Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 1 of 39 PageID #: 3999
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`CHRIMAR SYSTEMS, INC. D/B/A CMS
`TECHNOLOGIES and CHRIMAR HOLDING
`COMPANY, LLC,
`
`Plaintiffs,
`
`v.
`
`ADTRAN, INC., et al.,
`
`Defendants.
`
`Case No. 6:15-cv-00618-JRG-JDL
`
`LEAD CASE
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`C:\Users\msy175\Desktop\Chrimar - Markman Brief Draft (accepts DY's changes and adds some from DM) docx
`
`Chrimar Systems, Inc.
`Exhibit 2033-1
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 2 of 39 PageID #: 4000
`
`Page
`
`1
`
`2
`
`3
`
`335 7
`
`10
`
`11
`
`11
`
`12
`
`14
`16
`19
`
`20
`
`20
`22
`24
`26
`27
`28
`
`29
`
`I.
`
`II.
`
`III.
`
`IV.
`
`TABLE OF CONTENTS
`
`Title
`
`Procedural History
`
`Background
`
`Person of Ordinary Skill
`
`Terms in Dispute
`A. Infinitive “to…” terms
`1. The infinitive “to…” terms are statements of intended use not entitled to
`patentable weight
`2. The Infinitive “To…” Terms Require Application of 35 U.S.C. § 112 ¶ 6
`a) The Corresponding Structure to the Recited Function of the Asserted
`Claims of the ’107 Patent
`b) The Corresponding Structure to the Recited Function of the Asserted
`claims of the ’838 Patent
`c) The Corresponding Structure to the Recited Function of the Asserted
`Claims of the ’760 Patent
`B. “Ethernet data terminal equipment”/ “Ethernet terminal equipment”/ “end
`device”
`C. “convey information”
`D. “connector”
`E. “used for normal network communication”/ “used to carry Ethernet
`communication signals”/ “used to carry BaseT communication signals”
`F. “[wherein distinguishing information about the piece of Ethernet data
`terminal equipment] is associated to impedance within the at least one path”
`G. “detection protocol”
`H. “distinguishing information about the piece of Ethernet equipment”
`I. “current”/“current flow”
`J. “BaseT”
`K. “path coupled across”
`L. “powered off”
`
`V.
`
`Conclusion
`
`i
`
`Chrimar Systems, Inc.
`Exhibit 2033-2
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 3 of 39 PageID #: 4001
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Am. Calcar, Inc. v. Am. Honda Motor Co., Inc., 651 F.3d 1318 (Fed. Cir. 2011)
`
`Boehringer Ingelheim Vetmedica, Inc. v. Shering-Plough Corp., 320 F.3d 1339
`(Fed. Cir. 2003)
`
`Chef Am, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004)
`
`Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973 (1999)
`
`Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572 (Fed. Cir. 1996)
`
`Ex parte Kriechbaum, Appeal 2011-001428, 2013 WL 4478728
`(Bd.Pat.App. & Interf. Aug. 20, 2013)
`
`Ex parte Liebich, Appeal 2011-001343, 2013 WL 4692599
`(Bd.Pat.App. & Interf. Aug. 30, 2013)
`
`Ex parte Lippincott, Appeal 2010-000325, 2012 WL 2166002
`(Bd.Pat.App. & Interf. June 13, 2012)
`
`Ex parte Yoon, Appeal 2010-000843, 2012 WL 759838 at
`(Bd.Pat.App. & Interf. Mar. 7, 2012)
`
`In re Katz Interactive Call Processing Patent, 639 F.3d 1303 (Fed. Cir. 2011)
`
`In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987)
`
`Interval Licensing LLC v. AOL, Inc. et al., 766 F.3d 1364 (Fed. Cir. 2014)
`
`IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d (Fed. Cir. 2005)
`
`Kopykake Enters., Inc. v. Lucks Co., 264 F.3d 1377 (Fed. Cir. 2001
`
`Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362 (Fed. Cir. 2000)
`
`Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533 (Fed. Cir. 1991)
`
`Page
`
`15, 16
`
`5
`
`28, 29
`
`19, 25
`
`24
`
`6
`
`6
`
`6
`
`6
`
`22
`
`6
`
`21
`
`22
`
`27
`
`19
`
`13
`
`Markman v. Westview Instuments, 52 F.3d 967 (Fed. Cir. 1995)
`
`23, 27
`
`ii
`
`Chrimar Systems, Inc.
