Declaration of Andrew Wolfe, Ph.D. in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,155,012
`
`IN THE UNITED STATES PATENT A1ND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
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`Trial Number: IPR2016-01425
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`
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`U.S. Patent No. 8,155,012
`
`Filed: Sep. 26, 2008
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`Earliest Related Appln: Apr. 10, 1998
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`Issued: Apr. 10, 2012
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`Inventor(s): John F. Austermann, III
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`Assignee: Chrimar Systems, Inc.
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`Title: SYSTEM AND METHOD FOR
`ADOPTING A PIECE OF TERMINAL
`EQUIPMENT
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Panel: To Be Assigned
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`
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`DECLARATION OF ANDREW WOLFE, PH.D. IN SUPPORT OF
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,155,012
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`Declaration of Andrew Wolfe, Ph.D. in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,155,012
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`
`
`Table of Contents
`I. Introduction ........................................................................................................... 3
`
`II. Background and Qualifications ............................................................................ 5
`
`III. Understanding of Patent Law .............................................................................10
`
`IV. Background ........................................................................................................12
`
`A. Brief Description of Challenged Claims of the '012 Patent ....................12
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`B. Brief Description of Patent Owner’s Infringement Allegations ..............16
`
`V. Level of Ordinary Skill in the Pertinent Art .......................................................17
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`VI. State of The Technology Prior To The '012 Patent............................................17
`
`A. Monitoring Ethernet Data Terminal Equipment In an Ethernet Network
`Based on Current/Impedance Detection Was Known .............................17
`
`B. Providing Electrical Power and Communication Signal Over A Common
`Twisted-Pair Wire Was Known ...............................................................20
`
`VII. Broadest Reasonable Interpretation .................................................................21
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`VIII.
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`Detailed Invalidity Analysis ....................................................................22
`
`A. Summary of Opinions ..............................................................................24
`
`B. Obviousness of Claims 31, 34, 35, 36, 40, 43, 44, 52, 56, and 60 (cross
`59 / 31, 35, 36, 40, 43, 52) under §103 based on Chang (US5991885)
`Alone or In View of Patton (US5121482) ...............................................25
`
`1.
`
`Background on Chang ...................................................................25
`
`Background on Patton ...................................................................28
`2.
`Chang/Patton Combination ...........................................................29
`3.
`Detailed Analysis ..........................................................................32
`4.
`C. Obviousness of 31, 35, 36, 43, 56 and 60 (cross 59 / 31, 35, 36, 43)
`under §103 based on De Nijs (US5,568,525) Alone or In View of
`Chaudhry (US 5,790,363) ........................................................................53
`
`1.
`2.
`
`Background on De Niji .................................................................53
`Background on Chaudhry .............................................................54
`
`De Nijs/Chaudhry Combination....................................................54
`3.
`Detailed Analysis ..........................................................................55
`4.
`IX. Secondary Considerations of Non-Obviousness ................................................66
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`X. Conclusion ..........................................................................................................66
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`Declaration of Andrew Wolfe, Ph.D. in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,155,012
`
` I
`
` , Andrew Wolfe, Ph.D. hereby declare as follows:
`
`I.
`
`1.
`
`INTRODUCTION
`
`I have been retained as an expert witness on behalf of D-Link Systems, Inc.
`
`("D-Link") for the above-captioned Petition for Inter Partes Review ("IPR")
`
`of U.S. Patent No. 8,155,012 ("the '012 patent", Ex. 1001). I am being
`
`compensated for my time in connection with this IPR. My compensation is
`
`in no way dependent on the outcome of this matter.
`
`2.
`
`I have been asked to provide my opinions regarding whether any of claims
`
`31, 34, 35, 36, 40, 43, 44, 52, 56, and 60 of the '012 patent is invalid, as
`
`anticipated by the prior art, or would have been obvious to a person having
`
`ordinary skill in the art at the time of the alleged invention.
`
`3.
`
`The '012 patent issued on April 10, 2012, from U.S. Patent Application No.
`
`12/239,001, filed on September 26, 2008 and has a series of related
`
`applications, with the earliest provisional application filing date of April 10,
`
`1998.
