Paper No. 9
`
`Trials@uspto.gov
`Filed: December 22, 2016
`
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01391
`Patent 8,942,107 B2
`____________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`Filed: December 22, 2016
`
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01391
`Patent 8,942,107 B2
`____________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2016-01391
`Patent 8,942,107 B2
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`I. INTRODUCTION
`Juniper Networks, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–19 to institute an inter partes review of claims
`1, 5, 31, 43, 70, 72, 74, 75, 83, 103, 104, 111, 123, and 125 (“the challenged
`claims”) of U.S. Patent No. 8,942,107 B2 (“the ’107 patent,” Ex. 1001),
`filed February 10, 2012.1 The Petition is supported by the Declaration of Ian
`Crayford (“Crayford Declaration,” Ex. 1002). ChriMar Systems, Inc.
`(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.,” Paper 7).
`We have jurisdiction under 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim. We institute an inter partes review
`of claims 1, 5, 31, 43, 70, 72, 74, 75, 83, 103, 104, 111, 123, and 125. The
`Board has not made a final determination of the patentability of any claim.
`A. Related Proceedings
`Petitioner advises us that the ’107 patent is the subject of fifty one
`(51) civil actions filed in the Eastern District of Michigan, Eastern District of
`Texas, and Northern District of California. Pet. 1 (citing Docket Navigator
`printout dated July 7, 2016, Ex. 1012). Petitioner is a defendant in Chrimar
`Systems, Inc., et al. v. Juniper Networks, Inc., Case No. 3:16-cv-558 (N.D.
`
`
`1 The cover page of the ’107 patent alleges it is a “[C]ontinuation of
`application No. 12/239,001, filed on Sep. 26, 2008, now Pat. No. 8,155,012,
`which is a continuation of application No. 10/668,708, filed on Sep. 23,
`2003, now Pat. No. 7,457,250, which is a continuation of application No.
`09/370,430, filed on Aug. 9, 1999, now Pat. No. 6,650,622, which is a
`continuation-in-part of application No. PCT/US99/07846, filed on Apr. 8,
`1999.” Ex. 1001 (63).
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`Cal.).2 Id. The ’107 patent is also the subject of a pending inter partes
`review, AMX, LLC, and Dell Inc. v. Chrimar Systems, Inc., IPR2016-00569
`(“’569 IPR”).3 Id.
`Patent Owner identifies twenty nine (29) related actions. Paper 7, 2–
`3.4 Patent Owner cites specifically to Chrimar Systems, Inc., et al. v.
`ADTRAN, Inc., et al., Civil Action No. 6:15-cv-618-JRG-JDL (E.D. Tex.)
`(the ’618 lawsuit”),5 Chrimar Systems, Inc., et al. v. Alcatel-Lucent, et al.,
`Civil Action No. 6:15-cv-163-JDL (E.D. Tex.) (the “’163 lawsuit”), and
`Chrimar Systems, Inc., et al. v. AMX LLC., No. 6:13-cv-881-JDL (E.D.
`Tex.) (the “’881 lawsuit”) (collectively the “District Court”) as having
`construed several terms of the ’107 patent and several of Patent Owner’s
`related patents sharing a common specification. Prelim. Resp. 3 n4, 12–13.
`B. The ’107 Patent (Ex. 1001)
`The ’107 patent “relates generally to computer networks and, more
`particularly, to a network management and security system for managing,
`tracking, and identifying remotely located electronic equipment on a
`network.” Ex. 1001, 1:27–30. The ’107 patent is “adapted to be used with
`
`
`2 Patent Owner advises us that this lawsuit is stayed. Prelim. Resp. 3.
`3 We instituted trial in the ’569 IPR on August 10, 2016. ’569 IPR, Paper
`19. Trial was terminated as to Petitioner AMX LLC only on November 9,
`2016. Id. at Paper 27.
`4 37 C.F.R. § 42.8(b)(2) requires identification of “any other judicial or
`administrative matter that would affect, or be affected by, a decision” in this
`proceeding. As the rule requires, both parties need to insure that all related
`matters are listed accurately.
`5 Though Patent Owner represents the ’618 lawsuit included constructions of
`terms from the ’107 patent, the record does not reflect any such
`constructions. See Prelim. Resp. 3 n.4.
