Paper No. 15
`
`Trials@uspto.gov
`571.272.7822 Entered: January 17, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`D-LINK SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01425
`Patent 8,155,012 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
`571.272.7822 Entered: January 17, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`D-LINK SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01425
`Patent 8,155,012 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
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01425
`Patent 8,155,012 B2
`
`
`I. INTRODUCTION
`
`D-Link Systems, Inc. (“Petitioner”) filed a Petition (Paper 1 (“Pet.”))
`
`pursuant to 35 U.S.C. §§ 311–19 to institute an inter partes review of claims
`
`31, 34, 35, 36, 40, 43, 44, 52, 56, and 60 (“the challenged claims”) of U.S.
`
`Patent No. 8,155,012 B2 (Ex. 1001 (“the ’012 patent”)). Pet. 3.1 The
`
`Petition relies on the Declaration of Dr. Andrew Wolfe. Ex. 1012. ChriMar
`
`Systems, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 10
`
`(“Prelim. Resp.”)).
`
`We have statutory authority 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 the challenged claims. The Board has not made a final determination of
`
`the patentability of any claim.
`
`A. Related Proceedings
`
`Petitioner contends that “the ’012 patent is the subject of 56 civil
`
`actions filed in the Eastern District of Michigan, Eastern District of Texas2
`
`
`1 Petitioner challenges claim 60 and its dependence from claims 59 / 31, 35,
`36, 40, 43, and 52.
`2 Petitioner cites one case for claim construction. See Pet. 12–13 (citing
`Chrimar Systems, Inc. v. Adtran, Inc., et al., 6:15-cv-618-JRG-JDL,
`Memorandum Opinion and Order (E.D. Tex. June 17, 2016) (“’618
`Lawsuit,” Ex. 1004-1)). Cases cited by Patent Owner for claim construction
`include: Chrimar Systems, Inc., et al. v. AMX, LLC, No. 6:13-cv-881-JDL,
`Memorandum Opinion and Order (E.D. Tex. Oct. 22, 2014), Ex. 2017
`(“’881 Lawsuit”); id., Memorandum Opinion and Order (E.D. Tex. Jan. 8,
`2015), Ex. 2018; id. Memorandum Opinion and Order (E.D. Tex. Jan. 16,
`2015), Ex. 2019; id., Memorandum Opinion and order on ALE’s motion to
`construe certain claim terms of the ’012 and ’760 Patents (E.D. Tex. Sept.
`16, 2016), Ex. 2035; Chrimar Systems, Inc., et al. v. Alcatel-Lucent, et al.,
`No. 6:15-cv-163-JDL, Memorandum Opinion and Order (E.D. Tex. Mar. 28,
`
`2
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`IPR2016-01425
`Patent 8,155,012 B2
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`and the Northern District of California.” Pet. 1 (citing Ex. 1003). Patent
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`Owner identifies 17 civil actions as “related matters.” Paper 5, 2–3. The
`
`parties also identify a number of related requests for inter partes review,
`
`including Case Nos. IPR2016-00569, IPR2016-00572, IPR2016-00573,
`
`IPR2016-00574, IPR2016-00983, IPR2016-01151, IPR2016-01389,
`
`IPR2016-01391, IPR2016-01397, IPR2016-01399, and IPR2016-01426.
`
`Pet. 2; Paper 5, 3.
`
`B. The ’012 Patent (Ex. 1001)
`
`The ’012 patent relates generally to a communication system
`
`“provided for generating and monitoring data over a pre-existing wiring or
`
`cables that connect pieces of networked computer equipment to a network.”
`
`Ex. 1001, 3:19–22. The ’012 patent discloses central module 15 and remote
`
`module 16 system for achieving identification of electronic computer
`
`equipment associated with computer network 17. Id. at 4:44–47. “[C]entral
`
`module 15 monitors remote module circuitry 16 that may be permanently
`
`attached to remote[] located electronic workstations such as personal
`
`computers 3A through 3D.” Id. at 4:53–56.