`Exhibit 2033-3
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 4 of 39 PageID #: 4002
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`
`Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001)\
`
`Network-1 Security Solutions, LLC v. Cisco Systems, Inc. 692 F.Supp.2d
`632 (E.D. Tex. 2010)
`
`Nystrom v. TREX Co., Inc., 424 F.3d 1136 (Fed. Cir. 2005)
`
`PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359 (Fed. Cir. 2005)
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, (Fed. Cir. 1999)
`
`Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005)
`
`Robert Bosch, LLP v. Snap-On Inc., 769 F.3d 1094 (Fed. Cir. 2014)
`
`Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361 (Fed. Cir. 2005)
`
`Trs. of Columbia Univ. in City of N.Y. v. Symantec Corp., 811 F.3d
`1359 (Fed. Cir. 2016)
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)
`
`Statutes
`
`35 U.S.C. § 112
`
`35 U.S.C. § 112(6)
`
`20
`
`15
`
`15
`
`15
`
`27
`
`6
`
`23
`
`9
`
`19
`
`26
`
`7, 8
`
`7, 8, 9
`
`3
`
`iii
`
`Chrimar Systems, Inc.
`Exhibit 2033-4
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 5 of 39 PagelD #: 4003
`
`Plaintiffs Chrimar Systems, Inc. and Chrimar Holding Company, LLC (collectively
`
`“Chrimar”) assert four patents against the Defendants‘: U.S. Patent Nos. 8,155,012 (“’012
`
`Patent”), 8,942,107 (“’ 107 Patent”), 8,902,760 (“’760 Patent”), and 9,019,838 (“’838 Patent”)
`
`(collectively “Asserted Patents”). The Asserted Patents share a common specifieation.2
`
`I.
`
`Procedural History
`
`The parties dispute the constructions of fourteen terms from the Asserted Patents.
`
`Defendants contend that two of these terms are indefinite. Ten of the disputed terms have been
`
`previously construed in two actions involving the asserted patents: Chrimar Svstems, Inc., et al.
`
`v. Alcatel-Lucent, Inc., et al., No. 6: 13—cv-880-JDL (E.D. Tex) (“Chrimar I”) and Chrimar
`
`Svstems, Inc., et al. v. Alcatel-Lucem USA, Inc., et al., No. 6:15-cv-163-JDL (E.D. Tex.)
`
`(“Chrimar II”). The prior constructions of these ten terms from the Chrimar I and Chrimar 11
`
`cases are set forth in Exhibit A.3 Chrimar asks that the Court adopt its constructions and rulings
`
`on these terms from these prior cases; Defendants ask that the Court adopt constructions for
`
`these terms that differ from its constructions in the prior cases.
`
`In addition, the parties agree on the constructions for the following terms.
`
`1 Defendants are Accton Technology Corporation; Edgecore USA Corp.; Belden, Inc.;
`Garrettcom, Inc.; Hirschmann, Inc.; Costar Technologies, Inc.; Costar Video System, LLC; D-
`Link Systems, Inc.; TRENDnet, Inc.; Dell Inc.; Advantech Corporation; Aerohive Networks,
`Inc.; EnGenius Technologies, Inc.; WatchGuard Technologies, Inc.; Allworx Corporation;
`ADTRAN, Inc.; TP-Link USA Corporation; Huawei Technologies USA Inc.; and Huawei
`Enterprise USA Inc.
`2 As the patents all derive from the same application, the specification for each should be the
`same and all citations are to the ’012 Patent’s specification.
`3 Chrimar I Memorandum and Opinion Order (ECF # 92)(“Chrimar I Order ECF # 92”),
`Chrimar I Memorandum and Opinion Order OSCF # 99) (“Chrimar I Order ECF # 99”), Chrimar
`I Memorandum and Opinion Order OECF # 102)(“CI1rimar I Order ECF # 102”), Chrimar II
`Memorandum and Opinion Order (ECF # l22)(“Chrimar II Order ECF # 122”), and Chrimar II
`Memorandum and Opinion Order (ECF # 123)(“CI1rimar II Order ECF# 123).
