Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 1 of 25 PageID #: 387
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`CHRIMAR SYSTEMS, INC., et al.,
`Plaintiffs,
`
`
`
`
`v.
`
`AASTRA TECHNOLOGIES LIMITED, et
`al.,
`
`
`Defendants.
`
`
`CHRIMAR SYSTEMS, INC., et al.,
`
`
`Plaintiffs,
`
`
`v.
`
`ALCATEL-LUCENT, INC., et al.,
`
`
`Defendants.
`
`
`CHRIMAR SYSTEMS, INC., et al.,
`
`
`Plaintiffs,
`
`
`v.
`
`AMX, LLC,
`
`
`Defendant.
`
`
`CHRIMAR SYSTEMS, INC., et al.,
`
`
`Plaintiffs,
`
`
`v.
`
`GRANDSTREAM NETWORKS, INC.,
`
`
`Defendant.
`
`Case No. 6:13-CV-879-JDL
`
`Case No. 6:13-CV-880-JDL
`
`Case No. 6:13-CV-881-JDL
`
`Case No. 6:13-CV-882-JDL
`
`Chrimar Systems, Inc.
`Exhibit 2032-1
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 2 of 25 PageID #: 388
`
`CHRIMAR SYSTEMS, INC., et al.,
`
`
`
` Plaintiffs,
`
`Case No. 6:13-CV-883-JDL
`
`
`v.
`
`SAMSUNG ELECTRONICS, CO., et al.,
`
`
`
` Defendants.
`
`
`
`
`
`
`
`
`
`
`DEFENDANTS’1 COMBINED MOTION FOR SUMMARY JUDGMENT
`AND CLAIM CONSTRUCTION
`
`
`
`
`1 “Defendants” refers to and includes those Defendants joining this motion: Aastra Technologies,
`Ltd., Aastra USA Inc., Alcatel-Lucent USA, Inc., Alcatel-Lucent Holdings, Inc., AMX LLC,
`Grandstream Networks, Inc., Samsung Telecommunications America, LLC and Samsung
`Electronics, Co. Ltd.
`
`
`
`ii
`
`Chrimar Systems, Inc.
`Exhibit 2032-2
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 3 of 25 PageID #: 389
`
`TABLE OF CONTENTS
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`INTRODUCTION .............................................................................................................. 1 
`
`STATEMENT OF THE ISSUE .......................................................................................... 4 
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS ................................................. 4 
`
`LEGAL STANDARDS ...................................................................................................... 6 
`
`A. 
`
`B. 
`
`Claim Construction ................................................................................................. 6 
`
`Summary Judgment of Noninfringement................................................................ 6 
`
`V. 
`
`NONE OF THE ACCUSED PRODUCTS MEETS THE DISTINGUISHING
`LIMITATIONS. .................................................................................................................. 7 
`
`A. 
`
`Properly Construed, The Distinguishing Terms Require Differentiating
`Each Piece Of [Ethernet Data] Terminal Equipment From Each Other
`Piece. ....................................................................................................................... 8 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Asset tracking and management is the purpose of the ’012 patent. ............ 8 
`
`“Distinguish” does not appear in the ’012 patent specification. ................. 9 
`
`Proper construction of the “distinguishing” terms relies on the
`intrinsic evidence. ..................................................................................... 10 
`
`Chrimar’s proposed constructions disregard the intrinsic evidence. ........ 13 
`
`B. 
`
`None Of The Accused Products Associate Information Or Arrange
`Impedance To Differentiate The Claimed Piece of [Ethernet Data]
`Terminal Equipment From Each Other Piece Of [Ethernet Data] Terminal
`Equipment. ............................................................................................................ 14 
`
`VI. 
`
`CONCLUSION ................................................................................................................. 15 
`
`
`
`iii
`
`
`
`
`
`Chrimar Systems, Inc.
