DECLARATION OF RICH SEIFERT IN SUPPORT OF
`
`PETITION FOR INTER PAR TES REVIEW OF
`
`U.S. PATENT NO. 8,942,107
`
`Aerohive - Exhibit 1009
`
`

`
`Declaration of Rich Seifert
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ................................................................................................... ..1
`
`II.
`
`Background/Qualifications ........................................................................... .. 1
`
`III. Documents and Materials Considered .......................................................... ..2
`
`IV.
`
`Legal Principles ............................................................................................. ..2
`
`V.
`
`State of the Art .............................................................................................. ..9
`
`VI. Admitted Prior Art ...................................................................................... .. 13
`
`VII. Claim Construction ..................................................................................... ..17
`
`VIII. Person of Ordinary Skill in the Art ............................................................. ..18
`
`IX.
`
`Prior Art ...................................................................................................... .. 19
`
`A.
`
`De Nicolo References ....................................................................... .. 19
`
`1.
`
`2.
`
`Overview ................................................................................ .. 19
`
`Reasons to Combine the De Nicolo References ..................... .. 19
`
`B.
`
`Auto-Negotiation References ............................................................ ..22
`
`1.
`
`2.
`
`Overview ................................................................................ ..22
`
`Reasons to Combine the Auto-Negotiation References ......... ..23
`
`X.
`
`’ 107 Patent .................................................................................................. ..24
`
`A.
`
`B.
`
`Summary of the ’ 107 Patent ............................................................. ..24
`
`Challenged Claims ............................................................................ ..26
`
`XI.
`
`Invalidity Analysis of ’ 107 Patent............................................................... ..28
`
`A.
`
`The challenged claims are obvious based on the De Nicolo
`references. ......................................................................................... ..28
`
`1.
`
`Independent Claim 1 ............................................................... ..28
`
`i
`
`
`
`

`
`Declaration of Rich Seifert
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`“A piece of Ethernet terminal equipment” ................... ..28
`
`“an Ethernet connector comprising first and
`second pairs of contacts used to carry
`Ethernet communication signals” ................................. ..29
`
`“at least one path for the purpose of drawing
`DC current” .................................................................. ..30
`
`“the at least one path coupled across at least
`one of the contacts of the first pair of
`contacts and at least one of the contacts of
`
`the second pair of contacts” .......................................... ..30
`
`“the piece of Ethernet terminal equipment to
`draw different magnitudes of DC current
`flow Via the at least one path” ...................................... ..31
`
`“the different magnitudes of DC current
`flow to result from at least one condition
`
`applied to at least one of the contacts of the
`first and second pairs of contacts” ................................ ..35
`
`“wherein at least one of the magnitudes of
`the DC current flow to convey information
`about the piece of Ethernet terminal
`equipment” ................................................................... ..39
`
`2.
`
`3.
`
`4.
`
`Claim 5: “wherein the Ethernet communication signals
`are BaseT Ethernet communication signals” .......................... ..40
`
`Claim 31: “wherein the DC current comprises a
`predetermined range of magnitudes” ...................................... ..40
`
`Claim 43: “wherein the infonnation to distinguish the
`piece of Ethernet terminal equipment from at least one
`other piece of Ethernet terminal equipment” .......................... ..41
`
`5.
`
`Claim 53: “wherein a duration of at least one of the
`
`different magnitudes of the DC current to comprise a
`predetermined range” ............................................................. ..42
`
`ii
`
`

`
`Declaration of Rich Seifert
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 58: “wherein impedance within the at least one
`path changes” .......................................................................... ..43
`
`Claim 70: “wherein the DC current to comprise first
`magnitude of DC current for a first interval followed by
`a second magnitude of DC current for a second interval,
`wherein the second magnitude is greater than the first
`magnitude” .............................................................................. ..44
`
`Claim 72: “wherein at least one magnitude of the DC
`current is part of a detection protocol” ................................... ..45
`
`Claim 75: “wherein the electrical component is a
`resistor” ................................................................................... ..45
`
`10.
`
`Claim 83: “wherein the piece of Ethernet equipment
`comprises a controller’’ ........................................................... ..45
`
`11.
`
`Claim 84: “wherein the controller comprises firmware” ........ ..46
`
`12.
`
`Claim 103: “wherein the piece of Ethernet of [sic]
`terminal equipment is a piece of powered-off Ethernet
`terminal equipment” ............................................................... ..46
`
`13.
`
`Independent Claim 104 ........................................................... ..48
`
`14.
`
`Claim 107: “wherein the at least one condition
`
`comprises an impedance condition” ....................................... ..48
`
`15.
`
`16.
`
`17.
`
`Claim 1 1 1: “wherein the information to distinguish the
`powered-off end device from at least one other end
`device” .................................................................................... ..49
`
`Claim 123: “wherein at least one of the magnitudes is
`part of a detection protocol” ................................................... ..49
`
`Claim 125 (across 104, 111, and 123): “wherein the
`powered-off end device is a powered-off Ethernet end
`device” .................................................................................... ..49
`
`B.
`
`The challenged claims are obvious based on the Auto-
`Negotiation references. ..................................................................... ..49
`
`iii
`
`
`
`