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`an existing Ethernet communications link or equivalents thereof.” Id. at
`3:41–43.
`Specifically, a communication system generates and monitors data
`relating to the electronic equipment on a network using “pre-existing wiring
`or cables that connect pieces of networked computer equipment to a
`network.” Ex. 1001, 3:24–27. In a first embodiment, the system includes a
`remote module attached to the electronic equipment being monitored. Id. at
`3:27–30. The remote module transmits a low frequency signal containing
`equipment information to a central module over the cable. Id. The central
`module “monitors the low frequency data to determine the transmitted
`information from the electronic equipment.” Id. at 3:30–33. The first
`embodiment communicates only identification information related to the
`equipment. Id. at 4:54–59. However, the invention contemplates collection
`of other “more general information such as identification of the equipment
`processor type and the equipment harddrive [sic] capacity.” Id.
`The communication or monitoring of the network equipment is
`accomplished “over preexisting network wiring or cables without disturbing
`network communications.” Ex. 1001, 12:1–7. This is accomplished “by
`coupling a signal that does not have substantial frequency components
`within the frequency band of network communications.” Id.
`C. Illustrative Claims
`Of the challenged claims, claims 1 and 104 are independent apparatus
`claims. Claims 5, 31, 43, 70, 72, 74, 75, 83, and 103 depend directly or
`indirectly from claim 1. Claims 111, 123, and 125 depend from claim 104.
`Claims 1 and 104 are reproduced below:
`1. A piece of Ethernet terminal equipment comprising:
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`an Ethernet connector comprising:
`
`first and second pairs of contacts used to carry Ethernet
`communication signals,
`
`at least one path for the purpose of drawing DC current, the
`at least one path coupled across at least one of the contacts of
`the first pair of contacts and at least one of the contacts of the
`second pair of contacts, the piece of Ethernet terminal
`equipment to draw different magnitudes of DC current flow via
`the at least one path,
`
`the different magnitudes of DC current flow to result from at
`least one condition applied to at least one of the contacts of the
`first and second pairs of contacts,
`
`wherein at least one of the magnitudes of the DC current
`flow to convey information about the piece of Ethernet terminal
`equipment.
`
`Ex. 1001, 17:11–25.
`
`
`104. A powered-off end device comprising:
`
`
`an Ethernet connector comprising first and second pairs of
`contacts,
`
`at least one path for the purpose of drawing DC current, the
`at least one path coupled across at least one of the contacts of the
`first pair of contacts and at least one of the contacts of the second
`pair of contacts,
`
`the powered-off end device to draw different magnitudes
`of DC current flow via the at least one path, the different
`magnitudes of DC current flow to result from at least one
`condition applied to at least one of the contacts of the first and
`second pairs of contacts,
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`wherein at least one of the magnitudes of the DC current
`flow to convey information about the powered-off end device.
`
`Id. at 22:17–29.
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 5, 31, 43, 53, 58, 70, 72, 75, 83,
`84, 103, 104, 111, 123, and 125 of the ’107 patent as unpatentable on
`the following grounds. Pet. 7–66.
`Claims Challenged
`References
`Basis
`Hunter6 and Bulan7
`§ 103(a) 1, 5, 31, 43, 70, 72, 74, 75, 83,
`103, 104, 111, 123, and 125
`§ 103(a) 1, 5, 31, 43, 70, 72, 74, 75, 83,
`103, 104, 111, 123, and 125
`
`Bloch,8 Huizinga,9 and
`IEEE 802.310
`
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms are given their broadest
`reasonable interpretation in light of the Specification in which they appear.
`See
`
`
`6 WO 96/23377, Richard K. Hunter et al., published August 1, 1996,
`(“Hunter,” Ex. 1003).
`7 US 5,089,927, Sergio Bulan et al., issued February 18, 1992, (“Bulan,” Ex.
`1004).
`8 US 4,173,714, Alan Bloch et al., issued November 6, 1979 (“Bloch,” Ex.
`1005).
`9 US 4,046,972, Donald D. Huizinga et al., issued September 6, 1977
`(“Huizinga,” Ex. 1009).
`10 IEEE Standard 802.3-1993 (“IEEE-93,” Ex. 1006) and IEEE Standard
`802.3-1995, Parts 1 and 2 (“IEEE-95,” Ex. 1007 (Part 1) and Ex. 1008 (Part
`2)), collectively “IEEE 802.3.”
