Paper No. 19
`Trials@uspto.gov
`Filed: August 10, 2016
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMX, LLC and DELL INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`Case IPR2016-00569
`Patent 8,942,107 B2
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`EXHIBIT 2033
`Rich Seifert
`DATE: 10/15116
`
`Rptr; Ashley Soevyn CSR# 12019
`
`Chrimar Systems, Inc.
`Exhibit 2033-1
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`I. INTRODUCTION
`
`AMX, LLC and Dell Inc. (collectively "Petitioner") filed a Petition
`
`(Paper 3, "Pet.") pursuant to 35 U.S.C. §§ 311-19 to institute an inter partes
`
`review of claims 1, 5, 31, 43, 53, 58, 70, 72, 75, 83, 84, 103, 104, 111, 123,
`
`and 125 ("the challenged claims") of U.S. Patent No. 8,942, 107 B2 ("the
`
`'107 patent," Ex. 1003), filed February 10, 2012. 1 The Petition is supported
`
`by the Declaration of Rich Seifert ("Seifert Declaration," Ex. 1009).
`
`ChriMar Systems, Inc. ("Patent Owner") filed a Preliminary Response
`
`("Prelim. Resp.," Paper 16). The Preliminary Response is supported by the
`
`Declaration of Dr. Vijay K. Madisetti ("Madisetti Declaration," Ex. 2015).
`
`We have jurisdiction under 35 U.S.C. § 314(a), which requires
`
`demonstration of a reasonable likelihood that Petitioner would prevail with
`
`respect to at least one challenged claim. We institute an inter partes review
`
`of claims 1, 5, 31, 43, 53, 58, 70, 72, 75, 83, 84, 103, 104, 111, 123, and
`
`125. The Board has not made a final determination of the patentability of
`
`any claim.
`
`A. Related Proceedings
`
`Petitioner advises us that the '107 patent is the subject of forty eight
`
`(48) civil actions filed in the Eastern District of Michigan, Eastern District of
`
`1 The cover page of the '107 patent alleges it is a "[ c ]ontinuation of
`application No. 12/239,001, filed on Sep. 26, 2008, now Pat. No. 8, 155,012,
`which is a continuation of application No. 10/668,708, filed on Sep. 23,
`2003, now Pat. No. 7,457,250, which is a continuation of application No.
`09/370,430, filed on Aug. 9, 1999, now Pat. No. 6,650,622, which is a
`continuation-in-part of application No. PCT/US99/07846, filed on Apr. 8,
`1999." Ex. 1003 (63).
`
`2
`
`Chrimar Systems, Inc.
`Exhibit 2033-2
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`Texas, and Northern District of California. Pet. 1 (citing Docket Navigator
`
`printout dated February 2, 2016, Ex. 1013). Pursuant to 37 C.F.R.
`
`§ 42.S(b )(2), Patent Owner identifies twenty nine (29) related actions. Paper
`
`7, 2-3.2 Both parties cite to various pending district court cases (hereafter
`
`collectively "the District Court") in their claim construction positions. See
`
`Pet. 12-13, Prelim. Resp. 17.
`
`B. The '107 Patent (Ex. 1003)
`
`The '1.07 patent "relates generally to computer networks and, more
`
`particularly, to a network management and security system for managing,
`
`tracking, and identifying remotely located electronic equipment on a
`
`network." Ex. 1003, 1:27-30. The '107 patent is ''adapted for to be used
`
`with an existing Ethernet communications link or equivalents thereof." Id.
`
`at 3:41-43.
`
`Specifically, a communication system generates and monitors data
`
`relating to the electronic equipment on a network using "pre-existing wiring
`
`or cables that connect pieces of networked computer equipment to a
`
`network." Ex. 1003, 3:24--27. In a first embodiment, the system includes a
`
`remote module attached to the electronic equipment being monitored. Id. at
`
`3:27-30. The remote module transmits a low frequency signal containing
`
`equipment information to a central module over the cable. Id. The central
`
`module "monitors the low frequency data to determine the transmitted
`
`information from the electronic equipment." Id. at 3:30-33. The first
`
`2 37 C.F.R. § 42.8(b)(2) requires identification of"any other judicial or
`administrative matter that would affect, or be affected by, a decision" in this
`proceeding. As the rule requires, both parties need to insure that all related
`matters are listed accurately.