`Exhibit 2032-3
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 4 of 25 PageID #: 390
`
`TABLE OF AUTHORITIES
`
`Cases 
`
`Advanced Cardiovascular Sys., Inc., v. Scimed Life Sys., Inc.,
`261 F.3d 1329 (Fed. Cir. 2001) ....................................................................................... 4, 7
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ............................................................................................................ 6
`
`Gemalto S.A. v. HTC Corp. et al.,
`No. 2013-1397, 2014 U.S. App. LEXIS 11520 (Fed. Cir. June 19, 2014) ......................... 9
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ........................................................................................... 6
`
`Limelight Networks, Inc. v. Akamai Techs., Inc.,
`134 S. Ct. 2111 (2014) .................................................................................................... 4, 7
`
`Mirror Worlds, LLC v. Apple, Inc.,
`692 F.3d 1351 (Fed. Cir. 2012) ........................................................................................... 7
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) ........................................................................................................ 7
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................................... 6
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................................. 6
`
`Statutes 
`
`35 U.S.C. § 112 ............................................................................................................................. 10
`
`Rules 
`
`Fed. R. Civ. P. 56(a) ........................................................................................................................ 6
`
`
`
`
`
`
`
`
`
`iv
`
`Chrimar Systems, Inc.
`Exhibit 2032-4
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 5 of 25 PageID #: 391
`
`Peschel Decl.
`
`
`
`Exhibit A
`
`
`Exhibit B
`
`
`Exhibit C
`
`
`Exhibit D
`
`
`Exhibit E
`
`
`Exhibit F
`
`
`Exhibit G
`
`
`Exhibit H
`
`
`Exhibit I
`
`
`Exhibit J
`
`Exhibit K
`
`
`Exhibit L
`
`
`Carlson Decl.
`
`
`
`
`
`
`
`INDEX TO DECLARATIONS AND EXHIBITS
`
`Declaration of Leisa Peschel in Support of Defendants’ Combined Motion
`for Summary Judgment and Claim Construction (“Peschel Decl.”)
`
`Relevant excerpts of the IEEE 802.3af Power over Ethernet
`(“PoE”) standard
`
`Relevant excerpts of Chrimar’s infringement contentions against
`Alcatel
`
`Relevant excerpts of Chrimar’s infringement contentions against
`AMX
`
`Relevant excerpts of Chrimar’s infringement contentions against
`Samsung
`
`Relevant excerpts of the September 26, 2008 Application that
`issued as U.S. Patent No. 8,155,012 (“the ’012 patent”)
`
`the May 4, 2009 Third Preliminary
`Relevant excerpts of
`Amendment in the ’012 patent prosecution history
`
`Relevant excerpts of the April 3, 2009 Response to Notice of Non-
`Compliant Amendment in the ’012 patent prosecution history
`
`Relevant excerpts of the December 6, 2011 Amendment and
`Petition for Extension of Time in the ’012 patent prosecution
`history
`
`Relevant excerpts of the February 6, 2012 Corrected Notice of
`Allowability in the ’012 patent prosecution history
`
`U.S. Patent No. 5,406,260 (“the ’260 patent”)
`
`Relevant excerpts of the February 5, 2008 Response to Office
`Action in the prosecution history of U.S. Patent No. 7,457,250
`(“the ’250 patent”; the direct parent of the ’012 patent)
`
`Tentative Claim Construction Ruling regarding the ’250 patent
`claims in the Northern District of California, No. 4:13-cv-01300-
`JSW
`
`Declaration of Steven B. Carlson in Support of Defendants’ Combined
`Motion for Summary Judgment and Claim Construction (“Carlson Decl.”)
`
`v
`
`Chrimar Systems, Inc.
`Exhibit 2032-5
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 6 of 25 PageID #: 392
`
`Exhibit A
`
`
`
`Curriculum Vitae of Steven B. Carlson
`
`
`
`
`
`
`Alcatel Decl.
`
`
`
`AMX Decl.
`
`
`
`Chambers Decl.
`
`
`
`Exhibit 1
`
`Grandstream Decl. Declaration of Xiang Wei in Support of Defendants’ Combined Motion
`for Summary Judgment and Claim Construction (“Grandstream Decl.”)
`
`Declaration of Anish Verma in Support of Defendants’ Combined Motion
`for Summary Judgment and Claim Construction (“Alcatel Decl.”)
`
`Declaration of Jim Pautler in Support of Defendants’ Combined Motion
`for Summary Judgment and Claim Construction (“AMX Decl.”)
`
`Declaration of David Chambers in Support of Defendants’ Combined
`Motion for Summary Judgment and Claim Construction (“Chambers
`Decl.”)
`
`Relevant excerpts of Chrimar’s infringement contentions against
`Aastra
`
`Relevant excerpts of Chrimar’s infringement contentions against
`Grandstream
`
`Declaration of Jongsu Kim in Support of Defendants’ Combined Motion
`for Summary Judgment and Claim Construction (“Samsung Decl.”)
