PTO/SB/58 (02-09)
`Approved for use through 08/31/2010 OMB 0651-0033
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`(Also referred to as FORM PT0-1465)
`REQUEST FOR INTER PARTES REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313·1450
`
`Attorney Docket No.: A0985.70000USOO
`
`Date:
`
`November 12, 2010
`
`1. 0 This is a request for inter partes reexamination pursuant to 37 CFR 1. 913 of patent number
`
`May 9, 2006
`7,043,543 82
`issued
`a third party requester, identified herein below.
`
`2. 0 a. The name and address of the person requesting reexamination is:
`
`. The request is made by
`
`American Power Conversion Corporation
`132 Fairgrounds Road
`West Kingston, Rl 02892
`
`b. The real party in interest (37 CFR 1.915(b)(8)) is: American Power Conversion Corporation
`
`is enclosed to cover the reexamination fee, 37 CFR 120(c)(2);
`
`to Deposit Account No.
`
`23/2825
`
`; or
`
`23/2825
`37 CFR 1.26(c). If payment is made by credit card, refund must be made to credit card account.
`
`paper is enclosed. 37 CFR 1.915(b)(5)
`
`3. D a. A check in the amount of $
`0 b. The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(2)
`0 c. Payment by credit card. Form PTO 20J8 is attached.
`4. 0 Any refund should be made by 0 check or 0 credit to Deposit Account No.
`5. 0 A copy of the patent to be reexamined having a double column format on one side of a separate
`6. 0 CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`0 Landscape Table on CD
`7. D Nucleotide and/or Amino Acid Sequence Submission
`a. 0 Computer Readable Form (CRF)
`i 0 CD-ROM (2 copies) or CD-R (2 copies); or
`ii D paper
`c. D Statements verifying identity of above copies
`8. D A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is
`9. 0 Reexamination of claim(s)
`1 o. 0 A copy of every patent or printed publication relied upon is submitted herewith including a listing
`11. D An English language translation of all necessary and pertinent non-English language patents and/or
`
`If applicable, items a.- c. are required.
`
`b. Specification Sequence Listing on:
`
`included.
`
`1-23
`
`is requested.
`
`thereof on Form PTO/SB/08, PT0-1449, or equivalent.
`
`printed publications is included.
`
`Certificate of Electronic Filing Under 37 CFR 1.8
`I hereby certify that this paper (along with any paper referred to as being attached or enclosed) is being transmittoo via the Office electronic filing
`1
`'".
`system in accordance with§ 1.6(a)(4).
`•I
`
`Dated: November 12, 2010
`
`2150196.1
`
`IPR Page 1
`
`Raritan v. Server Technology
`
`RARITAN EXHIBIT 1004
`
`

`
`PTO/SB/58 (02..09)
`Approved for use through 08/31/2010 OMB 0651-0033
`U.S. Patent and Trademarl< Office; U.S. DEPARTMENT OF COMMERCE
`rworl< Reduction Act of 1995 no ersons are re uired to res ond to a collection of information unless it dis Ia sa valid OMB control number.
`
`Under the Pa
`
`12. 0 The attached detailed request includes at least the following items:
`
`a.
`
`b.
`
`A statement identifying each substantial new question of patentability based on prior
`patents and printed publications. 37 CFR 1.915(b)(3)
`
`An identification of every claim for which reexamination is requested, and a detailed
`explanation of the pertinency and manner of applying the cited art to every claim
`for which reexamination is requested. 37 CFR 1.915(b)(1) and (3)
`
`13. 0 It is certified that the estoppel provisions of 37 CFR 1.907 do not prohibit this reexamination.
`
`37 CFR 1.915(b)(7)
`
`14. 0 a.
`
`D b.
`
`It is certified that a copy of this request is being served in its entirety on the patent owner as
`provided in 37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`Robert Ryan, Esq.
`HOLLAND & HART, LLP
`P.O. Box 8749
`Denver, CO 80201
`
`Date of Service:
`
`November 12, 2010
`
`; or
`
`A duplicate copy is enclosed since service on patent owner was not possible. An explanation of
`the efforts made to serve patent owner is attached. See MPEP 2620.
`
`15. Correspondence Address: Direct all communication about the application to:
`
`0 The address associated with Customer Number:
`OR
`
`23628
`
`D Firmor
`
`Individual Name
`
`Address
`
`City
`
`Country
`
`State
`Telephone
`
`Zip
`
`Email
`
`16. 0 The patent is currently the subject of the following concurrent proceeding(s ):
`D a. Copending reissue Application No.
`D b. Copending reexamination Control No.
`D c. Copending Interference No.
`0d.
`
`public. Credit card information should not be included
`authorization on PT0-2038.
`
`November 12, 2010
`Date
`
`Edmund J. Walsh
`Typed/Printed Name
`
`32,950
`Registration Number, if applicable
`
`2
`
`IPR Page 2
`
`