`
`
`
`
`2016) (“’163 Lawsuit”), Ex. 2020; id. Memorandum Opinion and Order
`(E.D. tex.Mar. 28, 2016), Ex. 1004-2. Prelim. Resp. 20–21.
`
`
`3
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`Patent 8,155,012 B2
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`Figure 3 of the ’012 patent is reproduced below:
`
`
`
`Figure 3 is a block diagram illustrating one embodiment of the invention.
`
`Ex. 1001, 3:52–53. As shown in Figure 3 of the ’012 patent above,
`
`“[r]emotely located personal computers 3A through 3D are each connected
`
`to the computer network 17 so as to provide widespread remote user access
`
`to the computer network 17.” Id. at 5:1–3. Data communication links, 2A
`
`through 2D, connects each of the respective personal computers 3A through
`
`3D to a hub 1. Id. at 5:4–6. Each data communication link, which can be a
`
`multi-wire cable, transmits and receives information between the personal
`
`computers and other communication devices on the network. Id. at 5:6–13.
`
`“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.” Id. at
`
`5:28:32.
`
`The central module 15 includes isolation power supply 8 to supply
`
`continuous direct current (DC) to each of the current loops 2A through 2D.
`
`4
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`Patent 8,155,012 B2
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`Id. at 5:33–35. A signal modulator 7 alters the voltage received from power
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`supply 8 based upon status data received from encoder 9. Ex. 1001, 53–56.
`
`The encoder receives its status data from the firmware kernel 4. Id. at 5:56–
`
`57. Status information and power is provided to the remote module 16 by a
`
`signal modulator 7 over either the transmit lines or the receive lines. Id. at 5
`
`5:58–61.
`
`At the remote module 16, “information such as confirmation of the
`
`status information or additional data” about an external device 18, such as
`
`the computer 3A, is provided to the remote module 16. Ex. 1001, 6:19–24.
`
`Firmware kernel 10 provides a preprogrammed unique identification number
`
`for the external device “to Manchester encoder 11 in order to reliably
`
`traverse the data communication link or cable 2A,” and the “Manchester
`
`encoder then passes this encoded number to signal transmitter 12 which
`
`sends the encoded number across the data communication link 2A by
`
`altering the total current draw of the remote module 16.” Id. at 6:7–13.
`
`The information developed at the remote module 16 about an external
`
`device is sent to the signal receiver 6 of “the central module 15, decoded by
`
`Manchester decoder 5, and passed on to the firmware kernel 4.” Ex. 1001,
`
`6:25–28. In tracking an asset, i.e., the external device, the firmware kernel
`
`may now pass this received information on to another computer, i.e.,
`
`external device 19, which is responsible for asset tracking. Id. at 6:28–30.
`
`C. Illustrative Claim
`
`Of the challenged claims, claim 31 is the only independent claim.
`
`Claims 34, 35, 36, 40, 43, 44, 52, 56, and 60 depend directly or indirectly
`
`from claim 31. Claim 31 follows:
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`5
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`Patent 8,155,012 B2
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`31. An adapted piece of Ethernet data terminal equipment
`comprising:
`an Ethernet connector comprising a plurality of contacts;
`
`and
`
`at least one path coupled across selected contacts, the
`selected contacts comprising at least one of the plurality of
`contacts of the Ethernet connector and at least another one of
`the plurality of contacts of the Ethernet connector,
`wherein distinguishing information about the piece of
`Ethernet data terminal equipment is associated to impedance
`within the at least one path.
`
`Ex. 1001, 18:62–19:5.
