UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JUNIPER NETWORKS INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION SYSTEMS, INC.,
`and NETGEAR, INC.,
`
`Petitioners,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`Patent Owner.
`
`
`
`Case IPR2016-013891
`
`U.S. Patent No. 8,155,012 B2
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONS
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.220
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc. and Netgear, Inc.
`
`(“Ruckus et al.”) filed a petition in (now terminated) IPR2017-00790, and Ruckus
`
`et al. has been joined to the instant proceeding.
`
`

`

`Atty. Dkt. No.: CHRMC0108IPR1
`
`Case No.: IPR2016-01389
`Patent No.: 8,155,012
`
`
`
`TABLE OF CONTENTS
`
`
`Table of Authorities ................................................................................................. iv
`
`List of Exhibits ........................................................................................................... v
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Summary of Patent Owner Response .............................................................. 1
`
`III. Background ...................................................................................................... 4
`
`A.
`
`B.
`C.
`D.
`E.
`
`Background of the technology relevant to the patent ........................... 4
`1.
`Telephone technology ................................................................. 4
`2.
`Ethernet technology differs substantially from telephony .......... 6
`The invention of the ‘012 Patent claims ............................................... 8
`The challenged claims of the ‘012 patent ............................................. 9
`Level of ordinary skill .........................................................................11
`The prior art on which Petitioners rely ...............................................12
`
`IV. Standard for Inter Partes Review ..................................................................12
`
`V.
`
`Claim Construction ........................................................................................13
`
`A.
`B.
`C.
`
`“protocol” (Claim 35) ..........................................................................13
`"distinguishing information" (claim 31) .............................................14
`"BaseT" (claim 36) ..............................................................................14
`
`VI. No Reason to Combine - An Ordinary Artisan Would Not Have Made
`Petitioners’ Proposed Combinations .............................................................14
`
`A.
`
`For both combinations: at the time of the invention, an ordinary
`artisan would not have had a reason to apply telephone-based
`phantom operating power to Ethernet terminal equipment .................15
`1.
`Applying operating power to pre-existing Ethernet
`terminal devices would have destroyed Bob Smith
`terminations, saturated the common mode chokes, and
`thus degraded the propagation of Ethernet data .......................15
`2. When an unused pair of contacts is available – as in
`Ethernet – an ordinary artisan would have supplied
`power over the unused pairs, not the data pairs as
`Petitioners assert .......................................................................18
`
`
`
`i
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`

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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`
`
`B.
`
`C.
`
`Additionally, for Bloch-Huizinga-IEEE: An ordinary artisan
`would not have applied Bloch’s telephone-based phantom
`power to Ethernet terminal equipment for the additional reason
`that Bloch would have disrupted and degraded the Ethernet data
`signal....................................................................................................27
`Petitioners mistakenly assert that Hunter teaches phantom
`powering of Ethernet terminal devices ...............................................29
`1.
`Petitioners have failed to show that Hunter’s discussion
`of “Ethernet®” is relevant to the claimed invention .................29
`Petitioners have not proven their assertion that Hunter
`teaches hub 170 providing phantom power to Ethernet
`terminal devices; on the contrary, Hunter’s phantom-
`power circuit connects a hub to other hubs – not to
`Ethernet terminal devices ..........................................................30
`Hunter’s specification confirms that Figure 2 does not
`apply to Ethernet communications ...........................................35
`D. Additionally, for Hunter-Bulan: An ordinary artisan would not
`have replaced Hunter’s “preferable” protective device with the
`unnecessarily complicated current limiting circuit of Bulan ..............37
`
`2.
`
`3.
`
`VII. The Proposed Hunter-Bulan Combination Does Not Disclose
`Limitations of the Claimed Invention ............................................................40
`
`A. All challenged claims: The portion of Hunter’s Figure 2 circuit
`Petitioners identify as the “TE” is not the claimed “Ethernet
`data terminal equipment” ....................................................................40
`All challenged claims: The Hunter-Bulan combination does not
`teach the “distinguishing information” limitation ...............................41
`Claims 31, 40 and 52: The Hunter-Bulan combination does not
`teach that the claimed “path” includes “impedance,” a
`“resistor,” nor impedance as “a function of voltage across the
`selected contacts” ................................................................................43
`1.