`
`vi
`
`
`
`
`
`Exhibit 1
`
`
`Samsung Decl.
`
`
`
`
`
`Chrimar Systems, Inc.
`Exhibit 2032-6
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 7 of 25 PageID #: 393
`
`Defendants hereby move the Court to enter summary judgment that their accused
`
`products do not infringe any asserted claim of U.S. Patent No. 8,155,012 (“the ’012 patent”)
`
`because those products do not meet either of the properly construed “distinguishing” limitations.2
`
`I.
`
`INTRODUCTION
`
`The ’012 patent purports to solve a specific problem—how to manage, track, and identify
`
`remotely located equipment on a network, such as a computer. ’012 patent (Dkt. No. 1-2) at
`
`1:23–26. Noting that the theft of networked computer equipment (and the information they
`
`contain) significantly adds to the equipment’s total cost of ownership, the ’012 patent provides
`
`solutions to minimize this cost. Id. at 1:28–2:2. 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.” Id. 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 and 8:66–9:4. The ’012 patent further
`
`discloses that “asset identification” may be done in a way “that does not use existing network
`
`bandwidth.” Id. at 3:10–12. These concepts are reflected in the patents’ asserted claims,
`
`including independent claims 31 and 67 of the ’012 patent, which require “distinguishing”
`
`specific devices:
`
`
`
`
`2 In an effort to narrow the issues, the Defendants have focused on the “distinguishing” terms and
`reserve the “impedance” term for the regularly scheduled Markman. Defendants had originally
`requested that both terms be considered for this early procedure. The two terms are
`independently case dispositive.
`
`
`
`
`1
`
`Chrimar Systems, Inc.
`Exhibit 2032-7
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 8 of 25 PageID #: 394
`
`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.
`
`67. A method for adapting a piece of terminal equipment, the piece of terminal
`equipment having an Ethernet connector, the method comprising:
`coupling at least one path across specific contacts of the Ethernet connector, the at
`least one path permits use of the specific contacts for Ethernet communication, the
`Ethernet connector comprising the contact 1 through the contact 8, the specific
`contacts of the Ethernet connector comprising at least one of the contacts of the
`Ethernet connector and at least another one of the contacts of the Ethernet connector;
`and
`arranging impedance within the at least one path to distinguish the piece of terminal
`equipment.
`’012 patent, claims 31 and 67 (emphasis added for the “distinguishing” terms).3
`
`Defendants propose constructions that are consistent with the claims, the inventors’ goals
`
`and description of the invention, and the remaining intrinsic record as using information to
`
`separately identify each asset in the network. Particularly, Defendants propose that the
`
`“distinguishing” limitations require differentiating each piece of [Ethernet data] terminal
`
`equipment from each other piece of equipment on the network. Chrimar’s4 proposed
`
`constructions of the “distinguishing” limitations render the claims incapable of asset tracking—
`
`the very problem the ’012 patent purports to solve. Claim constructions so untethered from the
`
`patent are untenable.
`
`
`3 Chrimar also asserts claims 35, 40, 42–43, 49–50, 52, 55–56, 65–66, 72–73, 77, 82, 88–90, and
`106–107, each of which depends from either claim 31 or claim 67.
`4 “Chrimar” as used herein refers to Plaintiffs Chrimar Systems, Inc. d/b/a CMS Technologies
`and Chrimar Holding Company LLC.
`
`
`
`2
`
`Chrimar Systems, Inc.
`Exhibit 2032-8
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 9 of 25 PageID #: 395
`
`Chrimar asserts that its claims cover the IEEE 802.3af Power over Ethernet (“PoE”)
`
`standard.5 The 802.3af PoE standard was adopted in 2003, five years after filing of the
`
`provisional application to which the ’012 patent claims priority and five years before filing of the
`
`application that issued as the ’012 patent. The PoE standard has absolutely nothing to do with
`
`asset tracking or theft protection. Rather, PoE describes a standardized way to use existing
`
`Ethernet cabling to power Ethernet compliant devices.
`
`In PoE, when a powered device (“PD”), such as an IP phone, connects to power-sourcing
`
`equipment (“PSE”), the PSE determines whether the IP phone is PoE-compatible by making a
`
`signature resistance measurement using direct current (“DC”). PoE § 33.2.5 (ALU0001459–60).