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`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016). We presume that claim terms have their ordinary and
`customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1061-
`62 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of
`the claim must be given their plain meaning, unless such meaning is
`inconsistent with the specification and prosecution history”) (internal
`citation omitted); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Any special definition for a claim term must be set forth in the
`Specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`special definition or other consideration, “limitations are not to be read into
`the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993).
`Petitioner identifies two terms for construction. Pet. 11–12. Patent
`Owner identifies six claim terms construed in the ’163 and ’881 lawsuits,
`which are provided for “guidance,” and three we construed in the ’569 IPR.
`Prelim. Resp. 12–15. Patent Owner does not otherwise propose any claim
`term for construction.
`Most of the terms construed in the ’163 and ’881 lawsuits do not
`appear to be in controversy and do not require express construction at this
`stage. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (only those terms which are in controversy need to be
`construed and only to the extent necessary to resolve the controversy). Our
`review of the issues presented and the arguments of the parties show the
`construction of following terms require construction.
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`1. “path coupled across” (claims 1 and 104)
`Claims 1 and 104 recite, in part, “at least one path coupled across at
`least one of the contacts of the first pair of contacts and at least one of the
`contacts of the second pair of contacts.” Petitioner does not propose a
`construction for “path coupled across.” Patent Owner submits, without
`proposing, both the ’163 lawsuit and ’569 IPR constructions of “path
`coupled across.” Prelim. Resp. 13–15.
`The term “path coupled across” appears in the Abstract and claims 1
`and 104, but nowhere else in the written description of the ’107 patent. In
`support of its construction, the District Court in the ’163 lawsuit cited to the
`claim language and agreement of the experts. Ex. 2021,11 20–22 (citing Ex.
`1001, 22:17–29 (claim 104).
`We recognize that Petitioner was not a party to the ’163 lawsuit.
`However, Petitioner has not proposed a construction for the term. We agree
`with the District Court that “the claim makes clear that the claimed path is
`‘for the purpose of drawing DC current.’” Ex. 2021, 21–22. We are
`persuaded that, at this stage of this proceeding, the broadest reasonable
`interpretation is the same as the District Court construction, and we construe
`the term “path coupled across” to mean “path permitting energy transfer.”
`2. “pairs of contacts” (claims 1 and 104)
`Claims 1 and 104 recite, in part, “an Ethernet connector comprising
`first and second pairs of contacts used to carry Ethernet communication
`signals, at least one path for the purpose of drawing DC current.” Neither
`
`
`11 Chrimar Systems, Inc. et al., v. Alcatel-Lucent USA, Inc. et al., Case No.
`6:15-cv-163-JDL, Memorandum Opinion and Order (E.D. Tex. Mar. 28,
`2016).
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`party proposes a construction for the term. We construed the term in the
`’569 IPR to mean “at least two contacts which define a path for carrying
`electrical signals.” ’569 IPR, Paper 19, 8–10. Patent Owner cites to the
`construction in the ’569 IPR. Prelim. Resp. 15. Again, we recognize that
`Petitioner was not party to the ’569 IPR. However, Petitioner has not
`proposed a construction for the term.
`The claim language itself recites, in pertinent part:
`an Ethernet connector comprising first and second pairs of
`contacts used to carry Ethernet communication signals, . . .
`at least one path coupled across at least one of the contacts of the first
`pair of contacts and at least one of the contacts of the second pair of
`contacts. Emphasis added.
`
`
`The plain meaning of the claim language leads us to conclude the first
`and second pairs of contacts are part of a “path” for carrying “Ethernet
`communications signals” and drawing DC current. This interpretation is
`supported by the written description of the ’107 patent. See, e.g., Ex. 1001,
`5:34–38 (“Each pair of transmit wires and each pair of receive wires thereby
`form a current loop through one of the personal computers 3A through
`3D.”).
`On this record, we adopt the construction of “at least two contacts
`which define a path for carrying electrical signals” from the ’569 IPR as the
`broadest reasonable interpretation of “pairs of contacts.”