`Hunter-Bulan does not teach “impedance within the at
`least one path” ...........................................................................43
`Hunter-Bulan does not teach that “the at least one path
`comprises at least one resistor” .................................................46
`Hunter-Bulan does not teach that the impedance is “a
`function of voltage across the selected contacts” .....................46
`Claim 35: The Hunter-Bulan combination does not teach
`“detection protocol” ............................................................................47
`
`B.
`
`C.
`
`D.
`
`2.
`
`3.
`
`ii
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`
`
`E.
`
`Claim 36: The Hunter-Bulan combination does not teach
`“BaseT Ethernet data terminal equipment” .........................................48
`
`VIII. Conclusion .....................................................................................................50
`
`Certificate of Service ...............................................................................................51
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .......................................53
`
`
`
`
`
`iii
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`
`
`Table of Authorities
`
`Cases
`
`Endo Pharms. Inc. v. Depomed, Inc.,
`
`IPR2014-00656, Paper 66 (September 21, 2015) ................................... 27, 40
`
`Gillette Co. v. S.C. Johnson & Son, Inc.,
`
`919 F.2d 720 (Fed. Cir. 1990) .......................................................................22
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d 1342 (Fed. Cir. 2012) .....................................................................13
`
`KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007).......................................................................................13
`
`MasterImage 3D, Inc. v. RealD Inc.,
`
`IPR2015-00877, Paper 8 (September 9, 2015) ....................................... 27, 40
`
`Monarch Knitting Mach. v. Sulzer Morat GmbH,
`
`139 F.3d 877 (Fed. Cir. 1998) .......................................................................22
`
`Stryker Corp. v. Karl Storz Endoscopy Am., Inc.,
`
`IPR2015-00764, Paper 13 (September 2, 2015) ............................................38
`
`WBIP, LLC v. Kohler Co.,
`
`829 F.3d 1317 (Fed. Cir. 2016) .....................................................................22
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................13
`35 U.S.C. § 316 ........................................................................................................13
`
`
`
`
`
`iv
`
`

`

`Case No.: IPR2016-01389
`Patent No.: 8,155,012
`
`Atty. Dkt. No.: CHRMC0108IPR1
`
`Date
`Oct. 22, 2014
`
`
`
`Identifier
`
`Jan. 8, 2015
`
`
`
`Jan. 16, 2015
`
`
`
`Mar. 28,
`2016
`
`
`
`List of Exhibits
`
`
`
`
`
`Exhibit
`Description
`No.
`2017 Memorandum Opinion and order
`denying AMX’s motion for summary
`judgment of non-infringement of the
`’012 Patent, Dkt. No. 96, Chrimar
`Sys., Inc., et al. v. AMX, LLC, Civil
`Action No. 6:13-cv-881-JDL, Eastern
`District of Texas
`2018 Memorandum Opinion and order
`construing certain terms of the ’012
`Patent, Dkt. No. 105, Chrimar Sys.,
`Inc., et al. v. AMX, LLC, Civil Action
`No. 6:13-cv-881-JDL, Eastern District
`of Texas
`2019 Memorandum Opinion and order
`construing certain terms of the ’012
`Patent and denying AMX’s motion for
`summary judgment of indefiniteness
`regarding the “distinguishing” terms
`of the ’012 Patent, Dkt. No. 108,
`Chrimar Sys., Inc., et al. v. AMX,
`LLC, Civil Action No. 6:13-cv-881-
`JDL, Eastern District of Texas
`2020 Memorandum Opinion and order
`denying AMX’s motion for summary
`judgment of indefiniteness regarding
`certain claims of the ’012, ’107, and
`’760 Patents, Dkt. No. 122, Chrimar
`Sys., Inc., et al. v. AMX, LLC, Civil
`Action No. 6:15-cv-164-JDL, Eastern
`District of Texas
`
`v
`
`

`

`Atty. Dkt. No.: CHRMC0108IPR1
`
`Date
`Mar. 28,
`2016
`
`Identifier
`
`
`
`June 20, 2016
`
`
`
`July 28, 2014
`
`
`
`May 12, 2016
`
`
`
`July 29, 2016
`
`
`
`Sept. 27,
`2016
`
`
`
`Case No.: IPR2016-01389
`Patent No.: 8,155,012
`
`
`
`Exhibit
`Description
`No.