`
`3
`
`Chrimar Systems, Inc.
`Exhibit 2033-3
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`embodiment communicates only identification information related to the
`
`equipment. Id. at 4:54--59. However, the invention contemplates collection
`
`of other "more general information such as identification of the equipment
`
`processor type and the equipment harddrive [sic] capacity." Id.
`
`The communication or monitoring of the network equipment is
`
`accomplished "over preexisting network wiring or cables without disturbing
`
`network communications." Ex. 1003, 12:1-7. This is accomplished "by
`
`coupling a signal that does not have substantial frequency components
`
`within the frequency band of network communications." Id.
`
`C. Illustrative Claims
`
`Of the challenged claims, claims 1 and 104 are independent apparatus
`
`claims. Claims 5, 31, 43, 53, 58, 70, 72, 75, 83, 84, and 103 depend directly
`
`or indirectly from claim 1. Claims 111, 123, and 125 depend from claim
`
`104. Claims 1 and 104 are reproduced below:
`
`1. A piece of Ethernet terminal equipment comprising:
`
`an Ethernet connector comprising:
`
`first and second pairs of contacts used to carry Ethernet
`communication signals,
`
`at least one path for the purpose of drawing DC current, the
`at least one path coupled across at least one of the contacts of
`the first pair of contacts and at least one of the contacts of the
`second pair of contacts, the piece of Ethernet terminal
`equipment to draw different magnitudes of DC current flow via
`the at least one path,
`
`the different magnitudes of DC current flow to result from at
`least one condition applied to at least one of the contacts of the
`first and second pairs of contacts,
`
`4
`
`Chrimar Systems, Inc.
`Exhibit 2033-4
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942,107 B2
`
`wherein at least one of the magnitudes of the DC current
`flow to convey information about the piece of Ethernet terminal
`equipment ..
`
`Ex. 1003, 17:11-25.
`
`104. A powered-off end device comprising:
`
`an Ethernet connector comprising first and second pairs of
`contacts,
`
`at least one path for the purpose of drawing DC current, the
`at least one path coupled across at least one of the contacts of the
`first pair of contacts and at least one of the contacts of the second
`pair of contacts,
`
`the powered-off end device to draw different magnitudes
`of DC current flow via the at least one path, the different
`magnitudes of DC current flow to result from at least one
`condition applied to at least one of the contacts of the first and
`second pairs of contacts,
`
`wherein at least one of the magnitudes of the DC current
`flow to convey information about the powered-off end device.
`
`Id. at 22:17--:-29.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1, 5, 31, 43, 53, 58, 70, 72, 75, 83,
`
`84, 103, 104, 111, 123, and 125 of the '107 patent as unpatentable on
`
`the following grounds. Pet. 13-60.
`
`5
`
`Chrimar Systems, Inc.
`Exhibit 2033-5
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`US 6,115,4683 and US
`6,134,6664
`
`National Semiconductor
`DP83840 Technical
`Datasheet, 5 IEEE Standard
`802.3u-19956 and IEEE
`Standard 802.3-1993 7
`(collectively, the "the Auto(cid:173)
`Ne otiation references" .
`
`§ 103(a) 1, 5, 31, 43, 53, 58, 70, 72, 75,
`83, 84, 103, 104, 111, 123, and
`125
`1, 5, 31, 43, 53, 58, 70, 72, 75,
`83,84, 103, 104, 111, 123,and
`125
`
`§ 103(a)
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In inter partes review, claim terms are given their broadest reasonable
`
`interpretation in light of the Specification in which they appear. See
`
`37 C.F.R. § 42.lOO(b); Cuozzo Speed Techs., LLCv. Lee, 136 S. Ct. 2131,
`
`2142 (2016) (affirming the Patent Office's authority to issue regulations
`
`establishing and governing inter partes review under 35 U.S.C. § 316(a)(4)).
`
`We presume that claim terms have their ordinary and customary meaning.
`
`See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1061--62 (Fed. Cir. 2016)
`
`("Under a broadest reasonable interpretation, words of the claim must be
`
`given their plain meaning, unless such meaning is inconsistent with the
`
`3 US 6,115,468 B2, to M.T. De Nicolo, filed Mar. 26, 1998, ("De Nicolo
`'468," Ex. 1019).
