Reply in Support of Petition for Inter Partes Review of U.S. Patent No. 8,155,012
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Juniper Networks, Inc., Ruckus Wireless, Inc., Brocade Communication
`Systems, Inc. and Netgear, Inc.,
`Petitioners
`v.
`ChriMar Systems, Inc.,
`Patent Owner
`
`Case No. IPR2016-01389
`U.S. Patent No. 8,155,012
`Petitioners' Reply Brief
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`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 No. IPR2016-01389
`U.S. Patent No. 8,155,012
`Petitioners' Reply Brief
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
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`TABLE OF CONTENTS
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`Page
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`
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`INTRODUCTION ........................................................................................ 1
`I.
`CHRIMAR RELIES ON INCORRECT PRIORITY DATE ....................... 2
`II.
`III. ADDITIONAL CIRCUITRY IS NOT REQUIRED FOR OBVIOUSNESS2
`A.
`BST and CMC Overview ................................................................... 2
`B.
`BSTs and CMCs Are Not Required By The Claims Or Prior Art ..... 3
`C.
`POSITA Would Have Know How To Implement Grounds 1 and 2 . 4
`IV. CHALLENGED CLAIMS ARE OBVIOUS IN VIEW OF PRIOR ART
`TEACHING PHANTOM POWER DELIVERY OVER ETHERNET DATA
`LINES ........................................................................................................... 5
`A.
`Ethernet Phantom Power Is Prior Art To The '012 Patent ................. 5
`B.
`Chrimar Did Not Invent Or Enable Ethernet Phantom Power ........... 7
`C.
`The IEEE's Standardization Of Ethernet Phantom Power Supports
`Obviousness ........................................................................................ 8
`There is No Evidence That Ethernet Signals Would be Compromised
`In the Combined Systems ................................................................... 9
`V. ALTERNATIVE POWER DELIVERY METHODS IN THE PRIOR ART
`DO NOT NEGATE OBVIOUSNESS ........................................................ 11
`A. A Combination Does Not Become Less Obvious Because It Relies On
`A Reference Teaching Alternative Embodiments............................ 12
`The Prior Art Favored Phantom Power ............................................ 12
`B.
`C. Unused Pairs Often Were Not Available ......................................... 13
`VI. GROUND 1: HUNTER AND BULAN TEACH ALL LIMITATIONS OF
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`D.
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`Petitioners' Reply Brief for IPR2016-01389
`U.S. Patent No. 8,155,012
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`B.
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`C.
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`Page
`THE CHALLENGED CLAIMS ................................................................ 14
`A. Hunter Teaches "An Adapted Piece Of Ethernet Data Terminal
`Equipment" ....................................................................................... 14
`Bulan's Protective Device Improves Upon The Teachings Of Hunter
` .......................................................................................................... 22
`The Hunter-Bulan Combination Teaches "Distinguishing Information"
`Conveyed by Different DC Currents, Including Information that
`Differentiates One Terminal Equipment From Another .................. 23
`The Hunter-Bulan Combination Teaches a "Detection Protocol" ... 25
`The Hunter-Bulan Combination Teaches the Claimed "Path" That
`Includes a "Resistor" and "Impedance" Within It That Is "a Function
`of Voltage Across the Selected Contacts" ........................................ 25
`VII. CONCLUSION ........................................................................................... 28
`
`
`D.
`E.
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
`
`TABLE OF AUTHORITIES
`
`
`Cases
`In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ......................................... 12
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 420-421 (2007) .................... 5
`Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
`2008) ......................................................................................................... 9
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`IPR2016-01389, Petitioners' Reply
`U.S. Patent No. 8,155,012
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`LIST OF EXHIBITS
`
`Number
`1001
`
`Short Name
`'012 Patent
`
`1002
`
`1003
`1004
`1005
`1006
`
`10071
`1008
`1009
`1010
`
`Crayford
`
`Hunter
`Bulan
`Bloch
`IEEE-1993
`
`IEEE-1995 (part 1)
`IEEE-1995 (part 2)
`Huizinga
`Blacharski
`
`1011
`
`Katz
`
`1012
`
`Related Matters
`
`Description
`U.S. Patent 8,155,012 to Austermann, III
`et al.
`Declaration of Ian Crayford in Support of
`Petition
`WO 96/23377 to Hunter
`U.S. Patent 5,089,927 to Bulan et al.