`2021 Memorandum Opinion and Order,
`Dkt. No. 123, filed in Chrimar
`Systems, Inc., et al. v. Alcatel-Lucent,
`et al., Civil Action No. 6:15-cv-163-
`JDL, Eastern District of Texas
`2030 Memorandum Opinion and Order,
`Dkt. No. 454, filed in Chrimar
`Systems, Inc., et al. v. ADTRAN, Inc.,
`et al.¸ Civil Action No. 6:15-cv-618-
`JRG-JDL, Eastern District of Texas
`2032 Defendants’ Combined Motion for
`Summary Judgment and Claim
`Construction (selected portions), Dkt.
`No. 73, filed in Chrimar Systems, Inc.,
`et al. v. AMX, LLC, Civil Action No.
`6:13-cv-881-JDL, Eastern District of
`Texas
`2033 Defendants’ Responsive Claim
`Construction Brief (selected portions),
`Dkt. No. 432, filed in Chrimar Sys.,
`Inc., et al. v. ADTRAN, Inc., et al.,
`Civil Action No. 6:15-cv-618-JRG-
`JDL, Eastern District of Texas
`2034 Memorandum Opinion and Order,
`Dkt. No. 223, filed in Chrimar Sys.,
`Inc., et al. v. Alcatel-Lucent, et al.,
`Civil Action No. 6:15-cv-163-JDL,
`Eastern District of Texas
`2035 Memorandum Opinion and order on
`ALE’s motion to construe certain
`claim terms of the ’012 and ’760
`Patents, Dkt. No. 318, filed in
`Chrimar Sys., Inc., et al. v. AMX,
`LLC, Civil Action No. 6:15-cv-164-
`JDL, Eastern District of Texas
`
`vi
`
`

`

`Atty. Dkt. No.: CHRMC0108IPR1
`
`Date
`June 15, 2010
`
`Nov. 22,
`2010
`
`
`
`11/5/1999
`
`Identifier
`
`
`
`
`
`Madisetti Decl.
`Crayford Dep.
`Anderson 1999
`slides
`
`3/7-8/2000
`
`5/24-25/2000
`
`
`
`
`
`5/24/2000
`
`Dove slides
`
`5/24/2000
`
`Anderson 2000
`slides
`
`7/11-12/2000
`
`
`
`Case No.: IPR2016-01389
`Patent No.: 8,155,012
`
`
`
`Exhibit
`Description
`No.
`2036 Response to Office Action (Reexam
`Control No. 90/009,513) (June 15,
`2010)
`2037 Notice of Intent to Issue Ex Parte
`Reexamination Certificate (Reexam
`Control No. 90/009,513) (Nov. 22,
`2010)
`2038 Declaration of Dr. Vijay Madisetti
`2039 Deposition transcript of Ian Crayford
`2040
`Slides titled “DTE Power via MDI:
`System Requirements,” presented on
`November 5, 1999 by Arlan Anderson
`of Nortel Networks
`IEEE Power via MDI Task Force
`Meeting Minutes from March 7-8,
`2000
`IEEE Power via MDI Task Force
`Meeting Minutes from May 24-25,
`2000
`Slides titled “DTE Power over MDI:
`Building Consensus,” presented on
`May 24, 2000 by Ralph Andersson of
`TDK Semiconductor, Daniel Dove of
`Hewlett Packard, and Robert Muir of
`Level One Communications
`Slides titled “Powering and Discovery
`Alternatives,” presented on May 24,
`2000 by Arlan Anderson of Nortel
`Networks
`IEEE Power via MDI Task Force
`Meeting Minutes from July 11-12,
`2000
`
`2041
`
`2042
`
`2043
`
`2044
`
`2045
`
`vii
`
`

`

`Atty. Dkt. No.: CHRMC0108IPR1
`
`Date
`
`
`
`Identifier
`Karam slides
`
`May 1993
`
`Krol RFC
`
`
`
`Aug. 19,
`2016
`
`Camp Decl.
