`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`
`Case No. 6:15-CV-163-JDL
`
`
`CHRIMAR SYSTEMS, INC., et al.,
`
`Plaintiffs,
`
`
`
`v.
`
`
`
`ALCATEL-LUCENT, INC., et al.,
`
`LEAD CASE
`
`
`
`Case No. 6:15-CV-164-JDL
`
`
`
`Defendants.
`
`CHRIMAR SYSTEMS, INC., et al.,
`
`Plaintiffs,
`
`
`
`v.
`
`AMX
`
`
`DECLARATION OF RICH SEIFERT
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`
`
`Defendant.
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`Page 1
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` Dell Inc.
` Exhibit 1011
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`INTRODUCTION
`
`I am an expert in the field of communications systems, and have been
`1.
`retained by McDermott, Will & Emery, representing Defendant AMX and by Williams
`Morgan, P.C., representing Defendants Alcatel-Lucent USA, Inc., Alcatel-Lucent
`Holdings, Inc., and ALE USA Inc., to analyze, render opinions, and/or provide expert
`testimony regarding the meaning of certain terms in U.S. Patent Nos. 8,155,012 ( “the
`’012 patent), 8,942,107 (“the ’107 patent), 8,902,760 (“the ’760 patent”), and 9,019,838
`(“the ’838 patent”) (collectively, the Patents-in-Suit) as asserted by Chrimar Systems,
`Inc., et al. (collectively, hereinafter “Chrimar” or “Plaintiff”).
`2.
`I am being compensated at my usual rate of $400 per hour for the time
`spent by me in connection with this case. This compensation is not contingent upon my
`opinions or the outcome of the case. I have personal knowledge of the facts set forth in
`this declaration and, if called to testify as a witness, could and would competently
`testify to them under oath.
`3.
`This declaration is responsive to the December 17, 2015 declaration of Les
`Baxter on behalf of Plaintiffs in which he provides his conclusions as to the meaning of
`certain terms.
`4.
`This declaration also provides my opinions as to the indefiniteness of
`certain claims.
`5.
`I incorporate by reference my expert report regarding the invalidity of
`certain asserted claims of the ‘012 patent dated Mar 10, 2015, submitted in prior case
`nos. 13-cv-880-JDL and 13-cv-881-JDL, which includes, inter alia, my background and
`qualifications, previous documents reviewed, statements of legal principles, claim
`construction, and my opinion regarding a person of ordinary skill in the art. For
`convenience, some of this material is reproduced below.
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`DECLARATION OF RICH SEIFERT
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`Page 2
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`BACKGROUND/QUALIFICATIONS
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`I am currently the President of Networks & Communications Consulting
`6.
`in Los Gatos, California. I received a Bachelor of Engineering (Electrical Engineering)
`degree from the City College of New York in 1976. I received a Master of Science
`(Electrical Engineering) degree in 1979 from the Worcester Polytechnic Institute, a
`Master of Business Administration degree in 1984 from Clark University, and a Juris
`Doctor degree in 2006 from Santa Clara University. I have over 45 years of experience in
`computer and communications technology, and have worked for the past 35 years on
`the architecture and design of data communications networks and networking
`products. My curriculum vitae is attached hereto as Exhibit A, which includes lists of
`publications I have authored and legal cases in which I have been involved.
`
`DOCUMENTS AND MATERIALS CONSIDERED
`
`A list of additional materials (beyond those listed in my earlier report)
`7.
`that I have considered in rendering the opinions expressed herein is attached as Exhibit
`B. In forming my opinions, I have also relied on my experience and education.
`
`LEGAL PRINCIPLES
`
`I am not a patent attorney and offer no opinions on the law. However, I
`8.
`have been informed by counsel of the legal standards that apply, and I have applied
`them in arriving at my conclusions.
`9.
