`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`Civil Action No. 6:15-cv-163 -JDL
`
`
`
`
`
`
`
`
`
`CHRIMAR SYSTEMS, INC., et al,
`
`§
`§
`v.
`§
`
`
`
`
`
`§
`
`
`
`
`
`
`ALCATEL-LUCENT USA, INC., et al. §
` (LEAD CASE)
`
`
`
`§
`§
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`Before the Court is Defendant ALE USA Inc.’s (“ALE”) Motion for construction of the
`
`terms “adapted” and “physically connect.” (Doc. No. 298.) Plaintiffs Chrimar Systems, Inc. and
`
`Chrimar Holding Company, LLC (“Chrimar”) filed a response. (Doc. No. 309.)
`
`BACKGROUND
`
`The Court previously held that the preambles of claims 31 and 67 of U.S. Patent No.
`
`8,115,012 (“the ’012 Patent”) to be limiting, which contain the terms “adapted” and “adapting,”
`
`respectively. (6:13-cv-00880 (Doc. No. 99, at 17).) At the parties’ request, the Court entered that
`
`finding in the instant action. (Doc. No. 117.) This Court was never asked to construe the term
`
`“physically connect,” which is found in 8,902,760 (“the ’760 Patent”). Defendants now contend
`
`that there is a dispute regarding the scope of these claim terms that must be resolved by the
`
`Court.
`
`A. The Patents
`
`The ’012 Patent is titled “System and Method for Adapting a Piece of Terminal
`
`Equipment,” and relates to tracking of devices that are connected to a wired network. See
`
`generally ’012 Patent. More specifically, the ’012 Patent describes permanently identifying an
`
`“asset,” such as a computer, “by attaching an external or internal device to the asset and
`
`Chrimar Systems, Inc.
`Exhibit 2085-1
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 2 of 10 PageID #: 13767
`
`communicating with that device using existing network wiring or cabling.” ’012 Patent at 1:67–
`
`2:2. The ’012 Patent refers to that device as the “remote module.” Id. at 3:22–26. The asset can
`
`then be managed, tracked, or identified by using the remote module to communicate a unique
`
`identification number, port ID, or wall jack location to the network monitoring equipment, or
`
`“central module.” Id. at 6:7–13, 8:66–9:4. The ’012 Patent further discloses that “asset
`
`identification” may be done in a way “that does not use existing network bandwidth.” Id. at
`
`3:10–12. These concepts are reflected in the patents’ asserted claims, and independent claim 31
`
`is set forth below for reference:
`
`31. An adapted piece of Ethernet data terminal equipment comprising:
`
`an Ethernet connector comprising a plurality of contacts;
`
`
`and
`
`at least one path coupled across selected contacts, the selected contacts
`
`
`comprising at least one of the plurality of contacts of the Ethernet
`
`
`connector and at least another one of the plurality of contacts of the
`
`
`Ethernet connector,
`
`wherein distinguishing information about the piece of Ethernet data
`
`
`terminal equipment is associated to impedance within the at least
`
`
`one path.
`
`’012 Patent at 18:62–19:5 (Claim 31).
`
`
`
`
`
`The ’760 Patent is related, and claim 1 recites:
`
`1. A BaseT Ethernet system comprising:
`a piece of central BaseT Ethernet equipment;
`a piece of BaseT Ethernet terminal equipment;
`data signaling pairs of conductors comprising first and
`second pairs used to carry BaseT Ethernet communication
`signals between the piece of central BaseT Ethernet
`equipment and the piece of BaseT Ethernet terminal
`equipment, the first and second pairs physically connect
`between the piece of BaseT Ethernet terminal equipment
`and the piece of central Base T Ethernet equipment,
`the piece of central BaseT Ethernet equipment having at
`least one DC supply, the piece of BaseT Ethernet terminal
`equipment having at least one path to draw different
`magnitudes of current flow from the at least one DC
`supply through a loop formed over at least one of the
`
`2
`
`Chrimar Systems, Inc.
`Exhibit 2085-2
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 3 of 10 PageID #: 13768
`
`conductors of the first pair and at least one of the conductors
`of the second pair, the piece of central BaseT
`Ethernet equipment to detect at least two different magnitudes
`of the current flow through the loop and to control
`the application of at least one electrical condition to
`at least two of the conductors.
`
`(’760 Patent at 17:15–36 (Claim 1).)
