heat, to a position remote from the burner, for transfer of at least some of the heat from the heat transfer medium, at the remote position, and for circulating the heat transfer medium back to the means for enabling transfer of heat. Honeywell contends that the corresponding structure is a circulating air blower. Pet Honeywell supports its contention by citing to the description in the 642 patent that the circulating air blower is modulated, in order to obtain a balance between plenum air temperature rise, supply air 12

13 temperature and overall system efficiency. Ex. 1001, 5:28-30 (emphasis added). The 642 patent further discloses that: From algorithm 34 is obtained information necessary to regulate the operation of indoor blower motor 36, in particular, the desired plenum static pressure which is to be maintained by the blower 36 (and which is sensed by suitably provided pressure sensors in the plenum). Ex. 1001, 5: Figure 3 of the 642 patent, which is reproduced above, provides an illustration of the circulating air blower 36. Id. For purposes of this decision, we identify the corresponding structure for performing the recited functions namely: circulating the heat transfer medium from the means for enabling transfer of heat, to a position remote from the burner, for transfer of at least some of the heat from the heat transfer medium, at the remote position, and for circulating the heat transfer medium back to the means for enabling transfer of heat to be the circulating air blower Means for modulating the operation of the means for circulating the heat transfer medium, for varying the amount of heat transferred from the heat transfer medium (Claim 1) The claimed function for this means-plus-function limitation is modulating the operation of the means for circulating the heat transfer medium, for varying the amount of heat transferred from the heat transfer medium. Honeywell contends that the corresponding structure is an ECM that operates the circulating air blower. Pet Honeywell relies upon the following portion of the 642 patent to support its contention: 13

14 To enable the speed of the circulating air blower 36 to be varied in a substantially infinitely adjustable manner, the motor for the blower must be capable of substantially infinite speed adjustment. Accordingly, an electrically commutated motor (ECM), as are presently known in the art, would, among other commercially available motors, comprise an acceptable motor for use. Ex. 1001, 5:60-67 (emphasis added). Figure 3 of the 642 patent, which is reproduced above, illustrates that the ECM operates the circulating air blower 36. Id. For purposes of this decision, we identify the corresponding structure for performing the recited function namely modulating the operation of the means for circulating the heat transfer medium, for varying the amount of heat transferred from the heat transfer medium to be the ECM that operates the circulating air blower The modulation of the fuel flow, the modulation of the circulation of the heat transfer medium, and the modulation of the combustion air each being operably controlled by control means, between at least three respective rates of operation, other than a zero flow rate (Claim 1) The claimed function for this means-plus-function limitation is [controlling] the modulation of the fuel flow, the modulation of the circulation of the heat transfer medium, and the modulation of the combustion air each... between at least three respective rates of operation, other than a zero flow rate. Honeywell contends that the corresponding structure is a controller. Pet Honeywell relies upon the following portion of the 642 patent to support its contention: 14

15 In or adjacent to the plenum heat exchanger 24, a sensor 26 is provided which supplies an input to controller 25 (FIG. 3), which is processed with plenum temperature controls using conventionally known fuzzy logic algorithm 28 techniques. The output of the processing of information from sensor 26, via algorithm 28, is employed to regulate the operation of the modulating gas valve 22. Ex. 1001, 5:33-40 (emphasis added). Figure 3 of the 642 patent, which is reproduced above, indicates that the controller 25 is connected to and, as a result, capable of controlling modulating gas valve 22, circulating air blower 36, and induced draft blower motor 40. Id. For purposes of this decision, we identify the corresponding structure for performing the recited function namely [controlling] the modulation of the fuel flow, the modulation of the circulation of the heat transfer medium, and the modulation of the combustion air each... between at least three respective rates of operation, other than a zero flow rate to be the controller 25. B. Remaining Claim Terms All remaining claim terms recited in claims 1-4, 6, 7, 9-12, and are given their ordinary and customary meaning as would be understood by one with ordinary skill in the art, and need not be further construed at this time. III. ANALYSIS A. 35 U.S.C. 102(b) Ground of Unpatentability GRI Claims 1-4, 6, 7, 9-12, 14, 15, and