` I understand that a patent is invalid for indefiniteness if its claims, read in
`light of the intrinsic record, fail to inform, with reasonable certainty, those skilled in the
`art about the scope of the invention.
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`DECLARATION OF RICH SEIFERT
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`Page 3
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`I understand that patent claims have their plain and ordinary meaning to
`10.
`one of skill in the art when read in the context of the intrinsic record unless the patentee
`has acted as his own lexicographer or disclaimed some scope of the claim.
`
`PRIOR CLAIM CONSTRUCTION
`
`11. My understanding is that some of the terms in the claims of the ’012
`patent were construed by the Court in case nos. 13-cv-880-JDL and 13-cv-881-JDL, as
`shown below. See, generally, Memorandum Opinion and Order, dated Oct. 22, 2014 (the
`“10/22/14 Order”), Memorandum Opinion and Order dated Jan. 8, 2015 (the “1/8/15
`Order”), and Memorandum Opinion and Order dated Jan. 16, 2015 (the “1/16/15
`Order”).
`
`Claim Term
`“distinguishing information about the
`piece of Ethernet terminal equipment”
`(Claim 31)
`
`“to distinguish the piece of terminal
`equipment”
`(Claim 67)
`
`“impedance”
`(Claims 31, 35, 67, 77)
`“terminal equipment”
`(Claims 67, 106)
`“Ethernet data terminal equipment”
`(Claims 31, 35, 43, 55)
`
`“[A]n adapted piece of Ethernet data
`
`
`
`
`
`Construction
`“information to distinguish the piece of
`Ethernet data terminal equipment from at
`least one other piece of Ethernet data
`terminal equipment” 10/22/14 Order at 15;
`1/16/15 Order at 3.
`“to distinguish the piece of data terminal
`equipment having an Ethernet connector
`from at least one other piece of terminal
`equipment having an Ethernet connector”
`10/22/14 Order at 15; 1/16/15 Order at 3.
`“opposition to the flow of current” 1/16/15
`Order at 3.
`“device at which data transmission can
`originate or terminate” 1/16/15 Order at 4.
`“device at which data transmission can
`originate or terminate and that is capable of
`Ethernet communication” 1/16/15 Order at
`4.
`These preambles are limiting and have their
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`DECLARATION OF RICH SEIFERT
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`Page 4
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`plain and ordinary meaning. 1/16/15 Order
`at 4 (emphasis in original).
`
`Plain meaning. 1/16/15 Order at 14.
`
`Plain meaning. 1/16/15 Order at 16.
`
`terminal equipment”
`(Claim 31) and
`
`“[A] method for adapting a piece of
`terminal equipment”
`(Claim 67)
`“arranging impedance within the at least
`one path”
`(Claim 67)
`“wherein distinguishing information
`about the piece of Ethernet data terminal
`equipment is associated to impedance
`within the at least one path”
`(Claim 31)
`
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`I have been informed and understand that the following criteria are useful
`12.
`in determining the level of ordinary skill in the art with respect to a given patent: (a) the
`educational level of the inventor; (b) the type of problems encountered in the art;
`(c) prior art solutions to those problems; (d) rapidity with which innovations are made;
`(e) sophistication of the technology in the art; and (f) the educational level of active
`workers in the field. A person of ordinary skill in the art with respect to the asserted
`patent would have had at least a B.S. degree in electrical engineering or computer
`science, or the equivalent, and at least three years of experience in the design of network
`communications products.
`13.
`Specifically, such a person would be familiar with, inter alia, data
`communications protocols, data communications standards (and standards under
`development at the time), and the behavior and use of common data communications
`products available on the market.
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`DECLARATION OF RICH SEIFERT
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`Page 5
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`14. At the time of the filing of the Patents-in-Suit, through the time of the
`earliest claimed priority date of April 10, 1998, I was at least a person of ordinary skill in
`the art, and regularly worked with and supervised others at that level of skill.
`
`
`ADMITTED PRIOR ART
`
`(A)
`
`Ethernet Connectors
`15.