`4 US 6,134,666, to M.T. De Nicolo, filed Mar. 12, 1998, ("De Nicolo '666,"
`Ex. 1020).
`5 National Semiconductor DP83840 Technical Datasheet ("DP83840
`Datasheet," Ex. 1024 ).
`6 IEEE Standard 802.3u-1995 ("IEEE 802.3u- l 995," Ex. 1025).
`7 IEEE Standard 802.3-1993 ("IEEE 802.3-1993," Ex. 1026).
`
`6
`
`Chrimar Systems, Inc.
`Exhibit 2033-6
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`specification and prosecution history") (internal citation omitted); In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definition for a claim term must be set forth in the Specification with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F .3d
`
`1475, 1480 (Fed. Cir. 1994). In the absence of such a special definition or
`
`other consideration, "limitations are not to.be read into the claims from the
`
`specification'." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Petitioner identifies two terms for construction. Pet. 12-13. Patent
`
`Owner submits claim terms construed in the District Court litigation and one
`
`additional term .. Prelim. Resp. 16-19. Most of the terms construed by the
`
`District Court do not appear to be in controversy and do not require express
`
`construction at this stage. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in
`
`controversy need to be construed and only to the extent necessary to resolve
`
`the controversy). Our review of the issues presented and the arguments of
`
`the parties show the following terms require construction.
`
`1. "path coupled across" (claims 1and104)
`
`Claims 1and104 recite, in part, "at least one path coupled across at
`
`least one of the contacts of the first pair of contacts and at least one ofthe
`
`contacts of the second pair of contacts." Citing an expert declaration filed in
`
`the District Court, Petitioner proposes that "path coupled across" should be
`
`construed as "path permitting energy transfer between [at least one of the
`
`contacts of the first pair of contacts and at least one of the contacts of the
`
`second pair of contacts]." Pet. 12 (citing Declaration of Les Baxter (Ex.
`
`1028) and Declaration of Rich Seifert (Ex~ 1029), both filed in the District
`
`Court). Pet. 12-13. Patent Owner proposes the District Court construction
`
`7
`
`Chrimar Systems, Inc.
`Exhibit 2033-7
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942,107 B2
`
`of "path permitting energy transfer" as the broadest reasonable
`
`interpretation. Prelim. Resp. 17-18.
`
`The term "path coupled across" appears in the Abstract and claims 1
`
`and 104, but nowhere else in the written description of the ' 107 patent. In
`
`support of its construction, the District Court cited to the claim language and
`
`agreement of the experts. Ex. 2021, 20-21 (citing Ex. 1003, 22:17-29
`
`(claim 104), Ex. 1028 ,-r89, Ex. 1029 ,-r,-r 107-108).
`
`We are persuaded that, at this stage of this proceeding, the broadest
`
`reasonable interpretation is the same as the District Court construction, and
`
`we construe the term "path coupled across" to mean "path permitting energy
`
`transfer."
`
`2. "pairs of contacts" (claims 1 and 104)
`
`Claims 1 and 104 recite, in part, "an Ethernet connector comprising
`
`first and second pairs of contacts used to carry Ethernet communication
`
`signals, at least one path for the purpose of drawing DC current." Patent
`
`Owner proposes that "pair of contacts" be interpreted as "two corresponding
`
`things designed for use together." Prelim. Resp. 18-19 (citing WEBSTER'S
`
`NINTH NEW COLLEGIATE DICTIONARY 847 (1983) (Ex. 2022)).
`
`Petitioner does not propose a construction but argues that the phrase
`
`"pairs of contacts" does not require the contacts to be in the same path. See
`
`Pet. 44. Specifically, Petitioner argues the DP83840 Datasheet (Ex. 1024,
`
`24, Fig. 12) shows that TD+ and TD- are a first pair of contacts and RD+
`
`and RD- are a second pair of contacts. Id. (citing Ex. 1009 ,-r 124; Ex. 1024,
`
`1 ). However, to show the limitation "at least one path for the purpose of
`
`drawing DC current, the at least one path coupled across at least one of the
`
`contacts of the first pair of contacts and at least one of the contacts of the
`
`8
`
`Chrimar Systems, Inc.