`‘392 Patent
`
`
`
`
`
`
`Case No.: IPR2016-01389
`Patent No.: 8,155,012
`
`
`
`Exhibit
`No.
`2046
`
`2047
`
`Description
`Slides titled “Technical Feasibility of
`Sending Common Mode Power on the
`Signal Pairs,” presented on May 24,
`2000 by Roger Karam and Karl
`Nakamura of Cisco Systems
`E. Krol & E. Hoffman, Internet
`Engineering Task Force Network
`Working Group, Request for
`Comments: 1462, “FYI on “What is
`the Internet?’”
`2048 Declaration of Clyde Camp
`2049 U.S. Patent No. 5,995,392
`2050
`Juniper Networks, Inc.’s Patent Rule
`4-2 Disclosures (Preliminary claim
`constructions) (August 19, 2016)
`2051 Madisetti Curriculum Vitae
`
`viii
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`
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`

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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`
`
`Pursuant to 37 C.F.R. § 42.220, Patent Owner, Chrimar Systems, Inc.
`
`(“Chrimar”), submits the following Response to the consolidated Petitions.
`
`I.
`
`Introduction
`
`On January 25, 2017, the Board instituted IPR2016-01389, filed by Juniper
`
`Networks, Inc. (“Juniper”), concerning claims 31, 35, 36, 40, 43, 52, 55, 56, 59, 60,
`
`and 65 of U.S. Patent No. 8,115,012 (“the ‘012 Patent”). (Paper 12.) That IPR is
`
`referred to as the “Juniper IPR.” Unless otherwise stated, all references to Paper
`
`numbers, Petition page numbers, and Exhibit page and paragraph numbers are
`
`references to the Juniper IPR.
`
`On March 15, 2017, the Board instituted IPR2017-00790 and joined it with
`
`the Juniper IPR. (Paper 11.) Except for insubstantial differences, the arguments
`
`made in IPR2017-00790 are identical to those made in the Juniper IPR, and this
`
`Response applies equally to the arguments in both IPRs.
`
`The various Petitioners are referenced collectively as “Petitioners.”
`
`II.
`
`Summary of Patent Owner Response
`
`The ‘012 Patent claims an innovative and beneficial Ethernet terminal device.
`
`The claimed device improved on then-existing Ethernet terminal devices because it
`
`can use its impedance to convey information, which distinguishes it from another
`
`device.
`
`1
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`

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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`Petitioners argue that the ‘012 Patent claims would have been obvious in view
`
`of two combinations of references: (1) WO 96/23377 (“Hunter”) (Ex.1003) in view
`
`of U.S. Patent No. 5,089,927 (“Bulan”) (Ex.1004); and (2) U.S. Patent No.
`
`4,173,714 (“Bloch”) (Ex.1005) in view of U.S. Patent 4,046,972 (“Huizinga”)2
`
`(Ex.1009) and IEEE 802.3 (1993 and 1995) 10Base-T and 100Base-T Ethernet
`
`specifications (Exs.1006-1008). Petitioners argue that these references teach
`
`providing operating DC current over data lines (“phantom powering”), that such
`
`“phantom powering” would have been used to power Ethernet terminal equipment
`
`in an Ethernet network, and that their proposed combinations meet all of the claim
`
`limitations. Petitioners fail for several reasons.
