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2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 1 of 130 Pg ID 904
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`
`
`
`
`CISCO SYSTEMS, INC.
`
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`
`
`
`
`Case No. 2:17-cv-13770-AC-RSW
`
`Honorable Avern Cohn
`
`Magistrate Judge R. Steven Whalen
`
`
`
`
`
`Case No. 2:17-cv-13784-AC-RSW
`
`Honorable Avern Cohn
`
`Magistrate Judge R. Steven Whalen
`
`
`JURY TRIAL DEMANDED
`
`
`
`HEWLETT-PACKARD
`ENTERPRISE COMPANY, HP INC.
`f/k/a HEWLETT-PACKARD
`COMPANY, AND ARUBA
`NETWORKS, INC.
`
`
`
`
`
`Plaintiffs,
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`DEFENDANT’S ANSWER, AFFIRMATIVE
`DEFENSES, JURY DEMAND AND
`COUNTERCLAIM TO FIRST AMENDED
`COMPLAINT OF PLAINTIFF CISCO
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 2 of 130 Pg ID 905
`
`
`
`
`
`In the 1990’s Defendant ChriMar Systems Inc., d/b/a CMS Technologies
`
`(“Chrimar” or “Defendant”) developed commercial products that could distinguish
`
`and identify Ethernet equipment remotely, even when that equipment did not have
`
`any of its operational power applied. The Ethernet equipment industry later adopted
`
`standards that used Chrimar’s technology in a way that pushed Chrimar’s products
`
`off the Ethernet data lines they used to distinguish and identify Ethernet equipment.
`
`Chrimar obtained several patents covering its technology and has licensed its product
`
`to and/or successfully enforced them against numerous parties in the industry. On
`
`February 17, 2018, Plaintiff Cisco Systems, Inc. (“Cisco”) filed a First Amended
`
`Complaint and Jury Demand declaring that Cisco does not infringe Chrimar’s U.S.
`
`Patent Nos. 8,155,012 (“the ‘012 Patent”), 8,942,107 (“the ‘107 Patent”), 8,902,760
`
`(“the ‘760 Patent”), 9,049,019 Patent (“the ‘019 Patent”), 9,019,838 (“the ‘838
`
`Patent”), and 9,812,825 (“the ‘825 Patent”), but does not identify any limitation of
`
`any claim from those patents that Cisco does not practice. Cisco raises other claims
`
`as well. As explained below, Chrimar denies Cisco’s allegations and counterclaims
`
`for infringement. More specifically, Chrimar by and through its attorneys, Brooks
`
`Kushman P.C., and for its answer to Plaintiff’s Complaint, states as follows:
`
`
`
`
`
`
`
`1
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 3 of 130 Pg ID 906
`
`
`
`PARTIES
`
`1.
`
`Cisco Systems, Inc. is a California corporation with its principal place
`
`of business on Tasman Drive in San Jose, California 95134.
`
`ANSWER:
`
`Admitted.
`
`
`
`2.
`
`On information and belief, ChriMar Systems, Inc. d/b/a CMS
`
`Technologies is a Michigan corporation with its principal place of business at 36528
`
`Grand River Avenue, Suite A-1 in Farmington Hills, Michigan.
`
`ANSWER:
`
`Admitted that Chrimar Systems, Inc. is a Michigan corporation,
`
`the remaining allegations are denied.
`
`
`
`JURISDICTION AND VENUE
`
`3.
`
`This action is predicated on the patent laws of the United States, Title
`
`35 of the United States Code, with a specific remedy sought based upon the laws
`
`authorizing actions for declaratory judgment in the courts of the United States, 28
`
`U.S.C. §§ 2201 and 2202. This court has jurisdiction over this action pursuant to 28
`
`U.S.C. §§ 1331, 1338(a), and 1367.
`
`ANSWER:
`
`Admitted that this action is predicated on the patent laws of the
`
`United States, otherwise denied.
`
`
`
`2
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 4 of 130 Pg ID 907
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`
`
`4.