`
`Declaration of Rich Seifert
`
`1.
`
`Independent Claim 1 ............................................................... ..49
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`“A piece of Ethernet terminal equipment” ................... ..49
`
`“an Ethernet connector comprising first and
`second pairs of contacts used to carry
`Ethernet communication signals” ................................. ..50
`
`“at least one path for the purpose of drawing
`DC current” .................................................................. ..51
`
`“the at least one path coupled across at least
`one of the contacts of the first pair of
`contacts and at least one of the contacts of
`
`the second pair of contacts” .......................................... ..52
`
`“the piece of Ethernet terminal equipment to
`draw different magnitudes of DC current
`flow Via the at least one pat ” ...................................... ..52
`
`“the different magnitudes of DC current
`flow to result from at least one condition
`
`applied to at least one of the contacts of the
`first and second pairs of contacts” ................................ ..55
`
`“wherein at least one of the magnitudes of
`the DC current flow to convey information
`about the piece of Ethernet terminal
`equipment” ................................................................... ..5 7
`
`2.
`
`3.
`
`4.
`
`Claim 5: “wherein the Ethernet communication signals
`are BaseT Ethernet communication signals” .......................... ..58
`
`Claim 31: “wherein the DC current comprises a
`predetermined range of magnitudes” ...................................... ..58
`
`Claim 43: “wherein the information to distinguish the
`piece of Ethernet terminal equipment from at least one
`other piece of Ethernet terminal equipmen ” .......................... ..59
`
`5.
`
`Claim 53: “wherein a duration of at least one of the
`
`different magnitudes of the DC current to comprise a
`predetermined range” ............................................................. ..60
`
`iv
`
`

`
`Declaration of Rich Seifert
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 58: “wherein impedance within the at least one
`path changes” .......................................................................... ..61
`
`Claim 70: “wherein the DC current to comprise first
`magnitude of DC current for a first interval followed by
`a second magnitude of DC current for a second interval,
`wherein the second magnitude is greater than the first
`magnitude” .............................................................................. ..62
`
`Claim 72: “wherein at least one magnitude of the DC
`current is part of a detection protocol” ................................... ..62
`
`Claim 75: “wherein the electrical component is a
`resistor” ................................................................................... ..63
`
`10.
`
`Claim 83: “wherein the piece of Ethernet equipment
`comprises a controller’’ ........................................................... ..63
`
`11.
`
`Claim 84: “wherein the controller comprises firmware” ........ ..63
`
`12.
`
`Claim 103: “wherein the piece of Ethernet of [sic]
`terminal equipment is a piece of powered-off Ethernet
`terminal equipment” ............................................................... ..64
`
`13.
`
`Independent Claim 104 ........................................................... ..65
`
`14.
`
`Claim 107: “wherein the at least one condition
`
`comprises an impedance condition” ....................................... ..65
`
`15.
`
`16.
`
`17.
`
`Claim 1 1 1: “wherein the information to distinguish the
`powered-off end device from at least one other end
`device” .................................................................................... ..65
`
`Claim 123: “wherein at least one of the magnitudes is
`part of a detection protocol” ................................................... ..65
`
`Claim 125 (across 104, 111, and 123): “wherein the
`powered-off end device is a powered-off Ethernet end
`device” .................................................................................... ..65
`
`
`
`
`
`