`
`4.
`
`The face of the '012 patent names John F. Austermann, III and Marshall B.
`
`Cummings as the purported inventors.
`
`5.
`
`In preparing this Declaration, I have reviewed the '012 patent, the file history
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`of the '012 patent, and numerous prior art references and technical references
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`from the time of the alleged invention.
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`3
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`Declaration of Andrew Wolfe, Ph.D. in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,155,012
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`6.
`
`I have been advised and it is my understanding that patent claims in an IPR
`
`are given their broadest reasonable interpretation in view of the patent
`
`specification, file history, and the understanding of one having ordinary skill
`
`in the relevant art at the time of the purported invention.
`
`7.
`
`In forming the opinions expressed in this Declaration, I relied upon my
`
`education and experience in the relevant field of the art, and have considered
`
`the viewpoint of a person having ordinary skill in the relevant art, as of April
`
`1998. My opinions directed to the invalidity of each of claims 31, 34, 35,
`
`36, 40, 43, 44, 52, 56, and 60 (cross 59 / 31, 35, 36, 40, 43, 52) of the '012
`
`patent are based, at least in part, on the following prior art references:
`
`Reference
`
`Date of Public Availability
`
`U.S. Patent No. 5,991,885 to
`
`Chang (Ex. 1006) was filed on June 11,
`
`Chang et al. ("Chang")
`
`1997, and issued on November 23, 1999.
`
`U.S. Patent No. 5,121,482 to
`
`Patton (Ex. 1007) was filed on September
`
`Patton ("Patton")
`
`11, 1989, and issued on June 9, 1992.
`
`U.S. Patent No. 5,568,525 to
`
`De Nijs (Ex. 1008) was filed on August
`
`De Nijs et al. ("De Nijs")
`
`19, 1993 and issued on October 22, 1996.
`
`U.S. Patent No. 5,790,363 to
`
`Chaudhry
`
`(Ex. 1009) was
`
`filed on
`
`Chaudhry ("Chaudhry")
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`December 3, 1997 and issued on August 4,
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`
`
`1998.
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`Declaration of Andrew Wolfe, Ph.D. in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,155,012
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`U.S. Patent No. 5,406,260 to
`
`Cummings (Ex. 1010) was filed on
`
`Cummings
`
`et
`
`al.
`
`December 18, 1992 and issued on April
`
`("Cummings")
`
`11, 1995.
`
`U.S. Patent No. 5,444,184 to
`
`Hassel (Ex. 1011) was filed on February
`
`Hassel ("Hassel")
`
`10, 1993 and issued on August 22, 1995.
`
`
`II. BACKGROUND AND QUALIFICATIONS
`
`8.
`
`I have more than 30 years of experience as a computer system designer,
`
`personal computer graphics designer, educator, and as an executive in the
`
`electronics industry.
`
`9.
`
`In 1985, I earned a B.S.E.E. degree in Electrical Engineering and Computer
`
`Science from The Johns Hopkins University. In 1987, I received an M.S.
`
`degree in Electrical and Computer Engineering from Carnegie Mellon
`
`University. In 1992, I received a Ph.D. in Computer Engineering from
`
`Carnegie Mellon University. My doctoral dissertation proposed a new
`
`approach for the architecture of a computer processor.
`
`10.
`
`In 1983, I began designing touch sensors, microprocessor-based computer
`
`systems, and I/O (input/output) cards for personal computers as a senior
`
`design engineer for Touch Technology, Inc. During the course of my design
`
`projects with Touch Technology, I designed I/O cards for PC-compatible
`
`computer systems, including the IBM PC-AT, to interface with interactive
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`
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`touch-based computer terminals that I designed for use in public information
`
`systems. I continued designing and developing related technology as a
`
`consultant to the Carroll Touch division of AMP, Inc. and I designed one of
`
`the first custom touchscreen integrated circuits in 1986.
`
`11. From 1986 through 1987, I designed and built a high-performance computer
`
`system as a student at Carnegie Mellon University. From 1986 through
`
`early 1988, I also developed the curriculum, and supervised the teaching
`
`laboratory, for processor design courses.
