UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`D-Link Systems, Inc.,
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`Petitioner,
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`v.
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`Chrimar Systems, Inc.
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`Patent owner,
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`Case: IPR2016-01425
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`PETITION FOR INTER PARTIES REVIEW
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`OF U.S. PATENT NO. 8,155,012
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`U.S. Patent No. 8,155,012
`Petition for Inter Partes Review
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`IPR2016-01425
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` I.
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`V.
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`TABLE OF CONTENTS
` INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37
`C.F.R. §42.22(a))........................................................................................... 1
`II. GROUNDS FOR STANDING (37 C.F.R. §42.104(a))................................. 1
`III. MANDATORY NOTICES (37 C.F.R. §42.8(a)(1)) ..................................... 1
`A. Real Party-In-Interest (37 C.F.R. §42.8(b)(1)) ................................... 1
`B. Identification of Related Matters (37 C.F.R. §42.8(b)(2)) ................. 1
`C. Counsel and Service Information (37 C.F.R. §§42.8(b)(3) & (b)(4)) 2
`D. Payment of fees (37 C.F.R. §42.103) .................................................... 2
`IV. REQUEST FOR REVIEW ............................................................................ 3
`A. Claims To Be Reviewed ........................................................................ 3
`B. Each Of The Cited References Is Available As Prior Art ................. 3
`C. Identification Of Challenge .................................................................. 4
` The ’012 Patent................................................................................................ 5
`A. Description of the Purported Invention .............................................. 5
`B. Level of Ordinary Skill ......................................................................... 8
`C. State of The Technology Prior To The '012 Patent............................ 8
`1. Monitoring Ethernet Data Terminal Equipment In an Ethernet
`Network Based on Current/Impedance Detection Was Known... 9
`2. Providing Electrical Power and Communication Signal Over A
`Common Twisted-Pair Wire Was Known.................................. 10
`VI. Priority Claims in the ’012 Patent............................................................... 10
`VII. Claim Construction .................................................................................... 12
`VIII. THERE IS A REASONABLE LIKELIHOOD THAT CLAIMS 31, 34,
`35, 36, 40, 43, 44, 52, 56, and 60 ARE UNPATENTABLE. .................... 13
`A. Ground I – Obviousness based on Chang (USPN 5,991,885) alone or
`in view of Patton (USPN 5,121,482)................................................ 14
`B. Ground 2 – Obviousness of based on De Nijs (USPN 5,568,525)
`alone or in view of Chaudhry (USPN 5,790,363)........................... 29
`IX. CONCLUSION............................................................................................... 38
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`U.S. Patent No. 8,155,012
`Petition for Inter Partes Review
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`Exhibit No.
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`Description
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`IPR2016-01425
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`EXHIBIT LIST
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`U.S. Patent 8,155,012 (‘012 patent)
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`Return Summon in EDTX Case No. 6:15cv653, Docket No. 7
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`List of Related Matters
`EDTX Case No. 6:15-cv-653, Claim Construction Order dated
`June 17, 2016 (Docket No. 454)
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`EDTX Case No. 6:15-cv-163, Claim Construction Order dated
`March 28, 2016 (Docket No. 123)
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`EDTX Case No. 6:13-cv-880, Claim Construction Order dated
`January 7, 2015 (Docket No. 99)
`U.S. Provisional Application No. 60/081,279
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`U.S. Patent No. 5,991,885 (Chang)
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`U.S. Patent No. 5,121,482 (Patton)
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`U.S. Patent No. 5,568,525 (De Nijs)
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`U.S. Patent No. 5,790,363 (Chaudhry)
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`U.S. Patent No. 5,406,260 (Cummings)
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`U.S. Patent No. 5,444,184 (Hassel)
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`Declaration of Dr. Andrew Wolfe
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`Curriculum Vitae of Dr. Andrew Wolfe
`IBM Cabling System
` http://ohlandl.ipv7.net/NIC/TR-cable.html#RJ45_ICS_UTP
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`http://ohlandl.ipv7.net/NIC/TR-cable.html#RJ45_ICS_UTP.