`
`Chrimar Systems, Inc.
`Exhibit 2033-5
`
`IPR2016-01426 USPN 9,019,838
`
`Chrimar Systems, Inc.
`Exhibit 2033-5
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 6 of 39 PageID #: 4004
`
`“loop formed over”
`’760 Patent, claims 1, 73
`“an adapted piece of Ethernet data terminal
`equipment”
`’012 Patent, claim 31 (preamble)
`
`“round trip path formed over”
`
`The preamble is limiting. The phrase needs no
`further construction and should be afforded its
`plain-and-ordinary meaning.
`
`II.
`
`Background
`
`When considering the parties’ respective proposed constructions, it is important for the
`
`Court to consider the context of the alleged invention described in the specification. The
`
`Asserted Patents generally relate to tracking devices connected to a wired network such as an
`
`Ethernet network. The patent specification describes the problem to be overcome by the patents
`
`as managing, tracking, and identifying remotely located office equipment, such as computers,
`
`that had become portable. See, e.g., ’012 patent at 1:23–65; Chrimar II Order ECF# 123 at 2.
`
`The inventors proposed to solve this problem by “adapting” computer equipment so that it could
`
`be more easily managed, tracked and identified when connected to existing networks, such as
`
`Ethernet networks. See, e.g., ’012 patent at 1:30-32. In particular, the Asserted Patents describe
`
`identifying a remote network device “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 remote device can transmit information to a central module by “impressing a low
`
`frequency signal on the wires of the cable.” Id. at 3:24-25. The remote device can then be
`
`identified and tracked by transmitting unique identifying information to the central module. Id. at
`
`6:7–13, 8:66–9:4. In sum, the specification teaches the use of pre-existing Ethernet data lines to
`
`transmit identifying information about an adapted piece of networked computer equipment, such
`
`as the claimed Ethernet terminal equipment, when that equipment is connected to the network.
`
`Id. at Abstract.
`
`2
`
`Chrimar Systems, Inc.
`Exhibit 2033-6
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 7 of 39 PageID #: 4005
`
`The specification discloses several examples by which computer equipment in an existing
`
`network can be “adapted,” for example, the addition of a remote module (’012 patent at 4:41-47),
`
`or adding ID sender tags and a decoder plug. See ’012 patent at 13:13-22, Figs. 19A and 22.
`
`Because computer equipment and networks were well-known prior art, the alleged invention
`
`relates to the manner in which the prior art equipment was “adapted” by the addition of circuitry
`
`or systems that permit the transmission of the information that is the objective of the claimed
`
`invention. Put differently, the inventors adapted existing equipment (e.g., Ethernet terminal
`
`equipment) to perform new functions related to identifying the equipment (e.g., “to draw
`
`different magnitudes of DC current flow . . .[which] result from at least one condition . . . . . to
`
`convey information . . .” ”) through the use of new structure added to the existing equipment.
`
`The Court recognized this, noting “[w]hat is claimed in the ’107 Patent is not an inventive “end
`
`device,” but a known “end device” configured in an inventive way.” Chrimar II Order ECF #123
`
`at p. 10.
`
`III.
`
`Person of Ordinary Skill
`
`The parties are essentially in accord that a person of ordinary skill in the art with respect
`
`to the Asserted Patents would have had at least a B.S. degree in electrical engineering or
`
`computer science, or the equivalent, and at least three years of experience in the design of
`
`network communications products. See Declaration of Rich Seifert attached as Exhibit [__]
`
`(“Seifert Decl.”) at ¶ ¶12-14
`
`IV.
`
`Terms in Dispute
`
`A. Infinitive “to…” terms4
`
`4 These terms appear in ’107 Patent cls. 1, 43, 104, 111, ’760 Patent, cls. 1, 69, 73, 142, and ’838
`Patent, cls. 1, 7, 26, 40, 96. A full listing of the infinitive “to…” terms covered by this argument
`is set forth in Exhibit C.
`
`3
`
`Chrimar Systems, Inc.