`
`An actual and justiciable controversy exists between ChriMar and
`
`Cisco as to the noninfringement and unenforceability of U.S. Patent Nos. 8,155,012
`
`(“’012 Patent”) (attached as Exhibit A), 8,942,107 (“’107 Patent”) (attached as
`
`Exhibit B), 8,902,760 (“’760 Patent”) (attached as Exhibit C), 9,049,019 (“’019
`
`Patent”) (attached as Exhibit D), 9,019,838 (“’838 Patent”) (attached as Exhibit E),
`
`and 9,812,825 (“’825 Patent”) (attached as Exhibit F). As further alleged below,
`
`ChriMar is and has been engaged in a campaign to license and enforce its patent
`
`portfolio against manufacturers and sellers of Power over Ethernet (“PoE”)
`
`networking products, including Cisco. In connection with ChriMar’s licensing
`
`campaign targeting PoE products, Cisco is currently involved in litigation against
`
`ChriMar with respect to U.S. Patent Nos. 7,457,250 (“‘250 Patent”)1, and filed
`
`declaratory judgment actions involving the ’0122, ’107, ’760 Patent3, ’019, and ’838
`
`Patents4. The ’250 Patent litigation involves PoE products implementing the IEEE
`
`
`1 ChriMar Systems, Inc. v. Cisco Systems, Inc., No. 4:13-cv-1300-JSW (N.D.
`Cal.).
`
`2 Cisco Systems, Inc. et al v. ChriMar Systems, Inc. d/b/a CMS Technologies,
`No. 2:14-cv-10290 (E.D. Mich.) (Cisco has voluntarily dismissed this action for the
`reasons described in paragraph 4 herein.)
`
`3 Cisco Systems, Inc. v. ChriMar Systems, Inc. d/b/a CMS Technologies, No.
`2:15-cv-10817 (E.D. Mich.) (Cisco has voluntarily dismissed this action for the
`reasons described in paragraph 4 herein.)
`
`4 Cisco Systems, Inc. v. ChriMar Systems, Inc. d/b/a CMS Technologies, No.
`2:15-cv-12565 (E.D. Mich.) (Cisco has voluntarily dismissed this action for the
`reasons described in paragraph 4 herein.)
`
`3
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 5 of 130 Pg ID 908
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`
`
`802.3af and 802.3at standards. Cisco also filed (and has since voluntarily dismissed
`
`in order to consolidate those allegations in the instant complaint and to drop Cisco’s
`
`requests for of invalidity so that Cisco is free to pursue, if warranted, inter partes
`
`review (“IPR”) proceedings challenging the validity of the patents at issue in those
`
`cases (numerous claims of which have already been found to be invalid in other IPR
`
`proceedings)) declaratory judgment actions in this District concerning the ‘012, ‘107,
`
`‘760, ‘019, and ‘838 Patents. Cisco maintains that the ’012, ’107, ’760, ’019, ’838,
`
`and ’825 Patents are unenforceable, and are not infringed by Cisco’s PoE products
`
`implementing IEEE Standards 802.3af/at.
`
`ANSWER:
`
`Denied.
`
`
`
`5.
`
`This Court has personal jurisdiction over ChriMar at least because, on
`
`information and belief, ChriMar is a Michigan corporation having its principal place
`
`of business within the Eastern District of Michigan at 36528 Grand River Avenue,
`
`Suite A-1 in Farmington Hills, Michigan. ChriMar has had substantial business
`
`contacts with Michigan including product sales to Michigan entities, and ChriMar’s
`
`campaign to enforce and license its patent portfolio, including the ‘012, ‘107, ‘760,
`
`‘019, ‘838, and ‘825 Patents, has a substantial relationship to Michigan. ChriMar
`
`has availed itself of the laws of this District in connection with its current portfolio
`
`4
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 6 of 130 Pg ID 909
`
`
`
`licensing efforts targeting PoE products, including by litigating patent infringement
`
`claims involving that portfolio in this district.
`
`ANSWER:
`
`Chrimar does not dispute personal jurisdiction in this District,
`
`otherwise denied.
`
`
`
`6.
`
`Venue is proper in this Court under 28 U.S.C. § 1391(b)(1), (c) and §
`
`1400(b) including because ChriMar is incorporated in the state of Michigan, has a
`
`regular and established place of business in the state of Michigan, and has had
`
`substantial contacts with
`
`the state of Michigan. ChriMar Systems, Inc.