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`iii
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`1001
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`1002
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`1003
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`1004-1
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`1004-2
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`1004-3
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`U.S. Patent No. 8,155,012
`Petition for Inter Partes Review
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37
`C.F.R. §42.22(a))
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`IPR2016-01425
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`Petitioner petitions for institution of inter partes review of U.S. Patent No.
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`8,155,012 (“the ’012 patent”) (Ex. 1001) and cancellation of that patent’s claims
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`II. GROUNDS FOR STANDING (37 C.F.R. §42.104(a))
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`The undersigned and Petitioner certify that the ’012 patent is available for
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`review. Petitioner further certifies that it is not estopped from requesting inter
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`partes review challenging claims of the ’012 patent. Petitioner was not served
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`with a complaint for infringement more than a year ago of the instant petition. See
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`Ex. 1002.
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`III. MANDATORY NOTICES (37 C.F.R. §42.8(a)(1))
`A. Real Party-In-Interest (37 C.F.R. §42.8(b)(1))
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`D-Link Systems, Inc.
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`B.
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`Identification of Related Matters (37 C.F.R. §42.8(b)(2))
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`The ’012 patent is the subject of 56 civil actions filed in the Eastern District
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`of Michigan, Eastern District of Texas, and Northern District of California.
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`Attached as Exhibit 1003 is a list identifying each of these civil actions, which
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`includes Chrimar Systems Inc., et al. v. D-Link Systems, Inc., Case No. 6:15cv653;
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`consolidated to Case No. 6:15cv618 (E.D.TX). The ’012 patent is also subject of
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`pending IPR in IPR2016-00983 and IPR2016-01389.
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`U.S. Patent No. 8,155,012
`Petition for Inter Partes Review
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`IPR2016-01425
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`IPRs have also been filed on related U.S. Patent Nos. 8,902,760, 8,942,107,
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`and 8,019,838: IPR2016-00569, IPR2016-00574, IPR2016-00573, IPR2016-
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`01151, IPR2016-01391, IPR2016-01397, IPR2016-01399, IPR2016-01426. These
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`cases may affect, or be affected by, decisions in this proceeding.
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`C. Counsel and Service Information (37 C.F.R. §§42.8(b)(3) &
`(b)(4))
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`Lead Counsel
`Victoria Hao (Reg. No. 47,630)
`Law Offices of S.J. Christine Yang
`17220 Newhope Street,
`Suites 101 & 102
`Fountain Valley, California 92708
`Tel: (714) 641-4022
`Fax: (714) 641-2082
`vhao@sjclawpc.com
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`Back-up Counsel
`Martha Hopkins (Reg. No. 46,277)
`Law Offices of S.J. Christine Yang
`17220 Newhope Street,
`Suites 101 & 102
`Fountain Valley, California 92708
`Tel: (714) 641-4022
`Fax: (714) 641-2082
`mhopkins@sjclawpc.com
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`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this
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`Petition. Please address all correspondence to lead and back-up counsel. Petitioner
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`also consents to electronic service by email.
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`D.
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`Payment of fees (37 C.F.R. §42.103)
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`The undersigned authorizes the PTO to charge the required fees to Deposit
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`Account No. 60-0381. Review of 15 claims is requested.
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`The undersigned authorizes payment for additional fees that may be due
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`with this Petition to be charged to the above-referenced Deposit Account.
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`IPR2016-01425
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`U.S. Patent No. 8,155,012
`Petition for Inter Partes Review
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`IV. REQUEST FOR REVIEW
`A. Claims To Be Reviewed
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`Petitioner requests review of claims 31, 34, 35, 36, 40, 43, 44, 52, 56, and 60
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`(cross 59 / 31, 35, 36, 40, 43, 52) of the ’012 patent (“Challenged Claims”).