`Exhibit 2033-7
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 8 of 39 PagelD #: 4006
`
`Plain and ordinary meaning; not subject to 35
`U.S.C. § 112(6) 5
`
`
`
`Terms are statements of intended use not
`entitled to patentable weight; in the
`alternative, terms are means-plus-fimction
`limitations subject to 35 U.S.C. § 112(6)
`Defendants’ proposed construction of the infinitive “to...” tenns reflects the teachings of
`
`the specification, as understood by the Court, and is premised on the failure of the claims to
`
`identify the structure that the inventors proposed to add to (i. e., adapt) the pre-existing Ethernet
`
`terminal equipment for the purpose of performing the new fimctionality. The claims should be
`
`construed to reflect that they only refer to the pre-existing Ethernet terminal equipment and
`
`vaguely refer to the functions or uses to which the Ethernet terminal equipment may be put. The
`
`allegedly novel structure for performing the fimctions is wholly-absent from the claims and the
`
`claims don’t answer the most important question--how is the pre-existing equipment inventively
`
`configured? Accordingly, the claimed recitation of fimctions without corresponding structure
`
`should either not be given patentable weight or, if given weight, should be treated as means-plus-
`
`function limitations that are subject to § 112, 1] 6.
`
`As explained above, the infinitive “to. . .” terms reflect fimctions that the inventors
`
`believed were not performed by pre-existing Ethernet terminal equipment. Accordingly, the
`
`inventors proposed to add structure to the pre-existing equipment in the form of new circuitry to
`
`perform these fimctions and permit the identification of the equipment when it was connected to
`
`pre-existing networks.
`
`At the March 10, 2016 Claim Construction hearing in the Chrimar II case, Chrimar made
`
`several arguments that confirm that the terms should not merely be given their plain and ordinary
`
`meaning. First, Chrimar argued that these apparatus claims specifically identify all of the
`
`structure used to perform the fimctions listed in the claims. Transcript of Markrnan and Motion
`
`5 Chrimar adopts the Court’s construction and ruling from Chrimar I] Order ECF # 123 at 1 1-13.
`
`Chrimar Systems, Inc.
`Exhibit 2033-8
`
`IPR2016-01426 USPN 9,019,838
`
`Chrimar Systems, Inc.
`Exhibit 2033-8
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 9 of 39 PageID #: 4007
`
`Hearing at 32:20-34:8, 35:25-36:15, Chrimar Systems, Inc. v. Alcatel-Lucent USA, et al., No.
`
`6:15-cv-00163-JDL, ECF # 120 (“Chrimar II Hearing Tr.”) attached as Exhibit D. Second,
`
`Chrimar argued that the functions listed in these claims indicate how the claimed device must be
`
`configured6 (id. at 39:5-19) and one of ordinary skill would understand how the structure in these
`
`claims would perform the claimed functions. Id. at 34:9-35:24.7 As set forth below, Chrimar’s
`
`arguments show that these terms either are not entitled to patentable weight or should be
`
`construed as means-plus-function limitations.
`
`1.
`
`The infinitive “to…” terms are statements of intended use not entitled
`to patentable weight.
`
`Chrimar’s first argument—that the claims specifically identify all of the structure used to
`
`perform the functions listed in the claims—does not reflect the actual claim language.. For
`
`example, the only structure identified in the claim 1 of the ‘107 Patent are the “piece of Ethernet
`
`terminal equipment,” “Ethernet connector with contacts” and “at least one path.” Chrimar II
`
`Hearing Tr. at 35:25-36:15. These structures were well-known at the time as was the Ethernet
`
`terminal equipment that inventors proposed to adapt. And contrary to Chrimar’s second
`
`argument that functions listed in these claims indicate how the claimed device must be
`
`configured, the purported “inventive configuration” is simply missing from the actual language
`
`of the claims. What remains is a “piece of Ethernet terminal equipment,” “Ethernet connector
`
`with contacts,” “at least one path” and the inventors’ statement of intended use for this well-
`
`known structure.