`
`(Identification Number 800003893) was incorporated in the state of Michigan on
`
`July 9, 1993 for a perpetual term under Section 284-1972 of the Business
`
`Corporation Act. Its 2017 Annual Report lists John Austermann at 36528 Grand
`
`River Ave, Ste. A1, Farmington Hills, MI 48335 as its registered agent. ChriMar’s
`
`principal place of business is within the Eastern District of Michigan at 36528 Grand
`
`River Avenue, Suite A-1 in Farmington Hills, Michigan. ChriMar’s website lists this
`
`same address as a location out of which ChriMar operates. In addition, in its Answer,
`
`ChriMar alleged that it “does not dispute venue in the Eastern District of Michigan
`
`. . . .” (Dkt. No. 9 at 6.)
`
`ANSWER:
`
`Chrimar does not dispute venue in the Eastern District of
`
`Michigan, otherwise denied.
`
`5
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 7 of 130 Pg ID 910
`
`
`
`BACKGROUND
`
`A. CHRIMAR’S PATENTS
`
`7.
`
`ChriMar’s patent portfolio includes the ‘250, ‘012, ‘107, ‘760, ‘019,
`
`‘838, and the ‘825 Patents, U.S. Patent No. 6,650,622 (the “‘622 Patent”), U.S.
`
`Patent No. 5,406,260 (the “‘260 Patent”), and others. The phrase “the ’622 Patent
`
`Family” as used throughout Cisco’s Complaint refers to the ’622, ’250, ’012, ’107,
`
`’760, ’019, ’838, and ’825 Patents and any application to which they may purport to
`
`claim priority, including without limitation Application No. PCT/US99/07846 and
`
`Provisional Application No. 60/081,279.
`
`ANSWER:
`
`Denied.
`
`
`
`8.
`
`The ’012 Patent, entitled “System and Method for Adapting a Piece of
`
`Terminal Equipment,” reports that it was filed on September 26, 2008 as Application
`
`No. 12/239,001, and issued on April 10, 2012. The '012 Patent reports that it is a
`
`continuation of Application No. 10/668,708, filed on September 23, 2003, now the
`
`'250 Patent, which is a continuation of Application No. 09/370,430, filed on August
`
`9, 1999, now the ’622 Patent, which is a continuation-in-part of application No.
`
`PCT/US99/07846, filed on April 8, 1999. The inventors named on the ’012 Patent
`
`are John F. Austermann, III and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`6
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 8 of 130 Pg ID 911
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`
`
`
`
`9.
`
`As alleged herein, the ’012 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`10. On information and belief, ChriMar is the current assignee of the ’012
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`11. The ’107 Patent, entitled “Piece of Ethernet Terminal Equipment,”
`
`reports that it was filed on February 10, 2012 as Application No. 13/370,918, and
`
`issued on January 27, 2015. The ’107 Patent reports that it is a continuation of
`
`Application No. 12/239,001, filed on September 26, 2008, now the ’012 Patent,
`
`which is a continuation of Application No. 10/668,708, filed on September 23, 2003,
`
`now the ’250 Patent, which is a continuation of Application No. 09/370,430, filed
`
`on August 9, 1999, now the ’622 Patent, which is a continuation-in-part of
`
`application No. PCT/US99/07846, filed on April 8, 1999. The inventors named on
`
`the ’107 Patent are John F. Austermann, III and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`
`
`
`
`7
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 9 of 130 Pg ID 912
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`
`
`12. As alleged herein, the ’107 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`13. On information and belief, ChriMar is the current assignee of the ’107
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`14. The ’760 Patent, entitled “Network Systems and Optional Tethers,”
`
`reports that it was filed on September 14, 2012 as Application No. 13/615,755, and
`
`issued on December 2, 2014. The ’760 Patent reports that it is a continuation of
`
`Application No. 13/370,918, filed on February 10, 2012, which is a continuation of
`
`Application No. 12/239,001, filed on September 26, 2008, now the ’012 Patent,
`
`which is a continuation of Application No. 10/668,708, filed on September 23, 2003,
`
`now the ’250 Patent, which is a continuation of Application No. 09/370,430, filed
`
`on August 9, 1999, now the ’622 Patent, which is a continuation-in-part of
`
`application No. PCT/US99/07846, filed on April 8, 1999. The inventors named on
`
`the '760 Patent are John F. Austermann, III and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`
`
`8
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 10 of 130 Pg ID 913
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`
`
`15.