`
`12.
`
`In the latter part of 1989, I worked as a senior design engineer for ESL-TRW
`
`Advanced Technology Division. While at ESL-TRW, I designed and built a
`
`bus interface and memory controller for a workstation-based computer
`
`system, and also worked on the design of a multiprocessor system.
`
`13. At the end of 1989, I (along with some partners) reacquired the rights to the
`
`technology I had developed at Touch Technology and at AMP, and founded
`
`The Graphics Technology Company. Over the next seven years, as an
`
`officer and a consultant for The Graphics Technology Company, I managed
`
`the company's engineering development activities and personally developed
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`dozens of touchscreen sensors, controllers, and interactive touch-based
`
`computer systems.
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`14.
`
`I have consulted, formally and informally, for a number of fabless
`
`semiconductor companies. In particular, I have served on the technical
`
`advisory boards for two processor design companies: BOPS, Inc., where I
`
`chaired the board, and Siroyan Ltd., where I served in a similar role for three
`
`networking chip companies—Intellon, Inc., Comsilica, Inc, and Entridia,
`
`Inc.—and one 3D game accelerator company, Ageia, Inc.
`
`15.
`
`I have also served as a technology advisor to Motorola and to several
`
`venture capital funds in the U.S. and Europe. Currently, I am a director of
`
`Turtle Beach Corporation, providing guidance in its development of
`
`premium audio peripheral devices for a variety of commercial electronic
`
`products.
`
`16. From 1991 through 1997, I served on the Faculty of Princeton University as
`
`an Assistant Professor of Electrical Engineering. At Princeton, I taught
`
`undergraduate and graduate-level courses
`
`in Computer Architecture,
`
`Advanced Computer Architecture, Display Technology, and Microprocessor
`
`Systems, and conducted sponsored research in the area of computer systems
`
`and related topics. I was also a principal investigator for DOD research in
`
`video technology and a principal investigator for the New Jersey Center for
`
`Multimedia Research. From 1999 through 2002, I taught the Computer
`
`Architecture course to both undergraduate and graduate students at Stanford
`
`
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`University multiple times as a Consulting Professor. At Princeton, I
`
`received several teaching awards, both from students and from the School of
`
`Engineering. I have also taught advanced microprocessor architecture to
`
`industry professionals in IEEE and ACM sponsored seminars. More
`
`recently, I have been a lecturer at Santa Clara University teaching graduate
`
`courses on Computer Organization and Architecture and undergraduate
`
`courses on electronics and embedded computing.
`
`17. From 1997 through 2002, I held a variety of executive positions at a
`
`publicly-held fabless semiconductor company originally called S3, Inc. and
`
`later called Sonicblue Inc. For example, I held the positions of Chief
`
`Technology Officer, Vice President of Systems Integration Products, Senior
`
`Vice President of Business Development, and Director of Technology. At
`
`the time I joined S3, the company supplied graphics accelerators for more
`
`than 50% of the PCs sold in the United States.
`
`18.
`
`I have published more than 50 peer-reviewed papers in computer
`
`architecture and computer systems and IC design.
`
`19.
`
`I also have chaired IEEE and ACM conferences in microarchitecture and
`
`integrated circuit design and served as an associate editor for IEEE and
`
`ACM journals.
`
`20.
`
`I am a named inventor on at least 51 U.S. patents and 28 foreign patents.
`
`
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`Declaration of Andrew Wolfe, Ph.D. in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,155,012
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`21.
`
`In 2002, I was the invited keynote speaker at the ACM/IEEE International
`
`Symposium on Microarchitecture and at the International Conference on
`
`Multimedia. From 1990 through 2005, I have also been an invited speaker
`
`on various aspects of technology and the PC industry at numerous industry
`
`events
`
`including
`
`the Intel Developer’s Forum, Microsoft Windows
`
`Hardware Engineering Conference, Microprocessor Forum, Embedded
`
`Systems Conference, Comdex, and Consumer Electronics Show, as well as
`
`at the Harvard Business School and the University of Illinois Law School. I
`
`have been interviewed on subjects related to computer graphics and video
`
`technology and the electronics industry by publications such as the Wall
`
`Street Journal, New York Times, Los Angeles Times, Time, Newsweek,
`
`Forbes, and Fortune as well as CNN, NPR, and the BBC. I have also spoken
`
`at dozens of universities including MIT, Stanford, University of Texas,
`
`Carnegie Mellon, UCLA, University of Michigan, Rice, and Duke.