`
`Attachment to Form PTO/SB/58
`
`Electronic Deposit
`Date of Deposit: November 12, 2010
`Docket No.: A0985.70000USOO
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Ewing et al.
`U.S. Patent No.: 7,043,543 B2
`Issue Date: May 9, 2006
`Serial No.: 09/930,780
`Filing Date: August 15, 2001
`Examiner: Jeffrey Pwu
`Real Party in Interest: American Power Conversion Corporation
`Title: VERTICAL-MOUNT ELECTRICAL POWER DISTRIBUTION PLUGSTRIP
`
`Mail Stop "Inter Partes Reexam"
`Attn: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DETAILED REQUEST FOR INTER PARTES REEXAMINATION
`UNDER 35 U.S.C. §§ 311-318 AND 37 C.F.R. § 1.902 ET SEQ.
`
`Dear Sir:
`
`American Power Conversion Corporation ("APC") requests inter partes reexamination of
`
`claims 1-23 of U.S. patent No. 7,043,543 B2 (the "'543 patent"), which issued on May 9, 2006 to
`
`Ewing et al. The '543 patent is assigned to Server Technology, Inc. ("STI"), and is being
`
`asserted against APC in the U.S. District Court for the District of Nevada. 1 In that litigation, STI
`
`contends that APC infringes a number of claims of the '543 patent, as well as other STI patents.
`
`APC has alleged in that litigation that it does not infringe any claims of the '543 patent and that
`
`the claims are invalid for failure to satisfy the conditions for patentability set forth by 35 U.S.C.
`
`§ 101 et seq.
`
`Server Technology, Inc v. American Power Conversion Corporation, Case No. 3:06-CV-00698-
`LRH-VPC, in the U.S. District Court for the District of Nevada. referred to herein as the STI/APC Litigation.
`
`IPR Page 3
`
`

`
`Attachment to Form PTO/SB/58
`
`During prosecution of the '543 patent, a number of patents and printed publications were
`
`cited and discussed. APC, however, has located additional U.S. patents and prior art printed
`
`publications that were not considered by the Examiner and that invalidate the claims of the '543
`
`patent (hereinafter the "new art") as either anticipated or obvious. In addition, some of the
`
`patents and printed publications cited during prosecution also render claims of the '543 patent
`
`obvious (hereinafter the "old art"; see MPEP § 2642(II)(A)), when the old art is viewed in a
`
`different way or when it is viewed in light of the new art.
`
`APC provides a table of contents for this request on the following page.
`
`2133907.10
`
`11
`
`IPR Page 4
`
`