`U.S. Patent 4,173,714 to Bloch et al.
`IEEE International Standard ISO/IEC 8802-
`3: 1993
`IEEE Standard 802.3u-1995
`IEEE Standard 802.3u-1995
`U.S. Patent 4,046,972 to Huizinga et al.
`Dan Blacharski, "Maximum Bandwith: A
`Serious Guide to High-Speed Networking",
`Que Corporation (1997)
`Randy H. Katz, "High Performance Network
`and Channel-Based Storage", Report
`UCB/CSD 91/650, September 1991
`List of Pending Cases Involving U.S. Patent
`8,155,012
`
`
`1 IEEE Standard 802.3u-1995 has been separated into Exhibits 1007 and
`
`1008 to comply with file size limitations for Exhibits. Exhibits 1007 and 1008 are
`
`continuously paginated, from 1-200, and 201-415, respectively.
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`IPR2016-01389, Petitioners' Reply
`U.S. Patent No. 8,155,012
`Short Name
`Number
`1013
`Crayford C.V.
`1014
`IEEE Press Release
`
`1015
`
`Complaint
`
`'058 patent
`'152 patent
`N/A
`
`Description
`Resume of Ian Crayford
`IEEE Standards Association News &
`Events: Press Releases "IEEE 802.3
`Standard for Ethernet Marks 30 Years of
`Innovation and Global Market Growth"
`
`Chrimar Systems, Inc. et al. v. Juniper
`Networks, Inc., Case No. 6:15-cv-00630
`(N.D. Cal.), Dkt. No. 1.
`U.S. Patent 6,247,058 to Miller et al.
`U.S. Patent 6,865,152 to Luhmann
`Gordnia Declaration in support of pro hac
`vice motion
`
`1016
`1017
`1018
`
`1019
`
`1020
`
`1021
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`1022
`
`1023
`
`1024
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`1025
`1026
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`
`
`
`N/A
`
`Madisetti
`Declaration
`
`Level One
`
`Kagan Declaration in support of pro hac
`vice motion
`Deposition transcript for the July 21 and
`July 22, 2017 deposition of Dr. Vijay
`Madisetti
`Level One LXT914 Data Sheet, June 1997,
`Revision 2.2
`Pulse LAN Isolation Transformer Catalog,
`May 1998
`Valor Electronic Products Catalog, 1992
`(excerpts)
`Halo TD43-2006K Drawing, December 18,
`1996
`Fisher or '998 patent U.S. Patent 5,994,998 to Fisher et al.
`'911 Patent
`U.S. Patent 6,140,911 to Fisher et al.
`
`Pulse
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`Valor
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`Halo
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`IPR2016-01389, Petitioners' Reply
`U.S. Patent No. 8,155,012
`Short Name
`Number
`1027
`De Nicolo or '468
`patent
`'356 patent
`Smith
`Chrimar
`Presentation to IEEE
`
`1028
`1029
`1030
`
`Madisetti Deposition
`Exhibit 1
`
`IEEE 802.9
`IEEE Dictionary
`
`Madisetti Deposition
`Exhibit 2
`Lucent
`
`Agenda
`
`Muir
`
`Frazier
`
`
`1031
`
`1032
`1033
`
`1034
`
`1035
`
`1036
`
`1037
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`1038
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`
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`
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`Description
`U.S. Patent 6,115,468 to De Nicolo
`
`U.S. Patent 6,295,356 to De Nicolo
`U.S. Patent 5,321,372 to Smith
`"Power on the 802.3 connection July 11th &
`12th, 2000 Power, Detection and Discovery
`over the Existing Ethernet Wiring" by CMS
`Technologies
`Madisetti Deposition Exhibit 1, Belden
`"Conduit and Media Twist" white paper,
`August 25, 1997
`IEEE 802.9 Standard, 1994
`The IEEE Standard Dictionary of Electrical
`and Electronics Terms, Sixth Edition, 1996
`(excerpts)
`Madisetti Deposition Exhibit 1, July 22,
`2017
`Lucent Technologies, "TransTalk™ 9000
`Digital Wireless System MDW 9030P
`Wireless Pocketphone Installation and Use,"
`March 1997 (excerpts)
`Steve Carlson, "802.3 DTE Power via MDI
`Study Group" (November 1999)
`Robert Muir, "DTE power over MDI - DTE
`Discovery Process Proposal" (November
`1999)
`Howard Frazier, Karl Nakamura and Roger
`Karam, "Power over the MDI" (January
`2000)
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`IPR2016-01389, Petitioners' Reply
`U.S. Patent No. 8,155,012
`Short Name
`Number
`1039
`Karam
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`1040
`
`1041
`
`Nootbar
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`Love
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`1042
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`Nakamura
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`1043
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`1044
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`1045
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`1046
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`'107 patent
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`'760 patent
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`'838 patent
`
`Crayford-2
`
`Description
`Roger Karam, "Common mode Rejection
`Through Center Tap of Magnetics" (March
`2000)
`Michael Nootbar, "Why Power Over Signal
`Pairs?" (March 2000)
`Robert Love and Dave Kooistra, "User
`Requirements for Cabling Support" (May
`2000)
`Karl Nakamura and Roger Karam, "Power
`over the MDI using the two Signal Pairs"
`(May 2000)
`U.S. Patent 8,942,107 to Austermann, III
`et al.
