Reply in Support of Petition for Inter Partes Review of U.S. Patent No. 8,942,107
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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. IPR2016-01391
`U.S. Patent No. 8,942,107
`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
`
`
`
`
`
`
`
`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. IPR2016-01391
`U.S. Patent No. 8,942,107
`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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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
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`TABLE OF CONTENTS
`
`Page
`
`
`
`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 . 3
`IV. CHALLENGED CLAIMS ARE OBVIOUS IN VIEW OF PRIOR ART
`TEACHING PHANTOM POWER DELIVERY OVER ETHERNET DATA
`LINES ........................................................................................................... 4
`A.
`Ethernet Phantom Power Is Prior Art To The '107 Patent ................. 4
`B.
`Chrimar Did Not Invent Or Enable Ethernet Phantom Power ........... 5
`C.
`The IEEE's Standardization Of Ethernet Phantom Power Supports
`Obviousness ........................................................................................ 6
`There is No Evidence That Ethernet Signals Would be Compromised
`In the Combined Systems ................................................................... 7
`V. ALTERNATIVE POWER DELIVERY METHODS IN THE PRIOR ART
`DO NOT NEGATE OBVIOUSNESS .......................................................... 8
`A. A Combination Does Not Become Less Obvious Because It Relies On
`A Reference Teaching Alternative Embodiments.............................. 8
`The Prior Art Favored Phantom Power .............................................. 9
`B.
`C. Unused Pairs Often Were Not Readily Available .............................. 9
`VI. GROUND 1: HUNTER AND BULAN TEACH ALL LIMITATIONS OF
`
`D.
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`Petitioners' Reply Brief for IPR2016-01391
`U.S. Patent No. 8,942,107
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`C.
`
`Page
`THE CHALLENGED CLAIMS ................................................................ 10
`A. Hunter Teaches " Ethernet Terminal Equipment" ........................... 10
`B.
`Bulan's Protective Device Improves Upon The Teachings Of Hunter
` .......................................................................................................... 18
`The Hunter-Bulan Combination Teaches "Distinguishing Information"
`Conveyed by Different DC Currents, Including Information that
`Differentiates One Terminal Equipment From Another .................. 19
`The Hunter-Bulan Combination Teaches a "Detection Protocol" ... 21
`The Hunter-Bulan Combination Teaches the Claimed "Path" That
`Includes an "Electrical Component" Which is a "Resistor" ............. 22
`The Hunter-Bulan Combination Teaches "Powered-Off" Terminal
`Equipment ........................................................................................ 24
`VII. GROUND 2: BLOCH, HUIZINGA, AND IEEE TEACH ALL
`LIMITATIONS OF THE CHALLENGED CLAIMS ............................... 27
`A.
`The Bloch-Huizinga-IEEE Combination Teaches "Powered-Off"
`Terminal Equipment ......................................................................... 27
`VIII. CONCLUSION ........................................................................................... 29
`
`
`D.
`E.
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`F.
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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`
`TABLE OF AUTHORITIES
`
`
`Cases
`In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ........................................... 9
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 420-421 (2007) .................... 4
`Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
`2008) ......................................................................................................... 7
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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
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`LIST OF EXHIBITS
`
`Number
`1001
`
`Short Name
`'107 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 8,942,107 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
`8,942,107
`
`
`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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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`Short Name
`Number
`1013
`Crayford C.V.
`1014
`IEEE Press Release
`
`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"
`
`1015
`
`1016
`1017
`1018
`
`1019
`
`1020
`
`1021
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`1022
`
`1023
`
`1024
`
`1025
`1026
`
`
`
`
`Complaint
`
`'058 patent
`'152 patent
`N/A
`
`N/A
`
`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
`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.