`
`22. Based on my technical education, and my years of professional experience
`
`as both an engineer and as an educator, I consider myself to be an expert in
`
`the field of computer architecture and computer system design, consumer
`
`electronics, and computer programming,
`
`including computer busses,
`
`interfaces, and input/output ports. Moreover, I am very familiar with the
`
`
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`operation and functional capabilities and
`
`limitations of commercial
`
`computers and computer peripherals existing during the late 1990s.
`
`23. My professional experience with computer device interface design, as well
`
`as my educational background, is summarized in more detail in my C.V.,
`
`which is attached as Ex. 1013.
`
`III. UNDERSTANDING OF PATENT LAW
`
`24.
`
`I am not a patent attorney and I am presenting no opinions on the law related
`
`to patent validity. D-Link's attorneys have explained certain legal principles
`
`to me that I have relied on in forming my opinions set forth in this
`
`declaration.
`
`25.
`
`I understand that prior art to the '012 patent includes patents and printed
`
`publications in the relevant art that predate the April 10, 1998 earliest
`
`claimed related application filing date.
`
`26.
`
`I understand that the term "comprising" or "comprises" in a patent claim is
`
`inclusive or open-ended and does not exclude additional elements.
`
`27.
`
`I understand that a claim is invalid if it is anticipated or obvious.
`
`Anticipation of a claim requires that every element of a claim be disclosed
`
`expressly or inherently in a single prior art reference. Obviousness of a
`
`claim requires that the claim be obvious from the perspective of a person
`
`having ordinary skill in the relevant art at the time the alleged invention was
`
`
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`Declaration of Andrew Wolfe, Ph.D. in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,155,012
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`made. I understand that a claim may be obvious from a combination of two
`
`or more prior art references.
`
`28.
`
`I understand that an obviousness analysis requires an understanding of the
`
`scope and content of the prior art, any differences between the alleged
`
`invention and the prior art, and the level of ordinary skill in evaluating the
`
`pertinent art.
`
`29.
`
`I further understand that certain factors may support or rebut the obviousness
`
`of a claim. I understand that such secondary considerations include, among
`
`other things, commercial success of the patented invention, skepticism of
`
`those having ordinary skill in the art at the time of invention, unexpected
`
`results of the invention, any long-felt but unsolved need in the art that was
`
`satisfied by the alleged invention, the failure of others to make the alleged
`
`invention, praise of the alleged invention by those having ordinary skill in
`
`the art, and copying of the alleged invention by others in the field. I
`
`understand that there must be a nexus—a connection—between any such
`
`secondary considerations and the alleged invention. I also understand that
`
`contemporaneous and independent invention by others is a secondary
`
`consideration tending to show obviousness.
`
`30.
`
`I further understand that a claim may be obvious if common sense directs
`
`one to combine multiple prior art references or add missing features to
`
`
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`reproduce the alleged invention recited in the claims. If a person having
`
`ordinary skill in the relevant art can implement a predictable variation,
`
`obviousness likely bars its patentability. For the same reason, if a technique
`
`has been used to improve one device and a person having ordinary skill in
`
`the art would recognize that it would improve similar devices in the same
`
`way, using the technique is obvious. I further understand that a claim can be
`
`obvious if it unites old elements with no change to their respective functions,
`
`or alters prior art by mere substitution of one element for another known in
`
`the field and that combination yields predictable results. While it may be
`
`helpful to identify a reason for this combination, common sense should
`
`guide and no rigid requirement of finding a teaching, suggestion or
`
`motivation to combine is required. When a product is available, design
`
`incentives and other market forces can prompt variations of it, either in the
`
`same field or different one.