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts unpatentability of the challenged claims of the
`
`’012 patent based on the following grounds:
`
`References
`Chang3 alone or Chang and
`Patton4
`de Nijs5 and Chaudhry6
`
`
`Claims Challenged
`Basis
`§ 103 31, 34, 35, 36, 40, 43, 44, 52, 56,
`and 60
`
`§ 103 31, 35, 36, 43, 56, and 60
`
`E. Identification of Real Parties-in-Interest
`
`Patent Owner argues that the Petition should be denied because
`
`Petitioner did not identify D-Link Corporation as a real party-in-interest in
`
`
`3 US Pat. No. 5,991,885, Chang et al., filed June 11, 1997, issued Nov. 23,
`1999, Ex. 1006 (“Chang”).
`4 US Pat. No. 5,121,482, Patton, filed Sept. 11, 1989, issued June 9, 1992,
`Ex. 1007 (“Patton”).
`5 US Pat. No. 5,568,525, de Nijs et al., filed Aug. 19, 1993, Ex. 1008 (“de
`Nijs”).
`6 US Pat. No. 5,790,363, Chaudhry, filed Dec. 3, 1997, issued Aug. 4, 1998,
`Ex. 1009 (“Chaudhry”).
`
`6
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`the Petition. Prelim. Resp. 12–19. The requirement to identify real parties-
`
`in-interest is found in 35 U.S.C. § 312(a), which reads in relevant part:
`
`A petition filed under section 311 may be considered only if . . .
`(2) the petition identifies all real parties in interest . . . .
`
`35 U.S.C. § 312(a)(2). Whether a party that is not named in an inter partes
`
`review proceeding is a “real party-in-interest” or “privy” is a “highly fact-
`
`dependent question,” taking into account various factors such as whether the
`
`non-party “exercised or could have exercised control over a party’s
`
`participation in a proceeding” and the degree to which a non-party funds,
`
`directs, and controls the proceeding. Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48756, 48759–60 (Aug. 14, 2012). Put another way, our inquiry
`
`seeks to identify whether there is a non-party “at whose behest the petition
`
`has been filed” or a relationship “sufficient to justify applying conventional
`
`principles of estoppel and preclusion.” Id.
`
`Patent Owner argues that D-Link Corporation should have been
`
`named as a real party-in-interest because it is Petitioner’s parent company,
`
`which holds a 97.76% controlling interest in Petitioner and includes
`
`Petitioner as a Consolidated Company in its consolidated financial
`
`statements. Prelim. Resp. 14 (citing Ex. 2038,7 14, 27). Patent Owner
`
`argues that D-Link Corporation has a consistent and regular policy of
`
`controlling patent-infringement suits brought against Petitioner. Id. at 15.
`
`For example, Patent Owner argues that D-Link Corporation’s Annual
`
`Reports list numerous lawsuits against its subsidiaries, including Petitioner,
`
`and Patent Owner alleges that these reports indicated that D-Link
`
`Corporation controls these litigation matters. Id. at 15–17 (citing Ex. 2038).
`
`
`7 D-Link Corporation, ANNUAL REPORT 2014.
`
`7
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`Patent 8,155,012 B2
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`Patent Owner also argues that D-Link Corporation repeatedly hires the same
`
`attorneys to represent it and Petitioner. Id. at 18. Accordingly, Patent
`
`Owner argues that “it is nearly inconceivable that D-Link Corporation is not
`
`funding and controlling Petitioner’s action here.” Id. at 19.
`
`In response, Petitioner argues that the Petitioner is the only entity that
`
`funds or directs or has any control over this proceeding or the co-pending
`
`litigation between the parties before the District Court for the Eastern
`
`District of Texas. Paper 13, 1 (Petitioner’s Reply to the Preliminary
`
`Response Regarding Arguments on Real Party-in-Interest (“RPI Reply”)8).
`
`Petitioner also argues that the annual reports cited by Patent Owner are a
`
`simple security documentation requirement that has nothing to do with
`
`control or direction of any of the suits. RPI Reply 2.
