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 IPR2016-013991
`U.S. Patent No. 8,902,760
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PAPER 65
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc. and Netgear, Inc.
`
`filed a petition in (now terminated) IPR2017-00719, who have been joined to the
`
`instant proceeding.
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JUNIPER NETWORKS INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION SYSTEMS, INC.,
`and NETGEAR, INC.,
`
`Petitioners,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`Patent Owner.
`
`
`
`Case IPR2016-013991
`U.S. Patent No. 8,902,760
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PAPER 65
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc. and Netgear, Inc.
`
`filed a petition in (now terminated) IPR2017-00719, who have been joined to the
`
`instant proceeding.
`
`
`
`
`
`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`INTRODUCTION
`
`
`In the instant proceedings, the Board instituted Inter Partes Review of claims
`
`1, 31, 37, 59, 69, 72, 73, 106, 112, 134, 142, and 145 of U.S. Patent No. 8,902,760
`
`under 35 U.S.C. § 314(a). (Paper 8, pp. 20-21.) In Paper 65, the Board asked the
`
`parties to address two issues relating to the claims of the ‘760 patent amended by the
`
`Ex Parte Reexamination Certificate, which issued on September 18, 2017. The two
`
`issues are: “1) whether we should issue a final written decision with respect to the
`
`amended claims or terminate this proceeding as to the amended claims; and 2)
`
`whether the limitation added to the amended claims was addressed by the parties in
`
`the Petition and the Patent Owner Response in this proceeding, and, if so, where that
`
`limitation was addressed in those papers.”
`
`As relevant here, the Certificate resulted in amended claims 73, 106, 112, 134,
`
`142, and 145. Claim 73 is an independent claim; the remaining claims are dependent
`
`from claim 73. As discussed below, Chrimar amended Claim 73 to bring the phrase
`
`“the piece of central network equipment is a BaseT Ethernet hub” up from dependent
`
`claim 101, effectively re-writing claim 101 as an independent claim. Petitioners did
`
`not seek review of claim 101 in the present IPR proceeding.
`
`1
`
`
`
`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
`1.
`
`The Board should terminate this proceeding as to the amended
`claims
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`Amended claims 73, 106, 112, 134, 142, and 145 are new claims and are not
`
`the subject of the present IPR proceeding. See, e.g., Bloom Eng’g Co. v. North Am.
`
`Mfg. Co., 129 F.3d 1247, 1250 (Fed. Cir. 1997) (explaining that reexamination
`
`claims “have effect continuously from the date of the original patent” only “when
`
`the reexamined or reissued claims are identical to those of the original patent”). The
`
`Board should terminate the IPR with respect to original claims 106, 112, 134, 142,
`
`and 145 because those original claims no longer exist in the ‘760 patent.
`
`Adjudicating the amended claims is outside of the Board’s institution decision and
`
`the purview of § 314(a).
`
`2.
`
`The parties did not address the limitation added to the amended
`claims in the Petition and the Patent Owner Response in this
`proceeding
`
` The limitation added to amended independent claim 73 is: “the piece of
`
`central network equipment is a BaseT Ethernet hub” as shown below (italics added):
`
`73. A BaseT Ethernet system comprising:
`
`Ethernet cabling having at least first and second individual pairs of
`
`conductors used to carry BaseT Ethernet 25 communication
`
`signals, the at least first and second individual pairs of conductors
`
`physically connect between a piece of BaseT Ethernet terminal
`
`2
`
`
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`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`equipment and a piece of central network equipment, the piece of
`
`central network equipment is a BaseT Ethernet hub; the piece of
`
`central network equipment having at least one DC supply, the piece
`
`of BaseT Ethernet terminal equipment having at least one path to
`
`draw different magnitudes of current flow via the at least one DC
`
`supply through a loop formed over at least one of the conductors of
`
`the first pair of conductors and at least one of the conductors of the
`
`second pair of conductors, the piece of central network equipment
`
`to detect at least two different magnitudes of current flow through
`
`the loop.
`
`Chrimar incorporated the phrase “the piece of central network equipment is a
`
`BaseT Ethernet hub” from dependent claim 1012 into claim 73 and canceled claim
`
`101. Claim 101 and its subject matter were never a part of the instant IPR
`
`proceeding. The parties made no argument about the limitation “the piece of central
`
`network equipment is a BaseT Ethernet hub” in the present proceeding.
`
`Accordingly, the present proceeding does not include any arguments regarding the
`
`limitation added to the claims amended by the Reexamination Certificate.
`
`
`2 Claim 101 stated, “The BaseT Ethernet system of claim 73 wherein the piece of
`
`central network equipment is a BaseT Ethernet hub.”
`
`3
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`
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`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
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`Atty. Dkt. No.: CHRMC0110IPR1
`
`For the reasons indicated above, the Board should terminate the present IPR
`
`proceeding directed to original claims 106, 112, 134, 142, and 145.
`
`
`Dated: November 7, 2017
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`Marc Lorelli (Reg. No. 43,759)
`Christopher C. Smith (Reg. No. 59,669)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Richard W. Hoffmann (Reg. No. 33,711)
`Reising Ethington PC
`755 West Big Beaver Rd., Suite 1850
`Troy, Michigan 48084
`248.786.0163
`
`Attorneys for Patent Owner
`
`4
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`
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`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`Certificate of Service
`
`On November 7, 2017, a copy of this PATENT OWNER’S RESPONSE
`TO PAPER 65 has been served on Petitioner’s counsel via electronic mail at the
`email addresses shown below:
`
`
`Lead Counsel & Back-up Counsel for Juniper
`Talin Gordnia, Reg. No. 76,214
`Michael Fleming, Reg. No. 67,933
`IRELL & MANELLA, LLP
`Jonathan Kagan, pro hac vice
`1800 Avenue of the Stars, Suite 900
`IRELL & MANELLA, LLP
`Los Angeles, CA 90067
`1800 Avenue of the Stars, Suite 900
`Juniper-ChrimarIPR@irell.com
`Los Angeles, CA 90067
`Juniper-ChrimarIPR@irell.com
`
`Nima Hefazi Reg. No. 63,658
`IRELL & MANELLA, LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Juniper-ChrimarIPR@irell.com
`
`Lead Counsel & Back up Counsel for Ruckus Wireless, Inc., Brocade
`Communication Systems, Inc., & Netgear, Inc.
`Joseph Powers (Reg. No. 47,006)
`Christopher Tyson (Reg. No. 63,850)
`Duane Morris LLP
`Duane Morris LLP
`30 South 17th Street
`505 9th St. NW, Ste 1000
`Philadelphia PA 19103-4196
`Washington DC 20004
`JAPowers@duanemorris.com
`CJTyson@duanemorris.com
`
`
`Matthew S. Yungwirth
`DUANE MORRIS LLP
`1075 Peachtree Street, NE, Suite 2000
`Atlanta, Georgia 30309
`msyungwirth@duanemorris.com
`
`
`
`
`Respectfully submitted,
`
`/Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`
`5
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`
`
`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`
`6
`
`
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