`
`IV. BACKGROUND
`
`A. Brief Description of Challenged Claims of the '012 Patent
`
`31. Exhibit 1004-1, one of the District Court’s Claim Construction Orders
`
`provides the following background on the '012 patent:
`
`The ’012 Patent is titled “System and Method for Adapting a
`
`Piece of Terminal Equipment,” and relates to tracking of
`
`
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`devices that are connected to a wired network. See generally
`
`’012 Patent. More specifically, the ’012 Patent describes
`
`permanently identifying an “asset,” such as a computer, “by
`
`attaching an external or internal device to the asset and
`
`communicating with that device using existing network wiring
`
`or cabling.” ’012 Patent at 1:67–2:2. The ’012 Patent refers to
`
`that device as the “remote module.” Id. at 3:22–26. The asset
`
`can then be managed, tracked, or identified by using the remote
`
`module to communicate a unique identification number, port
`
`ID, or wall jack location to the network monitoring equipment,
`
`or “central module.” Id. at 6:7–13, 8:66–9:4.
`
`Ex. 1004-1, page 2.
`
`32. Claim 31 is an independent claim, and each of claims 34, 35, 36, 40, 43, 44,
`
`52, 56, and 60 (cross 59 / 31, 35, 36, 40, 43, 52) depends from claim 31.
`
`33. Claims 31, 34, 35, 36, 40, 43, 44, 52, 56, and 60 (cross 59 / 31, 35, 36, 40,
`
`43, 52) are directed to a piece of Ethernet data terminal equipment. These
`
`claims further provide that “wherein distinguishing information about the
`
`piece of Ethernet data terminal equipment is associated to impedance within
`
`the at least one path.”
`
`
`
`
`
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`34. Specifically, claim 31 recites:
`
`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.
`
`
`
`Claim 34 recites:
`
`The piece of Ethernet data terminal equipment according to claim 31
`
`wherein the Ethernet connector is an RJ45 jack and the plurality of
`
`contacts comprises the contact 1 through the contact 8 of the RJ45
`
`jack.
`
`Claim 35 recites:
`
`The piece of Ethernet data terminal equipment according to claim 31
`
`wherein the impedance within the at least one path is part of a
`
`detection protocol.
`
`
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`Claim 36 recites:
`
`The piece of Ethernet data terminal equipment according to claim 31
`
`wherein the piece of Ethernet data terminal equipment is a piece of
`
`BaseT Ethernet data terminal equipment.
`
`Claim 40 recites:
`
`The piece of Ethernet data terminal equipment according to claim 31
`
`wherein the at least one path comprises at least one resistor.
`
`Claim 43 recites:
`
`The piece of Ethernet data terminal equipment according to claim 31
`
`wherein the at least one path comprises a controller.
`
`Claim 44 recites:
`
`The piece of Ethernet data terminal equipment according to claim 31
`
`wherein the Ethernet connector is an RJ45 jack comprising the contact
`
`1 through the contact 8 and the piece of Ethernet data terminal
`
`equipment is a piece of BaseT Ethernet data terminal equipment.
`
`Claim 52 recites:
`
`The piece of Ethernet data terminal equipment according to claim 31
`
`wherein the impedance within the at least one path is a function of
`
`voltage across the selected contacts.
`
`
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`Declaration of Andrew Wolfe, Ph.D. in Support of
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`Claim 56 recites:
`
`The piece of Ethernet data terminal equipment according to claim 55
`
`wherein the normal network communication is BaseT Ethernet
`
`communication.
`
`Claim 55. The piece of Ethernet data terminal equipment according to
`
`claim 31 wherein the selected contacts are the same contacts used for
`
`normal network communication.
`
`Claim 60 (which depends from claim 59, cross 31, 35, 36, 40, 43, 52)
`
`recites:
`
`The piece of Ethernet data terminal equipment according to claim 59
`
`wherein the normal network communication is BaseT Ethernet
`
`communication.
`
`Claim 59. The piece of Ethernet data terminal equipment according to
`
`any one of claims 31 through 54 and claim 57 wherein the selected
`
`contacts are at least some of the same contacts used for normal
`
`network communication.
`
`B.
`
`Brief Description of Patent Owner’s Infringement Allegations
`
`35.