`
`Declaration of Rich Seifert
`
`1, Rich Seifert, declare as follows:
`
`I.
`
`Introduction
`
`1.
`
`I am an expert in the field of communication systems. I submit this
`
`declaration on behalf of Petitioners AMX and Dell, Inc. (collectively, “Petitioner”)
`
`to analyze, render opinions, and/or provide expert testimony regarding the validity
`
`of certain claims of U.S. Patent No. 8,942,107 (“the ’l07 patent”). I understand
`
`that Petitioner submitted the ’ 107 patent as Exhibit 1003.
`
`2.
`
`I am being compensated at my usual rate of $400 per hour for the time
`
`spent by me in connection with these proceedings. This compensation is not
`
`contingent upon my opinions or the outcome of the proceedings. I have personal
`
`knowledge of the facts set forth in this declaration and, if called to testify as a
`
`witness, could and would competently testify to them under oath.
`
`II.
`
`Background/Qualifications
`
`3.
`
`I am currently the President of Networks & Communications
`
`Consulting in Los Gatos, California.
`
`I received a Bachelor in Engineering
`
`(Electrical Engineering) degree from the City College of New York in 1976. I
`
`received a Master of Science (Electrical Engineering) degree in 1979 from the
`
`Worcester Polytechnic Institute, a Master of Business Administration degree in
`
`1984 from Clark University, and a Juris Doctor degree in 2006 from Santa Clara
`
`University. I have over 45 years of experience in computer and communications
`
`
`
`

`
`Declaration of Rich Seifert
`
`technology, and have worked for the past 35 years on the architecture and design
`
`of data communications networks and networking products. My curriculum vitae,
`
`which I understand has been submitted as Exhibit 1010,
`
`includes a list of
`
`publications I have authored and legal cases in which I have been involved.
`
`III. Documents and Materials Considered
`
`4.
`
`I understand that Petitioner has submitted a list of materials that I have
`
`considered in rendering the opinions expressed herein as Exhibit 1011. In forming
`
`my opinions, I have also relied on my experience and education.
`
`IV. Legal Principles
`
`5.
`
`I am not a patent attorney and offer no opinions on the law. However,
`
`I have been informed by counsel of the legal standards that apply with respect to
`
`patent validity and invalidity, and I have applied them in arriving at my
`
`conclusions.
`
`6.
`
`I understand that in an inter partes review the petitioner has the
`
`burden of proving a proposition of unpatentability by a preponderance of the
`
`evidence. I understand this standard is different from the standard that applies in a
`
`district court, where I understand a challenger bears the burden of proving
`
`invalidity by clear and convincing evidence.
`
`7.
`
`I have been informed and understand that a patent claim is invalid
`
`based on anticipation if a single prior art reference discloses all of the limitations
`
`

`
`Declaration of Rich Seifeit
`
`of that claim, and does so in a way that enables on of ordinary skill in the art to
`
`make and use the invention. Each of the claim limitations may be expressly or
`
`inherently present in the prior art reference. I understand that if the prior art
`
`necessarily functions in accordance with, or includes a claim’s limitation, then that
`
`prior art inherently discloses that limitation. I have relied on this understanding in
`
`expressing the opinions set forth below.
`
`8.
`
`I understand that a prior art reference describes the claimed invention
`
`if it either expressly or inherently describes each and every feature (or element or
`
`limitation) set forth in the claim; i.e., in determining whether a single item of prior
`
`art anticipates a patent claim, one should take into consideration not only what is
`
`expressly disclosed in that item, but also what is inherently present as a natural
`
`result of the practice of the system or method disclosed in that item.
`
`9.
`
`It is my further understanding that to establish such inherency, the
`
`evidence must make clear that the missing descriptive matter is necessarily present
`
`in the item of prior art and that it would be so recognized by persons of ordinary
`
`skill in the art. I also understand that prior art use of the claimed patented invention
`
`that was accidental, unrecognized, or unappreciated at the time of filing can still be
`
`an invalidating anticipation.
`
`10.
`
`I understand that although multiple prior art references may not be
`
`combined to show anticipation, additional references may be used to interpret the
`
`
`
`