`
`On this record, we are not convinced that D-Link Corporation is a real
`
`party-in-interest with respect to this proceeding. The fact that D-Link
`
`Corporation and Petitioner hire the same counsel does not establish that D-
`
`Link Corporation has the ability to control Petitioner’s conduct in this
`
`proceeding before the Board. Nor do the statements of D-Link Corporation
`
`in its Annual Reports about other litigation involving the Petitioner, without
`
`any evidence of the obligations of the parties with respect to this proceeding,
`
`prove that D-Link Corporation is able to control the actions of Petitioner in
`
`this proceeding. The preceding is insufficient to support a conclusion that
`
`D-Link Corporation is a real party-in-interest.
`
`
`8 We authorized a reply to the Preliminary Response by Petitioner. Paper
`10.
`
`8
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`Based on the current record, we decline to deny the Petition for failure
`
`to comply with the requirement of 35 U.S.C. § 312(a)(2) for instituting an
`
`inter partes review.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, the Board construes claims by applying the
`
`broadest reasonable interpretation in light of the specification. 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016)
`
`(affirming the Patent Office’s authority to issue regulations governing inter
`
`partes review under 35 U.S.C. § 316(a)(4)). Under this standard, absent any
`
`special definitions, claim terms or phrases carry their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner identifies five terms for construction. Pet. 12–13.
`
`Petitioner does not independently propose or argue a construction for any of
`
`the terms, rather only citing to the constructions of the District Court in the
`
`’618 Lawsuit. Id. (citing Ex. 1004-1, 12, 24). Patent Owner also cites to
`
`District Court constructions in the ’618 Lawsuit as well as other District
`
`Court construction orders in the ’881 and ’163 Lawsuits. Prelim. Resp. 20–
`
`21. While Patent Owner proposes that six terms are “relevant” to the ’012
`
`patent, it argues only claim 31 and its recitation “wherein distinguishing
`
`information about the piece of Ethernet data terminal equipment is
`
`associated to impedance within the at least one path” (herein, “distinguishing
`
`information limitation”). Id. at 21–34. Petitioner argues the distinguishing
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`9
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`Patent 8,155,012 B2
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`information limitation is disclosed by the Chang alone or Chang combined
`
`with Patton in its allegations regarding claim 31. Pet. 20–23. Only those
`
`terms that are in controversy need to be construed and only to the extent
`
`necessary to resolve the controversy. See Vivid Techs. Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Thus, we limit our
`
`construction to the distinguishing information claim limitation.
`
`Petitioner argues that the distinguishing information limitation should
`
`be construed as non-limiting because it merely recites “a new intended use
`
`for an old product.” Pet. 20 (citing In re Schreiber, 128 F.3d 1473, 1477
`
`(Fed. Cir. 1997). In Schreiber, the Federal Circuit noted that the patentee’s
`
`contention that its claimed structure would “be used to dispense popcorn
`
`does not have patentable weight if the structure is already known.” 128 F.3d
`
`at 1477.
`
`Claim 31 recites that the “impedance within at least one path” is
`
`associated to “distinguishing information about the piece of Ethernet data
`
`terminal equipment.” The “impedance within at least one path” is a
`
`measurable physical characteristic of the path that the path must be capable
`
`of providing, even though claim 31, a product claim, does not require a
`
`measurement or an actual association. Further, the functionality is
`
`associated with structure, the “Ethernet data terminal equipment.”
`
`Accordingly, we are not persuaded by Petitioner that the distinguishing
`
`information claim limitation is non-limiting.
`
`In response to Petitioner, Patent Owner argues that this distinguishing
`
`information claim limitation should be construed as “wherein impedance
`
`within the at least one path is associated to information that can be used in
`
`the same network to distinguish the piece of Ethernet data terminal
`
`10
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`Patent 8,155,012 B2
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`equipment from at least one other piece of Ethernet data terminal
`
`equipment.” Prelim. Resp. 23–24 (emphasis added). Patent Owner fails to
`
`identify, however, any recitations in claim 31 regarding “at least one other
`
`piece of Ethernet data terminal equipment” or a “network.” Claim 31
`
`merely recites a single “adapted piece of Ethernet data terminal equipment”
`
`and requires that “distinguishing information” about that piece of equipment
`
`is “associated to impedance” within one path of the Ethernet data terminal
`
`equipment.