`The Patents-in-Suit disclose and incorporate by reference U.S. Patent
`5,406,260 (also assigned to Plaintiff Chrimar Systems, Inc., in the instant case) as
`relevant prior art. They state that the ‘260 patent had already disclosed:
`One method … is disclosed in U.S. Pat. No. 5,406,260 issued to Cummings, et al., (hereby
`incorporated by reference) which discusses a means for detecting the unauthorized
`removal of a networked device by injecting a low current power signal into each existing
`communications link. A sensor monitors the returning current flow and can thereby
`detect a removal of the equipment. This method provides a means to monitor the
`connection status of any networked electronic device thus providing an effect theft
`detection/deterrent system.”
`
`See, e.g., ‘012 Patent, 2:12-19.
`
`
`
`Coupling a path across specific contacts of an Ethernet connector
`16.
`comprising 8 contacts (numbered 1 through 8) was also known to persons of ordinary
`skill. The IEEE 802.3i-1990 specification (10BASE-T) discloses such an Ethernet
`connector, with eight contacts numbered 1 through 8:
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`DECLARATION OF RICH SEIFERT
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`Page 6
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`IEEE
`Std 802.3, 2000 Edition
`
`LOCAL AND METROPOLITAN AREA NETWORKS:
`
`Figure 14–20—MAU MDI connect
`
`Figure 14–21—Twisted-pair link
`segment connector
`
`
`that do implement the crossover function, the signal names refer to the remote MAU of the twisted-pair link.
`IEEE 802.3i-1990 Figures 14-20 and 14-21: MAU MDI Connect and Twisted-pair Link
`Additionally, the MDI connector for a MAU that implements the crossover function shall be marked with the
`Segment Connector
`graphical symbol “X”. Internal and external crossover functions are shown in Figure 14–22.
`IEEE 802.3i-1990 at 52 (§14.5.2); see also IEEE 802.3-1993 at 268.
`When a twisted-pair link connects a DTE to a repeater, it is recommended that the crossover be implemented
`
`in the MAU local to the repeater. If both MAUs of a twisted-pair link contain internal crossover functions, an
`additional external crossover is necessary. It is recommended that the crossover be visible to an installer
`17. Mr. Baxter has conceded that having a path coupled across selected
`from one of the MAUs. When both MAUs contain internal crossovers, it is further recommended in net-
`works in which the topology identifies either a central backbone segment or a central hub that the MAU fur-
`contacts of a given Ethernet connector was already known to persons of ordinary skill
`thest from the central element be assigned the external crossover to maintain consistency.
`and was not part of any inventive element of claim 31 of the ’012 patent.
`Implicit implementation of the crossover function within a twisted-pair cable, or at a wiring panel, while not
`Q: And you say a person would understand what it means to have a path coupled
`expressly forbidden, is beyond the scope of this standard.
`between contacts of an Ethernet connector, correct?
`A: Mm-hmm.
`14.6 System considerations
`…
`Q: But you’re not asserting that the inventors invented having a path across the two
`The repeater unit specified in Clause 9 forms the central unit for interconnecting 10BASE-T twisted-pair
`contacts, right?
`links in networks of more than two nodes. It also provides the means for connecting 10BASE-T twisted-pair
`A: No.
`links to other 10 Mb/s baseband segments. The proper operation of a CSMA/CD network requires network
`size to be limited to control round-trip propagation delay to meet the requirements of 4.2.3.2.3 and 4.4.2.1,
`…
`and the number of repeaters between any two DTEs to be limited in order to limit the shrinkage of the inter-
`Q: …Would a person of ordinary skill in the art at the date of filing of the earliest patent
`packet gap as it travels through the network. Configuration rules, which ensure that these limits are not
`application or the date of invention have already seen something similar to the schematic
`exceeded, are given in Clause 13.
`in paragraph 77?