`
`First, as explained in Section VI., objective, historical evidence shows that an
`
`ordinary artisan would not have combined these references, and applied phantom
`
`operating power, as Petitioners propose. Among other things, applying phantom
`
`power as taught by Petitioners’ references, in an Ethernet network at the time of
`
`Chrimar’s invention, would have destroyed a critical circuit – known by its
`
`
`2 Petitioners’ expert stated emphatically at his deposition that Petitioners have
`
`dropped their reliance on Huizinga (“literally Huizinga, there's no part of his circuit
`
`that’s used in the combination”), leaving just the Bloch-IEEE 802.3 combination.
`
`(Ex.2039 at 173:24-175:20; 179:4-8.)
`
`2
`
`

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`inventor’s name as the “Bob Smith” termination – on the millions of installed
`
`Ethernet terminal devices. Petitioners’ expert could not articulate how this problem
`
`could have been solved at the time of the Chrimar invention. These objective facts
`
`apply to both combinations, and there are additional reasons not to combine specific
`
`to each of the combinations (see Sections VI. B.-D.).
`
`Second, Petitioners’ Hunter-Bulan combination fails to meet several claim
`
`limitations, e.g.:
`
`(1) the claims are directed to Ethernet data terminal equipment, but Petitioners
`
`rely on an intermediate device (all claims);
`
`(2) the Hunter-Bulan intermediate device does not provide “distinguishing
`
`information” (i.e., information that differentiates itself from another device) related
`
`to impedance in its path (all claims), nor include the claimed “impedance” (all
`
`claims), nor include the claimed “resistor” (claim 40) nor include the claimed
`
`“impedance” as a function of voltage across the claimed “contacts” (claim 52), is
`
`not “BaseT Ethernet data terminal equipment” (claim 36), and does not convey
`
`information via a “protocol” (claim 35).
`
`3
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`III. Background
`
`A. Background of the technology relevant to the patent
`
`1.
`
`Telephone technology
`
`Petitioners’ prior art references are primarily telephone-based technologies
`
`that Petitioners assert relate to Chrimar’s Ethernet-focused patents. But telephone
`
`technology is not so easily applied to Ethernet technology because the
`
`communications channels for phone systems carry different information (voice) at
`
`lower frequencies, which are not as susceptible to noise and degradation as Ethernet
`
`communications. (Ex.2038, Dr. Madisetti Decl. at ¶27.) As Petitioners explain: “At
`
`the time of the invention, conserving [Ethernet] bandwidth was a known
`
`consideration and design motivation in the prior art.” (Pet. at 53.) That issue did
`
`not exist for voice communications. (Ex.2038, ¶27.) Petitioners have failed to
`
`address this issue in their Petitions.
`
`A standard cable “in the telco industry” was a “25-pair cable.” (Ex.2039 at
`
`146:23-24.) A telephone installation needed only two wires – a single pair – to carry
`
`voice and power a phone. (Ex.2038, ¶28.) Anyone who is familiar with their own
`
`home phone wiring knows that telephone wires can be split and spliced to couple
`
`multiple phones to a single pair of wires that ultimately connect to the phone
`
`company’s central office. (Id.) This works because voice communications are bi-
`
`4
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`directional on the single wire pair; no special terminations are needed at each splice.
`
`(Id.)
`
`Voice communication over phone lines historically had a limited frequency
`
`range of about 400 to 3,400 Hz. (Ex.2038, ¶29; see also Ex.2039 at 140:25-141:7.)
`
`High frequency noise or other high frequency interference, especially if in a range
`
`above normal human hearing (about 20,000 Hz), would not affect voice
`
`communications on a telephone line. (Ex.2038, ¶29.) Thus, when dealing with
`
`phone technology, it was relatively simple to send power (and data) over the same
`
`wires that carried the voice channel without affecting the voice communications.
`
`(Id.)