`
`6 This is in accord with Chrimar’s expert witness Dr. Les Baxter, who stated in his supporting
`declaration supporting that each of the infinitive “to…” terms simply indicates how the claimed
`equipment is “configured.” Declaration of Les Baxter, (“Baxter Decl”) ECF # 403-5, at ¶¶ 33-63
`7 The infinitive “to…” terms appear in the ’107 Patent, claims 1, 43, 104, and 111, the ’760
`Patent, claims 1, 69, 73, and 142, and the ’838 Patent, claims 1, 7, 26, 40, and 69. Chrimar’s
`counsel addressed arguments on these terms using the ’107 Patent, claim 1 as an example.
`
`5
`
`Chrimar Systems, Inc.
`Exhibit 2033-9
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 10 of 39 PageID #: 4008
`
`Statements of intended use or purpose, however, “usually will not limit the scope of the
`
`claim because such statements usually do no more than define a context in which the invention
`
`operates.” Boehringer Ingelheim Vetmedica, Inc. v. Shering-Plough Corp., 320 F.3d 1339, 1345
`
`(Fed. Cir. 2003).8 Such statements are “of no significance to claim construction because it cannot
`
`be said to constitute or explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`
`182 F.3d 1298, 1305 (Fed. Cir. 1999). Here, Chrimar has done nothing more then set forth well
`
`known structure and using verb phrases “to…” to signal a statement that relates to intended use
`
`or purpose and, as such, typically are not accorded patentable weight. See, e.g., Ex parte Liebich,
`
`Appeal 2011-001343, 2013 WL 4692599 at *6 (Bd.Pat.App. & Interf. Aug. 30, 2013)(finding
`
`phrase “to analyze cost” a statement of use or purpose not entitled to patentable weight because it
`
`“merely defines context in which the invention operates”); Ex parte Lippincott, Appeal 2010-
`
`000325, 2012 WL 2166002 at *6-7 (Bd.Pat.App. & Interf. June 13, 2012)(explaining phrase “to
`
`decode a frame of the video information” is a statement of intended use not germane to the
`
`patentability of the claimed apparatus); Ex parte Kriechbaum, Appeal 2011-001428, 2013 WL
`
`4478728 at *7 (Bd.Pat.App. & Interf. Aug. 20, 2013)(stating that phrase “to enable the user to
`
`identify the different alphanumeric characters” afforded no patentable weight because it explains
`
`how the invention operates); see also Ex parte Yoon, Appeal 2010-000843, 2012 WL 759838 at
`
`*6-7 (Bd.Pat.App. & Interf. Mar. 7, 2012)(holding phrase “for reducing the bulk erase tool field
`
`strength at said first portion of said bulk erase tool” a statement of intended use not entitled to
`
`patentable weight).
`
`To the extent Chrimar argues that these statements of intended use or purpose should be
`
`given patentable weight because they are “the essence of the invention,” that argument fails
`
`8 While intended use or purpose often appear in the preamble of a claim, they can appear within
`the claim’s body as well. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
`
`6
`
`Chrimar Systems, Inc.
`Exhibit 2033-10
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 11 of 39 PageID #: 4009
`
`based on Chrimar’s arguments at the claim construction hearing in Chrimar II. During that
`
`hearing, Chrimar argued that one of ordinary skill would understand how the claimed structure
`
`can be used to perform its function (carry “Ethernet communication signals” or draw “DC
`
`current”). Chrimar II Hearing Tr. 35:10-24. If Chrimar is correct that one of ordinary skill would
`
`understand how to adapt the preexisting equipment to perform these functions, that raises the
`
`question: What did the inventors invent? Effectively, Chrimar has conceded that the essence of
`
`the claim’s novelty need not be claimed because it would be understood by anyone of ordinary
`
`skill in the art at the time of the invention. Accordingly, the infinitive “to…” terms must be
`
`construed to have no patentable weight.
`
`2.
`
`If The Infinitive “To…” Terms Have Patentable Weight Then They
`Require Application of 35 U.S.C. § 112, ¶ 6.
