`
`______________
`
`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 IPR2016-013911
`
`U.S. Patent No. 8,942,107 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.
`
`filed a petition in (now terminated) IPR2017-00718, who have been joined to the
`
`instant proceeding.
`
`
`
`Case No.: IPR2016-01391
`Patent No.: 8,942,107
`
`Atty. Dkt. No.: CHRMC0109IPR1
`
`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.
`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 ‘107 Patent claims ............................................... 8
`Level of ordinary skill .........................................................................13
`The prior art on which Petitioners rely ...............................................14
`
`IV. Standard for Inter Partes Review ..................................................................14
`
`V.
`
`Claim Construction ........................................................................................15
`
`A.
`
`B.
`C.
`
`"powered off"; "powered-off Ethernet terminal equipment";
`"powered-off end device" (Claims 103, 104, 111, 123, and 125).......15
`“protocol” (Claims 72 and 123) ..........................................................17
`"BaseT" (claim 5) ................................................................................18
`
`VI. No Reason to Combine -- An Ordinary Artisan Would Not Have
`Made Petitioners’ Proposed Combinations ...................................................18
`
`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 .................19
`1.
`Applying operating power to pre-existing Ethernet
`terminal devices would have destroyed Bob Smith
`terminations, saturated the common mode chokes, and
`thus degrade the propagation of Ethernet data .........................19
`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 .......................................................................22
`
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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....................................................................................................31
`Petitioners mistakenly assert that Hunter teaches phantom
`powering of Ethernet terminal equipment ...........................................33
`1.
`Petitioners have failed to show that Hunter’s discussion
`of “Ethernet®” is relevant to the claimed invention .................34
`Petitioners have not proven their assertion that Hunter
`teaches hub 170 providing phantom power to Ethernet
`terminal equipment; on the contrary, Hunter’s phantom-
`power circuit connects a hub to other hubs – not to
`Ethernet terminal devices ..........................................................34
`Hunter’s specification confirms that Figure 2 does not
`apply to Ethernet communications ...........................................39
`D. Additionally for Hunter-Bulan: An ordinary artisan would not
`have replaced the “preferable” protective device with the
`unnecessarily complicated current limiting circuit of Bulan ..............41
`
`2.
`
`3.
`
`VII. The Proposed Hunter-Bulan Combination Does Not Disclose
`Limitations of the Claims ..............................................................................45
`
`A.
`
`2.
`
`The Hunter-Bulan combination does not teach the various claim
`limitations requiring “a piece of Ethernet terminal equipment”
`or “end device” that draws different magnitudes of DC current
`to “convey information” about itself ...................................................45
`1.
`All challenged claims: The portion of Hunter’s Figure 2
`circuit Petitioners identify as the “TE” is not the claimed
`“Ethernet terminal equipment”/“end device” ...........................46
`All challenged claims: The Hunter-Bulan combination
`does not teach an Ethernet terminal/end device that draws
`different DC currents to convey information about itself .........47
`Claims 43, 103 and 111: The Hunter-Bulan combination
`does not teach the “information to distinguish”
`limitations ..................................................................................50
`Claims 74 and 75: The Hunter-Bulan combination does
`not teach that “at least one path comprises an electrical
`component,” which is a “resistor” ............................................52
`
`3.
`
`4.
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`ii
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`
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`B.
`
`C.
`
`D.
`
`Claim 5: The Hunter-Bulan combination does not teach “BaseT
`Ethernet communication signals”........................................................54
`Claims 72 and 123: The Hunter-Bulan combination does not
`teach a “detection protocol” ................................................................56
`Claims 103, 104, 111, 123 and 125: The Hunter-Bulan
`combination does not teach the “powered-off” limitations ................56
`
`VIII. Claims 103, 104, 111, 123 and 125: The Bloch-Huizinga-IEEE
`Combination does not Teach the “Powered-Off Ethernet Terminal
`Equipment” Limitations ................................................................................60
`
`IX. Conclusion .....................................................................................................63
`
`Certificate of Service ...............................................................................................65
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .......................................67
`
`
`
`
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`iii
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`
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`Table of Authorities
`
`Cases
`
`Endo Pharms. Inc. v. Depomed, Inc.,
`
`IPR2014-00656, Paper 66 (September 21, 2015) ................................... 31, 45
`
`Gillette Co. v. S.C. Johnson & Son, Inc.,
`
`919 F.2d 720 (Fed. Cir. 1990) .......................................................................26
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d 1342, 1361 (Fed. Cir. 2012) ...........................................................15
`
`KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007).......................................................................................15
`
`MasterImage 3D, Inc. v. RealD Inc.,
`
`IPR2015-00877, Paper 8 (September 9, 2015) ....................................... 31, 45
`
`Monarch Knitting Mach. v. Sulzer Morat GmbH,
`
`139 F.3d 877 (Fed. Cir. 1998) .......................................................................26
`
`Stryker Corp. v. Karl Storz Endoscopy Am., Inc.,
`
`IPR2015-00764, Paper 13 (September 2, 2015) ............................................43
`
`WBIP, LLC v. Kohler Co.,
`
`829 F.3d 1317 (Fed. Cir. 2016) .....................................................................26
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................15
`35 U.S.C. § 316 ........................................................................................................14
`
`
`
`
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`iv
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`List of Exhibits
`
`
`
`
`
`Identifier
`
`Description
`Ex. No.