`
`A good example of this is Petitioners’ Bloch reference. Bloch describes a
`
`telephone system that transmits digital data from a control unit to a terminal using
`
`the same wires used for voice communications. (Ex.1005 at 2:39-45.) The terminal
`
`transmits data back to the control unit by switching a resistor into and out of the
`
`phantom power circuit. (Ex.2039 at 172:2-19.) Because the switch is sending data
`
`(1’s and 0’s) at a high rate, the noise it creates would be inaudible to people talking
`
`on the phone lines. (Ex.2038, ¶30.) But Bloch does not contemplate use of his
`
`circuitry in Ethernet systems (Ex.2039 at 166:22-24), and for good reason – the same
`
`noise would interfere with the Ethernet data communications. (Ex.2038, ¶30.)
`
`5
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`2.
`
`Ethernet technology differs substantially from
`telephony
`
`Unlike telephony, Ethernet systems are designed for high-speed, high
`
`frequency communication of digital data. Ethernet data is transmitted at frequencies
`
`in the tens of megahertz, thousands of times greater than the frequencies used in
`
`telephony (400 to 3,400 Hz). (Ex.2039 at 141:9-14, 140:25-141:7; Ex.2038, ¶31.)
`
`Ethernet communications are much more susceptible to noise and degradation than
`
`voice communications. (Ex.2038, ¶31; Ex.2039 at 143:5-11.)
`
`The IEEE published an Ethernet standard, which covered “10Base-T,” in
`
`1993. (Ex.1006.) The IEEE published another standard covering “100Base-T”
`
`Ethernet in 1995. (Ex.1007; Ex.2038, ¶32.)
`
`By 1995, phantom powering for voice communications was well-
`
`known. Nevertheless, 10Base-T (1993) and 100Base-T (1995) did not employ
`
`phantom powering for Ethernet communications. (Ex.2038, ¶33.) Unlike
`
`telephony, in which a single wire-pair can communicate bi-directionally, Ethernet
`
`data can only travel one direction on a wire-pair. (Id.) To send data back, a second
`
`wire-pair is needed. (Id.)
`
`By 1995, “Bob Smith” terminations – so called because they were invented
`
`by Bob Smith – and “common mode chokes” were prevalent in installed Ethernet
`
`networking equipment. (Ex.2039 at 43:20-44:2, 45:6-8.) These special terminations
`
`6
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`
`
`were necessary for “Base-T” Ethernet “to clean up [the] signal and minimize
`
`emissions.” (Id. at 43:11-18; Ex.2038, ¶34.)
`
`If the Bob Smith terminations were damaged, for example by adding power
`
`to the data lines, it would impair the signal integrity and degrade the propagation of
`
`Ethernet data. (Id. at 45:10-21; Ex.2038, ¶35.) Similarly, adding power to an
`
`Ethernet cable could saturate the common mode chokes, interfering with the
`
`Ethernet transmission. (Ex.2038, ¶35.) As late as 1999-2000, the IEEE experts were
`
`skeptical that the same wires used for Ethernet could be used to deliver operating
`
`power to Ethernet terminal equipment without damaging the equipment or degrading
`
`the Ethernet data signal. (Ex.2038, ¶36.)
`
`At the time of Chrimar’s invention (1997), “Standard 10Base-T Ethernet
`
`[was] still the most common type of network architecture in use.” (Ex.1010 at 99;
`
`see also id. at 157; Ex.2039 at 24:18-25:15.)3 IEEE 802.3 – the “[s]tandard [for]
`
`10Base-T Ethernet” – required an RJ-45 “MDI connector” having eight contacts.
`
`(Ex.2039 at 77:21-78:8.) Four of those contacts (contacts 1, 2, 3, and 6) were used
`
`to carry data; the other four contacts (contacts 4, 5, 7, and 8) were “Not used.”
`
`(Ex.1006 at 266-267, Fig. 14-22; Ex.1007 at 147, Figure 23-26 and Figure 23- 27;
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`Ex.2038, ¶37.)
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`3 Throughout this document, all emphasis is added unless otherwise noted.
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`B.