`
`I understand that Patent Owner has acknowledged and represented to the
`
`District Court that “terminal equipment” in claims 31, 35, 36, 43, 56 and 60
`
`is “known structures in the art.” Ex. 1004-1, page 18, lines 2-3.
`
`
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`Declaration of Andrew Wolfe, Ph.D. in Support of
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`36.
`
`I further understand that Patent Owner has alleged that claims 31, 35, 36, 43,
`
`56 and 60 to cover equipment that is capable to receive Power over Ethernet
`
`(“PoE”) based on the IEEE 802.3af and IEEE 802.at standard.
`
`V. LEVEL OF ORDINARY SKILL IN THE PERTINENT ART
`
`37.
`
`I have been advised that there are multiple factors relevant to determining
`
`the level of ordinary skill in the pertinent art, including the educational level
`
`of active workers in the field at the time of the invention, the sophistication
`
`of the technology, the type of problems encountered in the art, and the prior
`
`art solutions to those problems.
`
`38.
`
`It is my opinion that a person having ordinary skill in the relevant art at the
`
`time of invention (i.e., in April 1998) is a person with a Bachelor of Science
`
`degree in Electrical Engineering or computer science, or the equivalent, and
`
`at least three years of practical experience in the design of network
`
`communication products.
`
`VI. STATE OF THE TECHNOLOGY PRIOR TO THE '012 PATENT
`
`A. Monitoring Ethernet Data Terminal Equipment In an Ethernet
`Network Based on Current/Impedance Detection Was Known
`
`39. Ethernet was developed in the early 1970s for connecting devices, such as
`
`computers, into a network, commonly known as local area networks
`
`(LANs). The IEEE formally adopted Ethernet as a protocol standard as
`
`IEEE 802.3 and initially published the 802.3 Standard on June 23, 1983.
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`40.
`
`In 1990, the 10BaseT unshielded twisted pair specification for Ethernet was
`
`published. The IEEE 802.3i. Under this protocol, Ethernet was designed to
`
`run on a cable that has an Ethernet connector at each end. An Ethernet
`
`connector is to be fitted into an Ethernet port of an Ethernet device, and an
`
`Ethernet connector includes a plurality of exposed contacts with a signal
`
`path across selected contacts of that Ethernet connector.
`
`41. Ethernet initially assumed a shared medium. In other words, multiple
`
`
`
`devices on each segment of the network are interconnected but later 10Base
`
`T introduced an optional star topology via Ethernet hubs (which replicated
`
`all traffic received on any port to every other port). For example, a known
`
`method for sharing the medium is Carrier Sense Multiple Access with
`
`Collision Detection (CSMA/CD). Ethernet devices will check to see if
`
`anyone else is transmitting at the moment (carrier sense of multiple access)
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`and if so (collision detection) will wait a short time before retrying the
`
`transmission.1
`
`42. Hence, it was well known to monitor or otherwise detect Ethernet signals,
`
`for example, to manage transmission.
`
`43.
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`In addition, under 10BaseT, to monitor whether Ethernet terminal equipment
`
`has been recently disconnected from a network, a low current can be injected
`
`in the existing communications links and a sensor monitors for changes in
`
`the current flow in the existing communications links to ascertain if Ethernet
`
`terminal equipment has been recently disconnected from the network. Ex.
`
`1001, col. 2:12-21 and Ex. 1010, U.S. Patent No. 5,406,260 to Cummings,
`
`issued on April 11, 1995 for “Network Security System for Detecting
`
`Removal of Electronic Equipment.”
`
`44. A circuit path where any current can flow will always the result in the
`
`presence of resistance and impedance in that path.
`
`45. Electrical resistance is the measure of the opposition that a circuit presents to
`
`a DC current when a voltage is applied. Impedance extends the concept of
`
`resistance to alternating current (AC) circuits (using complex-valued
`
`
`1 Over time, though, hubs were replaced by switches, which send to each port only
`
`the traffic directed to the device on that port. That, combined with the migration
`
`from coaxial to twisted pair cabling (with dedicated pairs for sending and receiving
`
`data) and optical fiber, made shared-medium problems a thing of the past.