`2017 Memorandum Opinion and Order,
`Dkt. No. 96, filed in Chrimar Systems,
`Inc., et al. v. AMX, LLC, Civil Action
`No. 6:13-cv-881-JDL, Eastern District
`of Texas
`2018 Memorandum Opinion and Order,
`Dkt. No. 105, filed in Chrimar
`Systems, Inc., et al. v. AMX, LLC,
`Civil Action No. 6:13-cv-881-JDL,
`Eastern District of Texas
`2019 Memorandum Opinion and Order,
`Dkt. No. 108, filed in Chrimar
`Systems, Inc., et al. v. AMX, LLC,
`Civil Action No. 6:13-cv-881-JDL,
`Eastern District of Texas
`2020 Memorandum Opinion and Order,
`Dkt. No. 122, filed in Chrimar
`Systems, Inc., et al. v. Alcatel-Lucent,
`et al., Civil Action No. 6:15-cv-163-
`JDL, Eastern District of Texas
`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
`2035 Memorandum Opinion and Order,
`Dkt. No. 318, filed in Chrimar
`Systems, Inc., et al. v. AMX, LLC,
`Civil Action No. 6:13-cv-881-JDL,
`Eastern District of Texas
`2036 Response to Office Action (Reexam
`Control No. 90/009,513) (June 15,
`2010)
`
`Date
`Oct. 22, 2014
`
`Jan. 8, 2015
`
`
`
`
`
`Jan. 16, 2015
`
`
`
`Mar. 28,
`2016
`
`Mar. 28,
`2016
`
`Sept. 27,
`2016
`
`
`
`
`
`
`
`June 15, 2010
`
`
`
`v
`
`
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`Atty. Dkt. No.: CHRMC0109IPR1
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`Date
`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
`
`
`
`
`
`Karam slides
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`Case No.: IPR2016-01391
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`2041
`
`2042
`
`2043
`
`Description
`Ex. No.
`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
`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
`
`2044
`
`2045
`
`2046
`
`vi
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`Ex. No.
`2047
`
`Description
`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 Madisetti Curriculum Vitae
`
`Date
`May 1993
`
`Identifier
`Krol RFC
`
`
`
`
`
`Camp Decl.
`
`
`
`
`
`vii
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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 December 22, 2016, the Board instituted IPR2016-01391, filed by
`
`Juniper Networks, Inc. (“Juniper”), concerning claims 1, 5, 31, 43, 70, 72, 74, 75,
`
`83, 103, 104, 111, 123, and 125 of U.S. Patent No. 8,942,107 (“the ‘107 Patent”).
`
`(Paper 9.) 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 IPR2017-00718, joined it with the
`
`Juniper IPR, and terminated IPR2017-00718. (Paper 25 at 5-6.) The various
`
`Petitioners are referred to collectively as “Petitioners.”
`
`II.
`
`Summary of Patent Owner Response
`
`The ‘107 Patent claims an innovative and beneficial Ethernet terminal
`
`device. The claimed device improved on then-existing Ethernet terminal devices
`
`because it: (1) draws DC current through its Ethernet network cable; (2) conveys
`
`information about itself by drawing different magnitudes of DC current; and (3)
`
`can convey that information about itself while powered-off, i.e., without receiving
`
`operating power.
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`Petitioners argue that the ‘107 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, Crayford dep. 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, and as explained in Section VII., even if combined, the Hunter-
`
`Bulan combination fails to disclose several features of the claimed invention. The
`
`Hunter-Bulan combination does not disclose the following claim limitations:
`
` any Ethernet terminal/end device, let alone an Ethernet terminal/end device
`
`configured to: “convey information” about itself (all claims) “distinguish”
`
`itself from another Ethernet terminal/end device (claims 43, 103, 111) and
`
`include the claimed “resistor” (claim 75);
`
` conveying information via a “protocol” (claim 72, 123);
`
` “Ethernet communication signals [that] are BaseT Ethernet communication
`
`signals.” (claim 5); and
`
` an Ethernet terminal device (or any device) configured to convey
`
`information about itself while “powered-off” (claims 103, 104, 111, 123,
`
`125).