`U.S. Patent 8,902,760 to Austermann, III
`et al.
`U.S. Patent 9,019,838 to Austermann, III
`et al.
`Second Declaration of Ian Crayford In
`Support Of Reply
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`IPR2016-01389, Petitioners' Reply
`U.S. Patent No. 8,155,012
`I.
`INTRODUCTION
`Grounds 1 and 2 disclose the Challenged Claims ("Claims"), and a POSITA
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`would have made the combinations. Relying on the evidence, the Board instituted
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`inter partes review on both Grounds. Paper 12.
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`In Ground 1, Hunter teaches hubs and terminal equipment ("TE") networked
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`over standards including 10Base-T Ethernet. Pet., 7-25. Hunter teaches data and
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`power delivery over the same conductors, and a current limiting device. Id., 8. A
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`POSITA would have been motivated to replace this device with Bulan's circuit,
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`which intelligently detects and distinguishes overcurrent from terminal equipment
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`(e.g., normal start-up versus fault). Id., 9-15. Ground 1 teaches Claim 31,
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`including "Ethernet data terminal equipment," "Ethernet connector," "path", and
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`"distinguishing information." Id., 25-38.
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`Ground 2 confirms the Claims are obvious. Bloch teaches a telephone
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`system delivering data and power over the same conductors. Id., 38-59. A POSITA
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`would have been motivated to combine Bloch with the Ethernet standard, which
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`was developed based on legacy telephone systems. Id., 48-50. Chrimar does not
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`dispute Ground 2 teaches the Claims.
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`Unable to contest the evidence, Chrimar avoids responding to the Petition
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`and the Board's decision. Instead, it fabricates arguments that either have no
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
`relation to the scope of the Claims or disregard the teachings of the asserted prior
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`art. Chrimar's arguments are either incorrect or immaterial, and should be rejected.
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`II. CHRIMAR RELIES ON INCORRECT PRIORITY DATE
`The earliest priority date listed on the '012 patent is an April 10, 1998
`
`provisional application filing date. Ex. 1001, 1. Chrimar has not substantiated an
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`earlier date. Resp., 7-8, 39.
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`III. ADDITIONAL CIRCUITRY IS NOT REQUIRED FOR
`OBVIOUSNESS
`The Board rejected Chrimar's "unworkable network environment" arguments
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`and instructed that obviousness "does not require an actual, physical substitution of
`
`elements." Paper 12, 22-23. Disregarding this, Chrimar makes an even more
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`untenable argument that requires the references be physically combined not only
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`with other reference(s) in the Ground, but with additional circuitry that is neither
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`required by the Claims nor mentioned in the references or the '012 patent—Bob
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`Smith Terminations ("BST") and common mode chokes ("CMC"). Resp., 15-17.
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`A. BST and CMC Overview
`BSTs can minimize electromagnetic emissions in devices subject to the
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`FCC's regulations and are not relevant to the claimed inventions. In 1994, Robert
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`("Bob") Smith received a patent for his eponymous terminations. Ex. 1029
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`("Smith"). Smith explains "[g]overnment regulations mandate that emissions be
`
`limited to a particular level in order to minimize interferences with other
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`apparatus." Id., 2:5-9. Smith provides one way to meet these standards. Id., 2:61-
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`3:2. CMCs are another method. Crayford-2, ¶13.2 Dr. Madisetti clarified that
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`CMCs are to be used with BSTs. Ex. 1020, 144:6-18.