`
`The plain and ordinary meaning of “distinguish” is “to recognize as
`
`being different or distinct.” Ex. 3001 (American Heritage Dictionary of the
`
`English Language, 1969). As noted by the District Court in the ’881
`
`Lawsuit in construing the distinguishing information claim limitation, the
`
`specification of the ’012 patent recites “identifying” while the claims recite
`
`“distinguishing.” Ex. 2017, 11. Furthermore, numerous other claims in the
`
`’012 patent recite identifying information instead of distinguishing
`
`information, including claim 71 (“arranging impedance within the at least
`
`one path to uniquely identify the piece of terminal equipment”). See also
`
`claims 15, 33, 45, 70, 111, and 112 (reciting “identify” or “identifying”). In
`
`addition, claim 31 recites “wherein distinguishing information about the
`
`piece of Ethernet data terminal equipment is associated to impedance within
`
`the at least one path.” Thus, in accordance with the doctrine of claim
`
`differentiation, we determine that Patent Owner intended for the term
`
`“distinguishing information” to refer to more general information than the
`
`more specific “identifying information.” Free Motion Fitness, Inc. v. Cybex
`
`Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005) (“The difference in meaning
`
`and scope between claims is presumed to be significant [t]o the extent that
`
`11
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`Patent 8,155,012 B2
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`the absence of such difference in meaning and scope would make a claim
`
`superfluous.”).
`
`There are two exceptions to the general rule that patent claims are
`
`given their ordinary and customary meaning to one of skill in the art when
`
`read in the context of the specification and prosecution history: (1) when a
`
`patentee sets out a definition and acts as his own lexicographer, or (2) when
`
`the patentee disavows the full scope of the claim term either in the
`
`specification or during prosecution. See Hill-Rom Services, Inc., v. Stryker
`
`Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). In the instant case, Patent
`
`Owner fails to identify any language from the specification where Patent
`
`Owner purported to be its own lexicographer and defined “distinguishing
`
`information” in a manner that requires it to mean the information must be
`
`used in the same network to distinguish the piece of Ethernet data terminal
`
`equipment from at least one other piece of Ethernet data terminal
`
`equipment. Also, Patent Owner does not provide any arguments regarding
`
`disavowal during prosecution.
`
`This brings us to the question of whether Patent Owner disavowed
`
`claim scope in the specification. Patent Owner contends that Patent Owner’s
`
`proposed construction is appropriate when the distinguishing information
`
`claim limitation is read in the context of the entire patent including the
`
`specification. Prelim. Resp. 29–34. Contrary to Patent Owner’s arguments,
`
`“claims will not be read restrictively unless the patentee has demonstrated a
`
`clear intention to limit the claim scope using words of expressions of
`
`manifest exclusion or restriction.” Martek Biosciences Corp. v. Nutrinova,
`
`Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009). Here, Patent Owner fails to
`
`point to any clear intention expressed in the specification of the ’012 patent
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`12
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`to limit the distinguishing information in the manner suggested by Patent
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`Owner’s proposed construction. For example, Patent Owner identifies the
`
`following disclosures in the ’012 patent:
`
` “The invention 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.”
` “[A] first embodiment of a central module 15 and remote
`module 16 system is provided therein for achieving
`identification of electronic computer equipment associated with
`a computer network 17.”
` “From the foregoing it will be understood that the invention
`provides a system for communicating with electronic
`equipment on a network.”
`
`Prelim. Resp. 30–32 (quoting Ex. 1001, 1:23–26, 4:44–60, 11:62–64)
`
`(emphasis added). These statements from the specification of the
`
`’012 patent do not discuss distinguishing among only Ethernet data terminal
`
`equipment but, rather, among electronic equipment generally. See id.