`
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`Third, as explained in Section VIII., the Bloch-Huizinga-IEEE combination
`
`likewise does not teach the “powered-off” Ethernet terminal equipment limitations
`
`of claims 103, 104, 111, 123, and 125.
`
`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 communications 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., ¶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 familiar with their own
`
`home phone wiring knows that telephone wires can be split and spliced to couple
`
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`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-
`
`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
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`for good reason – the same noise would interfere with the Ethernet data
`
`communications. (Ex.2038, ¶30.)
`
`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.)
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`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, 195:3-15.) These special
`
`terminations 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. (Ex.2039 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
`
`
`3 Throughout this document, all emphasis is added unless otherwise noted.
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`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;
`
`Ex.2038, ¶37.)
`
`B.
`
`The invention of the ‘107 Patent claims
`
`The Chrimar ‘107 patent “provides examples of networked equipment” that
`
`“would be connected over ‘conventional multi-wire cables that include a plurality
`
`of transmit and receive data communication links.’” (Ex.1002, ¶45, emphasis in
`
`original.) It “is directed to equipment networked over ‘pre-existing wiring or
`
`cables that connect pieces of networked computer equipment to a network.’”
`
`(Ex.1002, ¶45.) As mentioned above, operating Power-over-Ethernet (“PoE”) did
`
`not exist in 1997. Rather, Ethernet terminal equipment needed their own power
`
`supplies. (Ex.2038, ¶90.)
`
`The ‘107 Patent describes and claims an improved Ethernet terminal
`
`equipment that improves network security and enables PoE networks, i.e.,
`
`networks that provide operating power to an Ethernet terminal equipment over the
`
`Ethernet data path. As explained more fully below, the improved Ethernet
`
`terminal equipment of the ‘107 Patent can: (1) draw DC current through Ethernet
`
`data cables; (2) convey information about itself by drawing different magnitudes of
`
`DC current over that Ethernet data path; and (3) convey that information about
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`itself while powered-off, i.e., without receiving operating power. The claimed
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`Atty. Dkt. No.: CHRMC0109IPR1
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`Case No.: IPR2016-01391
`Patent No.: 8,942,107
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`Ethernet terminal equipment enhances network security because the device can
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`convey information about itself to a network, which lets the network assess
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`whether the device should have access to the network, before the network grants
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`access.
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`The claimed Ethernet terminal equipment also enables PoE networks. For
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`many years, Ethernet terminal equipment could not receive operating power over
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`the Ethernet data path. (Ex.2038, ¶93.) If an Ethernet network hub were to apply
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`PoE power and create a DC current path using the Ethernet data wires to Ethernet
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`equipment, the operating power would have destroyed the “Bob Smith”
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`terminations in the equipment and saturated the common mode chokes. (Id.) As
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`such, a PoE network could not provide PoE power to an Ethernet terminal device
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`unless it already knew that the device was a PoE terminal device and not a standard
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`terminal device. (Id.) Because the Ethernet terminal equipment of the ‘107 Patent
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`can convey information about itself, it can convey to the network, for example, (a)
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`whether the device can accept operating power over its Ethernet data path and (b)
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`how much power it can accept, before the network provides operating power.
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`These features enhance the safety and cost effectiveness of Ethernet networks.
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`Atty. Dkt. No.: CHRMC0109IPR1
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`Case No.: IPR2016-01391
`Patent No.: 8,942,107
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`C. The challenged claims of the ‘107 Patent
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`The ‘107 Patent includes two independent claims, 1 and 104. Claims 1 and
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`104 claim a piece of “terminal equipment” (claim 1) or “end device” (claim 104)
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`with:
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` Feature 1: a path across two “Ethernet connector” contacts “for the purpose
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`of drawing DC current,” and
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` Feature 2: the Ethernet terminal equipment/end device is configured “to
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`draw different magnitudes of DC current flow via the at least one path . . . to
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`convey information about” itself.
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`Claim 104 includes another feature (Feature 3), i.e., a “powered-off”
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`Ethernet end device “to draw different magnitudes of DC current flow via the at
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`least one path . . . to convey information about” itself. The claim language for these
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`features are referenced/emphasized below.