16 Honeywell contends that claims 1-4, 6, 7, 9-12, 14, 15, and are anticipated under 35 U.S.C. 102(b) by GRI. Pet and In particular, Honeywell relies upon claim charts to explain how GRI allegedly describes the subject matter recited in these claims. Id. HVAC Modulation did not file a preliminary response challenging Honeywell s assertion that GRI describes the subject matter recited in claims 1-4, 6, 7, 9-12, 14, 15, and GRI discloses a modulating furnace and a zoned warm air heating system for use in residences. Ex. 1002, p. 1, Sec. 1.1 Overview. According to GRI, some of the key features of the system include: Id. (1) continuous modulation of a firing rate and supply air over a wide range, (2) closed-loop control to maintain a desired supply air flow under varying system resistances, (3) continuous modulation of combustion air to maintain efficiency,... and (6) a single microprocessor-based controller that integrates all aspects of the system. Figure 2.3 of GRI provides an illustration of all the elements in the system tested at a residence characterized as a SMART HOUSE. Ex. 1002, p. 10, Sec Elements of the SMART HOUSE System. Figure 2.3 of GRI is reproduced below. 16

17 Figure 2.3 Elements of the SMART HOUSE System GRI discloses that a microprocessor mounted on the furnace serves as a central controller and data logger. Id. The microprocessor controls the inducer motor, circulating air motor, gas valves, and zone dampers. Id. The furnace uses aluminized steel multi-port burners that fire up into glass-lined primary heat exchanger cells. Ex. 1002, p. 10, Sec Furnace. Combustion gases pass through the heat exchanger cells into a manifold where the combustion gases are routed through a stainless-steel pipe to a secondary heat exchanger assembly. Id. GRI further discloses a modulating/regulating valve that controls the firing rate. Ex. 1002, p. 13, Sec Gas Control. Because pressure regulation is controlled by voltage to the modulating/regulating valve, higher 17

18 voltages result in higher pressures. Id. GRI indicates that a pulse-widthmodulator applies power to the modulating/regulating valve. Id. Figure 2.5 of GRI illustrates the performance of the modulating/regulating valve during a ten-hour period on a typical day at the Smart House. Ex. 1002, p. 13, Sec Gas Control. Figure 2.5 of GRI is reproduced below. Figure 2.5 Desired and Actual Gas Control During a Typical Period at the SMART HOUSE The dotted line depicts the desired firing rate. Ex. 1002, p. 13, Sec Gas Control. The solid line depicts the actual firing rate as measured by a mass flow meter. Id. 18

19 GRI discloses replacing the standard circulating air blower motor and electronics module in the furnace with an ECM motor/controller package. Ex. 1002, p. 13, Sec Circulating Air Control. According to GRI, an ECM has a better cost/benefit ratio when compared with alternative methods of speed control. Id. GRI further discloses that the ECM drives the inducer blower. Ex. 1002, p. 15, Sec Combustion Air Control. GRI maximizes combustion efficiency by reducing the motor speed of the ECM with the firing rate of the modulating/regulating valve. Id. Figure 2.7 of GRI illustrates a circulating air flow rate control schedule for both single-zone and multi-zone operations. Ex. 1002, p. 15, Sec Circulating Air Control. Figure 2.7 of GRI is reproduced below. Figure 2.7 Circulating Air Flow Rate Control Schedule 19

20 The desired flow rate is shown as the dotted line, while the actual flow rate is shown as the solid line. Ex. 1002, p. 15, Sec Circulating Air Control. The explanations provided in Honeywell s claim charts indicating how GRI allegedly describes the subject matter recited in claims 1-4, 6, 7, 9-12, 14, 15, and appear to have merit and are otherwise unrebutted. For instance, Honeywell points to the pulse-width-modulating valve disclosed on pages of GRI, which controls the firing rate, as a means for modulating the flow of fluid fuel from the source to the burner. Pet Honeywell also identifies the circulating air blower disclosed on pages of GRI, which circulates air through the heat exchanger to multiple zones, as a means for circulating the heat transfer medium from the means for enabling transfer of heat, to a position remote from the burner, for transfer of at least some of the heat from the heat transfer medium, at the remote position, and for circulating the heat transfer medium back to the means for enabling transfer of heat. Id. at In addition, Honeywell points to the ECM disclosed on page 13 of GRI, which drives the circulating air blower, as a means for modulating the operation of the means for circulating the heat transfer medium, for varying the amount of heat transferred from the heat transfer medium. Id. at Based on our claim constructions above, Honeywell has made a threshold showing as to structure and function for each of the 20