`
`APPLICABLE LAW
`
`The Federal Circuit has held: “When the parties raise an actual dispute regarding the
`
`proper scope of [the] claims, the court . . . must resolve that dispute.” O2 Micro Int’l Ltd. v.
`
`Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008). The court must resolve
`
`the dispute because “the scope of the asserted claims is a question of law,” and the court cannot
`
`leave “the jury free to consider the[] [parties’] arguments” on a disputed question of law. Id. at
`
`1361–62.
`
`The Court applies the familiar principles of claim construction to resolve this dispute.
`
`Those begin: “the words of a claim ‘are generally given their ordinary and customary meaning.’”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). “[T]he context in which a term is
`
`used in the asserted claim can be highly instructive.” Id. Other claims, asserted and unasserted,
`
`can provide additional instruction because “terms are normally used consistently throughout the
`
`patent.” Id. at 1314. “[C]laims ‘must be read in view of the specification, of which they are a
`
`part.’” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)).
`
`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
`
`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
`
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am.
`
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
`
`
`
`3
`
`Chrimar Systems, Inc.
`Exhibit 2085-3
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 4 of 10 PageID #: 13769
`
`The specification may also resolve ambiguous claim terms “where the ordinary and
`
`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
`
`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
`
`example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
`
`claim ‘is rarely, if ever, correct.’” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362
`
`F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough
`
`the specification may aid the court in interpreting the meaning of disputed language in the
`
`claims, particular embodiments and examples appearing in the specification will not generally be
`
`read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
`
`1988); see also Phillips, 415 F.3d at 1323.
`
`
`
`Although, “less significant than the intrinsic record in determining the legally operative
`
`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
`
`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
`
`treatises may help the Court understand the underlying technology and the manner in which one
`
`skilled in the art might use claim terms, but such sources may also provide overly broad
`
`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
`
`expert testimony may aid the Court in determining the particular meaning of a term in the
`
`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
`
`term are not useful.” Id.
`
`In patent construction, “subsidiary fact finding is sometimes necessary” and the court
`
`“may have to make ‘credibility judgments’ about witnesses.” Teva v. Sandoz, 135 S.Ct. 831, 838
`
`(2015). In some cases, “the district court will need to look beyond the patent’s intrinsic evidence
`
`and to consult extrinsic evidence in order to understand, for example, the background science or
`
`
`
`4
`
`Chrimar Systems, Inc.
`Exhibit 2085-4
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 5 of 10 PageID #: 13770
`
`the meaning of a term in the relevant art during the relevant time period.” Id. at 841. “If a
`
`district court resolves a dispute between experts and makes a factual finding that, in general, a
`
`certain term of art had a particular meaning to a person of ordinary skill in the art at the time of
`
`the invention, the district court must then conduct a legal analysis: whether a skilled artisan
`
`would ascribe that same meaning to that term in the context of the specific patent claim under
`
`review.” Id. (emphasis in original). When the court makes subsidiary factual findings about the
`
`extrinsic evidence in consideration of the “evidentiary underpinnings” of claim construction,
`
`those findings are reviewed for clear error on appeal. Id.
`
`ANALYSIS
`
`1. “adapted”
`
`ALE argues that the construction of the term “adapted” is disputed and must be resolved.
`
`(Doc. No. 298, at 2.) Specifically, ALE argues that Chrimar alleges “adapted” should have its
`
`plain and ordinary meaning of “designed, configured, or made” in accordance with the claim,
`
`which ALE argues reads out the meaning of term “adapted.” Id. at 2–3. ALE contends that
`
`instead the Court should adopt its construction of “adapted” to mean “modification of preexisting
`
`equipment,” because it captures the problem confronted by the inventors taking existing
`
`networks and adapting them to make equipment distinguishable. Id. at 5.
`
`
`
`Chrimar agrees that the term “adapted” should be construed, but disagrees with ALE’s
`
`proposed construction. (Doc. No. 309, at 1–2.) Chrimar maintains that Defendants continue to
`
`try and read in to the claim a requirement that “adapted” means modifying or retrofitting an
`
`existing piece of equipment. Id. at 2. Specifically, Chrimar argues that “ALE’s proposed
`
`construction seeks to limit the claim to one particular embodiment (i.e., where the remote
`
`module is external to and attached to a network asset) while completely ignoring that the
`
`
`
`5
`
`Chrimar Systems, Inc.