`3. “powered off” (claims 103 and 104)
`
`Claim 103 is a multiple dependent claim which, for purposes of this
`proceeding, depends on challenged claims 1 and 31, and recites “wherein the
`piece of Ethernet of terminal equipment is a piece of powered-off Ethernet
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`terminal equipment.” Petitioner proposes that “powered-off,” alone and in
`conjunction with claimed devices, e.g., “Ethernet terminal equipment,”
`means “without operating power.” Pet. 5–6. Petitioner qualifies its proposal
`by arguing “‘powered-off’ does not mean entirely removed from the
`application of power. Id. (citing Ex. 1001, claims 103 and 104; Ex. 1002
`¶¶ 52–55). We need not address Petitioner’s qualification in construing the
`term in part because the qualification is not necessary to resolve the
`controversy at this stage. Further, Patent Owner agrees with the proposed
`construction without arguing the qualification, citing the District Court
`construction from the ’163 lawsuit and our construction in the’569 IPR.
`Prelim. Resp. 14–15 (citing Ex. 2021, 18–20; ’569 IPR, Paper 19, 10).
`The parties have no disagreement and the proposal is consistent with
`the plain language of the claims. Thus, on this record, we interpret
`“powered off” to mean “without operating power.”
`4. “BaseT” (claim 5)
`Claim 5 depends from claim 1 and recites additionally “wherein the
`Ethernet communication signals are BaseT12 Ethernet communication
`signals.” Petitioner proposes that “BaseT” should be construed as
`“10BASE-T and 100BASE-T.” Pet. 6. Petitioner contends the specification
`of the ’107 patent uses the term “BaseT” as part of the larger phrase
`“10BASE-T.” Id. (citing Ex. 1001, 12:19–29). In addition, Petitioner cites
`to the specification’s references to “existing Ethernet communications” as
`
`
`12 “BaseT,” “BASE-T,” and “Base-T” are all used in various parts of the
`record but we determine they all reference the same Ethernet standard.
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`broad enough to include 100BASE-T. Id. (citing Ex. 1001, 3:40:42; see also
`Ex. 1007, 2 (“Type 100BASE-T”);13 Ex. 1002 ¶ 54).
`Patent Owner cites to the District Court’s construction in the ’163
`lawsuit. Prelim. Resp. 14 (citing Ex. 2021, 16–18). The District Court
`construed the term as meaning “twisted pair Ethernet in accordance with the
`10BASE-T or 100BASE-T standards.” Ex. 2021, 18.
`We agree with the District Court that the specification lacks any
`special definition of Base-T. Ex. 2021, 17. The record before the District
`Court included evidence “that it was commonly known that ‘Base’ refers to
`baseband and ‘T’ designates twisted pair cabling, and that ‘BASE-T’
`standards were known in the art at the time of invention.” Id. Exhibit 1007,
`IEEE Standard 802.3-1995, does define “100BASE-T” and “10BASE-T.”
`Ex. 1007 ¶¶ 1.4.2 and 1.4.14. The definition of “100BASE-T” does not
`include reference to a “twisted pair,” while the definition of “10BASE-T”
`does. Id. We agree with the District Court’s analysis that “Base-T”
`references a baseband and a twisted pair cable. 10Base-T and 100Base-T,
`MICROSOFT COMPUTER DICTIONARY, 2 (Microsoft Press 5th ed. 2002)14
`(Ex. 3001).
`Thus, on this record and at this stage of the proceeding, we determine
`that the broadest reasonable construction of “BASE-T,” consistent with the
`specification and the knowledge of a person of ordinary skill in the art, is
`
`
`13 There is no reference to “Type 100BASE-T” at page 2 of Exhibit 1007,
`but “100BASE-T” and “10BASE-T” are defined at pages 5 and 6. See Ex.
`1007, ¶¶ 1.4.2 and 1.4.14.
`14 Defining both 10Base-T and 100Base-T, in part, as “an Ethernet standard
`for baseband LANs (local area networks) using twisted-pair cable.” Ex.
`3001, 2.
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`“twisted pair Ethernet in accordance with the 10BASE-T or 100BASE-T
`standards.”
`B. Obviousness Analysis
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The parties’ positions on the level of ordinary skill in the art are
`substantially similar. Petitioner argues “the person of ordinary skill in the
`art at the time of the alleged invention would have had at least a B.S. degree
`in electrical engineering or computer science, or the equivalent, and at least
`three years of experience in the design of network communication products.”