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`B.
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`Each Of The Cited References Is Available As Prior Art
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`Each of the references cited in this petition qualifies as prior art. All of the
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`references have an effective filing date prior to the earliest potential effective filing
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`date of the ’012 patent of April 10, 1998.
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`• U.S. Patent No. 5,991,885 to Chang et al. (“Chang”) (Ex. 1006) was filed on
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`June 11, 1997, and issued on November 23, 1999, thus qualifies as prior art
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`under 35 U.S.C. §§102(a) and (e).
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`• U.S. Patent No. 5,121,482 to Patton (“Patton”) (Ex. 1007) was filed on
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`September 11, 1989, and issued on June 9, 1992, and thus qualifies as prior
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`art under §102(b).
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`• U.S. Patent No. 5,568,525 to De Nijs et al. (“De Nijs”) (Ex. 1008) was filed
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`on August 19, 1993 and issued on October 22, 1996, and thus qualifies as
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`prior art under §102(b).
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`• U.S. Patent No. 5,790,363 to Chaudhry (“Chaudhry”) (Ex. 1009) was filed
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`on December 3, 1997 and issued on August 4, 1998, and thus qualifies as
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`prior art under §§102(a) and (e).
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`U.S. Patent No. 8,155,012
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`Chang, Patton, De Njis and Chaudhry are cited on the face of the ’012 patent
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`but not were not discussed during prosecution.
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`C.
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`Identification Of Challenge
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`The ’012 patent is unpatentable. In particular, the claims are invalid on the
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`following grounds:
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`Ground 1. Chang (USPN 5,991,885) alone or in view of Patton (USPN
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`5,121,482) renders claims 31, 34, 35, 36, 40, 43, 44, 52, 56, and 60 (cross 59 / 31,
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`35, 36, 40, 43, 52) of the ’012 patent obvious under 35 U.S.C. §103.
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`Ground 2. De Nijs (USPN 5,568,525) alone or in view of Chaudhry
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`(USPN 5,790,363) renders claims 31, 35, 36, 43, 56 and 60 (cross 59 / 31, 35, 36,
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`43) of the ’012 patent obvious under 35 U.S.C. §103.
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`Grounds 1 and 2 are not redundant of each other. Petitioner anticipates that
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`the Patent Owner may try to swear behind non-102(b) references, for example,
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`Chang. Petitioner therefore requests that the Board institute on both grounds.
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`A detailed explanation of why claims 31, 34, 35, 36, 40, 43, 44, 52, 56, and
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`60 (depending from 59, cross 31, 35, 36, 40, 43, 52) are invalid is provided below
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`in Section VIII, including the supporting evidentiary declaration of Dr. Andrew
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`Wolfe (Ex. 1012).
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`U.S. Patent No. 8,155,012
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`V. The ’012 Patent
`A. Description of the Purported Invention
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`The ’012 patent explains that it is directed to equipment networked over
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`“pre-existing wiring or cables that connect pieces of networked computer
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`equipment to a network.” ’012 3:23-27, 4:62-66. The ’012 patent acknowledges
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`that at the time of the alleged invention, “existing Ethernet communications” and
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`equivalents thereof were known. ’012 3:40-42, 5:20-24 ("Ethernet, Token Ring, or
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`ATM").
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`The ’012 patent specification discloses embodiments that purport to provide
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`an improved system for "asset tracking and management," including monitoring
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`and identifying "asset movement" and "theft." ’012 1:20-3:14 (Background). The
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`’012 patent provides examples of networked equipment including personal
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`computers and telephones connected to a hub in a network. ’012 4:66-5:3. The
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`equipment would be connected over “conventional multi-wire cables that include a
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`plurality of transmit and receive data communication links.” ’012 5:12-19
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`(emphasis added); 5:26-30 (“a pair of transmit wires”; “a pair of receive wires”).