`Exhibit 2033-8
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`second pair of contacts," Petitioner relies on TD+ and RD+ as constituting a
`
`first pair of contacts, and TD- and RD- as constituting a second pair of
`
`contacts. Id. at 45-46 (citing Ex. 1009 ~ 128).
`
`In its substantive response to Petitioner's position regarding "pairs of
`
`contacts," Patent Owner contends that Petitioner does not rely on the
`
`transmit and receive contact pairs, e.g. TD+ and TD- and RD+ and RD-.
`
`Prelim. Resp. 49-50. Instead, Patent Owner argues Petitioner relies on
`
`pairing the "positive" contacts and the "negative," such that RD+ and TD+
`
`are one pair, and RD- and TD- are a second pair. Id. at 50.(citing Pet. 45).
`
`Patent Owner contends there is no basis for this pairing other than to meet
`
`the claim limitations. Id. A complete analysis of how the parties' respective
`
`positions impact the Auto Negotiation obviousness ground is below.
`
`The claim language itself recites, in pertinent part:
`
`an Ethernet connector comprising first and second pairs of
`contacts used to carry Ethernet communication signals, ...
`
`at least one path coupled across at least one of the contacts of the first
`pair of contacts and at least one of the contacts of the second pair of
`contacts. Emphasis added.
`
`The plain meaning of the claim language leads us to conclude the first
`
`and second pairs of contacts are part of a "path" for carrying "Ethernet
`
`communications signals" and drawing DC current. A path cannot be
`
`comprised of a single contact. This interpretation is supported by the written
`
`description of the '107 patent. See, e.g., Ex. 1003, 5:34-38 ("Each pair of
`
`transmit wires and each pair of receive wires thereby form a current loop
`
`through one of the personal computers 3A through 3D."). This
`
`interpretation also is supported by extrinsic evidence, including the
`
`dictionary definition and De Nicolo '468. See Prelim. Resp. 19 (citing Ex.
`
`9
`
`Chrimar Systems, Inc.
`Exhibit 2033-9
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`2022); see also Prelim. Resp. 51 n.68 (citing Ex. 1019, 1:35-38 ("The
`
`transmit pair is dedicated to send packets of data over the Ethernet
`
`connection; the receive pair receives packets of data over the Ethernet
`
`connection.")).
`
`On this record, the broadest reasonable interpretation consistent with
`
`the Specification is that "pair of contacts" means "at least two contacts
`
`which define a path for carrying electrical signals."
`
`3. "powered off'' (claims 103 and 104)
`
`Claim 103 is a multiple dependent claim which, for purposes of this
`
`proceeding, depends on challenged claims 1 and 31, and recites "wherein the
`
`piece of Ethernet of terminal equipment is a piece of powered-off Ethernet
`
`terminal equipment." Petitioner contends "[i]n district court, Patent Owner
`
`has argued that 'powered-off Ethernet terminal equipment' is equipment
`without operational power." Pet. 37 (citing Ex. 1009 ii 114). Patent Owner
`concurs and cites the District Court construction as "without operating
`
`power." Prelim. Resp. 18; see Ex. 2021, 18-20.
`
`The parties have no disagreement and the proposal is consistent with
`
`the plain language of the claims. Thus, on this record, we interpret
`
`"powered off' to mean "without operating power."
`
`B. Obviousness Over De Nicolo '468 and '666
`
`Petitioner alleges claims 1, 5, 31, 43, 53, 58, 70, 72, 75, 83, 84, 103,
`
`104, 111, 123, and 125 would have been obvious to the person of ordinary
`
`skill in the art over De Nicolo '468 and '666. Pet. 13-40. Petitioner cites
`the Seifert Declaration in support of its positions. See Ex. 1009 iii! 80-122.
`Patent Owner denies the challenged claims are obvious over the De Nicolo
`
`10
`
`Chrimar Systems, Inc.
`Exhibit 2033-10
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`references. Prelim. Resp. 19-44. Patent Owner supports its arguments with
`
`the Madisetti Declaration. See Ex. 2015 ~~ 33-58.