21 aforementioned means-plus-function limitations recited in claim 1. We also conclude that Honeywell has made a threshold showing as to the challenged claims that depend from claim 1. Therefore, based on the record before us, we are persuaded that there is a reasonable likelihood that Honeywell will prevail on its assertion that claims 1-4, 6, 7, 9-12, 14, 15, and are anticipated by GRI. Claim 16 Honeywell contends that claim 16 recites claim limitations that are substantially similar to the claim limitations recited in claims 1 and 9, with the exception of one additional claim limitation namely monitoring the temperature of the heat transfer medium at the heat exchanger, at which heat from the burner is transferred to the circulating heat transfer medium. Pet Honeywell nonetheless argues that GRI describes the additional claim limitation. Id. at (citing Ex. 1002, p. 13, Sec Circulating Air Control). Claim 16, however, also recites the following claim limitations: providing an initial amount of fuel to the burner and igniting the fuel to begin burner operation; supplying further fuel to the burner at a predetermined initial flow rate; [and] substantially simultaneously modulating the rate of supply of the fuel to the burner, and modulating the rate of circulation of the heat transfer medium along the predetermined flow path, so as to control the temperature of the heat transfer medium to a predetermined temperature condition. 21

22 None of the claim limitations listed above are recited in claims 1 and 9. For example, claims 1 and 9 do not mention any initial amount of fuel, supplying further fuel at any predetermined initial flow rate, or substantially simultaneously modulating the rate of certain parameters. Honeywell s petition fails to provide a sufficient and credible explanation as to how GRI describes the features recited in these claim limitations. As a consequence, Honeywell has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 16 is anticipated by GRI. Claim 18 Claim 18 depends directly from independent claim 1. Honeywell contends that GRI describes the claimed subject matter recited in claim 18. Pet In particular, Honeywell argues that GRI discloses a system having the potential to have a sensor to monitor the firing rate, i.e., a sensor in or adjacent the heat exchanger. Id. at (citing Ex. 1002, pp. 2 and 10). Claim 18 recites wherein the control means for the modulation of the fuel flow receives an input signal from a sensor in or adjacent [to] the means for enabling the transfer of heat. Based on our claim construction above, claim 18 requires a controller that receives an input from a sensor in or adjacent to a heat exchanger. GRI discloses: a method to achieve wide-ranging closed-loop control of air flow under varying system resistances using the controller tachometer s output. This approach made it unnecessary to use costly temperature or pressure transducers to achieve the same end. 22

23 Ex. 1002, p. 13, Sec Circulating Air Control (emphasis added). To establish anticipation, each and every element in a claim, arranged as is recited in the claim, must be found in a single prior art reference. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Contrary to Honeywell s argument, and as noted above, a temperature transducer or sensor to monitor the firing rate is unnecessary in the modulating furnace and zoned warm air heating system disclosed in GRI. Although GRI may recognize that such sensors were known in the art in connection with other systems, this does not itself convey that a sensor is arranged as required in GRI s disclosed system. Moreover, whether an ordinarily skilled artisan would have recognized that GRI s system could be modified to include a temperature sensor is not the appropriate inquiry for a ground of unpatentability based on anticipation. Accordingly, Honeywell has not demonstrated a reasonable likelihood of prevailing on its assertion that GRI anticipates claim 18. B. 35 U.S.C. 103(a) Ground of Unpatentability GRI and either Rheem I or Rheem II Claim 16 Similar to its anticipation argument for claim 16 based on GRI, Honeywell contends that claim 16 is substantially similar to claims 1 and 9 apart from the additional step of monitoring the temperature of the heat transfer medium at the heat exchanger, at which heat from the burner is transferred to the circulating heat transfer medium. Pet Honeywell 23

24 argues that the additional step is disclosed by both Rheem I and Rheem II. Id. (citing Ex. 1005, p. 5; Ex. 1006, p. 6). As discussed above, claim 16 recites multiple claim limitations that are not recited in claims 1 and 9. See supra. Honeywell s petition fails to provide a sufficient and credible basis for determining that GRI, Rheem I, or Rheem II describe the additional claim limitations recited in claim 16. As a consequence, Honeywell has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 16 is unpatentable over GRI and either Rheem I or Rheem II. C. 35 U.S.C. 103(a) Ground of Unpatentability GRI and Rogers, III Claim 17 Claim 17 depends directly from claim 16. For the same reasons set forth above with respect to claim 16, Honeywell has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17 is unpatentable over GRI and Rogers, III. Claim 23 Similar to its arguments for claim 16 based on GRI, Honeywell contends that claim 23 is substantially similar to claims 1 and 9 apart from the additional step of monitoring the temperature of the heat transfer medium in a return heat transfer conduit, after the heat transfer medium has been directed through one or more spaces to be temperature controlled. Pet Honeywell argues that the additional step is disclosed by Rogers, III. Pet (citing Ex. 1024, Abstract; 1:30-66; and 2:60-65). Claim 23, however, also recites the following claim limitations: 24