`
`
`
`As alleged herein, the ’760 Patent was not duly and legally
`
`issued.
`
`ANSWER:
`
`Denied.
`
`
`
`16.
`
`
`
`On information and belief, ChriMar is the current assignee of the
`
`’760 Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`17.
`
`
`
`The ’019 Patent, entitled “Network Equipment and Optional
`
`Tether,” reports that it was filed on September 14, 2012 as Application No.
`
`13/615,726, and issued on June 2, 2015. The ’019 Patent reports that it is a
`
`continuation of Application No. 13/370,918, now the ’107 Patent, which is a
`
`continuation of Application No. 12/239,001, filed on September 26, 2008, now the
`
`’012 Patent, which is a continuation of Application No. 10/668,708, filed on
`
`September 23, 2003, now the ’250 Patent, which is a continuation of Application
`
`No. 09/370,430, filed on August 9, 1999, now the ’622 Patent, which is a
`
`continuation-in-part of application No. PCT/US99/07846, filed on April 8, 1999.
`
`The inventors named on the '019 Patent are John F. Austermann, III and Marshall B.
`
`Cummings.
`
`ANSWER:
`
`Admitted.
`
`9
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 11 of 130 Pg ID 914
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`
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`
`
`18.
`
` As alleged herein, the ’019 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`19.
`
` On information and belief, ChriMar is the current assignee of the ’019
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`20. The ’838 Patent, entitled “Central Piece of Network Equipment,”
`
`reports that it was filed on September 14, 2012, and issued on April 28, 2015. The
`
`’838 Patent reports that it is a continuation of Application No. 13/370,918, now the
`
`’107 Patent, which is a continuation of Application No. 12/239,001, filed on
`
`September 26, 2008, now the ’012 Patent, which is a continuation of Application
`
`No. 10/668,708, filed on September 23, 2003, now the ’250 Patent, which is a
`
`continuation of Application No. 09/370,430, filed on August 9, 1999, now the ’622
`
`Patent, which is a continuation-in-part of application No. PCT/US99/07846, filed on
`
`April 8, 1999. The inventors named on the '838 Patent are John F. Austermann, III
`
`and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`10
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 12 of 130 Pg ID 915
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`
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`
`
`21. As alleged herein, the ’838 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`
`
`22. On information and belief, ChriMar is the current assignee of the ’838
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`23. The ‘825 Patent, entitled “Ethernet Device,” reports that it was filed on
`
`January 1, 2015 as Application No. 14/726,940, and issued on November 7, 2017.
`
`The ‘825 Patent reports that it is a continuation of Application No. 13/615,726, filed
`
`on September 14, 2012, now the ‘019 Patent, which is a continuation of Application
`
`No. 13/370,918, filed on February 10, 2012, now the ‘107 Patent, which is a
`
`continuation of Application No. 12/239,001, filed on September 26, 2008, now the
`
`‘012 patent, which is a continuation of Application No. 10/668,708, filed on
`
`September 23, 2003, now the ‘250 Patent, which is a continuation of Application
`
`No. 09/370,430, filed on August 9, 1999, now the ‘622 Patent, which is a
`
`continuation-in-part of application No. PCT/US99/07846, filed on April 8, 1999.
`
`11
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 13 of 130 Pg ID 916
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`
`
`The inventors named on the ‘825 Patent are John F. Austermann, III and Marshall B.
`
`Cummings.
`
`ANSWER:
`
`Admitted.
`
`
`
`24. As alleged herein, ’825 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`25. On information and belief, ChriMar is the current assignee of the ’825
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`26. The ’250 Patent, entitled “System for Communicating with Electronic
`
`Equipment,” reports that it was filed on September 23, 2003, issued on November
`
`25, 2008 and then had a reexamination certificate issued on March 1, 2011. The ’250
`
`Patent reports that it is a continuation of Application No. 09/370,430, filed on August
`
`9, 1999, now the ’622 Patent, which is a continuation-in-part of Application No.