`
`If the Court finds that the infinitive “to…” terms have patentable weight, they must be
`
`construed according to 35 U.S.C. § 112, ¶ 6 because the claim language fails to connect the
`
`performance of the functional limitations to the structure set forth in the claim. As a starting
`
`point, the Court and the parties agree that the infinitive “to…” terms in the asserted claims are
`
`functional language.9 Furthermore, Chrimar has failed to explain how the structural claim
`
`limitations are connected to the performance of the functional limitations. To the contrary,
`
`Chrimar has argued that one of ordinary skill in the art would understand how to read between
`
`the lines and perform the functions. Chrimar II Hearing. Tr. at 35:10-24. This is a classic
`
`example, of the application of U.S.C. § 112, ¶ 6 to a “claim term [that] fails to 'recite sufficiently
`
`9 Both the Court and the Plaintiff agree that the infinitive language in the asserted claims is
`functional language. See Chrimar II Hearing Tr. at 32:11-39:19; Chrimar II [insert date] Les
`Baxter Deposition Transcript taken on January 20, 2016, (“Baxter Dep.”) attached as Exhibit E
`at 94:14–96:19 (’107 pat., cl. 1), 110:21–111:8 (’107 pat., cl. 104), 114:3–116:3 (’838 pat., cl. 1),
`126:8–128:22 (’760 pat., cl. 1), 254:9–256:6 (’107 pat., cl. 1); Baxter Decl. ¶ 39; Seifert Decl. ¶¶
`78–82.
`
`7
`
`Chrimar Systems, Inc.
`Exhibit 2033-11
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 12 of 39 PageID #: 4010
`
`definite structure' or else recites 'function without reciting sufficient structure for performing that
`
`function.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (emphasis
`
`added).
`
`Chrimar cannot avoid this outcome by arguing that the claimed structure limitations are
`
`sufficiently understood terms of art that recite sufficient structure to perform the functions. In
`
`Chrimar II, the Court found that, because “the claimed ‘end device’ or ‘terminal equipment’
`
`indisputably had known meaning in the art” as it recites sufficient structure and therefore the
`
`presumption against 35 U.S.C. § 112, ¶ 6 treatment was not overcome. Id. at 11. While these
`
`terms may indeed have some meaning and connote some structure to one of skill in the art, they
`
`do not present definite structure that performs the described functions of the infinitive “to …”
`
`terms. Chrimar conceded this when, using claim 1 of the ’107 Patent as an example, it
`
`represented to the Court that the claims included structures in addition to a “traditional Ethernet
`
`device”, namely an Ethernet connector including two pairs of contacts with a path coupled across
`
`certain pairs. Chrimar II Hearing Tr. at 32:20-34:8, 35:25-36:18. Chrimar further explained that
`
`“the claim is specific to the configuration of those structures.” Id. Setting aside the issue of
`
`whether the claimed “end device” or “terminal equipment” recite sufficiently definite structure,
`
`they do not recite definite structure to perform the described functions as precedent demands.
`
`Williamson, 792 F.3d at 1347. The question is not, however, whether the terminal equipment has
`
`a known meaning in the art, the question is whether that equipment (i.e., connector, two pairs of
`
`contacts with a path) was understood to include known structure for performing the specific
`
`functions recited in the claims. Accordingly, for the presumption against the application of 35
`
`U.S.C. § 112, ¶ 6 to stand, the the connector, contacts, and path as configured in the claim must
`
`be sufficient structure to perform the functions recited by the infinitive “to….” terms.
`
`8
`
`Chrimar Systems, Inc.
`Exhibit 2033-12
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 13 of 39 PageID #: 4011
`
`Claim 43 (which depends from claim 1) of the ’107 Patent is particularly illustrative. As
`
`discussed above, Claim 43 adds no additional structure to the connector, contacts and path of
`
`Claim 1, but recites the function of “distinguish[ing] the piece of Ethernet terminal equipment
`
`from at least one other piece of Ethernet terminal equipment.” The only configuration of these
`
`structures taught by the claim is that the path is coupled across the contacts of the pairs, however,
`
`and there is nothing special or inventive about this configuration. See Supra. Indeed, any path
`
`must have a start and end point. The claim does not indicate how the path is configured to
`
`“distinguish” one piece of Ethernet terminal equipment from another.
`
`The specification is equally unhelpful in light of Chrimar’s argument that the claims do
`
`not require the structures of the embodiment of Figure 3 (as urged by Defendants in this case and
`
`in Chrimar II).10 Moreover, while Chrimar’s expert opines that one of ordinary skill would
`
`understand the connector, contacts, and path to be structures, he fails to explain how the claim
`
`recites a configuration of these structures sufficient to perform the recited functions. See Robert
`
`Bosch, LLP v. Snap-On Inc. 769 F.3d 1094, 1101 (Fed. Cir. 2014) (stating that expert
`
`“statements are both conclusory and unhelpful to Bosch. Labeling the devices as “electronic” and
`
`repeating their function does not identify structure.”)