`
`B.
`BSTs and CMCs Are Not Relevant
`The BRI of the Claims does not require BSTs, CMCs, or compliance with
`
`any FCC regulation. Dr. Madisetti testified he has not offered opinions on whether
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`the claims require BSTs or CMCs but agreed "[t]he words 'Bob Smith' don't
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`explicitly appear" in the claims. Ex. 1020, 128:19-129:6, 139:4-9, 140:8-9,133:18-
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`19.
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`Neither BSTs nor CMCs appear in the common specification to the '012
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`patent, '760 patent, '107 patent, and '838 patent ("Shared Specification"). Reading
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`them into the claims would be reversible error. Phillips v. AWH Corp., 415 F.3d
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`1303, 1323 (Fed Cir. 2005). Dr. Madisetti explained BSTs and CMCs are part of
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`an unclaimed "specific method of implementation" (Ex. 1020, 142:20-143:12) and
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`are optional in an Ethernet system. Whether they are used is part of the innovation
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`left "to the hand of the designer." Id.
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`The mere mention of "pre-existing wiring or cables" in the Shared
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`Specification does not mean the claims require BSTs or CMCs. Resp., 8, 15.
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`2 "Crayford-1" and "Crayford-1" are Mr. Crayford's Declarations in support
`
`of the Petition (Ex. 1002) and Reply (Ex. 1046), respectively.
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
`There is no evidence that "pre-existing wiring or cables" required either component
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`in April 1998. And Dr. Madisetti admitted he "cannot verify each and every
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`system out there" used BSTs in April 1998, and he cannot "speak of every system."
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`Ex. 1020, 80:16-20, 55:19-23.3 He formed his opinions without even considering
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`the purpose of BSTs and CMCs, i.e., to address FCC emission requirements. Id.,
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`84:7-13, 88:19-89:2, 90:13-91:5, 115:5-14; §III.A. Moreover, the claims do not
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`recite or otherwise require "pre-existing wiring or cables." Ex. 1020, 376:14-17.
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`C.
`POSITA Knew How To Implement Grounds 1 and 2
`Notwithstanding the irrelevance of its BST/CMC arguments (§IIIA-B),
`
`Chrimar ignores the knowledge and ordinary creativity a POSITA would have in
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`April 1998, and from this, speculates a POSITA could not make the combinations
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`of Grounds 1 or 2 for use in an Ethernet network that includes BSTs and CMCs.
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`Resp., 15-17.
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`A POSITA would possess sufficient knowledge and creativity to implement
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`BSTs and CMCs in Grounds 1 and 2 without damage to the circuitry. Crayford-2,
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`¶¶23-26. In April 1998, a POSITA knew that a blocking capacitor could be used to
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`block DC current from flowing through the BSTs. Id. The Shared Specification
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`uses capacitors in this manner to form a filter for blocking current from flowing in
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`3 A POSITA would know of ways to satisfy the territorial FCC emissions
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`regulations without BSTs or CMCs. Crayford-2, ¶¶23-26; Exs. 1021, 1022.
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`IPR2016-01389 Petitioners' Reply
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`a particular path. Id.; Ex. 1001, 7:40-41. He also knew that CMCs were available
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`that would not saturate from the application of power. Crayford-2, ¶¶23-26; Exs.
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`1023, 1024. A POSITA's knowledge, creativity, and common sense, must be
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`considered. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 420-421 (2007).
`
`IV. CLAIMS ARE OBVIOUS IN VIEW OF PRIOR ART TEACHING
`POWER DELIVERY OVER ETHERNET DATA LINES
`Chrimar makes a series of incorrect and unsupported arguments about power
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`over Ethernet. First, to clarify, Chrimar did not invent or enable power delivery
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`over data lines to Ethernet networks. The application of this textbook concept
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`existed in April 1998 and later became an IEEE standard generically referred to as
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`"Power over Ethernet" or "PoE". Ex. 1020, 190:7-20. While Chrimar has used
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`patent continuations and creative claim drafting to try to capture technology related
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`to Ethernet phantom power, it cannot take credit for what was known in the prior
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`art.