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`The ’012 patent generally claims Ethernet data terminal equipment
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`comprising an Ethernet connector with a plurality of contacts and at least one path
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`coupled across selected contacts, and distinguishing information about the Ethernet
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`data terminal equipment associated to impedance within the path. See Ex.1001,
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`Col.18:62–19:5.
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`More specifically, claims 31, 34, 35, 36, 40, 43, 44, 52, 56, and 60 are
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`directed to a piece of Ethernet data terminal equipment. These claims further
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`provide that “wherein distinguishing information about the piece of Ethernet data
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`terminal equipment is associated to impedance within the at least one path.”
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`Claim 31 recites:
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`(31a) An adapted piece of Ethernet data terminal equipment comprising:
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`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,
`(31c)
`wherein distinguishing information about the piece of Ethernet
`data terminal equipment is associated to impedance within the at least
`one path.
`Each of claims 34, 35, 36, 40, 43, 44, 52, 56, and 60 depends from claim 31.
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`Claim 34 further requires “wherein the Ethernet connector is an RJ45 jack
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`and the plurality of contacts comprises the contact 1 through the contact 8 of the
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`RJ45 jack.”
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`Claim 35 further requires “wherein the impedance within the at least one
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`path is part of a detection protocol.”
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`Claim 36 further requires “wherein the piece of Ethernet data terminal
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`equipment is a piece of BaseT Ethernet data terminal equipment.”
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`Claim 40 further requires “wherein the at least one path comprises at least
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`one resistor.”
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`Claim 43 further requires “wherein the at least one path comprises a
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`controller.”
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`Claim 44 further requires “wherein the Ethernet connector is an RJ45 jack
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`comprising the contact 1 through the contact 8 and the piece of Ethernet data
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`terminal equipment is a piece of BaseT Ethernet data terminal equipment.”
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`Claim 52 further requires “wherein the impedance within the at least one
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`path is a function of voltage across the selected contacts.”
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`Claim 56 (depend from claims 31 and 55) further requires “wherein the
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`selected contacts are the same contacts used for normal network communication,”
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`and “wherein the normal network communication is BaseT Ethernet
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`communication.”
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`Claim 60 depends from claim 59 (cross 31, 35, 36, 40, 43, 52) further
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`requires “wherein the selected contacts are at least some of the same contacts used
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`for normal network communication,” and “wherein the normal network
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`communication is BaseT Ethernet communication.”
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`U.S. Patent No. 8,155,012
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`Patent Owner’s Infringement Theory
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`In various related civil actions, Patent Owner is attempting to apply the
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`claims of the ’012 patent to read on the 802.3af Power over Ethernet ("PoE
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`standard").
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`B.
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`Level of Ordinary Skill
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`A person having ordinary skill in the relevant art at the time of the alleged
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`invention is a person with a Bachelor of Science degree in Electrical Engineering
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`or computer science, or the equivalent, and at least three years of practical
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`experience in the design of network communication products. Ex. 1012, Wolfe
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`Decl., at ¶ 38.
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`C.
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`State of The Technology Prior To The '012 Patent
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`Patent Owner has acknowledged and represented to the District Court that
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`“terminal equipment” in the ’012 patent claims is “known structures in the art.”
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`Ex. 1004-1, page 18, lines 2-3.
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`In addition, as discussed below, monitoring terminals in a network based on
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`impedance detection and supplying power over the same conductors over which
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`data is communicated were also known prior to 1998.
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`U.S. Patent No. 8,155,012
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`1. Monitoring Ethernet Data Terminal Equipment In an
`Ethernet Network Based on Current/Impedance Detection
`Was Known
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`Ethernet was developed in the early 1970s for connecting devices, such as
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`computers, into a network, commonly known as local area networks (LANs). The
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`IEEE formally adopted Ethernet as a protocol standard as IEEE 802.3 and initially
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`published the 802.3 Standard on June 23, 1983. Ex. 1012, Wolfe Decl., at ¶ 39.