`A: Whether they would have seen this exact schematic or not, I don’t know, but certainly
`14.7 Environmental specifications
`you would be familiar with what the Ethernet connector is, what an impedance is, and
`what a path is. So I think those are very familiar concepts to anyone of skill in the art at
`that time and since Ethernet, you know, twisted pairing had been around for some years,
`14.7.1 General safety
`certainly they would have seen schematics that had connections across the contacts of a
`modular jack.
`All equipment meeting this standard shall conform to IEC 60950: 1991.
`
`Baxter October 22, 2014 Deposition at 114-116 (objections omitted).
`14.7.2 Network safety
`
`
`This subclause sets forth a number of recommendations and guidelines related to safety concerns; the list is
`neither complete nor does it address all possible safety issues. The designer is urged to consult the relevant
`local, national, and international safety regulations to ensure compliance with the appropriate requirements.
`
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`DECLARATION OF RICH SEIFERT
`Copyright © 2000 IEEE. All rights reserved.
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`Page 7
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`(B) Ohm’s Law
`18.
`Voltage (V), current (I), and impedance (Z) are interrelated as expressed
`by Ohm’s law. See, generally, Crow at 109-126. When analyzing circuits carrying DC
`current, impedance may be simplified to resistance (R).3
`19. Ohm’s Law states that Voltage (V) = Current (I) x Resistance (R), i.e.,
`V = I x R. Crow at 112.
`20. Applying Ohm’s law, one could maintain a constant voltage, and change
`the current by changing the resistance. Any increase in current would be due to a
`decrease in the resistance, and vice-versa. Similarly, for a constant resistance, Ohm’s
`law says that you can change the current by changing the applied voltage.
`21. Any conductive path inherently has the capability to draw different
`magnitudes of current because it is governed by the principles of Ohm’s law. One can
`always apply voltages of different magnitudes to yield currents of different
`magnitudes. Or, one can simply change the impedance (resistance) within the path to
`produce a different magnitude of current.
`22. Direct current (DC) is a current that does not change in polarity. While the
`magnitude of the current may vary, the net flow of electric charge does not change
`direction in a DC circuit.
`23. Alternating current (AC) is a current that does change in polarity. Over
`time, the net flow of electric charge changes directions, either periodically or
`aperiodically.
`24.
`In the real-world environment for Ethernet data terminal equipment (e.g.,
`the end devices claimed in the Patents-in-Suit), any DC current drawn by the device
`will always correlate to a draw of power by the device, related to that current. In other
`
`
`3 In the general case of combined AC/DC circuits, voltage, current, and impedance are all
`vector quantities requiring the use of complex numbers in the mathematical analysis. Since the
`claims of the Patents-in-Suit relate to DC currents, we can simplify the analysis and consider
`voltage, current, and resistance to be scalars with a given value.
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`DECLARATION OF RICH SEIFERT
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`Page 8
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`words, current flow across Ethernet cable wiring, through the recited contacts of an
`Ethernet connector, and through a conductive path within circuitry in a device will
`always consume power. This is because each of these elements will have some
`appreciable resistance.
`25.
`In a DC circuit, power (P) is defined as the voltage (V) applied, multiplied
`by the resulting current (I), i.e. P = V x I. Crow at 184. Combining Ohm’s law with the
`power equation, P = V x I = (I x R) x I = I2 x R. Because R will always have a non-zero
`value, a device that is drawing current will always consume power as well.
`
`Ethernet Networks and Naming Conventions
`26.
`10BASE-T networks use twisted-pair wiring to send signals. See, e.g.,
`Seifert Report at ¶ 151. The same connector discussed above (RJ-45) is used to connect
`the communications cable to the network circuitry inside the end device. On each pair
`used, an isolation transformer blocks continuous DC current from passing across the
`transformer, but AC currents (representing digital data) or DC pulses can pass across
`the magnetic coupling between the two coils in the isolation transformer.