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`A. Ethernet Phantom Power Is Prior Art
`Chrimar says PoE did not exist in 1997. Resp., 8. If Chrimar refers to the
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`IEEE's PoE standard, this statement is irrelevant. If Chrimar means that phantom
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`power—the concept of power delivery over data lines—was not known or had not
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`been applied to Ethernet networks in 1997 ("Ethernet phantom power"), this is
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`false. First, 1997 is not the time of invention. §II. Second, prior art shows
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`Ethernet phantom power was well known by April 1998.
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
`Hunter confirms that by 1996, "the concept of phantom power ha[d] been
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`extended significantly to operate with data bearing-LAN buses," including the
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`10Base-T bus of the preferred embodiment. Ex. 1003 ("Hunter")4, 20:14-16.,
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`19:13-17, 21:11-13. Each of the two twisted-pair conductors in the 10Base-T bus
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`is "used for unidirectional transmission of data" and "as a rail by which to deliver
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`DC power to the equipment." Id., 21:22-29. This "allow[s] power to be introduced
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`into the conductors and throughout the computer network." Id., 20:11-16.
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`The prior art cited in the '012 patent confirms Ethernet phantom power
`
`predates Chrimar's alleged invention. Chrimar and its expert did not consider this
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`art. Ex. 1020, 200:23-201:11.
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`For example, the Fisher '998 and '911 patents, filed May 29, 1997, teach
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`powering an Ethernet device over Cat-3 or Cat-5 twisted pair cable carrying
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`Ethernet data. Fisher, 2:21-41, 3:65-67, 6:7-10. Fisher teaches a "combined power
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`and data signal that can eventually be supplied to the network device." Fisher,
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`3:49-63; 2:21-26, 2:27-41. Fisher also explains the "network device" can be a
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`personal computer ("PC") having a network interface card. Id., 4:1-7.
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`Similarly, the De Nicolo '468 and '356 patents, filed March 26, 1998, teach
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`"provid[ing] electrical power to ethernet-based telephones over an ethernet wire
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`link." De Nicolo", 1:7-9. Figure 3 illustrates "Ethernet devices requiring power to
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`4 Hunter citations reference the document's internal pagination.
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
`be transmitted to them in addition to data over Ethernet twisted pair lines." Id.,
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`Fig. 3, 3:5-12.
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`The combinations in the Grounds yield predictable results as Ethernet
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`phantom power was well known to a POSITA. Crayford-2, ¶¶28-33; KSR, 550
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`U.S. at 416-17.
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`B. Chrimar Did Not Invent Or Enable Ethernet Phantom Power
`The Shared Specification further demonstrates Chrimar did not enable
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`Ethernet phantom power to function with BSTs and CMCs. Resp., 8.
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`The Shared Specification describes an asset tracking system with two
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`modules communicating over conductors carrying network data (e.g. Ethernet).
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`Ex. 1001, Figs. 1-8, 10. A remote module is attached to or integrated into a
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`network asset such as a PC. Id., Figs. 1-4, 13-15. A central module provides
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`current to the remote module; but it does not power the asset. Id., 4:65-67, 5:40-
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`48, 7:40-42, 7:48-50, 12:48-50. It also does not control (i.e., selectively turn on
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`and off) power to either the remote module or the asset. Id.; Crayford-2, ¶35. The
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`central module, unaware that there may be a BST or CMC in the asset or remote
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`module, continuously provides current to the remote module (unless of course, the
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`two modules are unplugged from one another). Ex. 1001, 5:33-35, 5:43-48;
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`Crayford-2, ¶35. Chrimar cannot rely on its expert to argue its patent teaches
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`something more, because when asked whether Chrimar invented "phantom power
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
`for Ethernet," he responded "I'm not offering an opinion as to Chrimar's –Chrimar's
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`specific contributions." Ex. 1020, 192:17-194:1.5
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`C. The IEEE's Standardization Of Ethernet Phantom Power
`Supports Obviousness
`Chrimar attempts to fabricate skepticism about Ethernet phantom power
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`from a selection of IEEE presentations and meeting minutes to argue a POSITA
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`would not have made the combinations in the Grounds. Resp., 7, 22-26. This is
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`another red herring argument. First, the IEEE's analysis for determining whether
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`Ethernet phantom power should become a standard has nothing to do with
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`obviousness, which does not require meeting standardization criteria. Second, a
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`more complete review of the IEEE documents confirms members favored phantom
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`power and questioned the availability of unused pairs.