`
`Attachment to Form PTO/SB/58
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`37 C.F.R § 1.915(b)(1)- IDENTIFICATION OF CLAIMS FOR WHICH
`REEXAMINATION IS REQUESTED .............................................................................. 1
`
`37 C.P.R.§ 1.195(b)(2)- PATENTS AND PRINTED PUBLICATIONS
`RAISING A SUBSTANTIAL NEW QUESTION OF PATENTABILITY ....................... 1
`
`37 C.F.R § 1.915(b)(3)- STATEMENT OF EACH SUBSTANTIAL NEW
`QUESTION OF PATENTABILITY AND DETAILED EXPLANATION OF
`APPLICATION OF PATENTS AND PRINTED PUBLICATIONS TO CLAIMS ......... 2
`
`A. General Overview of the '543 patent and its Claims .......................................................... 2
`
`B. Prosecution History Of The '573 Patent.. ........................................................................... 8
`1.
`Priority Date .................................................................................................................... 8
`2. The Prosecution History ............................................................................................... 12
`
`C. The References Are Prior Art and Present.. ...................................................................... 15
`1. MasterSwitch VM Literature (Exhibits B, C and D) .................................................... 17
`2. BayTech Product Literature (Exhibits E, F, and G) ...................................................... 20
`3.
`Power Administrator 800 User Guide (Exhibit H) ....................................................... 21
`4. McNally (Exhibit I) ....................................................................................................... 23
`5. Lee (Exhibit J) - Digital Display for Use on a Power Distribution
`Device or Plugstrip ....................................................................................................... 25
`6. Liu (Exhibit K)- Digital Display for Use on a Power Distribution
`Device or Plugstrip ....................................................................................................... 27
`7. Ewing '974 Patent (Exhibit L)- Remote Management of a Power
`Distribution Device and Other Power Distribution Functions ...................................... 28
`8. Wiebe (Exhibit M) - Vertically-Oriented Power Distribution Plugstrip .................... 31
`
`D. Application of Cited Prior Art to the Claims .................................................................... 34
`1. Claims 1-14 Are Obvious Over the MasterSwitch VM Literature ............................... 34
`2. Claims 15-23 Are Obvious Over the MasterSwitch VM Literature in View of Lee .... 37
`3. Claims 1-14 Are Obvious Based on the BayTech Product Literature .......................... 39
`4. Claims 15-23 Are Obvious Over the BayTech Product Literature in View of Lee ...... 41
`5. Claims 1-23 Are Obvious Over the PA-800 Reference in View of Wiebe
`and Further in View of Lee ........................................................................................... 42
`Claims 1-14 Are Anticipated by McNally .................................................................... 47
`Claims 15-23 Are Obvious Over McNally in View of Liu .......................................... 48
`Claims 1-23 Are Obvious Over the Ewing '974 Patent in View of Wiebe,
`Further in View of Lee .................................................................................................. 50
`
`6.
`7.
`8.
`
`2133907.10
`
`111
`
`IPR Page 5
`
`

`
`Attachment to Form PTO/SB/58
`
`IV.
`
`V.
`
`VI.
`
`VII.
`
`37 C.P.R.§ 1.915(b)(4)- COPY OF EVERY PATENT OR PRINTED
`PUBLICATION RELIED UPON OR REFERRED TO .................................................. 54
`
`37 C.P.R. § 1.915(b)(5)- COPY OF THE ENTIRE PATENT FOR WHICH
`REEXAMINATION IS REQUESTED ............................................................................ 54
`
`37 C.P.R. § 1.915(b)(6)- CERTIFICATION OF SERVICE ON THE
`PATENT OWNER ............................................................................................................ 55
`
`37 C.P.R.§ 1.915(b)(7)- CERTIFICATION THAT THE
`ESTOPPEL PROVISIONS OF § 1.907 DO NOT
`PROHIBIT INTER PARTES REEXAMINATION .......................................................... 55
`
`VIII. 37 C.P.R. § 1.915(b)(8)- STATEMENT IDENTIFYING THE REAL
`PARTY IN INTEREST .................................................................................................... 55
`
`IX.
`
`37 C.F.R § 1.915(a)- FEE ............................................................................................... 55
`
`X.
`
`CONCLUSION ................................................................................................................. 56
`
`2133907.10
`
`IV
`
`IPR Page 6
`
`