`
`At best, the claims only suggest some generic structure for an Ethernet device—they do
`
`not recite sufficient structure for performing the myriad functions called for by the asserted
`
`claims. Accordingly, if the Court is persuaded that these infinitive “to…” terms have patentable
`
`weight, Defendants alternatively request that the Court construe these terms as means-plus-
`
`function elements in accordance with 35 U.S.C. § 112, ¶ 6.
`
`10 See Chrimar II Hearing Tr. at 34:17-35:9. See e.g., “[W]e are talking about the firmware in the
`Manchester encoder. These specific structural elements, these devices are to encode the signal.
`Claim 1 of the’107 does not require encoding.” Id. at 35:3-6.
`
`9
`
`Chrimar Systems, Inc.
`Exhibit 2033-13
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 14 of 39 PageID #: 4012
`
`a)
`
`The Corresponding Structure to the Recited Function11 of the
`Asserted Claims of the ’107 Patent.
`
`The claims of the ’107 Patent use infinitive language to attribute three functions to the
`
`claimed “end device”: “to draw . . . ,” “to result . . . ,” and “to convey . . . .” The Asserted
`
`Patents seek to improve upon admitted prior art by adapting existing equipment to add a remote
`
`module designed to receive power from a central module. ’012 pat. at 3:18–32. The remote
`
`module uses that power to operate a firmware kernel (generating a unique identification code), a
`
`Manchester encoder (encoding the identification number into a current waveform), and a signal
`
`transmitter that sends the encoded identification number back on a modulated current flow. ’012
`
`Patent at 6:1–13. The minimum structure for performing the draw, convey, and result functions
`
`is the disclosed isolation power supply, signal transmitter, Manchester encoder, and firmware
`
`kernel as shown below in Figure 3 and its accompanying written description:
`
`’012 pat. at Fig. 3, 6:7-13. Defendants therefore request that the Court construe the infinitive
`
`“to…” terms in the ’107 Patent’s asserted claims to require the following structure to perform the
`
`11 See Exhibit F for a full listing recited functions of the claims of the ’107 patent at issue. Each
`of the recited functions comes directly from the language of each claim.
`
`10
`
`Chrimar Systems, Inc.
`Exhibit 2033-14
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 15 of 39 PageID #: 4013
`
`draw, result, and convey functions: an isolation power supply13, signal transmitter 12,
`
`Manchester encoder 11, and firmware kernel 10.12
`
`b)
`
`The Corresponding Structure to the Recited Function13 of the
`Asserted Claims of the ’838 Patent.
`
`The asserted claims of the ’838 Patent use the infinitive “to…” terms to attribute two
`
`functions to the claimed “central piece of network equipment”: “to detect…” and “to control
`
`….” The specification discloses the corresponding structure in Fig. 3, 5:53–61, 6:25–30:
`
`Thus, the Court should construe the structure required to perform the functions in the ’838
`
`Patent’s asserted claims as: an isolation power supply 8, Manchester decoder 5, firmware kernel
`
`4, signal modulator 7, and signal receiver 6.14
`
`c)
`
`The Corresponding Structure to the Recited Function15 of the
`Asserted Claims of the ’760 Patent.
`
`The ’760 Patent contains claims directed to both terminal and central equipment. The
`
`asserted claims of the ’760 Patent use the infinitive “to…” terms to attribute a single function to
`
`the terminal equipment—“to draw . . .”—and two functions to the central equipment—“to
`
`12 See Exhibit F for a listing of the corresponding structure for the asserted claims of ’107 patent.
`13 See Exhibit F for a full listing recited functions of the claims of the ’838 patent at issue. Each
`of the recited functions comes directly from the language of each claim.
`14 See Exhibit F for a listing the corresponding structure for the asserted claims of ’838 patent.
`15 See Exhibit F for a full listing recited functions of the claims of the ’760 patent at issue. Each
`of the recited functions comes directly from the language of each claim.