`Exhibit 2085-5
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 6 of 10 PageID #: 13771
`
`specification explicitly describes integrating the circuitry of the remote module into the
`
`motherboard or NIC of the Ethernet equipment.” Id. at 4. Chrimar argues that its construction is
`
`a well-known understood meaning of “adapted” in patent claims consistent with its proposed
`
`construction and disputes that its construction reads out the term “adapted” because only devices
`
`that “have the circuitry for implementing PoE are adapted Ethernet data terminal equipment
`
`meeting the limitations of claim 31 of the ’012 Patent.” Id. at 5.
`
`
`
`As stated above, the Court previously found the preamble of the ’012 Patent to be
`
`limiting, which recites: “[a]n adapted piece of Ethernet data terminal equipment comprising…”
`
`’012 Patent at 18:62–63. The Court further found the preamble to have its plain and ordinary
`
`meaning, and construed the term “Ethernet data terminal equipment” to mean “device at which
`
`data transmission can originate or terminate and that is capable of Ethernet communication,”
`
`which the Court has entered as the construction in the instant action. (6:13-cv-880, (Doc. No. 99,
`
`at 13); 6:15-cv-163, (Doc. No. 117).)
`
`As to the term “adapted” as recited in the preamble of claim 31, the specification
`
`provides little guidance as to the meaning, and only states generally that “[t]his invention is
`
`particularly adapted to be used with an existing Ethernet communications link or equivalents
`
`thereof,” and that “[t]he communication system 15 and 16 described herein is particularly
`
`adapted to be easily implemented in conjunction with an existing computer network 17 while
`
`realizing minimal inter-ference to the computer network.” ’012 Patent at 3:35–37; 4:56–60.
`
`Nothing in the specification specifically discusses the “adapted piece of Ethernet data terminal
`
`equipment” recited in the preamble of claim 31 of the ’012 Patent.
`
` ALE provides no support for its narrowed interpretation of “adapted” to mean
`
`“modification of preexisting equipment.” Indeed, there is nothing in the ’012 Patent that requires
`
`
`
`6
`
`Chrimar Systems, Inc.
`Exhibit 2085-6
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 7 of 10 PageID #: 13772
`
`the “modification” of any device, or specifically, the claimed “Ethernet data terminal
`
`equipment.” Instead, as discussed above, the specification generally uses the term “adapted” to
`
`describe the invention as being particularly adapted for use with a known structure or network.
`
`But nothing about these disclosures warrants a construction that contradicts the term’s plain and
`
`ordinary meaning or requires modification of the claimed device. Chrimar cites to the following
`
`portion of the specification to argue that in fact modification is specifically not required: “[i]t is
`
`also envisioned that the electronics of the network identification circuitry can be placed on a
`
`motherboard within the computer or as part of the circuitry on the NIC card.” ’012 Patent, at
`
`11:16–19. The Court agrees with Chrimar that based upon the disclosures discussed herein, a
`
`construction of “adapted” that requires “modification of preexisting equipment” would be
`
`inconsistent with the disclosures in the specification and too narrow in this case. Moreover,
`
`Chrimar cites to deposition testimony from Defendants’ expert, Ian Crayford, where he agrees
`
`that a PC manufactured with remote module functionality included can be “adapted” as recited in
`
`claim 31 of the ’012 Patent, even though it was originally manufactured that way. (Doc. No. 309-
`
`3, at 118:7–119:8.)
`
`It is for these reasons that the Court finds that the term “adapted” cannot mean
`
`“modification of preexisting equipment.” Instead, for the reasons discussed herein, the Court
`
`finds that the term “adapted” should be construed consistently with its plain and ordinary
`
`meaning to mean “designed, configured, or made” in accordance with the elements of claim 31.
`
`2. “physically connect”
`
`ALE also contends that the term “physically connect” is disputed and should be
`
`construed to have its plain and ordinary meaning—i.e. to “physically connect.” (Doc. No. 298, at
`
`6.) ALE cites to Chrimar’s expert report to contend that Dr. Madisetti takes the position that this
`
`
`
`7
`
`Chrimar Systems, Inc.
`Exhibit 2085-7
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 8 of 10 PageID #: 13773
`
`term “physically connect” means “each device is configured to be connected.” Id. ALE contends
`
`that this position literally reads the “physically connect” limitation out of the claim. Id. at 7.