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`In 1990, the 10BaseT unshielded twisted pair specification for Ethernet was
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`published. Under IEEE 802.3 protocol, Ethernet was designed to run on a cable
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`that has an Ethernet connector at each end. An Ethernet connector is to be fitted
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`into an Ethernet port of an Ethernet device, and an Ethernet connector includes a
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`plurality of exposed contacts with a signal path across selected contacts of that
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`Ethernet connector. Ex. 1012, Wolfe Decl., at ¶ 40.
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`As Ethernet initially assumed a shared medium, it was well known to
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`monitor or otherwise detect Ethernet signals, for example, to manage transmission.
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`Ex. 1012, Wolfe Decl., at ¶¶ 41-42. For instance, under 10BaseT, to monitor
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`whether Ethernet terminal equipment has been recently disconnected from a
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`network, a low current can be injected in the existing communications links and a
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`sensor monitors for changes in the current flow in the existing communications
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`links to ascertain if Ethernet terminal equipment has been recently disconnected
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`from the network. Ex. 1001, col. 2:12-21, Ex. 1010, and Ex. 1012, Wolfe Decl., at
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`¶ 43.
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`As current is proportional to impedance (see, for example, Ex. 1001, Col.
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`8:52-54, “alter the flow of current…by changing the impedance of a circuit”),
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`changes in current flows in a circuit intrinsically reflect changes in impedance for a
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`given voltage. Hence, monitoring changes in a current path, for example, as
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`disclosed in Ex. 1010, would also detect changes in circuit impedance changes for
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`any known voltage. Ex. 1012, Wolfe Decl., at ¶¶ 44-48.
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`2.
`Providing Electrical Power and Communication Signal
`Over A Common Twisted-Pair Wire Was Known
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`Providing both electrical power and communication signals between
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`equipment over a common wire was also known prior to April 1998. For example,
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`the common wire carrying both electrical power and communication signals can be
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`a twisted-pairs cable. See, Ex. 1012, Wolfe Decl., at ¶ 49, and Ex. 1011.
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`VI. Priority Claims in the ’012 Patent
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` A priority date analysis is limited to the four corners of the priority
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`document. To provide sufficient disclosure for a later-filed application, the priority
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`document must “actually or inherently disclose the claim element.” PowerOasis,
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`Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). That standard is
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`not met here.
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`U.S. Patent No. 8,155,012
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`As shown on the face of the ’012 patent, the Patent Owner claims the benefit
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`of U.S. Provisional Application No. 60/081,279 (“’279 provisional”) (Ex. 1005),
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`filed April 10, 1998. Ex. 1001.
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`However, the challenged claims should not be entitled to a priority date or
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`date of invention based on the ’279 provisional. Patent Owner cannot meet its
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`burden of establishing that the ’279 provisional application provides written
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`description support for every limitation of the challenged claims. For example, the
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`’279 provisional application does not provide written description support for the
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`limitation “wherein distinguishing information about the piece of Ethernet data
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`terminal equipment is associated to impedance within the at least one path,” which
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`is recited in independent claim 31, and every remaining challenged claim depends
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`from this claim. Ex. 1005. Nor does the ’279 provisional application provide
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`written description support for the limitations added by dependent challenged
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`claims. Id.
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`To fill this gap, Patent Owner might try to rely on the following from the
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`’279 provisional application: (1) an attempt to incorporate by reference U.S. Patent
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`No, 5,406,260 (Ex. 1005, ’279 provisional, at 2:5-11); and (2) a single paragraph
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`describing the ’260 patent (Ex. 1001). Neither provides written description
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`support. As a matter of law, the attempted incorporation by reference is
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`insufficient, because the ’279 provisional neither “identifies with ‘detailed
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`particularity’ the specific materials in the patent[] asserted to be incorporated by
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`reference” nor “‘clearly indicates’ where the material is found in the incorporated
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`patent[], as required to incorporate material by reference.” IGB Auto. Ltd. v.