`
`I.
`
`37 C.F.R § 1.915(b)(l)- IDENTIFICATION OF CLAIMS
`FOR WHICH REEXAMINATION IS REQUESTED
`
`Pursuant to 37 C.P.R.§ 1.915(b)(1), reexamination of claims 1-23 of U.S. patent No.
`
`7,043,543 B2 (Exhibit A) is requested.
`
`II.
`
`37 C.F.R. § 1.195(b)(2)- PATENTS AND PRINTED PUBLICATIONS
`RAISING A SUBSTANTIAL NEW QUESTION OF PATENTABILITY
`
`Pursuant to 37 C.P.R. § 1.915(b)(2), the following U.S. patents and printed publications
`
`are presented to provide a substantial new question of patentability ("SNQ"):
`
`• MasterS witch ™ VM Literature, which includes:
`
`o MasterSwitch™ VM User Guide (the "MSVM User Guide"), Exhibit B.
`
`o MasterS witch ™ VM Power Distribution Unit Installation and Quick Start Manual
`(the "MSVM Quick Start Manual"), Exhibit C.
`
`o PowerNet® SNMP Management Information Base (MIB) v3.1.0 Reference Guide
`(the "MSVM PowerNet Guide"), Exhibit D.
`
`• BayTech Product Literature, which includes:
`
`o Download of .~}y_~J~-~!:YT~fh:_H~t from web.archive.org (the "BayTech Website"),
`Exhibit E.
`
`o Owner's Manual for BayTech Remote Power Control Unit (the "BayTech
`Manual"), Exhibit F.
`
`o M2 Communications Ltd., "BayTech," M2 Presswire, Bay St. Louis, Mississippi,
`U.S.A., November 19, 1999 (the "BayTech Article"), Exhibit G.
`
`• Power Administrator™ 800 User Guide ("PA-800"), Exhibit H.
`
`• McNally et al., U.S. patent 6,741,442 ("McNally"), Exhibit I.
`
`• Lee, U.S. patent No. 5,650,771 ("Lee"), Exhibit J.
`
`• Liu, U.S. patent 6,476,729 ("Liu"), Exhibit K
`
`• Ewing et al., U.S. patent No. 5,949,974 (the "Ewing '974 patent"), Exhibit L.
`
`• Wiebe, U.S. patent No. 5,595,494 ("Wiebe"), Exhibit M.
`
`With the exception of Liu (Exhibit K) and the Ewing '974 patent (Exhibit L), none of the
`
`above references were before the Examiner during prosecution of the '543 patent.
`
`IPR Page 7
`
`

`
`Attachment to Form PTO/SB/58
`
`III.
`
`37 C.F.R § 1.915(b)(3)- STATEMENT OF EACH SUBSTANTIAL NEW
`QUESTION OF PATENTABILITY AND DETAILED EXPLANATION OF
`APPLICATION OF PATENTS AND PRINTED PUBLICATIONS TO CLAIMS
`
`As detailed in the following sections, the MSVM User Guide, the MSVM Quick Start
`
`Manual, the MSVM PowerNet Guide, the BayTech Website, the BayTech Manual, the BayTech
`
`Article, the Power Administrator 800 User Guide, McNally, Lee, Liu, the Ewing '974 patent, and
`
`Wiebe present substantial new questions of patentability in relation to all of claims 1-23 because:
`
`(1) none of the references were applied in any rejection made by the Examiner, and (2) each
`
`proposed rejection is based on at least one reference not before the Examiner. Below, APC
`
`provides an overview of the '543 patent and its claims, a brief description of the new and old art
`
`and how this art raises substantial new questions of patentability, and proposed rejections to the
`
`claims of the '543 patent based on this art.
`
`A.
`
`General Overview of the '543 patent and its Claims
`
`The '543 patent relates generally to power distribution systems that can monitor and
`
`control the distribution of power to electric equipment loads connected to power outlets,
`
`including remotely over a network. The '543 patent describes that such devices may be useful
`
`for a telephone company with a server and routers at a point of presence (POP) ('543 patent, Col.
`
`1, lines 15-18, 23; Col. 2, line 20) because there is no remote operator present to monitor power
`
`and environmental conditions for the electronic equipment and to tum on and off the power for
`
`that equipment (id., Col. 4, lines 26-30). Fig. 2 from the '543 patent is reproduced below:
`
`2133907.10
`
`2
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`IPR Page 8
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`