`
`Chrimar contends that there is no claim construction dispute over the term “physically
`
`connect” and that ALE misconstrues Chrimar’s infringement contentions. (Doc. No. 309, at 6.)
`
`Chrimar argues that “claim 1 recites ‘physically connect’ and not ‘physically connected,’ which
`
`is the construction ALE seeks.” Id. at 7. Chrimar argues that “physically connect” describes the
`
`function “performed by the first and second conductors,”—“to connect the central BaseT
`
`Ethernet equipment and the piece of BaseT Ethernet terminal equipment so that the equipment
`
`may be used cooperatively.” Id. Chrimar cites to the doctrine of claim differentiation to point out
`
`that dependent claim 71 actually requires that the “first and second pairs are physically
`
`connected.” Id.
`
`Here again, while ALE contends there is a dispute regarding the plain and ordinary
`
`meaning of the term “physically connect,” ALE does not explain its proposed construction, or
`
`why the ’760 Patent requires such a construction, and instead argues why Chrimar’s expert’s
`
`infringement reading cannot be correct. While ALE contends its position is that the term have its
`
`plain and ordinary meaning—actually “physically connect”—in reality, as set forth by the
`
`briefing, ALE is reading the claim to “require a piece of central equipment ‘physically
`
`connect[ed]’ to a piece of terminal equipment.” (Doc. No. 298, at 6.) But the plain language of
`
`claim 1 of the ’760 Patent does not recite “physically connected;” instead, it states “…the first
`
`and second pairs physically connect between the piece of BaseT Ethernet terminal equipment
`
`and the piece of central Base T Ethernet equipment…” ’760 Patent at 17:23–25.
`
`Moreover, claim 71, which depends from claim 1, recites “[t]he BaseT Ethernet system
`
`of claim 1 wherein the first and second pairs are physically connected between the piece of
`
`
`
`8
`
`Chrimar Systems, Inc.
`Exhibit 2085-8
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 9 of 10 PageID #: 13774
`
`BaseT Ethernet terminal equipment and the piece of central BaseT Ethernet equipment.” ’760
`
`Patent at 21:28–31 (emphasis added). Where the dependent claim recites the further limitation
`
`that “the first and second pairs are physically connected between the piece of BaseT Ethernet
`
`terminal equipment and the piece of central BaseT Ethernet equipment,” the doctrine of claim
`
`differentiation dictates that the independent claim which recites “the first and second pairs
`
`physically connect between the piece of BaseT Ethernet terminal equipment and the piece of
`
`central Base T Ethernet equipment,” does not require that the first and second pairs are actually
`
`physically connected. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that
`
`adds a particular limitation gives rise to a presumption that the limitation in question is not
`
`present in the independent claim.”); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1367
`
`(Fed. Cir. 2012) (citing 35 U.S.C. § 112 ¶ 4) (“It is axiomatic that a dependent claim cannot be
`
`broader than the claim from which it depends . . . A dependent claim narrows the claim from
`
`which it depends.”); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1334 (Fed. Cir. 2010)
`
`(“A person of ordinary skill would presume that a structure recited in a dependent claim will
`
`perform a function required of that structure in an independent claim.”).
`
`ALE’s reading of a structural requirement that the pairs are physically connected is
`
`unsupported by the plain language of the claim, as well as the doctrine of claim differentiation.
`
`Therefore, the Court rejects any such interpretation of “physically connect” in the context of
`
`claim 1 of the ’760 Patent. Rather, in the context of claim 1 of the ’760 Patent, a system is
`
`claimed to include first and second pairs of conductors configured to physically connect between
`
`the piece of BaseT Ethernet terminal equipment and the piece of central Base T Ethernet
`
`equipment. Having resolved the parties’ dispute, the Court finds no further construction of the
`
`term “physically connect” is necessary.
`
`
`
`9
`
`Chrimar Systems, Inc.
`Exhibit 2085-9
`IPR2016-00574 USPN 8,902,760
`
`
`
`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 10 of 10 PageID #: 13775
`
`CONCLUSION
`
`As set forth herein, the Court has resolved the parties’ dispute regarding the terms
`
`“adapted” and “physically connect.”
`
`
`
` So ORDERED and SIGNED this 26th day of September, 2016.
`
`
`
`
`
`10
`
`Chrimar Systems, Inc.
`Exhibit 2085-10
`IPR2016-00574 USPN 8,902,760