25 providing an initial amount of fuel to the burner and igniting the fuel to begin burner operation; supplying further fuel to the burner at a predetermined initial flow rate; [and] substantially simultaneously modulating the rate of supply of the fuel to the burner, and modulating the rate of circulation of the heat transfer medium along the predetermined flow path, so as to control the temperature of the heat transfer medium to a predetermined temperature condition. None of the claim limitations listed above are recited in claims 1 and 9. For example, claims 1 and 9 do not mention any initial amount of fuel, supplying further fuel at any predetermined initial flow rate, or substantially simultaneously modulating the rate of certain parameters. Honeywell s petition fails to provide a sufficient and credible basis for determining that GRI or Rogers, III describe the features recited in these claim limitations. As a consequence, Honeywell has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 23 is unpatentable over the combination of GRI and Rogers, III. D. 35 U.S.C. 103(a) Grounds of Unpatentability GRI and Stroud Claim 18 Honeywell contends that Stroud discloses the additional subject matter recited in claim 18. Pet. 35. In particular, Honeywell argues that Stroud discloses that it was well known to monitor the temperature of the furnace using a sensor and, further, to control the firing rate of the gas valve 25

26 based on this temperature sensor. Id. (citing Ex. 1023, Abstract and 1:36-44). Honeywell also states: Id. it would have been obvious to combine the teachings of [Stroud] with the GRI Reference, because as discussed above this feature is expressed contemplated by the GRI Reference, but deemed unnecessary based on the expected level of performance (but with the clear suggestion that enhanced performance could be achieved). Exh. 1002, GRI Reference, p. 2. Thus this claim is rendered obvious in view of these prior art references. See e.g. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Honeywell has not provided an articulated reason with a rationale underpinning to combine GRI and Stroud. As discussed above, GRI discloses that the modulating furnace and zoned warm air heating system does not include a temperature transducer or sensor to monitor the firing rate. Ex. 1002, p. 13, Sec Circulating Air Control. The disclosure in GRI relied upon by Honeywell does not amount to a suggestion that enhanced performance may be achieved by incorporating a sensor into GRI s system. We hold that Honeywell s description of GRI has no credible basis in fact and, as a result, Honeywell has not provided a sufficient rationale to combine GRI and Stroud. Therefore, we are not persuaded that Honeywell has demonstrated a reasonable likelihood of prevailing on its assertion that claim 18 is unpatentable over the combination of GRI and Stroud. 26

27 E. 35 U.S.C. 102(b) Ground of Unpatentability Thompson Claims 1, 2, 4, 6, 9, 10, 12, 15, 18, and Honeywell contends that claims 1, 2, 4, 6, 9, 10, 12, 15, 18, and are anticipated under 35 U.S.C. 102(b) by Thompson. Pet and In particular, Honeywell relies upon claim charts to explain how Thompson allegedly describes the subject matter recited in these claims. Id. HVAC Modulation did not file a preliminary response challenging Honeywell s assertion that Thompson describes the subject matter recited in claims 1, 2, 4, 6, 9, 10, 12, 15, 18, and Thompson discloses an adaptive motor control for a furnace that determines and delivers a desired cubic feet per minute ( CFM ) of heated air for each thermostat cycle. Ex. 1003, Abstract. For each thermostat cycle, the furnace sets a circulating air blower driven by an ECM to a known duty cycle, and calculates the delivered CFM. Id. Based on this calculation, the furnace determines the revolutions per minute ( RPM ) necessary to deliver the desired CFM, and sets the ECM accordingly. Id. As such, the disclosed system is able to maintain the flow of combustion air at an optimum level. Ex. 1003, 1: Figure 1 of Thompson illustrates a side view of a gas-fired condensing furnace. Ex. 1003, 1: Figure 1 of Thompson is reproduced below. 27

28 Figure 1 illustrates a side view of a gas-fired condensing furnace employing an adaptive motor. Thompson discloses that the furnace includes a steel cabinet 12 that houses a burner assembly 14, combination gas control 16, heat exchanger assembly 18, support for inducer housing 20, inducer motor 22, inducer wheel 24, and circulating air blower 26. Ex. 1003, 2:6-11. The combination gas control 16 28