`
`1. De Nicolo '468 (Ex. 1019)
`
`De Nicolo '468 is directed to an "Ethernet device power transmission
`
`system [that] provides electrical power to devices such as Ethernet
`
`telephones and related equipment over a 4-wire Ethernet connection without
`
`any need for rewiring premises having an existing 4-wire Ethernet system."
`
`Ex. 1019, 2:30-37. Figure 3 of De Nicolo '468 is reproduced below:
`
`OUT
`
`POWER
`PROCESSOR
`
`H-t--+-~-+----~---t...,..-r-----.-...r:"-­
`t+l-+-N--+-++----1-<1-i--+-H--..----~_,,.
`
`96
`
`e2!llJ.
`;
`
`80
`
`FIG.3
`
`149
`
`POWER
`PROCESSOR
`
`144
`
`+
`
`POWER
`SUPPLY
`
`Figure 3 "is an electrical schematic diagram of an Ethernet telephone power
`
`distribution system according to a presently preferred embodiment of the
`
`present invention." Ex. 1019, 2:60-63. As shown in Figure 3, data ports 80,
`
`82, and 84 transmit data on lines 86, 88, 90, 92, 94, 96 to and from load
`
`devices 1 (98), 2 (100) and 3 (102), which may be Ethernet telephones
`
`and/or other Ethernet devices requiring power to be transmitted to them in
`
`addition to data over Ethernet twisted pair lines. Id. at 3:5-12.
`
`11
`
`Chrimar Systems, Inc.
`Exhibit 2033-11
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
`
`De Nicolo '468 splits the delivered power "equally over four wires
`
`rather than two reducing the current carrying requirements of all four wires
`
`over a two wire system delivering the same amount of power." Ex. 1019,
`
`3:51-55. "Second, because the transmitted power is applied at and removed
`
`at center taps, there is no net current flow due to the DC bias through either
`
`primary or secondary of each respective twisted pair 128a, 128b. This
`
`reduces the size requirements for the transformer 112, 118." Id. at 3:55-61.
`
`2. De Nicolo '666 (Ex. 1020)
`
`To ensure adequate power to network devices, De Nicolo '666
`
`discloses a method and apparatus for controlling power to processor cards,
`
`or modules, in a modular electronic system. Ex. 1020, 1 :7-12. A
`
`"supervisor module" decides whether a newly inserted processor card will
`
`receive power based on the power demands of the individual cards and the
`total power available to the system as a whole. Id. at l :55-2:6.
`
`The supervisor will determine the current power requirements of
`a processor card while the card is substantially powered off. The
`supervisor may then weigh existing power supply resources of
`the modular electronic system with existing current/power
`demand and make a decision to allow power-up of the card if
`sufficient overhead is available, or, alternatively, make a
`decision to deny power-up of the card if insufficient additional
`current/power.
`
`Id. at 1 :60-2:6. The consequences of an energy overload "can vary from a
`
`simple shut down or an inability to start up to equipment damage." Id. at
`
`1:41-42.
`
`12
`
`Chrimar Systems, Inc.
`Exhibit 2033-12
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942,107 B2
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`Figure 1 of De Nicolo '666 is reproduced below:
`
`~
`t
`tO
`t2 ~
`
`FIG. f
`
`Figure 1 is an electrical schematic of a preferred embodiment of the
`
`invention. Ex. 1020, 2:9-10. Figure 1 illustrates modular electronic system
`
`10 which "provides electrical interconnections among a plurality of
`
`electronic modules or cards which are electrically attached to it (e.g.,
`
`plugged into it)." Id. at 2:28-36. A "power supervisor 14 has a
`
`communications link 16 to one or more power supplies 18, 20, 22 which
`
`communicates information defining available power resources to a
`
`microprocessor 24 of power supervisor 14." Id. at 2:49-55
`
`The power supervisor 14 will read a unique identification code for
`
`each power supply 18, 20, and 22. Ex. 1020,3:60-64. If necessary, the
`
`power supervisor looks up the identification code and determines a power
`
`output value for the power supply. Id. at 2:67-3:5. A maximum power
`
`requirement is communicated from electronic module 26 to the power
`
`supervisor 14. Id. at 3:41-44. The microprocessor determines if sufficient
`
`power resources are available to tum on the module with its now known
`
`13
`
`Chrimar Systems, Inc.