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`The invention of the ‘012 Patent claims
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`The Chrimar patent “provides examples of networked equipment” that “would
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`be connected over ‘conventional multi-wire cables that include a plurality of
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`transmit and receive data communication links.’” (Ex.1002, ¶45, emphasis in
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`original.) It “is directed to equipment networked over ‘pre-existing wiring or cables
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`that connect pieces of networked computer equipment to a network.’” (Id.) As
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`mentioned above, Power over Ethernet (“PoE”) did not exist in 1997. Rather,
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`Ethernet terminal devices needed their own power supplies. (Ex.2038, ¶155.)
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`The ‘012 Patent describes and claims an improved Ethernet terminal device
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`that improves network security and enables PoE networks, i.e., Ethernet networks
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`that provide operating power to an Ethernet terminal device over the Ethernet data
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`path. As explained more fully below, the improved Ethernet terminal device of the
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`‘012 Patent can use its impedance to convey information, which distinguishes it from
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`another device. The claimed Ethernet terminal device enhances network security
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`because the device can convey information about itself to a network, which lets the
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`network assess whether the device should have access to the network, before the
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`network grants access.
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`The claimed Ethernet terminal device enables PoE networks. For many years,
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`Ethernet terminal devices could not receive operating power over the Ethernet data
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`wires. If an Ethernet network hub had applied PoE power and create a DC current
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`path using the Ethernet data wires to an Ethernet terminal device, the operating
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`power would have destroyed the “Bob Smith” terminations in the equipment and
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`saturated the common mode chokes. As such, a PoE network could not provide PoE
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`power to an Ethernet terminal device unless it knew whether the device was a PoE
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`terminal device. (Ex.2038, ¶157.) Because the Ethernet terminal device of the ‘012
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`Patent can convey distinguishing information about itself, it can convey to the
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`network, for example, (a) whether the device is capable of accepting power over its
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`Ethernet data path, and (b) how much power it can accept, before the network
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`provides operating power. These features enhance the safety and cost effectiveness
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`of Ethernet networks.
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`C. The challenged claims of the ‘012 patent
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`The only independent claim at issue in this IPR is claim 31 of the ‘012 Patent.
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`Claim 31 claims “an adapted piece of Ethernet data terminal equipment” with
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` Feature 1: a path coupled across selected “contacts” of an “Ethernet
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`connector” of the adapted piece of Ethernet data terminal equipment, and
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` Feature 2: “distinguishing information about the piece of the Ethernet data
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`terminal equipment [that] is associated to impedance within the at least on
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`path.”
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`The claim language for these features are referenced/emphasized below.
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`Atty. Dkt. No.: CHRMC0108IPR1
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`31. An adapted piece of Ethernet data terminal equipment
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`comprising:
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`an Ethernet connector comprising a plurality of contacts;
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`and
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`
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`at least one path coupled across selected contacts, the
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`selected contacts comprising at least one of the plurality of
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`contacts of the Ethernet connector and at least another one of
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`the plurality of contacts of the Ethernet connector,
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` wherein distinguishing information about the piece of
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`Ethernet data terminal equipment is associated to impedance
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`within the at least one path.
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`
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`
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`Claim 35 states that the impedance within the path of the Ethernet data
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`terminal equipment is part of a “detection protocol”:
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`35. The piece of Ethernet data terminal equipment according to claim
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`31 wherein the impedance within the at least one path is part of a
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`detection protocol.
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`Claim 36 states that the Ethernet data terminal equipment is BaseT Ethernet
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`data terminal equipment.
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`36. The piece of Ethernet data terminal equipment according to claim
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`31 wherein the piece of Ethernet data terminal equipment is a piece of
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`BaseT Ethernet data terminal equipment.
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`Claim 40 states that the “path” of the Ethernet data terminal equipment
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`includes at least one “resistor”:
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`40. The piece of Ethernet data terminal equipment according to claim
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`31 wherein the at least one path comprises at least one resistor.