`27.
`The term “Base-T” standing alone is not used in the IEEE specification.
`The only use of the term is in the context of an entire designation, e.g., 10BASE-T (or
`100BASE-TX, 1000BASE-T, etc.)
`28.
` The IEEE Standards introduced shorthand names for the the various
`Ethernet physical media systems. A complete list of these shorthand names (as of 1998)
`can be found in Rich Seifert, Gigabit Ethernet: Technology and Applications for High-Speed
`LANs (Addison-Wesley 1998) at 15. There is no standard that is simply designated
`BASE-T (or “BaseT”, as used in the Patents-in-Suit). Neither are all twisted-pair
`configurations designated as XBASE-T. For example, 1BASE5 is an Ethernet standard
`employing a single unshielded twisted pair, operating at 1 Mb/s, with a 500 meter
`
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`DECLARATION OF RICH SEIFERT
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`Page 9
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`on. Typicall)! commercial products led the market, follon'ed by (if appropriate)
`standards for operation over the nerv medium. Later, even the data rate changed
`(together rvith even rnore physical media options). Hence, there are a lot of very
`different communications s).stems available today, aii called "Ethernet."
`In order to avoid having to say things 1ike, "10 Mb/s Ethernet using trvo
`maximum length. Similarly, the AUI in 10BASE5 employs four twisted pairs, but has no
`pairs of Category 3 unshielcied nvrsted pair" or "Gigabit Ethernet ou two
`Eth ernet before G igab it
`14
`optical fibers using longwave laser optics," the IEEE 802.3 standards com-
`designation of XBASE-T.
`mittee developed a shorthand notation that allor'vs us to refer to anv particu-
`on. Typicall)! commercial products led the market, follon'ed by (if appropriate)
`iar standard implementation of Ethernet. Hence, a given flavor of Ethernet is
`29.
`The naming convention for the variety of Ethernet media systems is
`standards for operation over the nerv medium. Later, even the data rate changed
`referred to as
`(together rvith even rnore physical media options). Hence, there are a lot of very
`explained below:
`n-signal-phy
`different communications s).stems available today, aii called "Ethernet."
`r,rrhere
`In order to avoid having to say things 1ike, "10 Mb/s Ethernet using trvo
`pairs of Category 3 unshielcied nvrsted pair" or "Gigabit Ethernet ou two
`is the data rzrte in megabits per second (that is, 1, 10, 100,
`tt
`optical fibers using longwave laser optics," the IEEE 802.3 standards com-
`or 1000).
`mittee developed a shorthand notation that allor'vs us to refer to anv particu-
`signal indicates either BASE, if the signaling used on the channel
`iar standard implementation of Ethernet. Hence, a given flavor of Ethernet is
`is baseband (that is, tlie physical rnedium is dedicated io
`referred to as
`the Ethernet, n'ith no other communications system shar-
`n-signal-phy
`ing the medium) or BROAD, if the signaiing is broadband
`(that is, the physicai rnedium can simultaneously slrpport
`is the data rzrte in megabits per second (that is, 1, 10, 100,
`Ethernet and other, possibiy non-Ethemet sen'ices).i1
`or 1000).
`indicates the nature of the physical mediun. In the first ferv
`Fhy
`signal indicates either BASE, if the signaling used on the channel
`systems to rvhich this notation was appiied, phy lyt6irot"O
`is baseband (that is, tlie physical rnedium is dedicated io
`the maximum length of a cabie segment, in meters (rounded
`the Ethernet, n'ith no other communications system shar-
`to the nearest 100 m).In later systems, this convention rvas
`ing the medium) or BROAD, if the signaiing is broadband
`dropped and phy became sirnply a code for the particular
`(that is, the physicai rnedium can simultaneously slrpport
`media type.12
`Ethernet and other, possibiy non-Ethemet sen'ices).i1
`Table 1-1 provides a cornplete listing of the (currently defined) Ethernet
`indicates the nature of the physical mediun. In the first ferv
`Fhy
`reference desi gnations.