`Exhibit 2033-13
`IPR2016-00574 USPN 8,902,760
`
`

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`Case IPR2016-00569
`Patent 8,942,107 B2
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`maximum power requirement. Id. If so, then the microprocessor sends a
`
`signal to enable the power circuit soft start 44. Id. at 3:67--4:9. Power circuit
`
`soft start operates to apply power to the power consuming circuitry of the
`
`module. Id. at 4: 11-18.
`
`3. Petitioner's Obviousness Arguments Based
`on the De Nicolo References
`
`a. Independent Claims 1 and 104
`
`Petitioner contends that De Nicolo '468 discloses most of the
`
`limitations of independent claims 1and104, with De Nicolo '666
`
`supplementing the De Nicolo '468 disclosure with respect to at least two
`
`claim limitations. See Pet. 17-28. Claim 1 is illustrative and is discussed
`
`first.
`
`Addressing the detectable Ethernet equipment and first and second
`
`contacts recited in claim 1, Petitioner contends that De Nicolo '468 discloses
`
`detectable Ethernet load devices 98, 100, and 102, including Ethernet
`
`telephones, connected to Ethernet twisted pair lines 128a and 128b. See Pet.
`17-18 (citing Ex. 1009 ifif 80-81; Ex. 1019, 3:9-12). According to
`Petitioner, the two pairs oflines 128a and 128b (a 4-wire Ethernet cable),
`
`necessarily require first and second contacts, because for example, De
`
`Nicolo '468 discloses connecting the two pairs of lines to two sets of
`
`secondary and primary coils of transformers 112 and 118 as depicted in
`
`Figure 3 of De Nicolo '468. See Pet. 18. (citing Ex. 1019, 2:20-34).
`
`Petitioner also contends that loads 98, 100, and 102 "require power to be
`
`transmitted to them in addition to data over Ethernet twisted pair lines." Id.
`at 1 7 (citing Ex. 1009 if 81 ). Relying on the Seifert Declaration, Petitioner
`concludes "a person of ordinary skill in the art would have understood that
`
`14
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`Chrimar Systems, Inc.
`Exhibit 2033-14
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
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`transformer windings 134 and 136 would connect to the twisted pair wiring
`
`128 using an Ethernet connector comprising at least two pairs of contacts."
`
`Id. 17-18 (citing Ex. 1009 ~ 81, Ex. 1019, 2:20-34).
`
`Addressing the limitation of "at least one path for the purpose of
`
`drawing DC current" set forth in claim 1, Petitioner relies on a DC path from
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`power supply 144 over twisted pairs 128a and 129b through power processor
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`149. Pet. 18-19 (citing Ex.1019, Fig. 3; Ex. 1009 ~ 77). Petitioner further
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`argues ''the first and second primary center taps 150, 152 connect to power
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`processor 149 for DC power extraction." Id. at 19 (citing Ex. 1009 ~ 83; Ex.
`
`1019, Abstract).
`
`Addressing the limitation of "at least one path coupled across at least
`
`one of the contacts" recited in claim 1, Petitioner contends that coupling
`
`exists across Ethernet contacts attached to twisted pairs 128a and 128b in the
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`system of De Nicolo '468. Pet. 19 (citing Ex. 1009 ~ 84; Ex. 1019, 2:20-34,
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`Fig. 3).
`
`Addressing the limitation of the "piece of Ethernet equipment to draw
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`different magnitudes of DC current flow via the at least one path" recited in
`
`claim 1, Petitioner refers to Figure 3 in De Nicolo '468 and the path outlined
`
`above in Figure 3-i.e., load 98 connected at the output side of power
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`processor 149 in the DC path from power supply 144 over twisted pairs 128a
`
`and 129b through power processor 149. See Pet. 19-20 (citing Ex. Ex. 1009
`
`~ 85; Ex. 1019, Fig. 3). According to Petitioner, each load, such as load 98,
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`necessarily draws different current magnitudes from power processor 149,
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`for example, "depending on whether it is on-hook or off-hook." Id. at 20
`
`(citing Ex. 1009 ~ 86). Petitioner also relies on De Nicolo '468's disclosure
`
`that power processor 149 can adjust the power it provides to load 98 based
`
`15
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`Chrimar Systems, Inc.
