Reply in Support of Petition for Inter Partes Review of U.S. Patent No. 8,902,760
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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. IPR2016-01399
`U.S. Patent No. 8,902,760
`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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`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. IPR2016-01399
`U.S. Patent No. 8,902,760
`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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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`
`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 Relevant ................................................... 3
`C.
`POSITA Would Have Know How To Implement Grounds 1 and 2 . 4
`IV. CLAIMS ARE OBVIOUS IN VIEW OF PRIOR ART TEACHING
`POWER DELIVERY OVER ETHERNET DATA LINES ......................... 4
`A.
`Ethernet Phantom Power Is Prior Art ................................................. 5
`B.
`Chrimar Did Not Invent Or Enable Ethernet Phantom Power ........... 6
`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 PRIOR ART POWER DELIVERY METHODS DO NOT
`NEGATE OBVIOUSNESS .......................................................................... 9
`A. A Combination Does Not Become Less Obvious Because It Relies On
`A Reference Teaching Alternative Embodiments.............................. 9
`The Prior Art Favored Phantom Power .............................................. 9
`B.
`C. Unused Pairs Often Were Not Readily Available ............................ 10
`VI. GROUND 1: HUNTER AND BULAN TEACH THE CLAIMS .............. 11
`
`D.
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`Petitioners' Reply Brief for IPR2016-01399
`U.S. Patent No. 8,902,760
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`C.
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`Page
`A. Hunter Teaches "BaseT Ethernet Terminal Equipment " ................ 11
`B.
`Bulan's Protective Device Improves Upon The Teachings Of Hunter
` .......................................................................................................... 18
`The Hunter-Bulan Combination Teaches Information About Terminal
`Equipment Conveyed by Different DC Currents, and Central
`Equipment to Distinguish One Terminal Equipment From Another 20
`The Hunter-Bulan Combination Teaches a "Detection Protocol" ... 21
`The Hunter-Bulan Combination Teaches the Claimed "Path" ......... 22
`The Hunter-Bulan Combination Teaches "Powered-Off" Terminal
`Equipment ........................................................................................ 24
`VII. GROUND 2: BLOCH, HUIZINGA, AND IEEE TEACH ALL
`LIMITATIONS OF THE CLAIMS INCLUDING "POWERED OFF"
`TERMINAL EQUIPMENT ....................................................................... 27
`VIII. CONCLUSION ........................................................................................... 28
`
`
`D.
`E.
`F.
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`
`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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`IPR2016-01399, Petitioners' Reply
`U.S. Patent No. 8,902,760
`
`LIST OF EXHIBITS
`
`Number
`1001
`
`Short Name
`'760 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 8,902,760 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
`8,902,760
`
`
`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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`IPR2016-01399, Petitioners' Reply
`U.S. Patent No. 8,902,760
`Short Name
`Number
`1013
`Crayford C.V.
`1014
`IEEE Press Release
`
`1015
`
`Complaint
`
`'058 patent
`'152 patent
`
`Description
`Resume of Ian Crayford
`IEEE Standards Association News &
`Events: Press Releases "IEEE 802.3
`Standard for Ethernet Marks 30 Years of
`Innovation and Global Market Growth"
`
`Chrimar Systems, Inc. et al. v. Juniper
`Networks, Inc., Case No. 6:15-cv-00630
`(N.D. Cal.), Dkt. No. 1.
`U.S. Patent 6,247,058 to Miller et al.
`U.S. Patent 6,865,152 to Luhmann
`
`1016
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`
`
`
`N/A
`
`N/A
`
`Madisetti
`Declaration
`
`Level One
`
`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.
`
`Pulse
`
`Valor
`
`Halo
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`IPR2016-01399, Petitioners' Reply
`U.S. Patent No. 8,902,760
`Short Name
`Number
`1026
`'911 Patent
`1027
`De Nicolo or '468
`patent
`'356 patent
`Smith
`Chrimar
`Presentation to IEEE
`
`1028
`1029
`1030
`
`1031
`
`1032
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`Madisetti Deposition
`Exhibit 1
`
`IEEE 802.9
`IEEE Dictionary
`
`Madisetti Deposition
`Exhibit 2
`Lucent
`
`Agenda
`
`Muir
`
`1038
`
`Frazier
`
`
`
`
`Description
`U.S. Patent 6,140,911 to Fisher et al.