`
`Declaration of Rich Seifert
`
`allegedly anticipating reference and shed light on what it would have meant to
`
`those skilled in the art at the time of the invention. These additional references
`
`must make it clear that the missing descriptive matter in the patent claim is
`
`necessarily present in the allegedly anticipating reference, and that it would be so
`
`recognized by persons of ordinary skill in the art.
`
`11.
`
`I also understand that a patent may not be valid even though the
`
`invention is not identically disclosed or described in the prior art if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious to a person having ordinary
`
`skill in the art in the relevant subj ect matter at the time the invention was made.
`
`12.
`
`To determine if a claim is obvious, the following factors should be
`
`considered: (1) the level of ordinary skill in the art at the time the invention was
`
`made; (2) the scope and content of the prior art; (3) the differences between the
`
`claimed invention and the prior art; and (4) so-called secondary considerations,
`
`including evidence of commercial
`
`success,
`
`long-felt but unsolved need,
`
`unsuccessful attempts by others, copying of the claimed invention, unexpected and
`
`superior results, acceptance and praise by others, independent invention by others,
`
`and the like.
`
`13.
`
`For example, I understand that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`
`
`

`
`Declaration of Rich Seifert
`
`yield predictable results. I also understand that an obviousness analysis need not
`
`seek out precise teachings directed to the specific subject matter of the challenged
`
`claim because a court can take account of the inferences and/or creative steps that a
`
`person of ordinary skill in the art would employ.
`
`14.
`
`I also understand that the obviousness determination of an invention
`
`turns on whether a hypothetical person with ordinary skill and full knowledge of
`
`all the pertinent prior art, when faced with the problem to which the claimed
`
`invention is addressed, would be led naturally to the solution adopted in the
`
`claimed invention or would naturally view that solution as an available alternative.
`
`Facts to be evaluated in this analysis include:
`
`1.
`
`2.
`
`3.
`
`4.
`
`(1)
`
`the scope and contents of the prior art;
`
`(2)
`
`differences between the prior art and the claims at issue;
`
`(3)
`
`the level of ordinary skill in the pertinent art; and
`
`(4)
`
`evidence of objective factors suggesting or negating
`
`obviousness.
`
`15.
`
`I understand that the following rationales may be used to determine
`
`whether a piece of prior art can be combined with other prior art or with other
`
`information within the knowledge of one of ordinary skill in the art:
`
`5.
`
`(A) Combining prior art elements according to known
`
`methods to yield predictable results;
`
`
`
`

`
`Declaration of Rich Seifert
`
`6.
`
`(B)
`
`Simple substitution of one known element for another to
`
`obtain predictable results;
`
`7.
`
`(C) Use of known techniques to improve similar devices
`
`(methods, or products) in the same way;
`
`8.
`
`(D) Applying a known technique to a known device (method,
`
`or product) ready for improvement to yield predictable results;
`
`9.
`
`(E)
`
`“Obvious to try”—choosing from a finite number of
`
`identified, predictable solutions, with a reasonable expectation
`
`of success;
`
`10.
`
`(F) Known work in one field of endeavor may prompt
`
`variations of it for use in either the same field or a different one
`
`based on design incentives or other market
`
`forces if the
`
`variations would have been predictable to one of ordinary skill
`
`in the art; or
`
`11.
`
`(G)
`
`Some teaching, suggestion, or motivation in the prior art
`
`that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at
`
`the claimed invention.
`
`16.
`
`I understand that when a work is available in one field of endeavor,
`
`design incentives and/or other market forces, for example, can prompt variations of
`
`
`
`

`
`Declaration of Rich Seifert
`
`it, either in the same field or a different one. Moreover, if a person of ordinary skill
`
`can implement a predictable variation,
`
`I understand that
`
`that
`
`likely bars its
`
`patentability.
`
`17.
`
`I understand that obviousness must be tested as of the time the
`
`invention was made.
`
`I understand that
`
`the test for obviousness is what
`
`the
`
`combined teachings of the prior art references would have suggested, disclosed, or
`
`taught to one of ordinary skill in the art. In particular, it is my understanding that a
`
`patent claim is invalid based upon obviousness if it does nothing more than
`
`combine familiar elements from one or more prior art references or products
`
`according to known methods to yield predictable results. For example, I understand
`
`that where a technique has been used to improve one device, and a person of
`
`ordinary skill
`
`in the art would have recognized that it would improve similar
`
`devices in the same way, using that technique is obvious.
`
`I understand that
`
`obviousness can be proved by showing that a combination of elements was
`
`obvious to try, i.e.: that it does no more than yield predictable results; implements a
`
`predictable Variation; is no more than the predictable use of prior art elements
`
`according to their established functions; or when there is design need or market
`
`pressure to solve a problem and there are a finite number of identified, predictable
`
`solutions. I have been further infonned that when a patent claim simply arranges
`
`old elements with each element performing the same function it had been known to
`
`
`
`