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`As background, the presentations identified by Chrimar were made during
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`IEEE meetings related to the development of a standard for power delivery to data
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`terminal equipment (DTE). Crayford-2, ¶37; Ex. 1036. Ethernet phantom power
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`was so well known (§IV.A) that the IEEE considered adopting it as a standard. Id.;
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`Ex. 1037, 3.
`
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`5 Notably, when Chrimar presented its invention to the IEEE in 2000, the
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`IEEE rejected it. Ex. 1030; Ex. 2045, 1-3 (Chrimar did not get votes to advance).
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
`Chrimar's cherry-picked selection of IEEE documents paints an incomplete
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`and inaccurate picture. Resp., 22-26. In those and other meetings, various
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`presenters favored phantom power and questioned the presence of unused pairs.
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`Crayford-2, ¶¶38-44; Exs. 1036-1042. IEEE records also show it was well known
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`that BSTs could be replaced and/or modified using simple capacitive decoupling to
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`prevent damage. Id.; Ex. 1037, 4. Dr. Madisetti does not know whether he
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`reviewed these available IEEE documents. Ex. 1020, 359:3-19.
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`Even if some IEEE members were skeptic—which they were not—that
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`skepticism would have been about whether Ethernet phantom power should
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`become a standard, not whether the technology worked. Because Chrimar did not
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`invent Ethernet phantom power, any alleged skepticism about it is immaterial. To
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`be a secondary consideration of non-obviousness, skepticism has to be about the
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`claimed invention; there must be a nexus. Muniauction, Inc. v. Thomson Corp.,
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`532 F.3d 1318, 1327 (Fed. Cir. 2008). Chrimar completely misses this point, and
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`also mischaracterizes the cases it cites, that confirm this rule. Resp., 22.
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`D. There is No Evidence That Ethernet Signals Would be
`Compromised In the Combined Systems
`Chrimar inaccurately claims telephone and Ethernet are so unrelated that a
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`POSITA would not have looked to the telephone arts while working on Ethernet
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`systems. Resp., 4-7. Hunter disproves this claim and confirms Ethernet was built
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`on legacy phone technology. Hunter, 2:22-23 ("multimedia extension to the voice-
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`U.S. Patent No. 8,155,012
`only services of the ubiquitous telephone network"); 15:8-13 ("evolve the
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`proprietary telephony of the PBX … into standards-based systems … LAN
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`systems of today."); 17:3-5; 33:19-21. Indeed, Hunter's objectives included "[a]n
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`interactive multimedia system must closely follow the availability of the legacy
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`voice systems." Id., 8:14-16. Mr. Crayford and Dr. Madisetti's testimony show
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`POSITAs working in Ethernet were indeed consulting the related telephone arts in
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`April 1998. Ex. 1013; Crayford-2, ¶¶46-47; Ex. 1020, 159:2-160:1 (voice over IP
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`switches sending voice over IP (e.g. Ethernet)).
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`Chrimar's theories about noise and interference in the combination of
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`Ground 2 are also incorrect. Resp., 27-29. Without evidence or reasoning,
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`Chrimar claims the switching of R201 would cause noise interfering with the
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`Ethernet signal. Id. Mr. Crayford tested this conclusion and found the
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`communication signaling rate proposed by Bloch results in a lower frequency than
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`the signaling rates proposed for the remote module in Chrimar's patent. Crayford-
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`2, ¶¶47-53 Additionally, a POSITA's knowledge would include prior art filters,
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`including those mentioned in the Shared Specification, to segregate the higher
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`Ethernet frequencies from the lower Bloch frequencies. Ex. 1001, 8:39-42; 10:25-
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`27; Crayford-2, ¶47-53.
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`When questioned about his unsupported theory, Dr. Madisetti backed away
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`and claimed that it was the square edges (i.e., instantaneous switching) of the
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`IPR2016-01389 Petitioners' Reply
`U.S. Patent No. 8,155,012
`waveform, not the signaling frequency, that would cause noise. Ex. 1020, 204:14-
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`205:10 (frequency does not matter). However, Dr. Madisetti incorrectly assumes
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`that the instantaneous switching illustrated in Bloch Figure 7B is not only feasible
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`but required by Bloch. Id. A POSITA would understand that completely
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`instantaneous transitions were not required by Bloch. Crayford-2, ¶47-53. Dr.
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`And Dr. Madisetti explained a filter would prevent noise from interfering with the
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`Ethernet communications. Ex. 1020, at 205:11-206:5.