`
`Madisetti
`Declaration
`
`Level One
`
`Pulse
`
`Valor
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`Halo
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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`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
`
`1038
`
`
`
`
`
`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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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`Short Name
`Number
`1039
`Karam
`
`
`1040
`
`1041
`
`Nootbar
`
`Love
`
`1042
`
`Nakamura
`
`1043
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`1044
`
`1045
`
`1046
`
`'012 patent
`
`'760 patent
`
`'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 8,155,012 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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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`I.
`INTRODUCTION
`Grounds 1 and 2 disclose the Challenged Claims ("Claims"), and a POSITA
`
`would have made the combinations. Relying on the evidence, the Board instituted
`
`inter partes review on both Grounds. Paper 9.
`
`In Ground 1, Hunter teaches hubs and terminal equipment ("TE") networked
`
`over standards including 10Base-T Ethernet. Pet., 7-24. 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
`
`(e.g., normal start-up versus fault). Id., 10-14. The combination teaches Claim 1,
`
`including "Ethernet terminal equipment," "Ethernet connector," "path", and
`
`"different magnitudes of DC current flow" to "convey information" about the
`
`Ethernet terminal equipment. Id., 24-42.
`
`Ground 2 confirms the Claims are obvious. Bloch teaches a telephone
`
`system delivering data and power over the same conductors. Id., 42-66. A POSITA
`
`would have been motivated to combine Bloch with the Ethernet standard, which
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`was developed based on legacy telephone systems. Id., 52-54.
`
`Unable to contest the evidence, Chrimar avoids responding to the Petition
`
`and instead, fabricates arguments that have no relation to the scope of the Claims
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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`or disregard the teachings of the asserted prior art. Chrimar's incorrect or
`
`immaterial arguments should be rejected.
`
`II. CHRIMAR RELIES ON INCORRECT PRIORITY DATE
`The earliest priority date listed on the '107 patent is an April 10, 1998
`
`provisional application filing date. Ex. 1001, 1. Chrimar has not substantiated an
`
`earlier date. Resp., 7-8, 39. Resp., 7-8, 44.
`
`III. ADDITIONAL CIRCUITRY IS NOT REQUIRED FOR
`OBVIOUSNESS
`Chrimar makes the untenable argument that obviousness requires the
`
`references be physically combined with additional circuitry that is neither required
`
`by the Claims nor mentioned in the references or the '107 patent—Bob Smith
`
`Terminations ("BST") and common mode chokes ("CMC"). Resp., 19-21.
`
`A. BST and CMC Overview
`BSTs can minimize electromagnetic emissions in devices subject to the
`
`FCC's regulations and are not relevant to the claimed inventions. They provide
`
`one way to meet "[g]overnment regulations mandate[ing] that emissions be limited
`
`to a particular level in order to minimize interferences with other apparatus."
`
`Smith 2:5-3:2. CMCs are another method. Crayford-2, ¶13.2 Dr. Madisetti
`
`clarified CMCs are used with BSTs. Ex. 1020, 144:6-18.
`
`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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`U.S. Patent No. 8,942,107
`B.
`BSTs and CMCs Are Not Relevant
`The BRI of the Claims does not require BSTs, CMCs, or compliance with
`
`any FCC regulation. Ex. 1020, 128:19-129:6, 139:4-9, 140:8-9, 133:18-19 ("[t]he
`
`words 'Bob Smith' don't explicitly appear" in the claims.). BSTs and CMCs also
`
`cannot be read into the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed
`
`Cir. 2005). Neither BSTs nor CMCs appear in the common specification to the
`
`'107 patent, '760 patent, '012 patent, and '838 patent ("Shared Specification"). Ex.