`
`Declaration of Rich Seifert
`
`perform and yields results no more than one would expect from such an
`
`arrangement, the combination is obvious.
`
`18.
`
`I understand that another factor to be considered is common sense.
`
`For example, I understand that common sense teaches that familiar items may have
`
`obvious uses beyond their primary purposes, and,
`
`in many cases, a person of
`
`ordinary skill will be able to fit the teachings of multiple patents together like
`
`pieces of a puzzle.
`
`19.
`
`I have been informed and understand that
`
`the Supreme Court
`
`articulated additional guidance for obviousness
`
`in its KSR decision} My
`
`understanding is that the Supreme Court said that technical people of ordinary skill
`
`look for guidance in other solutions to problems of a similar nature, and that the
`
`obviousness inquiry must track reality, and not legal f1ctions.2 I have relied on
`
`these understandings in expressing the opinions set forth below.
`
`20.
`
`I understand that a new use of an old product or material cannot be
`
`1
`
`KSR Int ’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
`
`“The obviousness analysis in the patent context cannot be confined by a
`2
`formalistic conception of the words teaching, suggestion, and motivation, or by
`overemphasis on the importance of published articles and the explicit content of
`issued patents. The diversity of inventive pursuits and of modern technology
`counsels against limiting the analysis in this way. In many fields it may be that
`there is little discussion of obvious techniques or combinations, and it often may be
`the case that market demand, rather than scientific literature, will drive design
`trends.” KSR, 550 U.S. at 419.
`
`

`
`Declaration of Rich Seifert
`
`claimed as a new product; the apparatus or system itself is old and cannot be
`
`patented. I further understand that, in general, merely discovering and claiming a
`
`new benefit to an old process cannot render the process newly patentable.
`
`V.
`
`State of the Art
`
`21.
`
`The challenged claims recite well-known structural elements of an
`
`Ethernet connector and a path coupled between two pairs of contacts. Indeed, this
`
`form of connection existed in Ethernet communication systems dating to the first
`
`Ethernet standards in 1980. Further still, twisted-pair wiring configurations, such
`
`as IOBASE-T, would use paths coupled between pairs of connector contacts
`
`because of its use of separate transmit and receive pairs, each of which allows
`
`information to be sent differentially to benefit signal propagation. As Patent Owner
`
`has admitted, the challenged claims recite these well-known structural elements.
`
`22.
`
`The challenged claims further recite well-known functional features.
`
`For
`
`instance,
`
`the claims provide that
`
`the equipment
`
`is “to draw different
`
`magnitudes of DC current flow,” that this is “to result from at least one condition
`
`applied” to a contact, and that at least one of the magnitudes is “to convey
`
`information about the piece of Ethernet terminal equipment.” These are basic
`
`functional features that can be used with prior art Ethernet systems.
`
`23.
`
`For
`
`instance, U.S. Patent No. 4,733,389 shows
`
`the following
`
`configuration:
`
`
`
`
`
`

`
`Declaration of Rich Seifert
`
`
`
`(Puvogel at FIG. 2.) In this figure, the Ethernet equipment (transceiver 70) has an
`
`Ethernet connector comprising first and second pairs of contacts (e.g., pairs 1, 6
`
`and 5, 9). Power supply 42 applies a condition, namely a DC voltage between 11.4
`
`to 15.75 volts to pins 1 and 6. This causes transceiver 70 to draw magnitudes of
`
`DC current. The DC current returns to the host station 60 through pins 5 and 9 and
`
`conveys to the host station 60, at a minimum, whether transceiver 70 is properly
`
`connected or disconnected.
`
`24.
`
`The path is completed through the DC/DC converter 48. Fig. 3-13
`
`below depicts a typical DC/DC converter as used in transceiver 70:
`
`10
`
`
`
`