`
`PCT/US99/07846, filed on April 8, 1999. The inventors named on the ’250 Patent
`
`are John F. Austermann, III, and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`
`
`12
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 14 of 130 Pg ID 917
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`
`
`27. As alleged herein, the ’250 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`28.
`
` On information and belief, ChriMar is the current assignee of the ’250
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`29.
`
` The ’012, ’107, ’760, ’019, ’838, and ’825 Patents share nearly
`
`identical specifications with the ’250 Patent to which each ultimately claims priority.
`
`ANSWER:
`
`Because the term “nearly identical” in this allegation is unclear
`
`Chrimar denies this allegation.
`
`
`
`30. As alleged herein, on information and belief, Cisco believes that
`
`ChriMar asserts, and will assert, that the ’012, ’107, ’760, ’019, ’838, and ’825
`
`Patents cover products with PoE functionality.
`
`ANSWER:
`
`Chrimar is not privy to what Cisco believes and, therefore, denies
`
`this allegation.
`
`
`
`31. The below diagram summarizes ChriMar’s ’622 Family of Patents:
`
`13
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 15 of 130 Pg ID 918
`
`
`
`ANSWER:
`
`Denied.
`
`
`
`
`B. CHRIMAR’S LICENSING AND ENFORCEMENT EFFORTS
`TARGETING PRODUCTS WITH POWER OVER ETHERNET
`FUNCTIONALITY
`
`
`
`32. For many years, ChriMar has actively pursued a patent licensing and
`
`enforcement campaign targeting products with Power Over Ethernet (“PoE”)
`
`functionality specified by certain standards promulgated by the Institute of Electrical
`
`and Electronics Engineers (“IEEE”) and sellers of such products.
`
`ANSWER:
`
`Denied.
`
`
`
`33. ChriMar’s licensing and enforcement campaign began in 2001, when
`
`ChriMar sued Cisco in this district for allegedly infringing the ‘260 Patent, accusing,
`
`14
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 16 of 130 Pg ID 919
`
`
`
`for example, Cisco’s IP phones.5 ChriMar thereafter claimed that the ‘260 Patent
`
`was “essential” to the IEEE PoE standards.6 After the Court in that action entered
`
`an order granting Cisco’s motion for summary judgment that claim 1 of the ‘260
`
`Patent was invalid, that litigation between Cisco and ChriMar was resolved by way
`
`of settlement, with Cisco taking a license to ChriMar’s alleged technology. ChriMar
`
`also sued D-Link Systems (“D-Link”)7, Foundry Networks (“Foundry”)8, and
`
`PowerDsine, Ltd. (“PowerDsine”)9, based on their respective sales of products with
`
`PoE functionality accusing those companies of infringing the ‘260 Patent based on
`
`sales of those products. D-Link and PowerDsine took licenses to the ‘260 Patent
`
`after favorable rulings were issued, and ultimately an additional claim of the ‘260
`
`Patent (claim 17) was invalidated by the Court in the Foundry action, leading to
`
`dismissal of that action and summary affirmance by the Federal Circuit.
`
`ANSWER:
`
`Denied.
`
`
`5 ChriMar Sys., Inc. v. Cisco Sys., Inc., No. 2:01-cv-71113 (E.D. Mich.) (filed
`Mar. 21, 2001, terminated Sept. 15, 2005).
`
`6
`at
`available
`See
`Assurance,
`of
`Letter
`ChriMar
`http://standards.ieee.org/about/sasb/patcom/loa-802_3af-chrimar-03Dec2001.pdf.
`
`7 See ChriMar Sys., Inc. v. D-Link Sys., Inc., No. 2:06-cv-13937 (E.D. Mich.)
`(filed Sept. 6, 2006, terminated Apr. 21, 2010).
`
`8 See ChriMar Sys., Inc. v. Foundry Networks, Inc., No. 2:06-cv-13936 (E.D.
`Mich.) (filed Sept. 6, 2006, terminated Aug. 1, 2012).
`
`9 ChriMar Sys., Inc. v. PowerDsine LTD., No. 2:01-cv-74081 (E.D. Mich.)
`(filed Oct. 26, 2001, terminated Mar. 31, 2010).