`
`
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`mathematics rather than real numbers), and possesses both magnitude and
`
`phase.2 When a circuit is driven with direct current (DC), there is no
`
`distinction between impedance and resistance (resistance can be thought of
`
`as impedance with zero phase angle).
`
`46. According to Ohm’s Law:
`
`V = I • Z
`
`where V is voltage, I is current, and Z is the load impedance.
`
`47. As current is proportional to impedance (see, for example, Ex. 1001, Col.
`
`8:52-54, “alter the flow of current…by changing the impedance of a
`
`circuit”), changes in current flows in a circuit intrinsically reflect changes in
`
`impedance for a given voltage.
`
`48. Hence, monitoring changes in a current path for example disclosed in Ex.
`
`1010, would also detect changes in circuit impedance for any known
`
`voltage.
`
`B.
`
`Providing Electrical Power and Communication Signal Over A
`Common Twisted-Pair Wire Was Known
`
`49. Providing both electrical power and communication signals between
`
`equipment over a common wire was also known prior to April 1998. See,
`
`e.g., Ex. 1011, U.S. Patent No. 5,444,184 to Hassel, issued on August 22,
`
`1995 for “Method and Cable for Transmitting Communication Signals and
`
`
`2 Resistance has only magnitude.
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`Electrical Power Between Two Spaced-Apart Locations.” For example, the
`
`common wire carrying both electrical power and communication signals can
`
`be a twisted-pairs cable.
`
`
`
`VII. BROADEST REASONABLE INTERPRETATION
`
`50.
`
`I understand that in an inter partes review, claims of an unexpired patent
`
`(e.g.,
`
`the
`
`'012 patent) should be given
`
`their broadest reasonable
`
`interpretation in view of the specification.
`
`51. For example, I understand that the phrase “associated to [impedance]”
`
`should be given its broadest reasonable interpretation in view of the
`
`specification. As the '012 Specification does not provide any special
`
`meaning
`
`to
`
`the phrase “associated
`
`to,”
`
`the phrase “associated
`
`to
`
`[impedance]” should be interpreted as understood by a person having
`
`ordinary skill in the art at the time of the alleged invention.
`
`52.
`
`I further understand that a District Court may interpret claims differently and
`
`not necessarily give the claims their broadest reasonable construction.
`
`
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`53. For example, a district court has construed the following for the '012 patent:
`
`“An adapted piece of
`
`Ethernet data terminal
`
`The preamble is limiting
`
`
`Ex. 1004-1 pg 24
`
`equipment”
`
`“BaseT”
`
`
`
`“twisted pair Ethernet in
`
`Ex. 1004-1 pg 12
`
`accordance with the
`
`10BASE-T or 100BASE-T
`
`standards”
`
`“path coupled across”
`
`“path permitting energy
`
`Ex. 1004-1 pg 12
`
`transfer”
`
`distinguishing
`
`“information to distinguish
`
`Ex. 1004-1 pg 22
`
`information about the
`
`the piece of Ethernet data
`
`piece of Ethernet
`
`terminal equipment from at
`
`equipment”
`
`least one other piece of
`
`Ethernet data terminal
`
`equipment”
`
`impedance
`
`opposition to the flow of
`
`Ex. 1004-3 pg 12
`
`current
`
`
`
`VIII. DETAILED INVALIDITY ANALYSIS
`
`54.
`
`I have been asked to provide an opinion as to whether each of Claims 31, 34,
`
`35, 36, 40, 43, 44, 52, 56, and 60 (cross 59 / 31, 35, 36, 40, 43, 52) of the
`
`'012 patent is invalid in view of the prior art. The discussion below provides
`
`a detailed invalidity analysis of how the prior art references identified in
`
`
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`Section I invalidate claims 31, 34, 35, 36, 40, 43, 44, 52, 56, and 60 (cross
`
`59 / 31, 35, 36, 40, 43, 52) of the '012 patent.3
`
`55. As part of my obviousness analysis, I have considered the scope and content
`
`of the prior art, and whether any differences between the alleged invention
`
`and the prior ar