`
`The “signature” resistance for all PoE-compatible PDs is the same—25k (±1.3k). PoE
`
`§ 33.2.5.2, 33.3.3–33.3.4, and Tables 33-8 and 33-14 (ALU0001461, 1464, and 1476–81).
`
`Optionally, the PSE may also apply a specific voltage to the network cable connecting the PD
`
`and measure the resulting current (or voltage) to determine the power classification of the PD.
`
`PoE §§ 33.2.6.2 and 33.2.7 (ALU0001465–68). Neither the measurement of signature resistance
`
`nor the classification of current measurement differentiates each piece of terminal equipment
`
`from each other piece. PoE §§ 33.2.5.2 and 33.2.7 (ALU0001461 and 1467–68). In other
`
`words, the measurements and classifications do not provide information to determine whether:
`
`(1) a connected device is an IP phone or another PD; (2) a connected device belongs to Mr.
`
`Smith or someone else; or (3) a device is in Mr. Smith’s office or elsewhere. The implementation
`
`of PoE in Defendants’ accused products does not meet the “distinguishing” limitation of each
`
`asserted claim. Accordingly, Chrimar cannot meet its burden to prove that every element or step
`
`
`5 Relevant excerpts of the PoE standard, which are contained in IEEE Std. 802.3-2012, Clause
`33, are attached to the July 28, 2014 Declaration of Leisa Peschel (“Peschel Decl.”) as Ex. A and
`are herein cited as “PoE” with the relevant pinpoint citations.
`3
`
`
`
`Chrimar Systems, Inc.
`Exhibit 2032-9
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 10 of 25 PageID #: 396
`
`of each asserted claim is met by Defendants’ accused products, and as a matter of law,
`
`Defendants do not infringe, and summary judgment of non-infringement is appropriate. See
`
`Advanced Cardiovascular Sys., Inc., v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir.
`
`2001); Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2117 (2014).
`
`II.
`
`STATEMENT OF THE ISSUE
`
`Each asserted claim contains a “distinguishing” limitation that requires differentiating
`
`each piece of terminal equipment from each other piece. Defendants’ accused products do not
`
`have that differentiating capability. Are Defendants entitled to summary judgment on Chrimar’s
`
`infringement claim because the accused products cannot meet the distinguishing limitations?
`
`III.
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS
`
`1.
`
`Chrimar has asserted independent claims 31 and 67. Each of the asserted
`
`independent claims includes one of the “distinguishing” limitations. All other asserted claims
`
`depend on claim 31 or 67.
`
`2.
`
`Chrimar alleges Defendants infringe the asserted claims because the accused
`
`products comply with the IEEE 802.3(af) and/or (at) Power Over Ethernet (“PoE”) standard
`
`amendments. Chrimar has not alleged in its infringement contentions that any Defendant
`
`infringes the “distinguishing” limitations of the asserted claims under the doctrine of equivalents.
`
`3.
`
`Chrimar alleges that Defendants’ accused products meet the requirements of
`
`“distinguishing information” in claim 31 and “at least one path to distinguish the piece of
`
`terminal equipment” in claim 67 due to compliance with aspects of the PoE standard. See;
`
`Alcatel Decl. ¶ 3; AMX Decl. ¶¶ 3 & 5; Chambers Decl. ¶¶ 3–4 & Ex. 1; Grandstream Decl.
`
`¶¶ 3–4 & Ex. 1; and Peschel Decl., Exs. B–D (excerpts of Chrimar’s infringement contentions
`
`against Alcatel, AMX, and Samsung).
`
`
`
`4
`
`Chrimar Systems, Inc.
`Exhibit 2032-10
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 11 of 25 PageID #: 397
`
`4.
`
`Defendants’ implementation of the PoE standard does not provide the capability
`
`to differentiate a device on the network from each other device on the network. See Carlson
`
`Decl. ¶¶ 12–13; Alcatel Decl. ¶ 4–5; AMX Decl. ¶ 5–6; Chambers Decl. ¶ 5–6; Grandstream
`
`Decl. ¶ 6–7; and Samsung Decl. ¶ 5.
`
`5.
`
`According to the PoE standard, when a powered device (“PD”) connects to
`
`power-sourcing equipment (“PSE”), the PSE determines whether a PD is PoE-compatible and
`
`should receive power. PoE § 33.2.5 (ALU0001459); see also Carlson Decl. ¶ 8.