`
`15
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`CISCO 1014
`Cisco v. ChriMar
`
`

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`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 17 of 130 Pg ID 920
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`
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`34. Shortly after issuance of the ‘250 Patent, which ChriMar deliberately
`
`failed to disclose to the IEEE standards bodies that developed the PoE standards, as
`
`alleged below, ChriMar continued its licensing and enforcement campaign against
`
`sellers of products with PoE functionality, including Cisco and a number of other
`
`California-based companies. ChriMar sued Waters Network Systems, LLC for
`
`allegedly infringing the ‘250 Patent in 2008, and went on to sue multiple additional
`
`sellers of products with PoE functionality (Danpex Corp., Garrettcom, Inc., and
`
`Edgewater Networks) in 2009.10 Following conclusion of a reexamination
`
`proceeding involving the ‘250 Patent, ChriMar sued Cisco, and also California-
`
`based Hewlett-Packard, Avaya, Inc., and Extreme Networks, both in the
`
`International Trade Commission,11 and in district court,12 for allegedly infringing the
`
`
`10 See ChriMar Sys., Inc. v. Waters Network Sys., LLC, No. 2:08-cv-00453
`(E.D. Tex.) (filed Nov. 25, 2008, terminated June 19, 2009); ChriMar Sys., Inc. v.
`Danpex Corp., No. 2:09-cv-00044 (E.D. Tex.) (filed Feb. 6, 2009, terminated May
`20, 2009); ChriMar Sys., Inc. v. Garrettcom, Inc., No. 2:09-cv-00085 (E.D. Tex.)
`(filed Mar. 23, 2009), No. 3:09-cv-04516 (N.D. Cal.) (terminated Dec. 22, 2009);
`ChriMar Sys., Inc. v. KTI Network, Inc., No. 2:09-cv-00230 (E.D. Tex.) (filed July
`30, 2009, terminated Nov. 25, 2009).
`
`11 In the Matter of Certain Communication Equipment, Components Thereof,
`and Products Containing the same, including Power over Ethernet Telephones,
`Switches, Wireless Access Points, Routers and other Devices Used in LANs, and
`Cameras, Inv. No. 337-TA-817 (instituted Dec. 1, 2011, terminated Aug. 1, 2012).
`
`12 ChriMar Systems, Inc. v. Cisco Systems, Inc., No. 4:13-cv-1300-JSW (N.D.
`Cal.) (“the NDCA case”).
`
`16
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 18 of 130 Pg ID 921
`
`
`
`‘250 Patent by selling products with PoE functionality, including among other
`
`products, IP telephones, wireless access points, and wireless network cameras.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`35. ChriMar has also expanded its licensing and enforcement campaign
`
`against products with PoE functionality to include the ‘012 Patent, which issued in
`
`2012. ChriMar subsequently filed five actions in the United States District Court for
`
`the Eastern District of Texas alleging infringement of the ‘012 Patent by various
`
`manufacturers and re-sellers of PoE products. The complaints in these actions accuse
`
`specific models of IP phones and/or Wireless Access Points, each of which includes
`
`PoE functionality.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`36. ChriMar brought suit against Aastra Technologies Limited and Aastra
`
`USA Inc. in the Eastern District of Texas, Case No. 6:13-cv-879, on November 8,
`
`2013, alleging infringement of the ‘012 Patent, for among other things, making,
`
`using, offering for sale, selling, and/or importing IP telephones, which, on
`
`information and belief, include PoE functionality.
`
`17
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 19 of 130 Pg ID 922
`
`
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`37. ChriMar brought suit against Alcatel-Lucent, Inc., Alcatel-Lucent
`
`USA, Inc., and Alcatel-Lucent Holdings, Inc., in the Eastern District of Texas, Case
`
`No. 6:13-cv-880, on November 8, 2013, alleging infringement of the ‘012 Patent,
`
`for among other things, making, using, offering for sale, selling, and/or importing
`
`wireless access points, which, on information and belief, include PoE functionality.
`
`ANSWER:
`
`ChriMar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations. ChriMar also
`
`states that Alcatel-Lucent was found to infringe ChriMar’s patents and all the
`
`defenses related to IEEE activities as raised by Cisco in this complaint were rejected.