`
`In addition, “Ethernet data terminal equipment” appears only in the
`
`claims. The ’012 patent describes, for example, that “information such as
`
`confirmation of the status information or additional data about an external
`
`device 18, such as the computer 3A” is provided to the remote module 16.
`
`Ex. 1001, 6:19–24 (emphasis added). While the claim uses the term
`
`“Ethernet data terminal equipment,” it is clear that the distinguishing
`
`information limitation relates more generally to an external device that is
`
`implemented with a computer network employing twisted pair wiring such
`
`as Ethernet. Id. at 5:14–18.
`
`In support of its proposed construction of the distinguishing
`
`information claim limitation, Patent Owner cites to the construction given by
`
`13
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`the District Court in the ’881 and ’613 Lawsuits. Prelim. Resp. 21 (citing
`
`Ex. 2017, 15; Ex. 1004-1, 22). In the ’881 Lawsuit, the District Court
`
`construed the distinguishing information claim limitation as “information to
`
`distinguish the piece of Ethernet data terminal equipment from at least one
`
`other piece of Ethernet data terminal equipment.” Ex. 2017, 15. The
`
`District Court found that
`
`Defendants’ proposal of requiring differentiating “each piece”
`of terminal equipment from “each other piece” of terminal
`equipment is unclear, is inconsistent with the intrinsic evidence
`as set forth above, and would likely confuse rather than clarify
`the scope of the claims. It is particularly unclear whether a
`piece of terminal equipment would need to be differentiated
`from every other piece of terminal equipment on a particular
`network, in a particular location, in the entire world, or in
`some other context.
`
`Ex. 2017, 14 (emphasis added). Accordingly, the District Court determined
`
`that “the ‘distinguishing information’ in the claims is not limited to
`
`‘identifying’ information, but instead includes information about an attribute
`
`of the device that differentiates it from another device.” Id. at 12 (emphasis
`
`added). We agree with the determination by the District Court that the
`
`distinguishing information claim limitation includes distinguishing
`
`information about an attribute of the device that differentiates it from
`
`another device. See Ex. 2017, 14. For the reasons discussed above, we do
`
`not agree with the portion of the District Court construction that limits the
`
`distinguishing information to requiring differentiation from only another
`
`piece of Ethernet data terminal equipment instead of another device
`
`generally. Id. Accordingly, we determine that Patent Owner fails to
`
`establish that an exception to the ordinary and customary meaning should be
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`14
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`applied to restrict the distinguishing information to distinguishing only over
`
`another piece of Ethernet data terminal equipment.
`
`
`
`Therefore, we construe the claim phrase “distinguishing information
`
`about the piece of Ethernet data terminal equipment is associated to
`
`impedance within the at least one path” to mean “distinguishing information
`
`about the piece of Ethernet data terminal equipment, including information
`
`that differentiates it from another device, wherein the information is capable
`
`of being associated to impedance within the at least one path.”
`
`B. Obviousness Based on Chang alone or Chang in view of Patton
`
`Petitioner alleges that the claims 31, 34, 35, 36, 40, 43, 44, 52, 56, and
`
`60 (across claims 59 / 31, 35, 36, 40, 43, and 52) would have been obvious
`
`to a person of ordinary skill in the art in view of Chang alone or Chang in
`
`view of Patton. Pet. 14–28. Petitioner cites the Wolfe Declaration for
`
`support. See Ex. 1012. Patent Owner denies the challenged claims would
`
`have been obvious over Chang alone or Chang in view of Patton. Prelim.
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`Resp. 35–40.