`
`6.
`
`The PSE makes that determination by applying a direct current (“DC”) voltage to
`
`the cable connected to the PD and measuring the resultant current (or resultant voltage). PoE §
`
`33.2.5.1 (ALU0001459–60); see also Carlson Decl. ¶ 8.
`
`7.
`
`The PSE uses the resultant current (or voltage) in the voltage band of 2.70 Volts to
`
`10.1 Volts to determine the resistance of the circuit. PoE § 33.2.5.2 and Table 33-14
`
`(ALU0001460–61, and ALU0001481); see also Carlson Decl. ¶ 8.
`
`8.
`
`The “signature” resistance for all PoE-compatible powered devices is 25k
`
`(±1.3k). PoE § 33.2.5.2, 33.3.3–33.3.4, and Tables 33-8 and 33-14 (ALU0001461, 1464, and
`
`1476–81); see also Carlson Decl. ¶ 9.
`
`9.
`
`Once a PSE accepts a PD, the PSE may optionally attempt to determine the PD’s
`
`consumption range. PoE § 33.2.6.2 (ALU0001465–66). To do so, the PSE applies a voltage to
`
`the network cable connected to the PD and measures the resultant current (not impedance). PoE
`
`§ 33.2.7 (ALU0001467–68). The particular steady-state current measured by the PSE indicates
`
`that the PD has one of four power classifications. PoE § 33.2.6.2, Tables 33-9, 33-10 and 33-11
`
`(ALU0001465–67); see also Carlson Decl. ¶¶ 10–11.
`
`
`
`5
`
`Chrimar Systems, Inc.
`Exhibit 2032-11
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 12 of 25 PageID #: 398
`
`IV.
`
`LEGAL STANDARDS
`
`A.
`
`Claim Construction
`
`The words of a claim are generally construed to have their ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art at the time of the invention.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc); Vitronics Corp. v.
`
`Conceptronic,
`
`Inc.,
`
`90 F.3d 1576, 1582 (Fed. Cir. 1996). Sources that show what a person of skill in the art would
`
`have understood a term to mean include: “the words of the claims themselves, the remainder of
`
`the specification, the prosecution history, and extrinsic evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.” Phillips, 415 F.3d at 1314
`
`(quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116
`
`(Fed. Cir. 2004)). Of these sources, the specification is often the single best guide to the
`
`meaning of a disputed term because a person of ordinary skill in the art is deemed to have
`
`understood the claim term in the context of the inventors’ description of what they invented. Id.
`
`at 1313 and 1315. And, “the prosecution history can often inform the meaning of the claim
`
`language by demonstrating how the inventor understood the invention and whether the inventor
`
`limited the invention in the course of prosecution, making the claim scope narrower than it
`
`would otherwise be.” Phillips, 415 F.3d at 1317.
`
`B.
`
`Summary Judgment of Noninfringement
`
`Summary judgment is warranted when “the movant shows that there is no genuine
`
`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
`
`R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The movant is entitled to
`
`judgment as a matter of law where the nonmoving party fails to make a sufficient showing on an
`
`essential element of its case with respect to which it has the burden of proof. Celotex, 477 U.S.
`
`
`
`6
`
`Chrimar Systems, Inc.
`Exhibit 2032-12
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 13 of 25 PagelD #: 399
`
`at 323. Chrimar has the burden to prove that all elements of an asserted device claim are present
`
`in each accused product. Advanced Cardiovascular, 261 F.3d at 1336. In the case of an asserted
`
`method claim, it is Chrimar’s burden to prove that each Defendant perfonns all of the steps in the
`
`claimed method. Limelight, 134 S. Ct. at 2117 (“[A method] patent is not infringed unless all the
`
`steps are carried out.”); Mirror Worlds, LLC v. Apple, Inc., 692 F.3d 1351, 1359 (Fed. Cir. 2012).
`
`Summary judgment of noninfringement is therefore proper if Chrimar fails to prove the existence
`
`in the accused products of a claimed element for an asserted device claim or the perfonnance of
`
`a claimed step for an asserted method claim.
`
`V.
`
`NONE OF THE ACCUSED PRODUCTS MEETS THE DISTINGUISHING
`
`LIMITATIONS.