`systems to rvhich this notation was appiied, phy lyt6irot"O
`the maximum length of a cabie segment, in meters (rounded
`11. The only Ethernet system using broadband signaling is 10BROAD36, n'hich allou's Eth-
`to the nearest 100 m).In later systems, this convention rvas
`ernet to operate usrng tirree channels (in each direction) of a private CATV systern. Other ser:-
`dropped and phy became sirnply a code for the particular
`vices (broacicast television, point-to-point modems, ancl so on) can use the other channels
`media type.12
`simultaneoush'. This svstem is not ver.v popular, primarilv due to its high cost.
`Table 1-1 provides a cornplete listing of the (currently defined) Ethernet
`12. As part of this change in conr.entions, codes using the "old style" (length) convention clo
`not use a hyphen betrveen the signaling type ancl the pht.srcal medium designation (for exam-
`reference desi gnations.
`ple, 1OBASES and 1OBASE2). Later designations alu'ays have ir hyphen (for exarnplc,
`1OBASE-T and 100BASE-IX) to shou'tire change in meaning, In addition, the sign:rling des-
`11. The only Ethernet system using broadband signaling is 10BROAD36, n'hich allou's Eth-
`ignation is ahval's crpitalized. Norv,vou can irnpress 1'our corrorkers and correct I'our boss
`ernet to operate usrng tirree channels (in each direction) of a private CATV systern. Other ser:-
`u'hen he or she rvrites "10BaseT" instead of thc sti'ictly correct "10BASE-'|." Please don't call
`vices (broacicast television, point-to-point modems, ancl so on) can use the other channels
`me if doine this causes \ror"lr caleer to veer in an undesirable direction.
`simultaneoush'. This svstem is not ver.v popular, primarilv due to its high cost.
`Id. at 14
`12. As part of this change in conr.entions, codes using the "old style" (length) convention clo
`not use a hyphen betrveen the signaling type ancl the pht.srcal medium designation (for exam-
`30.
`Thus, a person of ordinary skill in the art would not consider the term
`ple, 1OBASES and 1OBASE2). Later designations alu'ays have ir hyphen (for exarnplc,
`1OBASE-T and 100BASE-IX) to shou'tire change in meaning, In addition, the sign:rling des-
`ignation is ahval's crpitalized. Norv,vou can irnpress 1'our corrorkers and correct I'our boss
`“Base-T” standing alone to define a type of Ethernet network. The definition is
`u'hen he or she rvrites "10BaseT" instead of thc sti'ictly correct "10BASE-'|." Please don't call
`me if doine this causes \ror"lr caleer to veer in an undesirable direction.
`incomplete, nor is the naming or spelling correct. As discussed above, even if the intent
`is to provide a shorthand notation for Ethernet operation over twisted pair, the term is
`not inclusive of systems such as 1BASE5 or the AUI of 10BASE5. “Base-T” is simply not
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`DECLARATION OF RICH SEIFERT
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`r,rrhere
`tt
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`Page 10
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`a term of art as of any of the claimed priority dates. A person of ordinary skill would
`not know the complete set (if any) of Ethernet media systems to which it refers.
`31.
`The specification only discusses 10BASE-T, and makes no mention of
`other systems that were known at the time, including 100BASE-TX, 100BASE-T4, and
`the emerging 1000BASE-T. Those other system operate at higher data rates, using lower
`signaling voltages and multi-level signaling, which results in significantly lower
`margins for error due to noise or inteference. See, generally, IEEE 802.3. This is further
`demonstrated by the fact that 10BASE-T allows for the use of (lower quality) Category 3
`wiring where 100BASE-TX and 1000BASE-T require at least Category 5 wiring. Id.
`32.