`
`1020, 142:20-143:12 (BSTs and CMCs are "specific method of implementation"
`
`that is left "to the hand of the designer."). Also, the mere mention of "pre-existing
`
`wiring or cables" in the Shared Specification does not mean the claims require
`
`BSTs or CMCs. Resp., 8, 19. The claims do not recite or otherwise require "pre-
`
`existing wiring or cables." Ex. 1020, 376:14-17. There is no evidence that "pre-
`
`existing wiring or cables" required BSTs and CMCs in April 1998. Ex. 1020,
`
`55:19-23 (Madisetti "cannot verify each and every system out there" used BSTs);
`
`80:16-20, 84:7-13, 88:19-89:2, 90:13-91:5, 115:5-14; §III.A; Crayford-2, ¶¶14-21.
`
`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 possess
`
`to implement BSTs and CMCs in Grounds 1 and 2 without damage to the circuitry.
`
`Resp., 19-21; Crayford-2, ¶¶22-23. For example, a POSITA knew in April 1998
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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`that a blocking capacitor could be used to block DC current from flowing through
`
`the BSTs. Id. Ex. 1043, 7:40-41 (Shared Specification uses capacitors for
`
`blocking current). He also knew that CMCs were available that would not saturate
`
`from the application of power and about ways to satisfy the territorial FCC
`
`emissions regulations without BSTs or CMCs. Crayford-2, ¶¶24-26; Exs. 1021-
`
`1024. A POSITA's knowledge, creativity, and common sense, must be
`
`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
`
`over Ethernet. First, to clarify, Chrimar did not invent or enable power delivery
`
`over data lines to Ethernet networks. The application of this textbook concept
`
`existed in April 1998 and later became an IEEE standard generically referred to as
`
`"Power over Ethernet" or "PoE". Ex. 1020, 190:7-20. Chrimar cannot take credit
`
`for what was known in the prior art.
`
`A. Ethernet Phantom Power Is Prior Art
`Chrimar says PoE did not exist in 1997. Resp., 8. First, 1997 is not the time
`
`of invention. §II. Second, Hunter confirms that by 1996, the concept of power
`
`delivery over Ethernet data lines ("Ethernet phantom power") was known. Hunter
`
`states "the concept of phantom power ha[d] been extended significantly to operate
`
`with data bearing-LAN buses," including the 10Base-T bus of the preferred
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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`embodiment. Hunter3, 20:14-16., 19:13-17, 20:11-16, 21:11-13, 21:22-29. The
`
`prior art cited in the '107 patent also confirms Ethernet phantom power predates
`
`Chrimar's alleged invention. For example, the Fisher '998 and '911 patents, filed
`
`May 29, 1997, teach powering an Ethernet device, such as a PC, over Cat-3 or Cat-
`
`5 twisted pair cable carrying Ethernet data. Fisher, 2:21-41, 3:49-67, 6:7-10
`
`("combined power and data signal"), 4:1-7; see also Ex. 1027 ("De Nicolo"), 1:7-9;
`
`3:5-12, Fig. 3. This shows Ethernet phantom power was well known to a POSITA.
`
`Crayford-2, ¶¶28-33; KSR, 550 U.S. at 416-17.
`
`B. Chrimar Did Not Invent Or Enable Ethernet Phantom Power
`The Shared Specification further demonstrates that Chrimar did not enable
`
`Ethernet phantom power to function with BSTs and CMCs. Resp., 8-9.
`
`The Shared Specification describes an asset tracking system with two
`
`modules communicating over conductors carrying network data (e.g. Ethernet).
`
`Ex. 1043, Figs. 1-8, 10. A remote module is attached to or integrated into a
`
`network asset such as a PC. Id., Figs. 1-4, 13-15. A central module, unaware that
`
`there may be a BST or CMC in the asset or remote module, continuously provides
`
`current to the remote module (unless of course, the two modules are unplugged
`
`from one another). Ex. 1043, 5:33-35, 5:43-48; Crayford-2, ¶35. It does not
`
`power the asset or control (selectively turn on and off) power to either the remote
`
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`3 Hunter citations reference the document's internal pagination.
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`U.S. Patent No. 8,942,107
`module or the asset. Id., 4:65-67, 5:40-48, 7:40-42, 7:48-50, 12:48-50; Crayford-2,
`
`¶35.