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`1. Chang (Ex. 1006)
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`Chang is titled a “Method and Apparatus For Detecting the Presence
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`of a Remote Device and Providing Power Thereto.” Ex. 1006. Figure 6a of
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`Chang is reproduced below:
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`15
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`Figure 6a “is a schematic diagram illustrating the device presence detector
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`414 coupled to a remote terminal 602-1.” Id. at 10:8–9. Chang discloses
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`remote terminal 602-1, which includes a first diode 620 and a second diode
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`622, and a continuous presence signal 621 is coupled to the anode of the first
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`diode 620 and an output signal from remote terminal 602-1 is returned to the
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`feedback analyzer 610 through the second diode 622. Id. at 10:30–45. “The
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`feedback analyzer 610 of the presence detector 414 includes a voltage
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`comparator 624, a low-pass filter 626, a reference voltage 628 and a resistor
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`634.” Id. at 10:46–48. “The reference voltage 628 is lower than the
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`continuous presence signal 621 used in the remote terminal 602-1 and lower
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`than the peak output voltage from the interface driver 614.” Id. at 10:48–51.
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`2. Patton (Ex. 1007)
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`Patton is titled “Circuit and Method For Automatic Input-Output
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`Configuration Through Local Area Network Detection.” Ex. 1007. Patton
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`discloses a current detection circuit that may include a current limit resistor
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`16
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`and a differential amplifier. Id. at 1:62–65. In a preferred embodiment,
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`Patton discloses that its circuit 11 may be employed in a printer, modem or
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`any device that may operate in either a serial I/O system or a LAN I/O
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`system and that circuit 11 includes an I/O connector 13 to connect with other
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`devices. Id. 2:15–21. Patton discloses that the current detection circuit
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`works because a serial I/O connection to connector 13 has different
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`properties than a LAN I/O connection. Id. at 2:59–61. “A direct serial I/O
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`connection has a high impedance and therefore results in a low current
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`across resistor 16 when driver 14 is enabled.” Id. at 2:61–63.
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`
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`3. Obviousness of Claim 31 Based on Chang Alone
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`Petitioner contends that Chang discloses all the limitations of
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`independent claim 31. See Pet. 14–23. Addressing the preamble of claim
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`31, an “adapted piece of Ethernet data terminal equipment,” Petitioner
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`contends that Chang discloses network hub 202 to provide electrical power
`
`to connected devices, such as computers 212-1, 212-2, 212-3, through user
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`interface connectors 204. See Pet. 17–18 (citing Ex. 1012 ¶¶ 84–91;
`
`Ex. 1006, 1:9–16; 5:27–29). As noted by Dr. Wolfe, Chang discloses that
`
`computers 212 may be workstations, portable computers, desktop PCs, or
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`personal digital assistants. Ex. 1012 ¶ 88 (citing Ex. 1006, 4:67–5:2). Dr.
`
`Wolfe testifies that a person of skill in the art would have recognized any of
`
`the remote devices of Chang, such as computers 212-1, 212-2, 212-3, to be
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`“Ethernet data terminal equipment” and any of the user interface connectors
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`204 to be an “adapted piece of Ethernet data terminal equipment.” Ex. 1012
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`¶ 90. In view of the present record, we determine Petitioner establishes
`
`sufficiently for purposes of this decision that Chang teaches this limitation of
`
`claim 31.
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`17
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`Claim 31 also recites “an Ethernet connector comprising a plurality of
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`contacts” and “at least one path coupled across selected contacts, the
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`selected contacts comprising at least one of the plurality of contacts of the
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`Ethernet connector and at least another one of the plurality of contacts of the
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`Ethernet connector.” For this limitation, Petitioner cites to Chang’s
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`disclosure of using RJ54 connectors. Pet. 19. Also, Petitioner cites to
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`Chang’s disclosure of a 10Base-T twisted pair cable connection, including
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`lines 500-1 through 500-8 of Figure 5a. Pet. 19 (citing Ex. 1006, 9:1–8, Fig.