`
`
`
`38. ChriMar brought suit against AMX, LLC, in the Eastern District of
`
`Texas, Case No. 6:13-cv-881, on November 8, 2013, alleging infringement of the
`
`‘012 Patent, for among other things, making, using, offering for sale, selling, and/or
`
`importing wireless access points, which, on information and belief, include PoE
`
`functionality.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`18
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 20 of 130 Pg ID 923
`
`
`
`39. ChriMar brought suit against Grandstream Networks, Inc., in the
`
`Eastern District of Texas, Case No. 6:13-cv-882, on November 8, 2013, alleging
`
`infringement of the ‘012 Patent, for among other things, making, using, offering for
`
`sale, selling, and/or importing IP telephones and wireless network cameras, which,
`
`on information and belief, include PoE functionality.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`40. ChriMar brought suit against Samsung Electronics Co, Ltd., Samsung
`
`Electronics America, Inc. and Samsung Telecommunications in the Eastern District
`
`of Texas, Case No. 6:13-cv-883, on November 8, 2013, alleging infringement of the
`
`‘012 Patent, for among other things, making, using, offering for sale, selling, and/or
`
`importing IP telephones, which, on information and belief, include PoE
`
`functionality.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`19
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 21 of 130 Pg ID 924
`
`
`
`41.
`
` On June 22, 2015, ChriMar filed six suits in the Eastern district of
`
`Texas, alleging infringement of the ’012, ’107, and ’019 Patents13. ChriMar asserts
`
`infringement predicated on the accused products’ compliance with the PoE standards
`
`embodied in IEEE 802.3af and/or 802.3at.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patents, but denies all remaining allegations.
`
`
`
`42. On July 1, 2015, ChriMar expanded its litigation campaign in the
`
`Eastern District of Texas, initiating lawsuits against thirty-nine defendants, alleging
`
`infringement by PoE power sourcing equipment (PSEs) and powered devices (PDs)
`
`of the ‘012, ‘107, ‘760, ‘019, and ‘838 patents: Alcatel-Lucent,14 AMX, LLC,15
`
`Aacton Technology Corp., Edgecore USA, and SMC Networks,16 Adtran &
`
`
`13 ChriMar Systems, Inc. et al. v. Advanced Network Devices, Inc., No. 6:15-cv-0577
`(E.D. Texas June 22, 2015) (asserting '012, '107, and '019 Patents); ChriMar Systems,
`Inc. et al. v. Arrowspan, Inc., No. 6:15-cv-0579 (E.D. Texas June 22, 2015) (asserting
`'012, '107, and '019 Patents); ChriMar Systems, Inc. et al. v. Biamp Systems Corp.,
`No. 6:15-cv-0578 (E.D. Texas June 22, 2015) (asserting '012, '107, and '019 Patents);
`ChriMar Systems, Inc. et al. v. Hawk-I Security Inc., No. 6:15-cv-0580 (E.D. Texas
`June 22, 2015) (asserting '012, '107, and '019 Patents); ChriMar Systems, Inc. et al.
`v. IPitomy Communications, LLC, No. 6:15-cv-0582 (E.D. Texas June 22, 2015)
`(asserting '012, '107, and '019 Patents); ChriMar Systems, Inc. et al. v. KeyScan, Inc.,
`No. 6:15-cv-0583 (E.D. Texas June 22, 2015) (asserting '012, '107, and '019 Patents).