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`Gentherm GmbH, IPR2014-00664, Paper 8 at 15 (P.T.A.B. Sept. 30, 2014)
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`(quoting Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir. 2006)).
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`The ’279 provisional’s single-paragraph description of the ’260 patent is also
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`insufficient, because it is silent about claim 31’s requirement that distinguishing
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`information about the piece of Ethernet equipment is associated to impedance
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`within the path.
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`VII. Claim Construction
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`Before the PTO, a claim in an unexpired patent receives its broadest
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`reasonable interpretation (“BRI”) in light of the specification -- i.e., a claim term
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`gets its plain meaning unless it is inconsistent with the specification. See 37 C.F.R.
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`§ 42.100(b). The BRI standard may be different from the claim construction
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`standard applied in litigation.1 A district court has construed the following :
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`“An adapted piece of
`Ethernet data terminal
`equipment”
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`The preamble is limiting
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`Ex. 1004-1
`pg 24
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`1 Petitioner expressly reserves its right to advance different constructions in district
`court litigation, which employs a different claim construction standard. Petitioner
`further reserves its position that claims are invalid under 35 U.S.C. §112 and/or
`under other provision of 35 U.S.C. §102.
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`“BaseT”
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`“path coupled across”
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`distinguishing
`information about the
`piece of Ethernet
`equipment”
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`impedance
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`IPR2016-01425
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`“twisted pair Ethernet in
`accordance with the 10BASE-
`T or 100BASE-T standards”
`“path permitting energy
`transfer”
`“information to distinguish the
`piece of Ethernet data terminal
`equipment from at least one
`other piece of Ethernet data
`terminal equipment”
`opposition to the flow of
`current
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`Ex. 1004-1
`pg 12
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`Ex. 1004-1
`pg 12
`Ex. 1004-1
`pg 22
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`Ex. 1004-3
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`VIII. THERE IS A REASONABLE LIKELIHOOD THAT CLAIMS 31, 34,
`35, 36, 40, 43, 44, 52, 56, and 60 ARE UNPATENTABLE.
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` As described below, Chang alone or in combination with Patton renders
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`claim 31, 34, 35, 36, 40, 43, 44, 52, 56, and 60 (cross 59 / 31, 35, 36, 40, 43, 52)
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`obvious under §103. Ex. 1012, Wolfe Decl., ¶¶ 59-153.
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`In addition, De Nijs alone or in combination with Chaudhry also renders
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`claims 31, 35, 36, 43, 56 and 60 (cross 59 / 31, 35, 36, 43) obvious under §103.
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`Ex. 1012, Wolfe Decl., ¶¶ 154-201.
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`A. Ground I – Obviousness based on Chang (USPN 5,991,885) alone
`or in view of Patton (USPN 5,121,482)
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`Chang
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`Chang (Ex. 1006) relates to “a network that detects the presence of a remote
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`terminal connected to a network and determines the functional protocol of the
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`remote terminal.” Ex. 1006, Abstract, lines 1-3. Chang discloses “network hubs
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`and network interface adapters for automatically and continuously detecting the
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`presence of a remote adapter coupled to a network twisted-pair cable, providing
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`electrical power from a network hub to the remote adapter via the network twisted-
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`pair cable, creating a multi-protocol networking system, and automatically
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`connecting the remote adapter to the appropriate network hub.” Ex. 1006, Col.
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`1:8-14.
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`Chang explains his use of known standard RJ45 connector and twisted-pair
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`cable in Ethernet 10Base-T and 100Base-T systems. Ex. 1006, Col. 8:49-57:
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`Chang teaches “to perform detection that is continuous and does not
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`interfere with the normal transmit and receive, the device presence detector 414
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`does not connect to the signal lines--twisted-pair cable line 1, 2, 3, 6 in Ethernet
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`protocol.” Ex. 1006, Col. 10:3-6.