29 includes pilot circuitry that provides and controls a pilot frame. Ex. 1003, 2: The burner assembly 14 includes at least one burner 28 for at least one primary heat exchanger 30. Ex. 1003, 2: The burner 28 receives a flow of combustible gas from the combination gas control 16 and, in turn, injects the fuel gas into the primary heat exchanger 30. Ex. 1003, 2: This injection process includes drawing air into the heat exchanger assembly 18 so that the fuel gas and air mixture may be combusted therein. Ex. 1003, 2: Thompson discloses mounting the inducer motor 22 together with the inducer wheel 24 on the support for inducer housing 20, thereby allowing the inducer wheel 24 to draw the combusted air mixture from the burner assembly 14 through the heat exchanger assembly 18. Ex. 1003, 2: Thompson indicates that the circulating air blower 26 driven by ECM 25 delivers air to be heated in a counter-flow arrangement upwardly through air passage 52 and over the heat exchanger assembly 18. Ex. 1003, 2: As the circulating air blower 26 continues to force air flow upward through the heat exchanger assembly 18, the energy that is transferred from the combusted fuel air mixture flowing through heat exchangers 30 and 38 is used to heat the air circulated by the circulating air blower 26. Ex. 1003, 2: Thompson discloses that the combusted air mixture that flows through heat exchangers 30 and 38 exits through outlet 42, thereby allowing the inducer motor 22 to disperse the combusted air mixture through an exhaust gas outlet 50 to a vent pipe (not shown). Ex. 1003, 2:

30 Figure 2 of Thompson illustrates a portion of the furnace control system. Ex. 1003, 1: Figure 2 of Thompson is reproduced below. Figure 2 illustrates a portion of the furnace control system. Thompson discloses a microprocessor control 148 contained within microprocessor control assembly 54. Ex. 1003, 3:9-10. The microprocessor control 148 is connected electrically to the following components via electrical lines: (1) a limit switch 64; (2) the gas regulator 16 otherwise referred to as combination gas control 16; (3) an air blower motor control 160 for ECM 25; (4) an inducer motor control 164 for inducer motor 22; (5) an air conditioning system 180; (6) and a thermostat 182. Ex. 1003, 3: The air blower motor control 160 and the inducer motor control 164 help control the rate of fluid flow created by the circulating air blower 26 and the inducer wheel 24, respectively. Ex. 1003, 3: Thompson also indicates that the microprocessor control 148 may be programmed to control 30

31 gas flow by generating a voltage signal through an electrical line to a solenoid (not shown) located in the gas regulator 16. Ex. 1003, 3: During operation of the furnace 10, Thompson discloses that the microprocessor control 148 continues to make adjustments to the gas flow rate and pressure as a function of certain variable parameters, e.g., temperature changes. Ex. 1003, 4: As a consequence, the gas regulator 16 and the microprocessor control 148 provide essentially an infinite number of gas flow rates between a zero flow rate and a maximum flow rate. Ex. 1003, 4: Thompson further discloses that if the pressure drops across the heat exchanger assembly 18, a determination can be made concerning whether there is insufficient or too much combustion air flowing through combustion air inlet 32. Ex. 1003, 4: Pressure taps 58 and 62 measure this pressure drop. Ex. 1003, 4: In response thereto, a differential pressure transducer 158 generates and transmits a signal to the microprocessor control 148. Ex. 1003, 4: Generally speaking, for each pressure differential value, there is one optimum manifold gas pressure and one optimum combustion air flow rate. Ex. 1003, 4: Assuming a constant manifold gas pressure, variations in certain parameters can require the inducer wheel 24 to make adjustments to the combustion air flow rate. Ex. 1003, 4: The explanations provided in Honeywell s petition indicating how Thompson allegedly describes the claimed subject matter recited in claims 1, 2, 4, 6, 9, 10, 12, 15, 18, and have merit and are otherwise unrebutted. 31