`
`Claim Term
`
`Defendants’ Proposed
`Construction
`
`Chrimar’s Proposed
`Construction
`
`“distinguishing
`infonnation about the
`piece of Ethernet terminal
`equipmen ” (claim 31)
`
`information to differentiate each information to distinguish the
`piece of Ethernet data terminal piece of Ethernet data terminal
`equipment
`fiom each
`other equipment
`from at
`least one
`piece of Ethernet data terminal other piece of Ethernet data
`equipment
`terminal equipment
`
`“to distinguish the piece of
`terminal equipment”
`(claim 67)
`
`to distinguish the piece of
`to diflerentiate each piece of
`terminal equipment from each tenninal equipment having an
`other
`piece
`of
`terminal Ethernet connector from at least
`equipment.‘
`one other piece of terminal
`equipment having an Ethernet
`
`connector.
`
`As set forth below, Defendants’ proposed constructions are consistent with the clear,
`
`unequivocal teachings of the specification and prosecution history of the ’0l2 patent, as well as
`
`statements the patentee made to the Patent Oflice, including in the prosecution of its direct
`
`parent.
`
`In contrast, Chrimar’s proposed constructions impermissibly expand the scope of the
`
`6 Defendants believe that if the “distinguishing” tenns are not construed as proposed herein (i.e.,
`where the scope of what “distinguishing” means is clear), the terms are indefinite. See generally
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).
`
`7
`
`Chrirnar Systems, Inc.
`Exhibit 2032-13
`
`IPR2016-01426 USPN 9,019,838
`
`Chrimar Systems, Inc.
`Exhibit 2032-13
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 14 of 25 PageID #: 400
`
`claims beyond the teachings of the specification and are simply unworkable. Once properly
`
`construed, Chrimar’s infringement allegations must fail as a matter of law. There is no dispute
`
`that the PoE standard does not differentiate each piece of connected data terminal equipment
`
`from another.
`
`A.
`
`Properly Construed, The Distinguishing Terms Require Differentiating Each
`Piece Of [Ethernet Data] Terminal Equipment From Each Other Piece.
`
`1.
`
`Asset tracking and management is the purpose of the ’012 patent.
`
`The invention described in the ’012 patent specification is far removed from the PoE
`
`devices upon which Chrimar is attempting to read their claims. The problem the ’012 patent
`
`attempts to solve is the tracking and management of network assets, which is complicated by the
`
`fact that employees typically have more than one asset and employees are routinely moved from
`
`one different physical location to another. ’012 patent at 1:37–42. Exacerbating the problem are
`
`the unauthorized movement of assets, the reconfiguration of assets, and the theft of assets. Id. at
`
`1:34, 43, and 46–47. Typically, an organization is “limited to relying on databases that correlate
`
`the network identification of an asset to where that asset should be located, not where the asset
`
`actually is located.” Id. at 1:55–57. However, asset tracking and management software “is
`
`generally incapable of detecting the electrical connection status of equipment, it cannot detect the
`
`physical location of equipment, the identifying name of the equipment is not permanent, and the
`
`monitored assets must be powered up.” ’012 patent at 1:61–65.
`
`The ’012 patent presents a solution to the asset tracking and management problem that
`
`“permanently identif[ies] an asset by attaching an external or internal device to the asset….”
`
`’012 patent at 1:66–2:2. Other purported advantages of the disclosed invention over prior art
`
`included the ability to “provide a further means in which a networked device may also be
`
`identified by a unique identification number using the existing network wiring or cabling,”
`
`
`
`8
`
`Chrimar Systems, Inc.
`Exhibit 2032-14
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 15 of 25 PageID #: 401
`
`“provide an identification system that is easily and inexpensively implemented in an existing
`
`network system,” “interrogate[] the devices connected to a network and block[] communications
`
`with unauthorized devices,” and “provide a means for asset identification that does not use
`
`existing network bandwidth.” ’012 patent at 2:22–25, 2:30–32, 2:56–57, and 3:10–14.
`
`With that background, the specification then discloses four embodiments—one
`
`embodiment that “illustrates the general teachings of the invention,” i.e., “achieving
`
`identification of electronic computer equipment associated with a computer network” and three
`
`specific embodiments—that repeatedly reemphasize that the purported invention was directed
`
`towards identifying specific pieces of equipment individually. See ’012 patent at 4:24–31, 4:46–
`
`47, 6:7–9 (“a preprogrammed unique identification number”), 9:1–9, 10:27–30, 11:10–13,
`
`11:57–61, 12:48–13:63, 14:40–52, 15:33–42, and 16:57–64; see also Gemalto S.A. v. HTC Corp.