`Exhibit 2033-15
`IPR2016-00574 USPN 8,902,760
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`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
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`on the load's requirements. Id. at 21-22 (citing Ex. 1009 ,, 86-87; Ex.
`
`10[19], 3:47-50). At the cited column 3 passage, De Nicolo '468 discloses
`
`that "[p]ower processor 149 performs any DC-DC power conversion and
`
`filtering required and provides power over leads 154, 156 to load 98 which
`
`may be an Ethernet telephone or other device." Ex. 1019, 3:47-50.
`
`The next limitation of claim 1 recites the "different magnitudes of DC
`
`current flow to result from at least one condition applied to at least one of
`
`the contacts of the first and second pairs of contacts." Petitioner relies on
`
`the Seifert Declaration and contends De Nicolo '468 meets the limitation.
`
`Pet. 23-24. For example, Petitioner cites to load 98 shown in Figure 3
`
`above, arguing the load's power demand changes during its normal
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`operation. Id. at 24 (citing Ex. 1009 , 91 ). The power demand for load 98
`
`changes depending on whether "it is on-hook or off-hook and depending on
`
`whether it is performing basic features or more advanced features, requiring
`
`additional processing power and or memory utilization." Id. (citing Ex.
`
`1009, 91). Applying Ohm's law,8 Petitioner argues that when load 98's
`
`power demand increases, the power processor draws more current through
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`the path and when the load's power demand decreases less current is drawn
`
`through the path. Id. (citing Ex. 1009 , 91 ).
`
`8 Neither Petitioner nor its expert expressly state Ohm's law. However, we
`take judicial notice that Ohm's law is I=V/R, where I is the current through
`the conductor in units of amperes, V is the voltage measured across the
`conductor in units of volts, and R is the resistance of the conductor in units
`of ohms. Additionally, for a resistor, electrical power or P=VI. Thus, when
`the voltage is constant and a load's power demand increases, more current is
`drawn through the path. See Pet. 35-36; see also Ex. 1009 ,, 91, 92 (citing
`Ex. 1020, 3:40-9, Fig 1 (annotated)).
`
`16
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`Chrimar Systems, Inc.
`Exhibit 2033-16
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
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`Petitioner cites to De Nicolo '666 as additional support for the above
`
`limitation. Citing to the Seifert Declaration and an annotation of Figure 1 of
`
`De Nicolo '666, Petitioner contends the limitation is met. Pet 24-27
`
`(discussing different examples). Specifically, in a first example based on
`
`Figure 1 of De Nicolo '666 (reproduced above), voltage drops across a
`
`resistor (Rl) depending on whether or not a transistor (Ql) is enabled. Id. at
`
`25-26. (citing Ex. 1009 ~ 92, Ex. 1020, 3:40-4:9, Fig. 1). Depending on the
`
`voltage, the DC current is higher or lower, meeting the "the different
`
`magnitudes of DC current flow" based on, in this example, whether the
`
`transistor is enabled. Id.
`
`The last limitation of claim 1 is "wherein at least one of the
`
`magnitudes of the DC current flow to convey information about the piece of
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`Ethernet terminal equipment." Petitioner argues De Nicolo '666 discloses
`
`that a magnitude of a DC current through the query conductor of Figure 1
`
`"conveys information about the maximum power requirement of the
`
`electronic module 26," meeting the limitation. Pet. 27 (citing Ex. 1009 ~ 96,
`
`Ex. 1020, Fig. 1). Petitioner again uses an annotated version ofFigure 1 of
`
`De Nicolo '666, arguing "electronic module 26 has a particular power
`
`require.ment that fluctuates, but also has a known maximum power
`
`requirement or demand," determined by resister Rset34. Id. at 28 (citing
`
`Ex. 1009 ~ 97, Ex. 1020, 1:55-58, 3:32-40, 3:50-56, 4:40-56). Relying on
`
`the Seifert Declaration, Petitioner concludes, one of ordinary skill in the art
`
`would recognize that the magnitude of voltage on the conductor 28 is also a
`
`function of the magnitude of current flowing through Rset 34. Id. (citing Ex.
`
`1009 ~ 107).
`
`17
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`Chrimar Systems, Inc.