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`Claim 52 states that the impedance within the path “is a function of voltage
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`across the selected contacts”:
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`52. The piece of Ethernet data terminal equipment according to claim
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`31 wherein the impedance within the at least one path is a function of
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`voltage across the selected contacts.
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`(Ex.2038, ¶¶158-160.)
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`D. Level of ordinary skill
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`A person of ordinary skill in the art (an “ordinary artisan”) at the time of the
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`invention would have been a person who has a B.S. degree (or equivalent) in
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`electrical engineering or computer science, and three years of experience in the
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`design of network communications products. (Ex.2038, ¶26.) Such a person would
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`also have been familiar with data communications protocols, data communications
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`standards (and standards under development at the time, including the 802.3
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`standard), and the behavior of data communications products available on the
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`market. (Id.) The parties disagree slightly on the level of skill in the art. Chrimar
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`believes that Petitioners’ use of the phrase “at least” (“at least a B.S. degree”; “at
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`least three years of experience”) is too open ended. It would result in an expert, who
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`has a Ph.D. and 15 years of experience, being considered an ordinary artisan. To
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`avoid this, Chrimar has eliminated the phrase “at least” in its description of an
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`ordinary artisan. The parties agree otherwise.
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`E.
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`The prior art on which Petitioners rely
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`Petitioners’ first ground relies on Hunter (Ex.1003) and Bulan (Ex.1004).
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`Hunter teaches a multimedia network hub (120 in Figure 1) that uses isoEthernet
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`interfaces to provide phantom operating power to certain media hubs in the network.
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`Bulan, a telephony reference, adds complex over-current protection circuitry that
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`Hunter describes as unnecessary. (Ex.2038, ¶39.)
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`Petitioners’ second ground relies on the combination of Bloch, Huizinga, and
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`the IEEE 802.3 (-93 and -95) 10Base-T and 100Base-T Ethernet specifications.
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`(Exs.1005-1009.) Bloch and Huizinga, telephony references, do not mention
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`Ethernet. (Ex.2038, ¶40.)
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`None of the prior art on which Petitioners rely describes the structure of an
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`Ethernet terminal device, let alone the features of the claimed Ethernet terminal
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`device. (Ex.2038, ¶38.)
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`IV. Standard for Inter Partes Review
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`Petitioners have the burden of proving unpatentability by a preponderance of
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`the evidence. 35 U.S.C. § 316(e).
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`As to Petitioners’ claim of obviousness under 35 U.S.C. § 103, they must
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`show where each claim limitation is found in the prior art. See, e.g., Kinetic
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`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1361 (Fed. Cir. 2012).
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`Petitioners must also show that an ordinary artisan would have had a reason to
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`combine the references in the manner proposed by Petitioners. KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007) (obviousness requires proof of an “apparent
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`reason to combine the known elements in the fashion claimed by the patent at
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`issue.”). Petitioners’ minimal discussion of the rationale to combine lacks the
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`requisite specificity to explain how and why an ordinary artisan would have been
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`prompted to combine the prior art references and how such a combination would
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`have worked.
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`V. Claim Construction
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`A.
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`“protocol” (Claim 35)
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`Claim 35 requires “wherein the impedance within the at least one path is part
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`of a detection protocol.” The word “protocol” has a well understood meaning in the
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`networking field. It is used, for example, in both parties’ description of the ordinary
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`artisan: “a POSITA . . . would be familiar with data communications protocols”
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`(Ex.1002, Crayford Decl., ¶50; see also Ex.2038, ¶103.)
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`A protocol, as defined in the computer networking field, is “a mutually agreed
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`upon method of communication.” (Ex.2038, ¶104; Ex.2047 at 1.) This definition
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`Atty. Dkt. No.: CHRMC0108IPR1
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`Case No.: IPR2016-01389
`Patent No.: 8,155,012
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`was provided by the Internet Engineering Task Force in a 1993 paper titled “FYI on
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`‘What is the Internet?’” (Ex.2047, available at https://tools.ietf.org/html/rfc1462.)
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`B.
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`"distinguishing information" (claim 31)
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`For purposes of these IPR