`
`C. The IEEE's Standardization Of Ethernet Phantom Power
`Supports Obviousness
`Chrimar attempts to fabricate skepticism about Ethernet phantom power
`
`from a selection of IEEE presentations and meeting minutes to argue a POSITA
`
`would not have made the combinations in the Grounds. Resp., 7, 26-30. First, the
`
`IEEE's analysis for determining whether Ethernet phantom power should become a
`
`standard has nothing to do with obviousness, which doesn't require meeting
`
`standardization criteria. Second, a more complete review of the IEEE documents
`
`confirms members favored phantom power and questioned the availability of
`
`unused pairs.
`
`Ethernet phantom power was so well known by 1999 (§IV.A) that the IEEE
`
`considered adopting it as a standard. Id.; Ex. 1037, 3. Chrimar's cherry-picked
`
`selection of IEEE documents paints an incomplete and inaccurate picture. Resp.,
`
`7, 26-30. Various presenters favored phantom power technology and questioned
`
`the presence of unused pairs. Crayford-2, ¶¶36-44; Exs. 1036-1042. IEEE records
`
`show it was well known that BSTs could be replaced and/or modified using simple
`
`capacitive decoupling to prevent damage. Id.; Ex. 1037, 4. Dr. Madisetti testified
`
`he does not know whether he reviewed these available IEEE documents. Ex. 1020,
`
`359:3-19. In any case, skepticism about whether Ethernet phantom power should
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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`become a standard is immaterial because there is no nexus to the claimed
`
`invention. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
`
`2008). Chrimar misses this point, and mischaracterizes the cases it cites that
`
`confirm this rule. Resp., 26.
`
`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
`
`POSITA would not have looked to the telephone arts while working on Ethernet
`
`systems. Resp., 4-8. This is disproved by Hunter, and the testimony of Mr.
`
`Crayford and Dr. Madisetti showing that Ethernet and the telephone arts are
`
`related. Hunter, 2:22-23, 15:8-13, 17:3-5, 33:19-21; Ex. 1013; Crayford-2, ¶¶45-
`
`48; Ex. 1020, 159:2-160:1.
`
`Chrimar' incorrectly concludes that the switching of R201 in Bloch would
`
`cause noise interference with the Ethernet signal. Resp., 31-33. Mr. Crayford
`
`tested this conclusion and found the communication signaling rate proposed by
`
`Bloch results in a lower frequency than the signaling rates proposed for the remote
`
`module in Chrimar's patent. Crayford-2, ¶¶49-50. Additionally, a POSITA would
`
`have known about prior art filters for segregating the higher Ethernet frequencies
`
`from the lower Bloch frequencies. Ex. 1043, 8:39-42; 10:25-27; Ex. 1020, at
`
`205:11-206:5 (filter would prevent noise from
`
`interfering with Ethernet
`
`communications); Crayford-2, ¶49. Dr. Madisetti backed away from this theory at
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`IPR2016-01391 Petitioners' Reply
`U.S. Patent No. 8,942,107
`his deposition, claiming that it was the square edges (i.e., instantaneous switching)
`
`of the waveform, not the signaling frequency, that would cause noise. Ex. 1020,
`
`204:14-205:10 (frequency does not matter). This theory is also incorrect because it
`
`wrongly assumes the instantaneous switching illustrated in Bloch Figure 7B is not
`
`only feasible but required by Bloch. Id. Crayford-2, ¶¶51-52.
`
`Chrimar's arguments about the path in Ground 1 causing saturation (Resp.,
`
`32-33) incorrectly rely on its disingenuous misrepresentations regarding Mr.
`
`Crayford's testimony. Ex. 2039, 85:2-4, 167:23-168:4, 168:20-169:4; Crayford-1,
`
`¶76; Hunter, Fig. 2; Crayford-2, ¶53.