`
`Declaration of Rich Seifert
`
`F.9ure 3_13_
`
`[)C.1c-DC Converter: Functional Sclugmatic Diagram
`
`H4000 Ethernet Transceiver Technical Manual at 3-25 (annotations added).
`
`25.
`
`From the figure, it can be seen that the path passes from the connector
`
`pin through inductor L2, power switch Q5, and the primary winding of transformer
`
`T2. T2 is connected to the Power Return signal, which is present on a second
`
`connector pin.
`
`26.
`
`It was well-known that magnitudes of DC current can convey
`
`information about a device. In fact, this is a simple application of Ohm’s law
`
`(Current (I) = Voltage (V) + Resistance (R)). For example, U.S. Patent No.
`
`2,822,519 (“Mu1phy) disclosed an apparatus incorporating in paths “known values
`
`of resistors and a meter with a source of direct current to identify circuits that have
`
`11
`
`

`
`Declaration of Rich Seifert
`
`been connected.” (Murphy at 1:20-22.) Murphy uses multiple contacts and twisted
`
`pairs. In the context of evaluating how much power to send to a device, the same
`
`concept was recognized as well-known prior art in U.S. Patent No. 5,200,686
`
`(“Lee”), in which the resistance in a path (measured using Ohrn’s law and a known
`
`voltage or current) was associated with the power charging requirements for the
`
`device.
`
`27.
`
`Similarly, in the system shown in Fig. 2 above, a person of ordinary
`
`skill would know that a measurement of the current drain from the 11.4 to 15.75 V
`
`DC supply 42 would convey whether the transceiver was connected to the cable,
`
`and operating within its specified parameters. The IEEE 802.3 standard for
`
`lOBASE5 specifies that transceivers (such as shown in Fig. 2 above) can draw a
`
`maximum of 0.5A of DC current. IEEE 802.3 at Clause 8.3.2.2. A typical steady-
`
`state current drain from such a transceiver is shown in the figure, below:
`
`
`
`See H4000 Ethernet Transceiver Technical Manual at 2-8.
`
`12
`
`
`
`
`
`

`
`Declaration of Rich Seifert
`
`28. A person of ordinary skill would know that a current drain on the
`
`order of a few hundred milliamps would indicate proper connection of the
`
`transceiver; a current drain exceeding 500 mA would indicate a faulty device
`
`(according to the Ethernet specification), and a very low or zero current drain
`
`would indicate either a defective or disconnected device.
`
`In this way,
`
`the
`
`magnitude of DC current drawn would convey information about the Ethernet
`
`device, resulting from the condition (i.e., the voltage applied) to the pins of its
`
`connector.
`
`VI. Admitted Prior Art
`
`29. As discussed below, Ethernet and Ethernet data terminal equipment
`
`were known in the prior art. An Ethernet connector comprising a plurality of
`
`contacts was also known in the prior art, and creating a path across selected
`
`contacts of that Ethernet connector was also known in the prior art.
`
`30.
`
`In fact, Ethernet connectors comprising a plurality of contacts existed
`
`long prior to the IOBASE-T system. For example,
`
`the Ethernet Version 1
`
`specification, published on September 30th, 1980 teaches two different Ethernet
`
`connectors, each comprising a plurality of connectors. See generally, Ethernet V1,
`
`Clause 7.
`
`31. A “transceiver cable connector” comprising 15 contacts is disclosed
`
`l3
`
`
`
`

`
`Declaration of Rich Seifert
`
`for connecting an Ethernet station to a physically separate transceiver.3 Ethernet
`
`V1 at 53-56 (§7.2). A second “coaxial cable connector” comprising two contacts is
`
`disclosed for connecting sections of the shared coaxial cable communications
`
`medium. Ethernet V1 at 60 (§7.3.1.2). See also, IEEE 802.3-1985 at 114-115 (§8.5
`
`et seq.)
`
`32.
`
`It was well-known to persons of ordinary skill that having a path
`
`coupled across selected contacts of an Ethernet connector was prior art and could
`
`not be an inventive element of any claim of the ‘O12 patent, even at the earliest
`
`possible priority date. For example, the Ethernet Version 1 Specification discloses
`
`a schematic diagram with a path coupled between contacts of the Ethernet
`
`transceiver cable connector:
`
`
`
`When the original Ethernet specification was transformed into the IEEE
`3
`802.3 specification, first published in 1985, the terms “transceiver cable” and
`“transceiver cable connector” were changed to “Attachment Unit Interface [AUI}
`cable” and “Attachment Unit Interface [AUI] connector. See, generally, IEEE
`802.3-1985 Clause 7.
`
`l4
`
`
`
`