`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
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`IPR2016-01399, Petitioners' Reply
`U.S. Patent No. 8,902,760
`Short Name
`Number
`
`1039
`
`Karam
`
`1040
`
`Nootbar
`
`
`1041
`
`Love
`
`1042
`
`Nakamura
`
`'012 patent
`
`'107 patent
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`'838 patent
`
`Crayford-2
`
`1043
`
`1044
`
`1045
`
`1046
`
`
`
`
`Description
`2000)
`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 8,942,107 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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`IPR2016-01399, Petitioners' Reply
`U.S. Patent No. 8,902,760
`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 8.
`
`In Ground 1, Hunter teaches hubs and terminal equipment ("TE") networked
`
`over standards including 10Base-T Ethernet. Pet., 8-24. Hunter teaches data and
`
`power delivery over the same conductors, and a current limiting device. Id., 8-9.
`
`A POSITA would have been motivated to replace this device with Bulan's circuit,
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`which intelligently detects and distinguishes overcurrent from terminal equipment
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`(e.g., normal start-up versus fault). Id., 9-15. The combination teaches Claim 1,
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`including "central BaseT Ethernet equipment," "BaseT Ethernet
`
`terminal
`
`equipment," "DC supply," "path," and "detect[ing] at least two different
`
`magnitudes of the current flow." Id., 25--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
`
`was developed based on legacy telephone systems. Id., 53-55.
`
`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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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`or disregard the teachings of the asserted prior art. Chrimar's incorrect and/or
`
`immaterial arguments should be rejected.
`
`II. CHRIMAR RELIES ON INCORRECT PRIORITY DATE
`Chrimar's Response is based on the wrong invention date. The earliest
`
`priority date listed on the '838 patent is an April 10, 1998 provisional application
`
`filing date. Ex. 1001, 1. Chrimar has not substantiated an earlier invention date.
`
`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 '760 patent—Bob Smith
`
`Terminations ("BST") and common mode chokes ("CMC"). Resp., 19-22;
`
`IPR2016-01389, Paper 12, 22-23.
`
`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."
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`Smith, 2:5-3:2. CMCs are another method. Crayford-2, ¶13.2 Dr. Madisetti
`
`clarified CMCs are meant to be used with BSTs. Ex. 1020, 144:6-18.
`
`B.
`BSTs and CMCs Are Not Relevant
`The BRI of the Claims does not require BSTs, CMCs, or compliance with
`
`any FCC regulation. Dr. Madisetti testified he has not offered any opinions on
`
`whether the claims require BSTs or CMCs and agreed "[t]he words 'Bob Smith'
`
`don't explicitly appear" in the claims. 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 '760 patent, '012 patent", '107 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
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`mean the claims require BSTs or CMCs. Resp., 8, 19. There is no evidence that
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`"pre-existing wiring or cables" required either component in April 1998. Ex. 1020,
`
`80:16-20, 55:19-23 (Madisetti "cannot verify each and every system out there"
`
`
`2 "Crayford-2" and "Crayford-1" are Mr. Crayford's Declarations in support
`
`of the Petition (Ex. 1002) and Reply (Ex. 1046), respectively.
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`used BSTs); 84:7-13, 88:19-89:2, 90:13-91:5, 115:5-14; §III.A; Crayford-2, ¶¶14-
`
`21.
`
`C.
`POSITA Would Have Know 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., 19-22; Crayford-2, ¶¶22-23. For example, in April 1998, a POSITA knew
`
`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
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`"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 embodiment. Hunter3, 20:14-16., 19:13-17, 20:11-16, 21:11-13,
`
`21:22-29.
`
`The prior art cited in the '760 patent also confirms Ethernet phantom power
`
`predates Chrimar's alleged invention. Chrimar and its expert did not consider this
`
`art. Ex. 1020, 200:23-201:11. 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,
`
`Fig. 3, 3:5-12. This shows Ethernet phantom power was well known to a POSITA.
`
`Crayford-2, ¶¶29-32; KSR, 550 U.S. at 416-17.
`
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`3 Hunter citations reference the document's internal pagination.
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`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
`
`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 documents to argue a POSITA would not have made the
`
`combinations in the Grounds. Resp., 1-2, 7, 27-31. First, the IEEE's analysis for
`
`determining whether Ethernet phantom power should become a standard has
`
`nothing to do with obviousness, which does not require meeting standardization
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`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., 1-2, 7, 27-31. Various presenters favored phantom
`
`power technology and questioned the presence of unused pairs. Crayford-2, ¶¶38-
`
`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 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., 27.