`
`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
`
`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
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`available—is incorrect, and evidence shows phantom power was favored as much
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`as or more than unused pairs.
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`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
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`technologies, phantom power and third pair power, means a POSITA would not
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`have used phantom power in Ground 1. Resp., 22-23 In re Fulton, 391 F.3d 1195,
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`1201 (Fed. Cir. 2004). Hunter claims and describes phantom power as a "preferred
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`embodiment." Hunter, 20:24-21:9, cls. 1, 11; see also id. 22:1-23:2 (describing
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`known solutions to avoid potential interactions between power and data);
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`Crayford-2, ¶55.
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`B.
`The Prior Art Favored Phantom Power
`The prior art, including Hunter, Fisher, and De Nicolo, recognized the
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`benefits of phantom power. For example, Hunter explains: "[p]hantom powering
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`has the advantage of not requiring the installation of a dedicated power cable."
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`Hunter, 17:13-14. By contrast, "third pair powering requires a dedicated power
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`cable, increasing the cost of new installations and existing installations where a
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`dedicated power cable is not already in place." Id., 17:23-26; see also Fisher 1:19-
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`20, 1:66-2:17, 9:19-21; De Nicolo, 2:20-24, 2:31-35; Exs. 1036-1042; IV.C;
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`Crayford-2, ¶¶56-58.
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`C. Unused Pairs Often Were Not Readily Available
` Chrimar wrongly assumes that 10BASE-T and 100BASE-T using Cat-3 and
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`Cat-5 cables with RJ-45 connectors necessarily meant there were always 4 pairs
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`available, two of which were used. Resp., 22-25. Yet, Dr. Madisetti agreed that he
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`"wouldn't say all" of the "Ethernet infrastructure existing at the time of the
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`invention was exclusively four pair." Ex. 1020, 343:3-12. In April 1998, there
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`were Cat-3 and Cat-5 cables with only 2 pairs, which were both used for data.
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`Crayford-2, ¶60; Ex. 1031. A POSITA would not assume that an RJ-45 connector
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`with 8 pins necessarily has 8 wires (4 pairs) connected. Resp., 23-25; Crayford-2,
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`¶61; Ex. 1006, 266; Ex. 1008, 214 (showing those pins as not used and not
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`populated). Dr. Madisetti claims was not aware that 2-pair Cat-3 and Cat-5
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`cables existed in 1998. Ex. 1020, 348:1-13.
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`Also, the 10BASE-T standard used cables with 25 pairs of wire in April
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`1998. Crayford-2, ¶62; Ex. 1006, 265 (14.4.3.1.1). Mr. Crayford testified that
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`there would not be unused pairs in a 25-pair cable (Ex. 2039, 146:6-147:13), but
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`Dr. Madisetti claims he was not aware of this. Ex. 1020, 345:21-346:7; 363:1-9;
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`364:21-365:5; §IV.C.
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`VI. GROUND 1: HUNTER AND BULAN TEACH THE CLAIMS
`A. Hunter Teaches "Ethernet Terminal Equipment"
`Chrimar incorrectly disputes that Hunter teaches "Ethernet terminal
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`equipment." Resp., 33-39, 46.
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`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 '107 patent. Resp., 34.
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`Chrimar also misread Hunter narrowly to argue that it only teaches 10Base-T and
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`100Base-T conductors, not standards. Resp., 55-56.
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`Hunter, however, discloses 10Base-T, 100Base-T4, and
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`isoEthernet
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`standards that all teach the "Ethernet" limitation. Pet., 24-26. Referring to the
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`phantom power embodiment, Hunter states "[o]ne standard that employs this
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`arrangement [a bus comprising two twisted-pair conductors] is 10Base-T." Hunter,
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`26:3-6. Hunter also teaches 10Base-T equipment. Crayford-2, ¶66. For example,
`
`Hunter discloses a "10Base-T hub 170." Id., 34:18-20; Fig. 1. "Multimedia hub
`
`120" is connected to "10Base-T hub 170" and handles "bridging among standards."