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`And, Chang describes that “detection mechanism [that] relies on the
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`impedance of the data lines” can detect “the connected device independent of
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`networking protocol.” Ex. 1006, Col. 2: 49-55. Also see, Ex. 1012, Wolfe Decl.,
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`¶¶ 59-66.
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`Patton
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`Patton (Ex. 1007) discloses, as described by Chang: “a device that detects
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`the connected device
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`independent of networking protocol…its detection
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`mechanism relies on the impedance of the data signal lines, its detection circuitry
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`is also coupled directly to the data signal line.” Ex. 1006, Col. 2: 49-55, and Ex.
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`1007.
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`For example, Patton discloses that “current detection circuits may also be
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`referred to as detection means.” For example, an “I/O connection has a high
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`impedance and therefore results in a low current across resistor 16 when driver 14
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`is enabled.” Ex. 1007, Col. 2:61-63.
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`Patton also discusses that “A LAN I/O connection has a low impedance
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`because it includes a transformer and therefore, a high current and large voltage
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`drop results across resistor 16 when driver 14 is enabled.” Ex. 1007, Col. 2:67-3:2.
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`Also see, Ex. 1012, Wolfe Decl., ¶¶ 67-70.
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`Chang/Patton Combination
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`One of ordinary skill in the art would have had compelling reasons and
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`motivations for combining the teaching of Chang with Patton.
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`For example, one of ordinary skill would have understood both Chang and
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`Patton relate to detection in Local Area Networks (LANs).
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`In addition, Chang itself discusses Patton’s detection mechanism. Ex. 1006,
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`Col. 2:49-55.
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`One of ordinary skill in the art would have recognized that although Chang
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`proposes his own detection circuit, Patton’s circuitry can be adapted by Chang’s
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`system to achieve Chang’s described objects. Ex. 1012, Wolfe Decl., ¶¶ 71-77.
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`In addition, one of ordinary skill would recognize that the detection
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`mechanism based on voltage of Chang is functionally similar to Patton’s
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`impedance-based detection mechanism. Ex. 1012, Wolfe Decl., ¶¶ 78-79.
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`Furthermore, Chang’s preferred embodiment shows supplying electrical
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`power to an infrared adapter, and one of ordinary skill also would recognize that
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`the Chang’s method for providing power is not limited to supplying power to an
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`infrared transceiver adapter. For example, Chang discusses one objective is to
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`address “[a] dedicated electrical power supply [which] increases the system cost
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`and requires an AC electrical power outlet.” Ex. 1006, Col. 1:34-38.
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`One of ordinary skill would readily recognize that Chang’s method for
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`providing power can similarly supply power to the Ethernet 10Base-T/100Base-TX
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`computer to skip a dedicated electrical power supply, as Chang discusses:
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`The network system of the present invention does not provide
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`the electrical power to the interface connector unless a
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`desired device is connected. With this system, the same
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`interface connector supports a plurality of network protocols,
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`such as Ethernet 10Base-T, 100Base-TX, or Token Ring.
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`The desired device may run these or another kind of
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`networking protocols.
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`Ex. 1006, Col. 13:36-42 (emphasis added).
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`Ex. 1012, Wolfe Decl., ¶¶ 80-81.
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`For at least each of these reasons, one of ordinary skill in the art would have
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`compelling reasons to combine Chang and Patton in the manner described below.
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`Ex. 1012, Wolfe Decl., ¶¶ 71-83.
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`Claim 31(a) preamble : “an adapted piece of Ethernet data terminal equipment”
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`This element appears in the preamble. If this element is to bear patentable
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`weight, Chang discloses “the network hub 202 (FIG. 2) and the network hub 302
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`(FIG. 3) [to] provide the electrical power to the detected device when the presence
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`of the detected device is confirmed.” Ex. 1006, col. 1:9-16.
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`For example, Chang teaches that “[i]n one embodiment of the present
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`invention, the user interface connectors 204 are conventional RJ45 connectors.”