`Since the system of the Patents-in-Suit (and the prior art ‘260 patent,
`incorporated by reference) all depend on superimposing a low DC current onto the
`operational Ethernet cabling, without causing appreciable interference to the Ethernet
`signals, it is possible (if not likely) that the disclosed embodiments would not function
`correctly in the more constrained environment of those higher-speed systems. Thus,
`there is no reason for a person of ordinary skill to assume that the inventors meant their
`invention to include operation over any system other than 10BASE-T, the only one
`disclosed in the patents.
`33.
`100BASE-TX was formally adopted by the IEEE in 1995. 1000BASE-T was
`available in draft form at least as early as 1998 but was not formally adopted by the
`IEEE until 1999. A person of ordinary skill in the art would have known and had access
`to these standards and recognized the differences between the systems described in
`them vis-à-vis 10BASE-T. Limiting the recitation in the provisional and utility
`applications solely to 10BASE-T provides the only meaning for the term “BaseT,” which
`appears to be a creation of the applicants or their attorney.
`
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`PROSECUTION HISTORY
`
`The ’012 patent was filed as application no. 12/239,001 on September 26,
`34.
`2008. ’012 Patent at 1. The ’012 patent states that it is a continuation of an earlier
`application no. 10/668,708 filed on September 23, 2003, which is a continuation of
`application no. 09/370,430 filed on August 9, 1999, which is a continuation-in-part of a
`PCT filing PCT/US99/07846 filed on April 8, 1999, which claims the benefit of
`provisional application no. 60/081,279, filed on April 10, 1998. ‘012 Patent at 1.
`35.
`The ‘107 patent was filed as application no. 13/370,918 on February 10,
`2012 as a continuation of application no. 12/239,001, which issued as the ‘012 patent.
`The ‘760 patent was filed as application no. 13/615,755 on September 14, 2012 as a
`continuation of application no. 13/370,918, which issued as the ‘107 patent. The ‘838
`patent was filed as application no. 13/615,734 on September 14, 2012 as a continuation
`of application no. 13/370,918, which issued as the ‘107 patent.
`36.
`The specifications of the asserted patents all have the same figures,
`Summary of the Invention, and for the most part, detailed description sections. The
`Background of the Invention sections are also the same except for clerical changes to
`mention the additional related Chrimar patent filings. Where citations below are made
`to just one of the Patents-in-Suit, they should be considered applicable to all of them
`since the text and figures are substantially identical, even if line and column numbers
`may have changed due to re-pagination.
`37.
`The specification acknowledges that the prior art ’260 patent already
`discussed “injecting a low current power signal into each existing communications
`link” with a “sensor monitor[ing] the returning current flow [to] detect removal of
`equipment.” ’012 Patent, 2:12-19. The ’260 patent is incorporated by reference. ’012
`Patent, 2:13-14.
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`The ’260 patent discloses the use of 10BASE-T wiring. ’260 Patent, 3:34-35.
`38.
`It also explains how DC current can be sent via a pair of wires:
`
`Wiring schemes of the 10BaseT type are commonly employed to provide
`data communication lines for electronic computer equipment. In
`accordance with conventional wiring approaches, data communications
`link 14 generally includes a plurality of pairs of transmit wires 44 and 46
`as well as a plurality of pairs of receive wires (not shown) connected to
`each of personal computers 12a through 12d. Each pair of transmit wires
`44 and 46 are internally coupled to an associated personal computer 12
`via one winding 53 of an internally located isolation transformer 52. Each
`pair of transmit wires 44 and 46 along with isolation transformer 52
`thereby form a current loop through the personal computer 12. . .
`’260 Patent, 3:35-48.
`[A]n isolation power supply 26 [] supplies a continuous direct current
`(DC) power signal to each of the current loops 50a through 50d.
`’260 Patent, 3:53-56.