`
`Attachment to Form PTO/SB/58
`
`Fig.2
`
`TCP/IP network
`
`\20"-
`
`......;j!~Ql3~]--
`\226
`
`r·r.-.-.-.-.-.-.-.-.-.-.-.-.~-.-.-.-.-.-.-.-.-.-.- · .-.-.-.-.-.-.-.-.-.~-.-.-.-!-- ··· · ·- · ·:.-::::.r:::: --..... !
`~08 !. ..... r._]
`! [
`i ,
`
`i
`
`i NIC
`
`i--216 i
`'4()6
`
`·------.--------------------~
`
`operating power
`
`As illustrated in FIG. 2, such a system is implemented in two locations, one of which
`
`contains a network management system (202) and the other of which is identified as a remote
`
`site (206). The electronic equipment (labeled "computer based appliance" in FIG. 2) that is
`
`provided with power is at the remote site (id., Col. 3, line 62). Power controller (208) includes a
`
`relay-switch (212) that is able to tum power to the computer based appliance (214) on or off
`
`based on instructions sent from the power manager (234) (id., Col. 4, line 3). Power controller
`
`(208) also includes a sensor (210) that can measure voltage and current supplied to the computer
`
`based appliance, (210) (id., Col. 4, line 51).
`
`The '543 patent describes how the power controller may be deployed in the form of a
`
`plug strip. FIG. 1 of the patent, reproduced below, depicts such a plugstrip:
`
`2133907.10
`
`3
`
`IPR Page 9
`
`

`
`Attachment to Form PTO/SB/58
`
`136
`
`1W{
`
`138
`
`1W{
`
`140
`
`1~{
`
`142-
`
`1M{
`
`144
`
`Fig. 1
`
`~100
`
`102
`
`110
`
`The '543 patent describes that the plugstrip can preferably be a vertically-oriented and
`
`vertically-mounted power distribution plugstrip for use in a vertical RETMA equipment rack that
`
`is used to hold the electronic appliances that the power control supplies with power and controls
`
`('543 patent, Col. 1, lines 64-67; Col. 3, lines 16-21). This packaging of the functional features
`
`of the power controller into a vertical plugstrip advantageously frees up vertical space in the
`
`equipment rack (id., Col. 2, lines 5-7).
`
`As shown in FIG. 1, the plugstrip has a power input cord (108), and a plurality of
`
`electrical outputs along a face of the plugstrip enclosure for connection with one or more
`
`2133907.10
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`4
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`IPR Page 10
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`

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`Attachment to Form PTO/SB/58
`
`electrical loads (id., Col. 3, lines 11-13). The outlets are described as being grouped into
`
`"intelligent power modules," labeled (128) (130) (132) and (134) (id., Figs. 1, 5; Col. 3, lines 31-
`
`43; Col. 8, lines 32-42). Within the plugstrip, a plurality of power control relays control power
`
`to distributed to the outlets and ultimately to the electrical loads by turning the outlets on or off.
`
`The '543 patent also describes that the loads at the remote site may be plugged into the outlets of
`
`a plug strip, and as many of the functional parts of the power controller as possible are packaged
`
`in the plugstrip (id., Col. 3, lines 62-66).
`
`The plugstrip includes a display (104) disposed on the enclosure for displaying current
`
`related information (id., Col. 3, lines 13-15,22-30). The '543 patent describes that this display
`
`may preferably be a digital readout of the total input current. (id., Col. 3, lines 13-15).
`
`The '543 patent also describes that the plugstrip is configured to allow a remote operator
`
`to monitor and control the electrical power status of the plugstrip and loads connected to it (id.,
`
`Col. 2, lines 11-14; Col. 4, lines 45-56). Referring to FIG. 2, the network management system
`
`(202) and the remote site (206) are connected by a network (204). Commands can be sent from
`
`the network management system to the power controller at the remote site over the network
`
`(204) (id., Col. 4, lines 48-50). The network (204) also carries data collected by sensors at the
`
`remote site to the network management system (id., Col. 4, lines 50-54). As shown in FIG. 2, a
`
`power controller (208) at the remote site generates this data and responds to such commands.
`
`The independent claims of the '543 patent are directed to "an electrical power
`
`distribution plugstrip connectable to one or more electrical loads in a vertical electrical
`
`equipment rack," which may function as the power controller deployed at a remote location
`
`illustrated in FIG. 2. The claims of the '543 patent recite a number of specific features of the
`
`plugstrip. Independent claims 1 and 15 each require a plugstrip with the following features:
`
`2133907.10
`
`5
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`IPR Page 11
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`