`Pet. 5 (citing Ex. 1002 ¶¶ 49–51). Patent Owner’s proposal is similar,
`differing in specifying that the experience would be in “data-
`communications networks, such as Ethernet networks.” Prelim Resp. 10–11.
`Patent Owner contends the person having ordinary skill “would also be
`familiar with data-communications protocols and standards.” Id. at 11.
`On this record, and at this stage of the proceeding, we determine the
`level of ordinary skill as a person having at a minimum an undergraduate
`degree in electrical engineering or computer science, or the equivalent, and
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`at least three years of experience with network communication products and
`the relevant standards and protocols.
`C. Obviousness over Hunter and Bulan
`Petitioner alleges claims 1, 5, 31, 43, 70, 72, 74, 75, 83, 103, 104, 111,
`123, and 125 would have been obvious to the person of ordinary skill in the
`art over Hunter and Bulan. Pet. 7–42. Petitioner cites the Crayford
`Declaration in support of its positions. See Ex. 1002 ¶¶ 63–142. Patent
`Owner denies the challenged claims are obvious over Hunter and Bulan.
`Prelim. Resp. 15–27.
`1. Hunter (Exhibit 1003)
`Hunter discloses “[a] power subsystem and method for providing
`phantom power and third pair power via a computer network bus.” Ex.
`1003, Abstract. Phantom power is power that may be routed through the
`same cable employed to carry data through the network. Id. at 17:2–5.
`Phantom powering is employed in telephone systems. Id. “In a preferred
`embodiment of the first aspect of the present invention, the bus comprises a
`10Base-T bus.” Id. at 21:17–18.
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`Figure 2 of Hunter is reproduced below.
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`
`Figure 2 is a schematic diagram of a phantom powering subsystem 200. Ex.
`1003, 35:21–23. “The phantom powering subsystem 200 comprises a power
`supply 210 having a positive output 211 and a negative output 212.” Id. at
`35:27–29. The subsystem also includes first and second transformers 220
`and 230 with windings having end taps and center taps 224, 234. Id. at
`36:1–6. First and second twisted-pair conductors 240 and 250 are connected
`to the respective end taps of the transformers “to allow data communication
`therebetween.” Id. at 36:7–12.
`One of the twisted pairs is employed for transmitting data from
`equipment 260 (Integrated Services Terminal Equipment, “ISTE”) while the
`other twisted pair is used for receiving data into the equipment. Ex. 1003,
`23:18–21, 37:22–26. “The subsystem further comprises a protective device
`213 coupled to the power supply 210 to prevent power exceeding a desired
`amount from passing through the protective device 213.” Id. at 38:12–15.
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`2. Bulan (Exhibit 1004)
`Bulan discloses a current control apparatus for supplying direct
`current flow from a source of power via a transmission line to a
`telecommunications terminal apparatus “being continuously operable while
`drawing a load current which is exceeded by an inrush current being greater
`than the load current at a moment of power up.” Ex. 1004, 2:17–23. Bulan
`is used in a network having terminal equipment (“TE”) which includes a DC
`to DC converter (“DC-DC”) in a well-known phantom power feed
`arrangement. Id. at 1:52–56, 3:53–56, 4:2–10.
`“The current control apparatus is for connection in series between the
`power source and the transmission line.” Ex. 1004, 2:23–25. A current path
`switch is placed between the power source and the transmission line. Id. at
`4:17–25.
`Figure 2 of Bulan is reproduced below.
`
`
`Figure 2 is a schematic diagram of a line interface circuit for coupling
`current from the power source. Id. at 4:17–22. As depicted in Figure 2, a
`static reference generator provides a stable voltage supply on a lead for use
`by a dynamic reference generator and the current path switch. Id. at 4:25–
`30. The dynamic reference generator generates a control signal for use by
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`the current path switch. Id. at 4:33–36. The current path switch is required
`to provide a current path which at any one time is of a very low impedance,
`or alternately is of a much higher impedance, in accordance with operation
`of the TE connected to the network. Id. at 4:35–40.
`Current exceeding Bulan’s static limit, set by the static reference
`generator, is detected by the current sensor indicating a current inrush
`condition. Ex. 1004, 3:5–12, 4:23–24, 5:37–39. Bulan responds to this
`magnitude of current by setting a high limit on the inrush current. Id. at
`2:31–36, 3:7–12, 5:42–46. When the TE’s DC-DC has finally completed its
`startup, the TE can draw operating power and proceed to draw a normal
`operating current that remains below Bulan's static limit. Id. at 2:2, 3:5–6.