`
`Declaration of Rich Seifert
`
`33. A path between two contacts of the Ethernet
`
`transceiver cable
`
`including, inter alia, a center-tapped 78 Q impedance (two 39 Q resistors in series)
`
`that will be discussed in greater detail below, is clearly shown in the figure above.
`
`Whenever electronic components of any sort (including wires, passive resistors or
`
`capacitors, active circuitry, etc.) are attached across pins of an Ethernet connector,
`
`a path is created that is coupled across selected contacts.
`
`34.
`
`Patent Owner’s expert also concedes that an Ethernet connector
`
`comprising a plurality of contacts was well-known:
`
`Q:
`
`Okay. So this figure is known, an Ethernet connector
`comprising a plurality of contacts is known, correct?
`
`A:
`
`Yes.
`
`(Baxter Dep. Tr. at H3.)
`
`35.
`
`Patent Owner’s expert further concedes that having a path coupled
`
`across selected contacts of a given Ethernet connector was already known to
`
`persons of ordinary skill.
`
`Q:
`
`And you say a person would understand what it means to have
`a path coupled between contacts of an Ethernet connector,
`correct?
`
`A: Mm-hmm.
`
`Q:
`
`But you’re not asserting that the inventors invented having a
`path across the two contacts, right?
`
`A:
`
`No.
`
`15
`
`
`
`

`
`Declaration of Rich Seifert
`
`Q: ...Would a person of ordinary skill in the art at the date of filing of
`the earliest patent application or the date of invention have
`already seen something similar to the schematic in paragraph
`77?
`
`A: Whether they would have seen this exact schematic or not, I
`don’t know, but certainly you would be familiar with what the
`Ethernet connector is, what an impedance is, and what a path is.
`So I think those are very familiar concepts to anyone of skill in
`the art at that time and since Ethernet, you know, twisted
`pairing had been around for some years, certainly they would
`have seen schematics that had connections across the contacts
`
`of a modular jack.
`
`(Baxter Dep. Tr. at 114-116 (objections omitted).)
`
`36. As
`
`discussed above,
`
`terminal
`
`equipment,
`
`including terminal
`
`equipment having an Ethernet connector was known in the prior art.
`
`37.
`
`Similarly, coupling a path across specific contacts of an Ethernet
`
`connector comprising 8 contacts (numbered 1
`
`through 8) was also known to
`
`persons of ordinary skill. The IEEE 802.3i-1990 specification (IOBASE-T)
`
`discloses such an Ethernet connector, with eight contacts numbered 1 through 8:
`
`l6
`
`
`
`

`
`Declaration of Rich Seifert
`
`
`
`IEEE 802.3i-1990 Figures 14-20 and 14-21: MAU MDI Connect and Twisted-
`pair Link Segment Connector
`IEEE 802.3i-1990 at 52 (§14.5.2); see also IEEE 802.3-1993 at 268.
`
`VII. Claim Construction
`
`38.
`
`I understand that in an inter partes review, a claim in an unexpired
`
`patent must be given its broadest reasonable interpretation in light of the
`
`specification of the patent in which it appears.
`
`39. Under the broadest reasonable interpretation standard, I understand
`
`that Petitioner has proposed that the following claim terms be construed as shown
`
`below.
`
`Claim Term
`
`IOBASE-T
`
`Claim(s)
`’76O patent: claims 1, 31,
`37, 58, 59, 69, 72, 73, 106,
`
`112,134,142,145
`
`’ 107 patent: claim 5
`
`’838 patent: claim 1
`
`’0l9 patent: claims 1, 9-
`10, 14, 16-17, 19, 23-26,
`
`28, 30-31, 38
`
`

`
`Declaration of Rich Seifert
`
`“path coupled across”
`
`’ 107 patent: claims 1, 104
`
`second pair of contacts]
`
`’0l9 patent: claim 1
`
`path permitting energy
`transfer between [at least one
`of the contacts of the first
`pair of contacts and at least
`one of the contacts of the
`
`40. When rendering an opinion, I have used these proposed constructions
`
`for these terms. For all other terms, I have applied the plain meaning of the term to
`
`a person of ordinary skill in the art.
`
`VIII. Person of Ordinary Skill in the Art
`
`41.
`
`I have been informed and understand that the following criteria are
`
`useful in determining the level of ordinary skill in the art with respect to a given
`
`patent:
`
`(a)
`
`the educational
`
`level of the inventor;
`
`(b)
`
`th