`
`Attachment to Form PTO/SB/58
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`a vertical strip enclosure that is longer than it is wide;
`
`a power input penetrating the enclosure;
`
`a plurality of outputs along the face of the enclosure, each connectable to an
`electrical load;
`
`a plurality of power control relays each able to independently control power to an
`output;
`
`a current display that is in communication with either the power input or the
`power outputs; and
`
`a current-related information reporting system that is (i) in communication with
`either the input or the outputs and (ii) in communication with a separate
`communications network at a location distal from the plugstrip itself.
`
`Claim 15 differs from claim 1 in that claim 15 requires a "digital current information display" as
`
`opposed to a "current-related information display."
`
`Many of the dependent claims of the '543 patent recite additional limitations relating to
`
`the grouping of outlets to provide one or more "intelligent power sections" or an "intelligent
`
`power module." Claims 2 and 16 recite that the plugstrip comprises at least one "intelligent
`
`power section." Claims 4 and 18 recite that the plugstrip further comprises a plurality of
`
`"intelligent power sections," each of which is in independent communication with at least one
`
`power output. Claims 9-14 and 20-23 recite that the intelligent power section comprises an
`
`"intelligent power module" having at least one of the power control relays and the corresponding
`
`power output
`
`The close similarity of the language between "intelligent power section" and "intelligent
`
`power module" suggests that these terms have similar meanings. In fact, in its Appeal Brief filed
`
`during prosecution of the '543 patent, the Applicants argued that these terms must have the same
`
`meaning (Appeal Brief filed November 17, 2005, page 22). The written description of the '543
`
`patent does not use the term "intelligent power section" and, though it uses the term "intelligent
`
`power module," does not define it. Nonetheless, the broadest reasonable interpretation of the
`
`2133907.10
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`6
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`IPR Page 12
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`

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`Attachment to Form PTO/SB/58
`
`term "intelligent power section" can be discerned and reads on a section of a power strip that
`
`contains at least a relay controlling an outlet. The broadest reasonable interpretation of the term
`
`"intelligent power module" reads on a group of (one or more) outlets that can be switched on or
`
`off independent of the other outlets, as by a relay associated with an individual outlet.
`
`This interpretation follows from the Patent Owner's characterization of these terms
`
`during the STII APC Litigation. The broadest reasonable interpretation of these terms for the
`
`purposes of reexamination must include at least the interpretations presented in court by the
`
`Patent Owner. In the litigation against APC, STI proposed that these terms have the same
`
`meaning, presented below:
`
`"A section or module that responds to communication to make power available or
`not available in one instance without regard to the flow of power in another
`instance"
`
`(Claim Construction Order, Issued April16, 2010 in the STIIAPC Litigation, page 22).
`
`Moreover, these interpretations are consistent with the specification and claims of the '543
`
`patent. Claim 2 recites only that the "intelligent power section" contains a relay to control power
`
`to an outlet. Similarly, each of claims 9-14 and 20-23 recites that the intelligent power module
`
`contains at least one of the plurality of power control relays in the plug strip and a corresponding
`
`output.
`
`Further support for these interpretations can be found in the written description at Col. 5,
`
`lines 47-48. That passage makes a distinction between "the power manager and intelligent
`
`power module functions." That distinction is made in connection with a discussion of FIG. 2. In
`
`that embodiment, when the power manager (224) is considered as separate from the "intelligent
`
`power module functions," it is clear that the "intelligent power module," is just the relay (212)
`
`and an associated connection point (i.e. the outlet) to computer-based appliance (214) load.
`
`2133907.10
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`IPR Page 13
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`