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`1. A piece of Ethernet terminal
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`104. A powered-off end device
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`equipment comprising:
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`comprising:
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`an Ethernet connector comprising
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`an Ethernet connector comprising first
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`first and second pairs of contacts used
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`and second pairs of contacts, at least
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`to carry Ethernet communication
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`one [Feature 1] path for the purpose of
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`signals,
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`
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`drawing DC current,
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`at least one [Feature 1] path for the
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`the at least one [Feature 1] path coupled
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`purpose of drawing DC current, the at
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`across at least one of the contacts of the
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`Atty. Dkt. No.: CHRMC0109IPR1
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`Case No.: IPR2016-01391
`Patent No.: 8,942,107
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`least one path coupled across at least
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`first pair of contacts and at least one of
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`one of the contacts of the first pair of
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`the contacts of the second pair of
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`contacts and at least one of the
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`contacts,
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`contacts of the second pair of contacts,
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`the piece of Ethernet terminal
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`the [Feature 3] powered-off end device
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`equipment to [Feature 2] draw different
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`to [Feature 2] draw different
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`magnitudes of DC current flow via the
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`magnitudes of DC current flow via the
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`at least one path, the different
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`at least one path, the different
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`magnitudes of DC current flow to result
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`magnitudes of DC current flow to result
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`from at least one condition applied to at
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`from at least one condition applied to at
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`least one of the contacts of the first and
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`least one of the contacts of the first and
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`second pairs of contacts,
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`second pairs of contacts,
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`wherein at least one of the magnitudes
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`of the DC current flow [Feature 2] to
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`convey information about the piece of
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`wherein at least one of the magnitudes
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`of the DC current flow [Feature 2] to
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`convey information about the powered-
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`Ethernet terminal equipment.
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`off end device.
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`(Ex.1001.)
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`Multiple dependent claim 103 adds the “powered-off” limitation of claim
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`104 to claims 1-102:
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`
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`103. The piece of Ethernet terminal equipment of any one of
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`claims 1-102 and wherein the piece of Ethernet of terminal equipment
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`is a piece of powered-off Ethernet terminal equipment.
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`Case No.: IPR2016-01391
`Patent No.: 8,942,107
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`(Ex.1001.)4
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`Dependent claims 43, 103 (through 43) and 111 further specify that the
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`conveyed information “distinguishes the piece of Ethernet terminal equipment
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`from at least one other piece of Ethernet terminal equipment.”
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`43. The piece of Ethernet terminal
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`111. The powered-off end device of
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`equipment of claim 1 wherein the
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`claim 104 wherein the information to
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`information to distinguish the piece of
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`distinguish
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`the powered-off
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`end
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`Ethernet terminal equipment from at
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`device from at least one other end
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`least one other piece of Ethernet
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`device.
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`terminal equipment.
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`(Ex.1001.)
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`Claim 72 states that the magnitude of DC current that conveys information is
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`part of a “detection protocol”:
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`72. The piece of Ethernet terminal equipment of claim 1 wherein at
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`least one magnitude of the DC current is part of a detection
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`protocol.
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`4 Petitioners have not challenged the validity of each dependency of claim 103.
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`Instead, the invalidity challenge is limited to claim 103’s dependency on claims 1,
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`5, 31, 43, 70, 72, 74, 75, and 83. Claim’s 103 dependency on claims 2-4, 6-30, 32-
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`42, 44-69, 71, 73, 76-82, and 84-102 is not challenged in this IPR.
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`Case No.: IPR2016-01391
`Patent No.: 8,942,107
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`(Ex.1001.) Claim 123 is similar and depends from claim 104.
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`Claim 75 (via claim 74) states that the device has a “resistor” in the path of
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`the Ethernet terminal equipment that draws DC current and carries Ethernet data:
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`74. The piece of Ethernet terminal equipment of claim 1 wherein the
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`at least one path comprises an electrical component.
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`75. The piece of Ethernet terminal equipment of claim 74 wherein the
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`electrical component is a resistor.
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`(Ex.1001.)
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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.)
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`The parties disagree slightly on the level of skill in the art. Chrimar believes
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`that Petitioners’ use of the phrase “at least” (“at least a B.S. degree”; “at least three
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`years of experience”) is too open ended. It would result in an expert, who has a
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`Case No.: IPR2016-01391
`Patent No.: 8,942,107
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`Ph.D. and 15 years of experience, being considered an ordinary artisan. To avoid
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`this, Chrimar has eliminated the phrase “at least” in its description of an ordinary
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`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
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`network. Bulan, a telephony reference, adds complex over-current protection
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`circuitry that Hunter describes as unnecessary. (Ex.2038, ¶39.)
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`Petitioners’ second ground relies on the combination of Bloch, Huizinga,
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`and
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`the IEEE 802.3 (-93 and -95) 10Base-T and 100Base-T Ethernet
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`specifications. (Exs.1005-1009.) Bloch and Huizinga, telephony references, do
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`not mention Ethernet. (Ex.2038, ¶40.)
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`None of the prior art on which Petitioners rely describes the structure of
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`Ethernet terminal equipment, let alone the features of the claimed Ethernet
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`terminal equipment. (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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`Case No.: IPR2016-01391
`Patent No.: 8,942,107
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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