`14 6:15-cv-00614
`
`15 6:15-cv-00615
`
`16 6:15-cv-00616
`
`20
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 22 of 130 Pg ID 925
`
`
`
`TRENDNet, Inc.,17 Advantech Corporation,18 Allworx Corp.,19 Alpha Networks,
`
`Inc.,20 Black Box Corporation,21 ASUSTek Computer International, Inc.,22 ASUS
`
`Computer International, Inc.,23 Buffalo Americas, Inc.,24 Costar Technologies,
`
`Inc.,25 Eagle Eye Networks, Inc.,26 Comtrend & Edimax,27 EnGenius Technologies,
`
`Inc.,28 Juniper Networks, Inc.,29 Korenix USA,30 Leviton Manufacturing Co., Inc.,31
`
`Moxa Americas Inc.,32 Netgear, Inc.,33 NetMedia Inc.,34 Phihong USA
`
`
`17 6:15-cv-00617
`
`18 6:15-cv-00618
`
`19 6:15-cv-00620
`
`20 6:15-cv-00621
`
`21 6:15-cv-00622
`
`22 6:15-cv-00623
`
`23 6:15-cv-00624
`
`24 6:15-cv-00625
`
`25 6:15-cv-00626
`
`26 6:15-cv-00627
`
`27 6:15-cv-00628
`
`28 6:15-cv-00629 and 640
`
`29 6:15-cv-00630
`
`30 6:15-cv-00631
`
`31 6:15-cv-00632
`
`32 6:15-cv-00633
`
`33 6:15-cv-00634
`
`34 6:15-cv-00635
`
`21
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 23 of 130 Pg ID 926
`
`
`
`Corporation,35 Rockwell Automation, Inc.,36 Ruckus Wireless,37 AeroHive
`
`Networks Incorporated & Dell Inc.,38 TP-Link USA Corporation,39 Transition
`
`Networks,40 Huawei,41 TRENDnet,42 StarTech.com USA LLP,43 Tycon Systems,
`
`Inc.,44 VP Networks,45 WatchGuard Technologies, Inc.,46 Belden Inc., GarretCom,
`
`Inc., and Hirschmann Automation and Control, Inc.,47 Belkin International, Inc.,48
`
`Fortinet, Inc.,49 Allied Telesis, Inc.,50 and D-Link Systems, Inc.51
`
`
`35 6:15-cv-00636
`
`36 6:15-cv-00637
`
`37 6:15-cv-00638
`
`38 6:15-cv-00639, which resulted in a jury verdict of non-infringement for
`each of the ‘012, ‘760, ‘107, and ‘838 patents
`
`39 6:15-cv-00641
`
`40 6:15-cv-00642
`
`41 6:15-cv-00643
`
`42 6:15-cv-00644
`
`43 6:15-cv-00645
`
`44 6:15-cv-00646
`
`45 6:15-cv-00647
`
`46 6:15-cv-00648
`
`47 6:15-cv-00649
`
`48 6:15-cv-00650
`
`49 6:15-cv-00651
`
`50 6:15-cv-00652
`
`51 6:15-cv-00653
`
`22
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 24 of 130 Pg ID 927
`
`
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`43. Recently, ChriMar sued Panasonic on November 9, 2017 in the Eastern
`
`District of Texas52, alleging infringement of the ‘107, ‘760, ‘838, and ‘825 patents.
`
`See Exhibit G. ChriMar’s complaint states the “Patents-in-Suit generally cover plug
`
`and play automation and/or asset control capabilities employed by certain BaseT
`
`Ethernet equipment including PDs and PSE that comply with or are compatible with
`
`certain portions of the IEEE Standards commonly referred to as PoE Standards (e.g.,
`
`the IEEE 802.3af or IEEE 802.3at standards).” Exhibit G at 6.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`44. ChriMar’s complaint specifically alleges that Panasonic infringes these
`
`patents because “Defendant make, use, offer to sell, sell, and/or import Power over
`
`Ethernet powered devices and/or power sourcing equipment”. With respect to the
`
`’107 Patent, the complaint specifically accuses Panasonic of infringing at least
`
`“claim 103 across claims 5, 6, 16, 56, and 71, and claim 125 across claims 113 and
`
`
`52 ChriMar Systems, Inc. d/b/a CMS Technologies and ChriMar Holding
`Company, LLC, v. Panasonic Corporation and Panasonic Corporation of North
`America, No. 6:17-cv-00637 (E.D. Tex.)
`
`23
`
`CISCO 1014
`Cisco v. ChriMar
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 25 of 130 Pg ID 928
`
`
`
`122” by “making using, offering for sale, selling, and/or importing the Accused PD
`
`Products in the United States.” Exhibit G at 10. With respect to the ’760 Patent, the
`
`complaint specifically accuses Panasonic of infringing at least “claims 166, 177, and
`
`claim 219 across claims 158, 179, and 182 by “making using, offering for sale,
`
`selling, and/or importing the Accused Products in the United States.” Exhibit G at
`
`35. With respect to the ’838 Patent, the complaint specifically accuses Panasonic of
`
`infringing at least claim

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