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`Attachment to Form PTO/SB/58
`
`Because "during reexamination, claims are given the broadest reasonable interpretation
`
`consistent with the specification and limitations in the specification are not read into the claims,"
`
`MPEP § 2258(1)(0), the appropriate focus for dependent claims 2, 4, 16 and 18 is on a section(s)
`
`with a power control relay, and for dependent claims 9-14 and 20-23 is on a module with a
`
`power control relay and an outlet that the relay controls.
`
`Additional dependent claims recite limitations regarding what the current display is in
`
`communication with. Specifically, claims 6-8 recite that the display is in current determining
`
`communication with all of the power outputs through at least one current sensing device. The
`
`broadest reasonable construction of this term can include, for example, a current display that
`
`measures the total current drawn through the claimed plugstrip.
`
`The remaining dependent claims, claims 3, 5, 17, and 19, recite that the plug strip
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`includes an "external power manager application" that is in network communication with the
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`intelligent power section, whereby a user of the external power manager application may control
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`power provided to selected power outputs.
`
`B.
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`Prosecution History Of The '573 Patent
`
`1.
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`Priority Date
`
`The '543 patent lists on its face that it claims priority, as a result of three continuation in
`
`part applications, to application 08/685,436, filed July 23, 1996, and which is now U.S. Patent
`
`No. 5,949,974 (the Ewing '974 patent, and the great-grandparent in the chain). The grandparent
`
`application in the chain is application 09/375,471, and which is now U.S. Patent No. 6,711,613.
`
`The parent application, 091732,557, is now U.S. Patent No. 7,099,934, (the "934 patent") filed on
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`2133907.10
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`8
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`IPR Page 14
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`

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`Attachment to Form PTO/SB/58
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`December 8, 2000. However, none of the claims of the '543 patent is entitled to claim priority to
`
`any of these applications.
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`During prosecution of the '543 patent, the Examiner stated that the earliest claimed
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`priority date, to the filing date of the Ewing '974 patent, was inappropriate (10/22/04 Non-Final
`
`Rejection, page 3 paragraph 2). The Examiner stated that he considered the priority date to be
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`December 8, 2000, corresponding to the parent application 091732,557 (10/22/04 Non-Final
`
`Rejection, page 3 paragraph 3).
`
`However, the '543 patent is not entitled to an earlier priority date than its filing date of
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`August 15, 2001. Both independent claims in the '543 patent specifically recite a display
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`disposed on a vertical strip enclosure of a plug strip: claim 1 recites "a current-related
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`information display disposed on said vertical strip enclosure ... "; claim 15 recites "a digital
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`current information display disposed on another area of said vertical strip enclosure .... " Such
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`a display is not supported as of the December 8, 2000 priority date based on application
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`091732,557.
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`Though it is acknowledged that application 091732,557 (now the '934 patent) discloses a
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`display, there is no explicit or inherent disclosure within the '934 patent that the display is
`
`disposed on the vertical strip enclosure, as is specifically claimed in the '543 patent. For
`
`instance, while Fig. 1 in the '934 patent (reproduced below) shows a display (130) associated
`
`with a power controller (108), there is no packaging for the power controller disclosed.
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`Specifically, there is nothing to indicate that the power controller is packaged within the
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`enclosure of a power strip. Therefore, there is no support for a display disposed on the enclosure
`
`of a power strip.
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`2133907.10
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`9
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`IPR Page 15
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`

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`Attachment to Form PTO/SB/58
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`--------------------------------------------------------------~
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`144 ['-102
`
`Fig. 1
`
`100
`
`..,;
`
`TCP/IP network
`
`~----------------------------- ---·----------------------------·
`
`-----:R·~-
`--,jl!lf.~-r-+-
`126
`
`: ________________________________________________________________________ j
`
`operating power
`
`Further, Figs. 2 and 3 of the '934 patent actually make clear that the opposite is intended.
`
`Those figures (reproduced below) picture the display (218, 318) outside the power distribution
`
`strip (214, 314).
`
`2133907.10
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`10
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`IPR Page 16
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`