`If “during start up there are several inrushes, the maximum permitted
`current will return to a high point of slightly more than the current which
`was permitted just before the envelope returned to the normal load current
`level.” Ex. 1004, 7:7–13. “This may happen several times, as may be
`peculiar to the particular terminal equipment being connected to the line.”
`Id.
`
`3. Petitioner’s Obviousness Arguments Based
`on Hunter and Bulan
`
`Petitioner’s arguments and evidence that the challenged claims are
`unpatentable over Hunter and Bulan are discussed below.
`
`a. Independent Claims 1, 104, and Dependent Claim 103
`Petitioner contends that “[c]laims 1 and 104 recite identical language,
`except that claim 104 refers to a ‘powered-off end device’ instead of the
`‘piece of Ethernet terminal equipment’ in claim 1.” Pet. 41. Claim 103
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`depends from claim 1, among other claims, and recites the same limitation
`present in independent claim 104. See id. at 41–42.
`Addressing the preamble of claim 1 reciting “[a] piece of Ethernet
`equipment,” Petitioner alleges the ISTE of Hunter is “‘Ethernet terminal
`equipment’ because (10Base-T) Ethernet data transmissions can originate
`and terminate there.” Pet. 24 (citing Ex. 1003, 37:19–28 (“[T]he bus [to the
`ISTE] comprises a 10Base-T bus.”)). Petitioner concludes it would have
`been obvious to a person of ordinary skill in the art to “implement the
`teachings of Hunter with terminal equipment other than the exemplary ISTE,
`and/or with a bus applying other Ethernet standards (such as 100Base-T).”
`Id. at 25.
`Claim 1 next recites “an Ethernet connector comprising first and
`second pairs of contacts used to carry Ethernet communication signals.”
`Hunter teaches that “one of the twisted- pairs (say, 250) is employed for
`transmitting data from the equipment 260, while the other of the twisted-
`pairs (say, 240) is used for receiving data into the equipment 260." Ex.
`1003, 7:19–26. Petitioner cites the preceding from Hunter as well as Figure
`2, reproduced above, as showing “the TE includes an Ethernet connector
`with a first and second pair of contacts for connecting to each of the two
`twisted-pairs (which are used to carry both power and Ethernet
`communication signals).” Pet. 26–27 (citing Ex. 1003, 38:21–25, Fig. 2
`(“connectors 297”)).
`Addressing the limitation of “at least one path for the purpose of
`drawing DC current” recited in claim 1, Petitioner relies on the combined
`circuit of Hunter and Bulan annotated as “Petition Figure 3” from page 15 of
`the Petition, which is reproduced below.
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`Petition Figure 3 includes Figure 2 of Hunter (reproduced above in II.C.1)
`modified by substituting the current control apparatus from Figure 2 of
`Bulan (reproduced above in II.C.2) for the protective device 213 from Figure
`2 of Hunter. Pet. 15 (citing Ex. 1002 ¶ 155). Petitioner argues “[t]he
`purpose of Hunter's phantom-powering system is to permit the TE to draw
`DC current from the same twisted-pairs it uses to communicate Ethernet
`data.” Id. at 27 (citing Ex. 1003, 21:27–29). Referencing Petition Figure 3,
`Petitioner traces the flow of DC current, shown in red with arrows indicating
`direction, from phantom power source 210 to the TE (ISTE Card) and back.
`Id. at 27–28.
`Claim 1 next recites “the at least one path coupled across at least one
`of the contacts of the first pair of contacts and at least one of the contacts of
`the second pair of contacts.” Petitioner relies on the showing made above
`for “at least one path for the purpose of drawing DC current.” Pet. 28 (citing
`Ex. 1002 ¶ 103). Petitioner cites to its showing regarding coupling of
`contacts. Id.; see also id. at 27 (describing the current path “through a
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`Case IPR2016-01391
`Patent 8,942,107 B2
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`contact in ‘CONNECTOR ON ISTE’ 297 . . . through the TE device . . .