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`5a; Ex. 1012 ¶¶ 96–97). Dr. Wolfe states that the lines 500 correspond to
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`the pin numbers that are assigned in the 10Base-T protocol by the IEEE
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`Ethernet standard. Ex. 1012 ¶ 96; see also Ex. 1006, 9:3–6 (“the reference
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`numbers of the lines 500 correspond to the pin numbers that are assigned in
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`the 10Base-T protocol”). Figure 5a of Chang is reproduced below.
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`
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`Ex. 1006, Fig. 5a. Chang discloses that lines 500-1, 500-2, 500-3, and 500-6
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`carry signals and couple to a transformer and lines 500-4, 500-5, 500-7, 500-
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`8 are normally left open. Ex. 1006, 9:6–9. In view of the present record, we
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`determine Petitioner establishes sufficiently for purposes of this decision that
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`Chang teaches this limitation of claim 31.
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`Finally, claim 31 recites the distinguishing information limitation. In
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`Section II.A. above, we construed the limitation to mean “distinguishing
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`information about the piece of Ethernet data terminal equipment, including
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`information that differentiates it from another device, is associated to
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`impedance within the at least one path.”
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`Petitioner argues that Chang teaches that its system may include more
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`than one type of remote terminal 602-1 and, in order to distinguish them,
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`“the continuous presence signal 621 in terminal 602-1a is set to 3VDC and
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`in terminal 602-1b to 5VDC.” Pet 21 (quoting Ex. 1006, 11:11–23). Chang
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`discloses more generally that “different voltages may be used for continuous
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`presence signal 621 in both remote terminal 602-1a and the remote terminal
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`602-1b.” Ex. 1006, 11:19–21. Furthermore, Chang discloses that in order to
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`distinguish the remote terminals, feedback analyzer 610 includes additional
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`voltage comparators coupled to different reference voltages. Id. at 11:13–
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`15. Petitioner cites the following disclosure in Chang:
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`The feedback analyzer 610 of the presence detector 414
`includes a voltage comparator 624, a low-pass filter 626, a
`reference voltage 628 and a resistor 634. The reference voltage
`628 is lower than the continuous presence signal 621 used in
`the remote terminal 602-1 and lower than the peak output
`voltage from the interface driver 614.
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`Pet. 22 (citing Ex. 1006, 10:46–51). Petitioner argues that in view of the
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`voltage comparator 624 in Chang’s presence detector 414, one of ordinary
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`skill in the art would recognize voltage carries “distinguishing information
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`about the piece of Ethernet data terminal equipment” and “would have
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`recognized the presence voltage detection is associated to impedance.”
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`Pet. 22 (citing Ex. 1012 ¶¶ 98–106).
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`Patent Owner argues the distinguishing information limitation is not
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`19
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`shown because Chang cannot detect Ethernet equipment. Prelim Resp. 35–
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`36 (citing Chalumeau Power Sys., LLC v. Alcatel-Lucent, No. 11-1175, 2013
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`WL 5913849 (D. Del. Oct. 30, 2013)9). Patent Owner also argues that
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`Chang “detects an infrared adapter, it provides power to the adapter, but it
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`‘does not provide electrical power when . . . adapters of another type (such
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`as Ethernet 10Base-T, 100 Base-TX 100Base-T4, and Token Ring adapters)
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`are connected.’” Id. at 37 (citing Ex. 1006, 4:50–58, 5:54–63). Thus, Patent
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`Owner concludes that Chang “does not, however, disclose a device that can
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`distinguish between one piece of Ethernet terminal equipment and any other
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`piece of Ethernet terminal equipment.” Id. at 38. These arguments are not
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`persuasive because our construction of the distinguishing information
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`limitation is not limited to distinguishing Ethernet equipment but simply
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`another device.
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`On this record, Petitioner has shown sufficiently how the claimed
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`distinguishing information limitation in claim 31 would have been obvious
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`to one of ordinary skill in the art. To show that a claim would have been
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`obvious over a reference, “there must be some articul
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