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`Attachment to Form PTO/SB/58
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`·······-···································----------------------!
`
`r--202
`2441
`
`240
`
`Fig. 2
`
`TGP/IP network r204
`
`-+-lP.~fl~:t._..
`228
`
`operating power
`
`As shown in Figure 2, the "power distribution strip" (214) is shown separate from the
`
`"display" (218) The same arrangement of these components (314, 318, respectively) is also
`
`shown in Figure 3. The written description that accompanies those figures makes no mention of
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`the display being disposed on the vertical enclosure of the power distribution strip itself, as the
`
`claims of the '543 patent specifically require ('934 patent, Col. 7, lines 35-49; Col. 8, lines 41-
`
`54). Consequently, the '934 patent does not disclose a display disposed on the enclosure of a
`
`power strip.
`
`In light of the above, the '543 patent cannot claim the benefit of the earlier priority date
`
`for any claim reciting a display disposed on the enclosure of a power strip. Because both
`
`independent claims recite a display disposed on the enclosure of a vertical power strip, each of
`
`the claims of the '543 patent are only entitled to claim priority to the '543 patent's actual filing
`
`date of August 15, 2001.
`
`APC notes that the new and old prior art upon which this Request for Reexamination is
`
`based qualifies as prior art to the '543 patent under either (i) the alleged priority date of
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`2133907.10
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`11
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`IPR Page 17
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`

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`December 8, 2000 advanced during the prosecution of the '543 patent and (ii) the correct priority
`
`date of August 15, 2001.
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`Attachment to Form PTO/SB/58
`
`2.
`
`The Prosecution History
`
`As to the prior art cited in the prosecution of the '543 patent, the Examiner issued two
`
`Office Actions. In each case he rejected all of the pending claims based on Schreiber U.S. patent
`
`No. 5,424,903 ("Schreiber"), which shows a power strip as illustrated in FIG. 1, copied from
`
`Schreiber, below.
`
`As can be seen in FIG. 1, above, the system of Schreiber has a plugstrip. Though a
`
`computer is pictured, the computer is the load being supplied with power by the plugstrip (16).
`
`Remote control of the plugstrip is provided through a remote control unit ( 14) containing a
`
`collection of switches, wired to the plugstrip through a multiconductor cable (18).
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`2133907.10
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`12
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`IPR Page 18
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`

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`Attachment to Form PTO/SB/58
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`The Examiner initially cited Lovrenich, U.S. patent No. 5,619,722 ("Lovrenich") as
`
`teaching a display. The cited passages of Lovrenich relate to an addressable communication port
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`expander for a computer applied to control remote peripheral devices. One of those peripherals
`
`was listed as a digital ammeter.
`
`In the final office action, upon concluding that the application that matured into the '543
`
`patent was not entitled to priority before December 8, 2000, the Examiner cited Liu, which is
`
`prior art under 102(e). Liu was cited as teaching a display in a plug strip enclosure, as pictured
`
`below in Fig. 3.
`
`41
`
`4
`
`40
`
`42
`
`The final rejection cited Lovrenich against claims reciting an "external power manager
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`application."
`
`The Applicants then appealed to the Board of Patent Appeals and Interferences. In its
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`Appeal Brief, in arguing against the Examiner's claim rejections, the Applicants asserted that the
`
`pending claims were novel because the prior art did not disclose a power distribution plug strip
`
`that was vertical and that also included a current-related display. According to the Applicants,
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`one "exemplary advantage" of the invention was "[t]he ability to monitor, through the claimed
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`2133907.10
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`13
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`IPR Page 19
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`

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`Attachment to Form PTO/SB/58
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`'user display' on the claimed 'vertical housing' connectable to loads in a vertical rack,
`
`information 'related to the amount of current flowing through a least one among the power input
`
`and said plurality of power outputs."' (Appeal Brief filed November 17, 2005, pages17-18). In
`
`advocating for the patentability of the claims, the Applicants continued to explain that:
`
`Previously, technicians working with electrical equipment racks
`(e.g., RETMA racks) had no way of knowing at the rack, without
`going to extraordinary and unusual lengths, how much current
`would change when a network appliance is plugged in and turned
`on or if the rack had gone down (e.g., due to a defect in the power
`distribution unit or elsewhere).
`
`The applicants submit that they were the first to discover the
`underlying problem created by the