`through the TE's ‘center tap 274,’ through a contact in ‘CONNECTOR ON
`ISTE’ 297 . . . ”).
`Addressing the limitation of the “piece of Ethernet equipment to draw
`different magnitudes of DC current flow via the at least one path” recited in
`claim 1, Petitioner argues both Hunter and Bulan have a DC-to-DC-
`converter (“DC-DC”). Pet. 28 (citing Ex. 1003, 39:5–6; Ex. 1004, 1:52–56).
`The Crayford Declaration states that the DC-DC converters of the references
`are “to convert the phantom power supplied via the twisted-pair Ethernet
`cable into suitable operating power for the TE.” Ex. 1002 ¶ 104. Petitioner
`relies on the preceding to meet the recited limitation because both references
`include DC-DC and because the TE’s “current draw is regulated by the
`Bulan current control apparatus in the Hub, the TE will draw different
`magnitudes of DC current flow via the at least one path.” Pet. 28–29.
`More specifically, Petitioner asserts that when power is first applied to
`Bulan’s current control circuit the DC-DC will draw an inrush of current
`which rises to the static current limit and then to the dynamic current limit.
`Pet. 29 (citing Ex. 1004, 1:57–65 (“[t]he surge of current ... required to
`initiate operation of the typical [DC-DC]”), 3:3–12 (static and dynamic
`current limits), 5:36–46, 6:36–38). Petitioner asserts that Bulan then
`switches to high impedance in the current path, forcing the current to a
`“trickle” level and then to zero. Id. at 29 (citing Ex. 1004, 3:13–21, 4:35–
`40, 6:36–51). In the next step, Petitioner argues Bulan determines that when
`the current in the circuit goes to zero it is indicative of the DC-DC startup
`and not an operational fault, like a short circuit, which would continue to
`draw a trickle current. Id. (citing Ex. 1004, 1:23–29, 1:57–65, 2:1–14, 3:22–
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`25, 6:46–51). Petitioner concludes by asserting Bulan meets the limitation
`by switching the high impedance out of the current path so the DC-DC may
`startup, reaching “the normal operating current level of the TE if current
`stays within the static and dynamic limits.” Id. at 30. Alternatively,
`Petitioner argues if the static and dynamic limits are exceeded, then further
`iterations are done until the DC-DC completes startup. Id. (citing Ex. 1004,
`4:67–5:1, 6:52–58, 6:65–7:14 (The procedure may repeat “several times, as
`may be peculiar to the particular terminal equipment being connected to the
`line.”). The preceding steps performed by Bulan’s current control apparatus
`are also detailed at pages 21 through 24 of the Petition and paragraphs 89
`through 97 of the Crayford Declaration.
`The next limitation of claim 1 recites the “the different magnitudes of
`DC current flow to result from at least one condition applied to at least one
`of the contacts of the first and second pairs of contacts.” Petitioner argues
`the different magnitudes of current flow discussed above in analyzing the
`“piece of Ethernet equipment to draw different magnitudes of DC current
`flow via the at least one path” limitation of claim 1 all result from
`“conditions applied to at least one of the contacts of the first and second
`pairs of contacts.” Pet. 30 (citing Ex. 1002 ¶¶ 109–113). For example,
`Petitioner points to plugging the phantom-powered twisted-pair Ethernet
`cable into the TE “is a condition applied to the contacts: e.g., current then
`begins to flow through them.” Id. at 31.
`The last limitation of claim 1 is “wherein at least one of the
`magnitudes of the DC current flow to convey information about the piece of
`Ethernet terminal equipment.” Petitioner argues Bulan monitors the
`different magnitudes of DC current flow drawn by the TE. Pet. 31 (citing
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`Ex. 1004, 4:23–24, 2:1–14; Ex. 1002 ¶¶ 114–118). For example, at startup
`if the current drawn by the TE exceeds the static limit and then the dynamic
`limit “this conveys to Bulan that a potentially dangerous current ‘inrush’ is
`occurring at the TE—though Bulan does not yet know whether the inrush is
`merely ‘the surge required to initiate operation of the typical [DC-DC]’ in
`the TE (which should be permitted), or the presence of an ‘unintended
`operational fault[]’ such as a ‘short circuit[].’” Id. at 32 (citing Ex. 1004,
`1:60–62, 1:28–29, Abstract, 3:5–6, 3:
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