`The power supply lines 28a through 28d each are electrically coupled to
`respective transmit wires 44a through 44d found within data
`communication link 14. Receive power lines 30a through 30d are
`likewise electrically coupled to transmit wires 46a through 46d also
`found within the data communication link 14. Transmit wires 44a
`through 44d and 46a through 46d are existing wires found within data
`communication link 14 that are selectively tapped as pairs in accordance
`with the present invention to provide current loops 50a through 50d.
`As a consequence, power supply line 28a continuously supplies a low
`current DC power signal to remote personal computer 12a via transmit
`wire 44a. The lower current power signal flows through an internal path
`provided by existing circuitry in personal computer 12a. The low current
`power signal then exits the remote personal computer 12a via transmit
`wire 46a and in turn is picked up by receive power line 30a. The lower
`current power signal is continuously supplied to current loops 50a
`through 50d at all times regardless of whether the computer network 10
`or any personal computers 12a through 12d are operating or not. In
`addition, the very low current DC power signal is so small that it does
`not interfere with or adversely affect the operation of the associated
`computers 12a through 12d or computer network 10. To prevent the flow
`of DC current to or from hub 20, each of the transmit wires 44a through
`44d and 46a through 46d are further coupled to DC blocking capacitors
`C5 between each of the current loops 50a through 50d and hub 20. DC
`blocking capacitors C5 thereby prevent unwanted DC current paths
`through hub 20.
`’260 Patent, 4:15-46.
`Figure 2 of the ‘260 patent, highlighted to show a DC current path is
`39.
`shown below:
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`40. As shown above, the current loop path of the ’260 patent uses the network
`side (top half) of the isolation transformer to pass DC current across one pair of transmit
`wires (44a and 46a). Elements in boxes 12a – 12d show corresponding transformers in
`the other remote devices in the system, and box 20 is a central hub. Otherwise all of
`which is shown in the figure relates to a device that sends a low DC current over the
`existing Ethernet wiring and detects whether the path is present or broken, by the
`presence (or lack of) current flow in the path.
`41.
`The Patents-in-Suit use the above described scheme to detect the presence
`or removal of the Ethernet hub or the remote device.
`42.
`The provisional application for the Patents-in-Suit included only block
`diagrams. What now constitute Figures 4-10 and 16-22 of the Patents-in-Suit were not
`present in the provisional application. Only the following sections of text in the Patents-
`in-Suit can be identified in the provisional application: 1:22-53; 1:66-2:2; 2:8-27; 2:30-32;
`5:14-32; 5:30-40 (“central module” and “remote module” in Patents-in-Suit specification
`replacing “network identification receiver” and “network identification circuitry,”
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`respectively in provisional); 5:53-61; 6:1-3 (“remote module” replaces “network
`identification circuitry”); 6:7-13; 6:20-31 (“central module” and “remote module” in the
`’012 specification replacing “network identification receiver” and “network
`identification circuitry,” respectively in provisional); 10:49-11:19 (“remote module”
`replaces “network identification circuitry”).
`43.
`Figures 4-10, 16-18 first appeared in application no. PCT/US99/07846
`filed on April 8, 1999. The text in the ‘012 patent through column 12, line 61, with the
`exception of the text identified above, was first added in this filing.
`44.
`Figures 19a, 19b, 20, 21, and 22, their accompanying descriptions in the
`“Brief Description of the Drawings” (4:24-35), and the text from col. 12, line 62 through
`col. 16, line 64 first appeared in continuation-in-part application no. 09/370,430, filed on
`August 9, 1999.
`45.
`The specification explains that the “invention 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 the network.” (’012 patent, 1:23-26.) The objective of the invention is to provide “a
`method for permanently identifying an asset by attaching an external or internal device
`to the asset and communicating with that device using existing network wiring or
`cabling. ’012 Patent, 1:66-2-2.
`46.
`The specification of the Patents-in-Suit distinguishes the invention from
`the ’260 patent, stating, “It would, however, be desirable to provide a f