32 For instance, Honeywell points to the gas regulator valve controlled by an electric signal, i.e., a solenoid, disclosed at column 3, lines of Thompson as a means for modulating the flow of fluid fuel from the source to the burner. Pet Honeywell also identifies the circulating air blower disclosed at column 2, lines 6-11 and of Thompson, which circulates air through the heat exchanger to a designated space, as a means for circulating the heat transfer medium from the means for enabling transfer of heat, to a position remote from the burner, for transfer of at least some of the heat from the heat transfer medium, at the remote position, and for circulating the heat transfer medium back to the means for enabling transfer of heat. Id. at 46. In addition, Honeywell points to the ECM disclosed at both the Abstract and column 2, lines of Thompson, which drives the circulating air blower, as a means for modulating the operation of the means for circulating the heat transfer medium, for varying the amount of heat transferred from the heat transfer medium. Id. at Based on our claim constructions above, Honeywell has made a threshold showing as to structure and function for each of the aforementioned means-plus-function limitations recited in claim 1. We also conclude that Honeywell has made a threshold showing as to the challenged claims that depend from claim 1. Therefore, based on the record before us, we are persuaded that there is a reasonable likelihood that Honeywell will prevail on its assertion that claims 1, 2, 4, 6, 9, 10, 12, 15, 18, and are anticipated by Thompson. 32

33 F. 35 U.S.C. 103(a) Ground of Unpatentability Thompson and either Rheem I or Rheem II Claim 16 Similar to its arguments for claim 16 based on GRI, Honeywell contends that claim 16 is substantially similar to claims 1 and 9 apart from the additional step of monitoring the temperature of the heat transfer medium at the heat exchanger, at which heat from the burner is transferred to the circulating heat transfer medium. Pet Honeywell argues that the additional step is disclosed by both Rheem I and Rheem II. Id. (citing Ex. 1005, p. 5; Ex. 1006, p. 6). As discussed above, claim 16 recites multiple claim limitations that are not recited in claims 1 and 9. See supra. Honeywell s petition fails to provide a sufficient and credible basis for determining that Thompson, Rheem I, or Rheem II describe those claim limitations recited in claim 16. As a consequence, Honeywell has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 16 is unpatentable over Thompson and either Rheem I or Rheem II. 33

34 G. 35 U.S.C. 103(a) Ground of Unpatentability Thompson and Rogers, III Claim 17 Claim 17 depends directly from claim 16. For the same reasons set forth above with respect to claim 16, Honeywell has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17 is unpatentable over Thompson and Rogers, III. Claim 23 Similar to its argument for claim 23 based on the combination of GRI and Rogers, III, Honeywell contends that claim 23 is substantially similar to claims 1 and 9 apart from the additional step of monitoring the temperature of the heat transfer medium in a return heat transfer conduit, after the heat transfer medium has been directed through one or more spaces to be temperature controlled. Pet Honeywell argues that the additional step is disclosed by Rogers, III. Pet (citing Ex. 1024, Abstract; 1:30-66; and 2:60-65). As discussed above, claim 23 recites multiple claim limitations that are not recited in claims 1 and 9. See supra. Honeywell s petition fails to provide a sufficient and credible basis for determining that Thompson or Rogers, III describe those claim limitations recited in claim 23. As a consequence, Honeywell has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 23 is unpatentable over the combination of Thompson and Rogers, III. 34

35 IV. ORDER It is ORDERED that pursuant to 35 U.S.C. 314(a), an inter partes review is hereby instituted as to claims 1-4, 6, 7, 9-12, 14, 15, and of the 642 patent for the following grounds of unpatentability: A. Claims 1-4, 6, 7, 9-12, 14, 15, and as anticipated under U.S.C. 102(b) by GRI. B. Claims 1, 2, 4, 6, 9, 10, 12, 15, 18, and as anticipated under 35 U.S.C. 102(b) by Thompson. It is FURTHER ORDERED that no other grounds of unpatentability are authorized for the inter partes review as to claims 1-4, 6, 7, 9-12, and of the 642 patent. It is FURTHERED ORDERED that pursuant to 35 U.S.C. 314(c) and 37 C.F.R. 42.4, notice is hereby given of the institution of a trial. The trial will commence on the entry date of this decision. It is FURTHER ORDERED that an initial conference call with the Board is scheduled for 2 PM on June 17, The parties are directed to the Office Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012) for guidance in preparing for the initial conference call, and should come prepared to discuss any proposed changes to the Scheduling Order entered herewith and any motions the parties anticipate filing during the trial. 35

36 For PETITIONER: Blas P. Arroyo R. Flynt Strean ALSTON & BIRD LLP For PATENT OWNER: Amedeo F. Ferraro Wesley C. Meinerding MARTIN & FERRARO LLP 36