`
`et al., No. 2013-1397, 2014 U.S. App. LEXIS 11520, at *10–12 (Fed. Cir. June 19, 2014)
`
`(affirming the district court’s construction requiring all program memory be on a single chip
`
`when “[t]he specification demonstrates that the entire purpose of the invention was to enable the
`
`application to be stored within the memory on the chip of the integrated circuit card”).
`
`2. “Distinguish” does not appear in the ’012 patent specification.
`
`The term “distinguish,” let alone “distinguishing information,” does not appear in the
`
`’012 patent specification. The concept of “distinguishing” first appeared in two dependent
`
`claims filed as part of the ’012 application on September 26, 2008. See Peschel Decl., Ex. E
`
`(relevant excerpts of application). At the time, the two originally filed independent claims of the
`
`’012 patent were directed towards a system and method for “conveying information on a network
`
`having objects,” and dependent claims 27 and 64 further narrowed “information” as “information
`
`[] utilized to distinguish between objects.” Id. at 37, 39–41, & 43. The claims evolved through a
`
`series of mostly preliminary amendments to later require, for example, “each object is a piece of
`9
`
`
`
`Chrimar Systems, Inc.
`Exhibit 2032-15
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 16 of 25 PageID #: 402
`
`Ethernet equipment and the information can be utilized to distinguish between [different]7 pieces
`
`of Ethernet equipment,” until the concept of “distinguishing” was firmly rooted in all asserted
`
`independent claims. See, e.g., Peschel Decl., Ex. G, April 3, 2009 Resp. to Not. of Non-
`
`Compliant Am. at 7, 13, 17, 21, & 25; see also Peschel Decl., Ex. H, December 6, 2011 Am. and
`
`Pet. For Ext. of Time at 13 (adding claim 491 which issued as claim 67 and included the
`
`“distinguishing” limitation). In fact, to cement the term’s importance, the examiner’s February 6,
`
`2012 Corrected Notice of Allowability attached an Examiner’s Amendment that added the word
`
`“distinguishing” in the phrase “distinguishing information” of claim 31.8 Peschel Decl., Ex. I at
`
`5 (claim 455 issued as claim 31). Only after that amendment were the claims allowed.
`
`3. Proper construction of the “distinguishing” terms relies on the intrinsic
`evidence.
`
`The specification does not particularly describe the limitations that were added by
`
`amendment nearly ten years after the original filing of the specification, but the overall
`
`disclosure of the invention does provide guidance as to how “distinguishing” should be
`
`construed.9 In the Background of the Invention under the heading “Technical Field,” the
`
`applicants noted that 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.” ’012 patent at 1:23–26. As
`
`
`7 A separate preliminary amendment was filed to add the word “different.” Peschel Decl., Ex. F,
`May 4, 2009 Third Preliminary Am. at 7, 13, 17, 21, & 25.
`8 This amendment was apparently discussed during a telephone interview between the examiner
`and patentee’s counsel; however, no summary of the substance of that interview is included in
`the file history.
`9 Defendants note that Chrimar’s proposed constructions of the “distinguishing” terms purport to
`extend the scope of the claims well beyond the disclosure of the ’012 patent. If Chrimar’s
`proposed constructions are adopted, Defendants reserve the right to challenge the validity of the
`claims for failure to comply with the enablement and written description requirements of 35
`U.S.C. § 112.
`
`
`
`10
`
`Chrimar Systems, Inc.
`Exhibit 2032-16
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 73 Filed 07/28/14 Page 17 of 25 PageID #: 403
`
`noted above, the specification goes on to note the drawbacks of asset tracking software available
`
`at the time and described the advantages of the disclosed invention.
`
`The ’012 patent also contrasts the purported invention from prior art that measured
`
`electrical characteristics to address hardware theft. Specifically, the applicants referenced the
`
`prior art of one of its inventors (Cummings), U.S. Patent No. 5,406,260 (“the ’260 patent”). ’012
`
`patent at 2:16–19; see also Peschel Decl., Ex. J, U.S. Pat. No. 5,406,260. The ’260 patent issued
`
`in April 1995 and provided “a means of detecting the unauthorized removal of a networked
`
`device” using a current loop attached to each of the networked device