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`Chrimar's arguments about the path in Ground 1 causing saturation (Resp.,
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`28) are incorrect and rely solely on its disingenuous misrepresentations regarding
`
`Mr. Crayford's testimony. Ex. 2039, 85:2-4, 167:23-168:4, 168:20-169:4;
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`Crayford-1, ¶¶75, 97; Hunter, Fig. 2; Crayford-1, ¶54.
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`V. ALTERNATIVE PRIOR ART POWER DELIVERY METHODS DO
`NOT NEGATE OBVIOUSNESS
`Chrimar's argument that phantom powering would have been avoided
`
`because cables used in Ethernet networks had unused pairs (Resp., 18-22) is
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`another implementations-based argument that is outside the scope of the Claims
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`and Grounds. Chrimar's underlying assumption—unused pairs were widely
`
`available—is incorrect, and evidence shows phantom power was favored as much
`
`as or more than unused pairs.
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`U.S. Patent No. 8,155,012
`A. A Combination Does Not Become Less Obvious Because It Relies
`On A Reference Teaching Alternative Embodiments
`Chrimar nonsensically argues
`that Hunter's
`teaching of alternative
`
`technologies, phantom power and third pair power, means a POSITA would not
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`have used phantom power in Ground 1 (Resp., 18-19). In re Fulton, 391 F.3d
`
`1195, 1201 (Fed. Cir. 2004). Hunter claims and describes phantom power as a
`
`"preferred embodiment." Hunter, 20:24-21:9, cls. 1, 11. While Hunter
`
`acknowledges introducing phantom power may result in interactions between the
`
`power and the data, it describes known solutions to avoid potential interactions,
`
`including balance circuits, isolation transformers, filter circuits, etc. Id., 17:13-19,
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`22:1-23:2; Crayford-2, ¶56.
`
`B.
`The Prior Art Favored Phantom Power
`The prior art recognized the benefits of phantom power. For example,
`
`Hunter explains: "[p]hantom powering has the advantage of not requiring the
`
`installation of a dedicated power cable." 17:13-14. By contrast, "third pair
`
`powering requires a dedicated power cable, increasing the cost of new installations
`
`and existing installations where a dedicated power cable is not already in place."
`
`Id., 17:23-26.
`
`Similarly, Fisher explains: "it is desirable to be able to eliminate the need for
`
`the second cable [for power]." Fisher, 1:19-20. This "simplifies" and "reduce[s]
`
`the cost of the installation." Id., 1:66-2:4, 9:19-21. Also, unused pairs "may not
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`U.S. Patent No. 8,155,012
`always be available," and a change in the standard may require the currently
`
`unused pairs.6 Id., 2:8-14. Ethernet phantom power "reduce[s] the wiring
`
`requirements." Id., 2:15-17; see also De Nicolo, 2:20-24, 2:31-35. And IEEE
`
`members including from Cisco, preferred phantom power over unused pair. Exs.
`
`1036-1042; IV.C.
`
`C. Unused Pairs Often Were Not Available
`Chrimar wrongly assumes that 10BASE-T and 100BASE-T using Cat-3 and
`
`Cat-5 cables with RJ-45 connectors, necessarily meant there were always 4 pairs
`
`available, two of which were used. Resp., 18-21. Yet, Dr. Madisetti agreed that he
`
`"wouldn't say all" of the "Ethernet infrastructure existing at the time of the
`
`invention was exclusively four pair." Ex. 1020, 343:3-12. In April 1998, there
`
`were Cat-3 and Cat-5 cables with only 2 pairs, which were both used for data.
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`Crayford-2, ¶¶61-62; Ex. 1031. Likewise, a POSITA would not assume that an
`
`RJ-45 connector with 8 pins necessarily has 8 wires (4 pairs) connected. Resp.,
`
`19-21; Crayford-2, ¶¶61-62; Ex. 1006, 266; Ex. 1008, 214 (showing those pins as
`
`not used and not populated). Dr. Madisetti was not aware that 2-pair Cat-3 and
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`Cat-5 cables existed in 1998. Ex. 1020, 348:1-13.
`
`
`6 1000BASE-T Ethernet, which Dr. Madisetti admits had no unused pairs,
`
`was not yet standardized. Ex. 1020, 382:12-15.