`
`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
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`related. Hunter, 2:22-23, 15:8-13, 17:3-5, 33:19-21; Ex. 1013; Ex. 1020, 159:2-
`
`160:1; Crayford-2, ¶¶46-48.
`
`Chrimar incorrectly concludes that the switching of R201 would cause noise
`
`interference with the Ethernet signal. Resp. 32-34. 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, ¶¶49-51. 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 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 as it wrongly
`
`assumes the instantaneous switching illustrated in Bloch Figure 7B is not only
`
`feasible but required by Bloch. Id.; Crayford-2, ¶¶52-53.
`
`Chrimar's arguments about the path in Ground 1 causing saturation are
`
`incorrect and rely solely on its disingenuous misrepresentations regarding Mr.
`
`Crayford's testimony. Ex. 2039, 85:2-4, 167:23-168:4, 168:20-169:4; Crayford-1,
`
`¶76; Hunter, Fig. 2; Crayford-2, ¶54.
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`V. ALTERNATIVE PRIOR ART POWER DELIVERY METHODS DO
`NOT NEGATE OBVIOUSNESS
`Chrimar's argument that phantom powering would have been avoided
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`because cables used in Ethernet networks had unused pairs (Resp., 18-22) is
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`another implementations-based argument that is outside the scope of the Claims
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`and Grounds. Chrimar's underlying assumption—unused pairs were widely
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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
`
`technologies, phantom power and third pair power, means a POSITA would not
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`have used phantom power in Ground 1. Resp., 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
`
`embodiment.". Hunter, 20:24-21:9; cls. 1, 11; see also id., 22:1-23:2 (describing
`
`known solutions to avoid potential interactions between power and data);
`
`Crayford-2, ¶56.
`
`B.
`The Prior Art Favored Phantom Power
`The prior art, including Hunter, Fisher, and De Nicolo, recognized the
`
`benefits of phantom power. For example, Hunter explains: "[p]hantom powering
`
`has the advantage of not requiring the installation of a dedicated power cable."
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`17:13-14. By contrast, "third pair powering requires a dedicated power cable,
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`increasing the cost of new installations and existing installations where a dedicated
`
`power cable is not already in place." Id., 17:23-26; see also Fisher, 1:19-20, 1:66-
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`2:17, 9:19-21; De Nicolo, 2:20-24, 2:31-35; Exs. 1036-1042; §IV.C; Crayford-2,
`
`¶¶57-59.
`
`C. Unused Pairs Often Were Not Readily Available
`Chrimar wrongly assumes 10BASE-T and 100BASE-T using Cat-3 and Cat-
`
`5 cables with RJ-45 connectors necessarily meant there were always 4 pairs
`
`available, two of which were used. Resp., 22-26. Yet, Dr. Madisetti agreed that he
`
`"wouldn't say all" of the "Ethernet infrastructure existing at the time of the
`
`invention was exclusively four pair." Ex. 1020, 343:3-12. In April 1998, there
`
`were Cat-3 and Cat-5 cables with only 2 pairs, which were both used for data.
`
`Crayford-2, ¶61; Ex. 1031. A POSITA would not assume that an RJ-45 connector
`
`with 8 pins necessarily has 8 wires (4 pairs) connected. Resp., 24-26; Crayford-2,
`
`¶¶61-62; Ex. 1006, 266; Ex. 1008, 214 (showing those pins as not used and not
`
`populated). Dr. Madisetti claims he was not aware that 2-pair Cat-3 and Cat-5
`
`cables existed in 1998. Ex. 1020, 348:1-13.
`
`Also, the 10BASE-T standard used cables with 25 pairs of wire in April
`
`1998. Crayford-2, ¶63; Ex. 1006, 265 (14.4.3.1.1). Mr. Crayford testified that
`
`there would not be unused pairs in a 25-pair cable (Ex. 2039, 146:6-147:13), but
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`Dr. Madisetti claims he was not aware of this. Ex. 1020, 345:21-346:7; 363:1-9;
`
`364:21-365:5; §IV.C.
`
`VI. GROUND 1: HUNTER AND BULAN TEACH THE CLAIMS
`A. Hunter Teaches "BaseT Ethernet Terminal Equipment "
`Chrimar incorrectly disputes that Hunter teaches "BaseT Ethernet terminal
`
`equipment." Resp., 34-39.
`
`a. Hunter Teaches "Ethernet"
`Chrimar argues Hunter is not relevant because Hunter's disclosure of
`
`"Ethernet®" is not the same "Ethernet" claimed by the '760 patent. Resp., 34-35.