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`Ex. 1006, col. 5: 27-29.
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`One of ordinary skill in the art would have recognized any of the remote
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`devices of Chang, such as computers 212-1, 212-2 or 212-3, to be “Ethernet data
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`terminal equipment” and any of the user interface 204 to be an “adapted piece of
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`Ethernet data terminal equipment.” Ex. 1012, Wolfe Decl., ¶¶ 84-91.
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`If Chang’s user interface RJ45 connector is not deemed to be “an adapted
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`piece of Ethernet data terminal equipment”, one of ordinary skill in the art would
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`have recognized any of the remote devices of Chang to be an Ethernet data
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`terminal equipment” and any of the computer interface 216 to be an “adapted piece
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`of Ethernet data terminal equipment.” Ex. 1012, Wolfe Decl., ¶¶ 92-94.
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`One of ordinary skill in the art would have recognized that Chang discloses
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`or render Claim 31(a) element obvious. Ex. 1012, Wolfe Decl., ¶¶ 84-95.
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`Claim 31(b) element “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”:
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`Patent Owner has acknowledged and represented to the District Court that
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`“terminal equipment” in the ’012 patent claims is “known structures in the art.”
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`Ex. 1004-1, page 18, lines 2-3. Thus, Claim 31(b) element should be considered as
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`Patent Owner’s admitted prior art and is obvious.
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`In any event, as mentioned above, Chang teaches using RJ54 connectors. In
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`addition, Chang shows, for example, at “FIG. 5a is a schematic diagram illustrating
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`a conventional 10Base-T twisted-pair cable connection. The cable connection
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`includes a plurality of lines 500-1 through 500-8. The dash numbers of the
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`reference numbers of the lines 500 correspond to the pin numbers that are assigned
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`in the 10Base-T protocol by the IEEE Ethernet standard. Lines 500-1, 500-2, 500-
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`3, and 500-6 carry signals and couple to a transformer.” Ex. 1006, col. 9:1-8.
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`One of ordinary skill in the art would have recognized that Chang discloses
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`or render Claim 31(b) element obvious. Ex. 1012, Wolfe Decl., ¶¶ 96-97.
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`Claim 31(c) element “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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`This element, to the extent it can be construed at all, should be construed as
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`non-limiting, because it merely recites “a new intended use for an old product.”
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`See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). An “apparatus claim
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`must distinguish over the prior art in terms of structure rather than function.” Ex
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`Parte Keum Nam Kim, Appeal 2011- 005480, 2014 WL 663955, at *2 (P.T.A.B.
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`Feb. 18, 2014) (holding that the limitation “wherein the first period and the second
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`period are consecutive and substantially equal” was a statement of intended use
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`that did not make a claim to an old product patentable).
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`Further, this limitation is not functional, because it does not describe an
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`action that the Ethernet data terminal equipment itself performs; rather, it merely
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`describes how a property of the claimed Ethernet data terminal equipment is
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`intended to be used. See Digital Ally, Inc. v. Utility Assocs., Inc., IPR2014-00725,
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`Paper 27 at 16 (P.T.A.B. July 27, 2015). Because this wherein limitation is a
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`recitation of an intended use and not a structural limitation, it is not entitled to
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`patentable weight and should be construed as non-limiting.
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`Here, Patent Owner has acknowledged and represented to the District Court
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`that “terminal equipment” in the ’012 patent claims is “known structures in the
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`art.” Ex. 1004-1, page 18, lines 2-3. Thus, Claim 31(c) element should be non-
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`limiting.
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`In any event, Chang teaches “[i]n one embodiment…, the system may
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`include more than one types of remote terminal 602-1, for example, 602-1a and
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`602-1b. In order to distinguish them…. For example, the continuous presence
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`signal 621 in terminal 602-1a is set to 3VDC and in terminal 602-1b to 5VDC.”
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`Ex. 1006, Col. 11:11-23.
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`Chang shows an exemplary signal assignment for an