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`U.S. Patent No. 8,155,012
`In addition, the 10BASE-T standard shows that cables with 25 pairs of wire
`
`were used in April 1998. Crayford-2, ¶¶63-64; Ex. 1006, 265 (14.4.3.1.1). Mr.
`
`Crayford testified that of the 25 pairs, 24 were used to deliver data to 12 devices; 2
`
`pairs were used per device, leaving a single unused pair. Ex. 2039, 146:6-147:13.
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`Again, Dr. Madisetti was not aware that 25-pair cables were used with 10BASE-T.
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`Ex. 1020, 345:21-346:7; 363:1-9; 364:21-365:5. Even the IEEE could not
`
`determine what percentage of installations had unused pairs. §IV.C.
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`VI. GROUND 1: HUNTER AND BULAN TEACH THE CLAIMS
`A. Hunter Teaches "An Adapted Piece Of Ethernet Data Terminal
`Equipment"
`Chrimar incorrectly disputes that Hunter teaches "[a]n adapted piece of
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`Ethernet data terminal equipment." Resp., 29-34, 40-41.
`
`a. Hunter Teaches "Ethernet"
`Chrimar argues Hunter is not relevant because Hunter's disclosure of
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`"Ethernet®" is not the same "Ethernet" claimed by the '012 patent. Resp., 29-30.
`
`Chrimar also misread Hunter narrowly to argue that it only teaches 10Base-T and
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`100Base-T conductors, not standards. Resp., 49-50. Hunter, however, discloses
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`10Base-T, 100Base-T7, and isoEthernet standards, that all teach the "Ethernet"
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`limitation. Pet., 25-28. Referring to the phantom power embodiment, Hunter
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`7 Chrimar agrees 10Base-T and 100Base-T teach "Ethernet." Resp., 14.
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`states "[o]ne standard that employs this arrangement [a bus comprising two
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`twisted-pair conductors] is 10Base-T." Hunter, 26:3-6. Hunter also teaches
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`10Base-T equipment. For example, Hunter discloses a "10Base-T hub 170." Id.,
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`34:18-20; Fig. 1. "Multimedia hub 120" is connected to "10Base-T hub 170" and
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`handles "bridging among standards." Id., Fig. 1, 32:16-33:2. Multimedia hub 120
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`has a "10base-T hub repeater." Id. Hunter also teaches "a 10Base-T LAN system."
`
`Id., 23:16-17. One objective of Hunter is "compatibility … with existing
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`standards," which included 10Base-T (1993) and 100Base-T (1995). Id.; Exs.
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`1006-1008.
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`Hunter's disclosure of isoEthernet also teaches Ethernet. Hunter, 19:2-8,
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`15:17-18. IsoEthernet, defined by the IEEE 802.9a standard, includes both
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`10Base-T and ISDN modes. Hunter, 23:21-24; Ex. 1010, 165; Ex. 1032, 377.
`
`b. Hunter Teaches "Data Terminal Equipment"
`Hunter teaches an Integrated Services Terminal Equipment ("ISTE") card
`
`receives and transmits data over a 10Base-T bus. Pet., 25-28. Figure 2 depicts an
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`isoEthernet system where the ISTE splits isoEthernet data, a combined ISDN and
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`10Base-T signal, into ISDN data for Voice Instrument 299 and 10Base-T LAN
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`data for other equipment. Hunter, Fig. 2; Crayford-2, ¶¶69-72. The IsoEthernet
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`specification defines ISTE as "[a] device that serves as an information source
`
`and/or information sink for the provision of voice, facsimile, video, data, and other
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`U.S. Patent No. 8,155,012
`information." Ex. 1032, 20. A POSITA would understand that both ISDN and
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`10Base-T Ethernet data terminate at the Hunter ISTE. Crayford-2, ¶¶69-72.
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`Chrimar's argument that the ISTE is an "intermediate hub" is incorrect.
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`Resp., 30. The BRI of "data terminal equipment" must include its ordinary
`
`meaning, which in April 1998 was "[a] device that serves as a data source and/or
`
`data sink. Ex. 1033, 10. Consistent with this, the '012 patent states "Ethernet data
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`terminal equipment" includes a PC. Ex. 1001, cl. 32; Paper 10, 43. In April 1998,
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`PCs could be intermediate devices. Crayford-2, ¶69-72. For example, Hunter
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`Figure 1 shows PC 125 connected on one side to Multimedia Hub 120 and on the
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