`
`Chrimar also misread Hunter narrowly to argue that it only teaches 10Base-T and
`
`100Base-T conductors, not standards. Resp., 46-47.
`
`Hunter, however, discloses 10Base-T, 100Base-T4, and isoEthernet standard
`
`that all teach the "Ethernet" limitation. Pet., 25-29. Referring to the phantom
`
`power embodiment, Hunter states "[o]ne standard that employs this arrangement [a
`
`bus comprising two twisted-pair conductors] is 10Base-T." Hunter, 26:3-6.
`
`Hunter also teaches 10Base-T equipment. Crayford-2, ¶67. 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.,
`
`
`4 Chrimar agrees 10Base-T and 100Base-T teach "Ethernet." Resp., 18-19.
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`Fig. 1, 32:16-33:2. Multimedia hub 120 has a "10base-T hub repeater." Id.
`
`Hunter also teaches "a 10Base-T LAN system." Id., 23:16-17. One objective of
`
`Hunter is "compatibility … with existing 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, ¶68.
`
`b. Hunter Teaches "Terminal Equipment"
`Hunter teaches an Integrated Services Terminal Equipment ("ISTE") card
`
`receives and transmits data over a 10Base-T bus. Pet., 25-29. Figure 2 depicts an
`
`isoEthernet system where the ISTE splits isoEthernet data, a combined ISDN and
`
`10Base-T signal, into ISDN data for Voice Instrument 299 and 10Base-T LAN
`
`data for other equipment. Hunter, Fig. 2; Crayford-2, ¶69. 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, ¶69.
`
`Chrimar's argument that the ISTE is an "intermediate hub" is incorrect.
`
`Resp., 35. The BRI of "data terminal equipment" must include its ordinary
`
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`meaning, which in April 1998 was "[a] device that serves as a data source and/or
`
`data sink." Ex. 1033, 10. Consistent with this, the '012 patent states "Ethernet data
`
`terminal equipment" includes a PC. Ex. 1043, cl. 32; Paper 6, 34. In April 1998,
`
`PCs could be intermediate devices. Crayford-2, ¶70. 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
`
`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 [] what we called 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.
`
`5 Chrimar used the phrase "Ethernet terminal device" to refer to: "Base-T
`
`Ethernet terminal equipment" ('760). Ex. 1020, 338:4-339:2.
`
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`IPR2016-01399 Petitioners' Reply
`IPR2016-013 99 Petitioners' Reply
`U.S. Patent No. 8,902,760
`US. Patent No. 8,902,760
`
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`Chrimar incorrectly assumes Hunter's phantom power-circuit does not
`
`connect to the Voice Instrument attached to the ISTE. Resp., 37. However, the
`
`power supplied to the ISTE in Hunter powers the Voice Instrument. Hunter,
`
`38:25-27 ("[V]oice instrument 299 is … couplable to the equipment 260 and
`
`receives both data and power therefrom."). This means that the path delivering
`
`power to the ISTE continues to the Voice Instrument. Crayford-2, ¶72; Crayford-
`
`1, ¶109.
`
`c.
`
`Hunter Teaches Phantom Powering Ethernet
`Terminal Devices
`Hunter teaches phantom powering an ISTE card over a 10Base-T bus. Pet.,
`
`25-29. 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, ¶73. 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., 35-39.
`
`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, ¶74. For example, Hunter explains Multimedia Hub 120
`
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`has isoEthernet interfaces that couple it to PC 125 and telephone instrument 127.
`
`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,
`
`38:25-27; Crayford-2, ¶74.
`
`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
`
`160 that are connected to telephones. Hunter, Fig. 1. A POSITA would
`
`understand that Hub 150, Hub 160, and PC 125 each connect Multimedia Hub 120
`
`to a telephone and each have an ISTE Card to separate LAN data from voice data
`
`as shown in Figure 2. Crayford-2, ¶75.
`
`A POSITA would also understand that the power source can be located in
`
`any of the hubs. Crayford-2, ¶76. 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, ¶76. Accordingly, a POSITA reading Hunter
`
`would understand the hubs themselves could include power sources for phantom
`
`powering associated devices. Id; Hunter, 19:2-7.
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`IPR2016-01399 Petitioners' Reply
`U.S. Patent No. 8,902,760
`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 them (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.
`
`Crayford responded "it would be inside, for instance, the 10BASE-T hub 170 or it
`
`would be on a 10BASE-T line card in 110." Ex. 2039, 117:19-118:3; see also
`
`Hunter, 32:9-11
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