`
`Id., Fig. 1, 32:16-33:2. Multimedia hub 120 has a "10base-T hub repeater." Id.
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`Hunter also teaches "a 10Base-T LAN system." Id., 23:16-17. One objective of
`
`Hunter is "compatibility … with existing standards," which included 10Base-T
`
`(1993) and 100Base-T (1995). Id.; Exs. 1006-1008.
`
`Hunter's disclosure of isoEthernet also teaches Ethernet. Hunter, 19:2-8,
`
`15:17-18. IsoEthernet, defined by the IEEE 802.9a standard, includes both
`
`10Base-T and ISDN modes. Hunter, 23:21-24; Ex. 1010, 165; Ex. 1032, 377;
`
`Crayford-2, ¶67.
`
`b. Hunter Teaches "Terminal Equipment" and "End
`Device"
`Hunter teaches an Integrated Services Terminal Equipment ("ISTE") card
`
`receives and transmits data over a 10Base-T bus. Pet., 24-26. Figure 2 depicts an
`
`4 Chrimar agrees 10Base-T and 100Base-T teach "Ethernet." Resp., 18.
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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
`
`data for other equipment. Hunter, Fig. 2; Crayford-2, ¶68. The IsoEthernet
`
`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
`
`information." Ex. 1032, 20. A POSITA would understand that both ISDN and
`
`10Base-T Ethernet data terminate at the Hunter ISTE. Crayford-2, ¶68.
`
`Chrimar's argument that the ISTE is an "intermediate hub" is incorrect.
`
`Resp., 34-35. 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 107 patent states "Ethernet data
`
`terminal equipment" includes a PC. Ex. 1001, cl. 2; Paper 7, 32. In April 1998,
`
`PCs could be intermediate devices. Crayford-2, ¶69. For example, Hunter Figure
`
`1 shows PC 125 connected on one side to Multimedia Hub 120 and on the other
`
`side to multiple devices, including video camera 126 and telephone instrument
`
`127. Id.; Hunter, Fig. 1; 32:16-22.
`
`Dr. Madisetti himself testified that "Ethernet terminal equipment" can
`
`include intermediate devices.5 He prepared an annotated version of Figure 4 from
`
`5 Chrimar uses "Ethernet terminal device" to reference: "Ethernet Terminal
`
`Equipment" ('107). Ex. 1020, 338:4-339:2.
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`the Shared Specification during his deposition (reproduced below) which shows
`
`"Ethernet terminal equipment" can include a remote module, a PC or Phone device,
`
`and associated connectors. Ex. 1034. Also reproduced below is Petition Figure 1,
`
`in which Mr. Crayford explained "the rightmost 297 connector and everything to
`
`the right of it is the -- what we called terminal equipment or data terminal
`
`equipment." Ex. 2039, 84:6-9. The similarities between the two figures confirm
`
`Hunter's disclosure mirrors the embodiment in Figure 4. Like Figure 4, Hunter
`
`shows terminal equipment consisting of a remote module (ISTE 260) that is
`
`connected to a PC/Phone Device (Voice Instrument 299). Hunter, Fig. 2.
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`
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`Ex. 1034.
`
`Chrimar incorrectly assumes Hunter's phantom power-circuit does not
`
`connect to the Voice Instrument attached to the ISTE. Resp., 37. However, the
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`power supplied to the ISTE in Hunter powers the Voice Instrument. Hunter,
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`38:25-27 ("[V]oice instrument 299 is … couplable to the equipment 260 and
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`receives both data and power therefrom."). This means that the path delivering
`
`power to the ISTE continues to the Voice Instrument. Crayford-2, ¶71; Crayford-
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`1, ¶102.
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`c.