`
`11
`
`Chrimar Systems, Inc.
`Exhibit 2033-15
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 16 of 39 PagelD #: 4014
`
`detect .
`
`. .” and “to control .
`
`.
`
`. .” The written description discloses the minimum structure for the
`
`draw function of the terminal equipment as: isolation power supply 8, Manchester decoder 5,
`
`firmware kernel 4, signal modulator 7, and signal receiver 6. (’012 pat. at 6:7—13.) Similarly, the
`
`specification discloses the minimum structure required for the detect and control frmctions of the
`
`central equipment as: an isolation power supplyl3, signal transmitter 12, Manchester encoder 11,
`
`and firmware kernel 10 (’0l2 pat. at 5:53-61, 6:25-30.) Finally, Claims 69 and 142 add a “to
`
`distinguis ” function. In addition to the structure required for the independent claims, the
`
`structure disclosed in the written description to perform this “distinguishing” frmction is: a signal
`
`receiver 6, Manchester decoder 5, and firmware kernel 4. (’0l2 pat. at 6:25-30, Fig. 3.) 1‘
`
`B. “Ethernet data terminal equipment”/“Ethernet terminal equipment”/“end device” 17
`
`
`“Ethemet data terminal equipment” -- “device
`“device at which data transmission can
`at which data transmission can originate or
`originate or terminate and that is capable of
`terminate and that is capable of Ethernet
`Ethernet commrmications, as opposed to
`communicationnls
`intermediate network elements”
`
`“End device” — This tenn needs no further
`
`construction and should be afforded its plain
`and ordinary meaning.
`
`Defendants request that the Court adopt its prior construction for the terms “Ethemet data
`
`terminal equipmen ” and “terminal equipment” but with the addition of the language “as opposed
`
`to intennediate network elements.” 19 The additional language is consistent with and preserves
`
`the Court’s analysis of these terms in its Chrimar I claim construction order, in which the Court
`
`1‘ See Exhibit F for a listing the claim terms, recited fimctions and corresponding structure for all
`the asserted claims of ’760 patent.
`17 These terms appear in ’0l2 Patent cls. 31, 36, ’l07 Patent, cls. 1, 5, 43, 72, 83, 103, 104, 111,
`123, 125, and ’760 Patent, cls. 1, 31, 69, 72, 73, 106, 142, 145.
`1“ Chrimar adopts the Court’s construction from Chrimar I Order ECF # 99 at 13.
`19 Chrimar agrees that the terms “Ethernet data terminal equipment” and “Ethemet terminal
`equipmen ” should have the same construction. See Plaintiff’ s Opening Claim Construction
`Brief, filed on April 21, 2016, ECF # 403 (“Chrimar CC Br. ECF # 403”) at 15.
`
`12
`
`Chrimar Systems, Inc.
`Exhibit 2033-16
`
`IPR2016-01426 USPN 9,019,838
`
`Chrimar Systems, Inc.
`Exhibit 2033-16
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:15-cv-00618-JRG-JDL Document 432 Filed 05/12/16 Page 17 of 39 PageID #: 4015
`
`explained that describing the equipment as “terminal” distinguished it from “intermediate
`
`network elements.” Chrimar I Order ECF # 99 at 13. In its analysis the Court cited a technical
`
`dictionary that defined the term “data terminal equipment” as a “Device at which data
`
`transmission originates and terminates, which “[m]ay be a keyboard/display terminal, a printer, a
`
`computer, a communication controller, or any similar device.” McGraw –Hill Data Commc’ns
`
`Dictionary, attached as Exhibit G, at 24 (1993).
`
`The term “end device” should be construed the same as the “terminal equipment” terms.
`
`Chrimar admits that an “end device,” a term never used within the specification, is a remote
`
`device connected at the end of network cabling. Chrimar CC Br. ECF # 403 at 15-16. Thus, it is
`
`similar to the keyboard/display terminal, printer, computer, communication controller, or other
`
`similar devices identified in the technical dictionary definition for “data terminal equipment.”
`
`See McGraw –Hill Data Commc’ns Dictionary, attached as Exhibit G, at 24 (1993). Chrimar’s
`
`attem