`Exhibit 2033-17
`IPR2016-00574 USPN 8,902,760
`
`

`
`Case IPR2016-00569
`Patent 8,942,107 B2
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`As discussed above, Petitioner turns to De Nicolo '666 for its
`
`teachings that show loads drawing different magnitudes of DC current over
`
`at least one path. See Pet. 20 (citing Ex. 1009 ,-r 87, Ex. 1020, 3:40-4:9, Fig.
`
`l); see also Pet. 20-23 (discussing different examples). Petitioner's
`
`rationale for combining the two De Nicolo references is, for example that
`
`[a] skilled artisan would have understood that the remote device
`[of De Nicolo '468] has a maximum power requirement and that
`it would have been desirable to provide that device with a power
`signal that satisfies the device's power requirement. ... With that
`understanding, a skilled artisan would have incorporated De
`Nicolo '666's technique of determining the remote device's
`maximum power requirement by way of a resistor (or other
`component) into De Nicolo '468's system.
`In other words, it would have been obvious to one of
`ordinary skill in the art to use De Nicolo '666's principle of
`operation together with De Nicolo '468 's Ethernet-based system.
`
`Finally, a person of ordinary skill in the art would have
`understood how to combine De Nicolo 468 's teachings with De
`Nicolo 666's teachings.
`
`Pet. 15-16 (citing Ex. 1009 ,-r,-r 49-51)(emphasis added); see also Pet. 14-15
`
`(citing Ex. 1009 ,-r,-r 47-48, Ex. 1019, claim 6).
`
`Independent claim 104 is all but identical to claim 1. Petitioner
`
`references its showing regarding claim 103 which depends from, among
`
`other claims, claim 1. Both claims 103 and 104 have essentially the same
`
`additional limitation to those already present in claim 1, "wherein at least
`
`one of the magnitudes of the DC current flow to convey information about
`
`the powered-off end device." Pet. 37-39; see '107 patent, claim 104.
`
`Petitioner cites to De Nicolo '666's disclosure that "[t]he supervisor will
`
`determine the current/power requirements of a processor card while the card
`
`18
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`Chrimar Systems, Inc.
`Exhibit 2033-18
`IPR2016-00574 USPN 8,902,760
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`

`
`Case IPR2016-00569
`Patent 8,942, 107 B2
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`is substantially powered off." Id. at 37-38 (citing Ex. 1009 ~ 115, Ex. 1020,
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`1 :60-62). Further, relying on the Seifert Declaration, Petitioner contends
`
`"one of ordinary skill in the art would have understood from this disclosure
`
`that at least some circuitry in the processor card lacks operational power
`
`while the supervisor determines the current/power requirements of the card."
`
`Id. at 3 8 (citing Ex. 1009 ~ 115).
`
`b. DependentClaims5, 31, 43, 53, 58, 70, 72, 75, 83, 84, 103, 111,
`123, and 125
`
`We have reviewed Petitioner's argument and evidence with respect to
`
`dependent claims 5, 31, 43, 53, 58, 70, 72, 75, 83, 84, 103, 111, 123, and
`
`125. See Pet. 28-41, Ex. 1009 ~~ 98-122. We interpret Petitioner's stated
`
`reasons for modifying De Nicolo '468 with respect to claim 1 to apply to the
`
`dependent claims. See Pet.. 8-11, .14-16. As is its option at this stage of the
`
`proceeding, Patent Owner does not dispute any showing made by Petitioner
`
`with respect to the challenged dependent claims.
`
`4. Patent Owner's Preliminary Response to the De Nicolo References
`
`a. Whether the Person of Ordinary Skill Would Have Combined the
`De Nicolo References
`
`In response, Patent Owner contends that Petitioner does not show a
`
`sufficient motivation to combine the two De Nicolo references or how they
`
`would be combined. See Prelim. Resp. 19-20, 27-28, 34-44. Patent Owner
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`specifically acknowledges that the De Nicolo references "are both directed
`
`to powering devices." Id. at 19-20. However, neither is directed to "the
`
`subject matter disclosed in the '107 patent-Le., an apparatus for managing
`
`multiple remote assets in a network." Id. Further, Patent Owner argues the
`
`19
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`Chrimar Systems, Inc.
`Exhibit 2033-19
`IPR2016-00574 U