`Hunter Teaches Phantom Powering Ethernet
`Terminal Devices
`Hunter teaches phantom powering an ISTE card over a 10Base-T bus. Pet.,
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`24-26. The ISTE card can be in various hubs, including a 10Base-T hub. Hunter,
`
`Fig. 1. A POSITA would understand that the hubs themselves can phantom power
`
`devices connected to them. Crayford-2, ¶72. Chrimar disputes these teachings and
`
`incorrectly contends the ISTE card can only be in Hub 150 and the phantom power
`
`source can only be in Hub 120. Resp., 34-39.
`
`Hunter plainly states multiple ISTEs can be powered and "each of the hubs
`
`[in Figure 1] would contain one of the cards otherwise located in the multimedia
`
`chassis 110." Hunter, 32:9-11, 42:21-23. Therefore, a POSITA would understand
`
`that a power source, which Chrimar agrees can be in Hub 120, is capable of
`
`providing power to ISTEs located in the PC and Hubs connected to Hub 120. Id.,
`
`Figs. 1, 2; Crayford-2, ¶73. For example, Hunter explains Multimedia Hub 120
`
`has isoEthernet interfaces that couple it to PC 125 and telephone instrument 127.
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`Hunter, 32:16-22. These interfaces allow power and data transfer just as Voice
`
`Instrument 299 receives power and data from ISTE card 260 in Fig. 2. Id., Fig. 2,
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`38:25-27; Crayford-2, ¶73.
`
`Chrimar acknowledges there must be an ISTE Card in Hub 150 because it is
`
`connected to a telephone in Figure 1 just as ISTE Card 260 is connected to a
`
`telephone in Figure 2. Resp., 39. This same reasoning applies to PC 125 and Hub
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`160 that are connected to telephones. Hunter, Fig. 1. A POSITA would
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`understand that Hub 150, Hub 160, and PC 125 each connect Multimedia Hub 120
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`to a telephone and each have an ISTE Card to separate LAN data from voice data
`
`as shown in Figure 2. Crayford-2, ¶74.
`
`A POSITA would also understand that the power source can be located in
`
`any of the hubs. Crayford-2, ¶75. For example, 10Base-T hub 170 connects to as
`
`many as 24 devices. Hunter, 34:18-19 ("10Base-T hub 170 provides 24 SNMP-
`
`managed 10 Base-T ports."). A POSITA would understand a power source in Hub
`
`120 would be unable to power all the connected Hubs and the dozens of devices
`
`connected to them. Crayford-2, ¶75. Accordingly, a POSITA reading Hunter
`
`would understand the hubs themselves could include power sources for phantom
`
`powering associated devices. Id.; Hunter, 19:2-7.
`
`d. Hunter Figures 1 and 2 Teach Non-Limiting
`Embodiments
`Chrimar's attempt to narrowly read Hunter as limited to the explicitly
`
`illustrated systems in Figures 1 and 2, as it combines (Resp. 38-39), should be
`
`disregarded. Contrary to Chrimar's mischaracterization (Resp., 38), when asked
`
`where the "hub side, [of Hunter Fig. 2] would be located in [Hunter] Figure 1," Mr.
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`Crayford responded "it would be inside, for instance, the 10BASE-T hub 170 or it
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`would be on a 10BASE-T line card in 110." Ex. 2039, 117:19-118:3; see also
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`Hunter, 32:9-11 ("each of the hubs would contain one of the cards [for example
`
`ISTE Card 260] otherwise located in the multimedia chassis 110.")
`
`Hunter's disclosure is not restricted to the illustrated systems in Figure 2 as
`
`Chrimar assumes. Resp., 38-39. Rather, Hunter is designed to power "equipment
`
`coupled to the local area network." Hunter, 19:2-7, 21:11-13. The ISTE is an
`
`example of this equipment and the connectors in Figure 2 are just one embodiment.
`
`Id., 23:18-20. Hunter teaches that connectors can be inserted along the first and
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