`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`Plaintiff,
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`
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`v.
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`HEWLETT-PACKARD CO.,
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`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES,
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`Defendant.
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`Case No. __________________
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`DEMAND FOR JURY TRIAL
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`HEWLETT-PACKARD CO.’S COMPLAINT
`AND DEMAND FOR JURY TRIAL
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`Plaintiff Hewlett-Packard Company (“HP”), for its Complaint against
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`Defendant ChriMar Systems, Inc. d/b/a CMS Technologies (“ChriMar”), hereby
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`demands a jury trial and alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`HP seeks a declaratory
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`judgment of patent noninfringement,
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`invalidity, and unenforceability due to unclean hands, estoppel, waiver, and/or
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`implied license of United States Patent No. 8,155,012, entitled “System and
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`Method for Adapting a Piece of Terminal Equipment,” (the “‘012 patent”)
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`pursuant to the Patent Laws of the United States, 35 U.S.C. § 100 et seq., and such
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`other relief as the Court deems just and proper.
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`2.
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`A true and correct copy of the ‘012 patent is attached hereto as
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`Exhibit A.
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`3.
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`HP also brings an action for breach of contract by ChriMar for breach
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`of the IEEE’s patent policy and bylaws that required ChriMar to disclose through a
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`Letter of Assurance patents or patent applications, including the ’012 and its
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`applications, that ChriMar believed were infringed by the practice of actual and/or
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`proposed standards of the IEEE.
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`4.
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`HP also brings an action under Section 17200 et seq. of the California
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`Business and Professions Code for ChriMar’s unfair business practices related to
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`its conduct before the IEEE and its enforcement of the ‘012 patent and related
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`patents.
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`PARTIES
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`5.
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`Plaintiff Hewlett-Packard Co. is a corporation organized under the
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`laws of Delaware with its principal place of business at 3000 Hanover Street, Palo
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`Alto, California.
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`6.
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`On information and belief, Defendant ChriMar Systems, Inc. d/b/a
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`CMS Technologies is a Michigan corporation with its principal place of business at
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`36528 Grand River Avenue, Suite A-1 in Farmington Hills, Michigan.
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`JURISDICTION AND VENUE
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`7.
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`This Court has jurisdiction over these claims pursuant to, and without
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`limitation, 28 U.S.C. §§ 1331, 1338(a), and 1367; the Declaratory Judgment Act
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`28 U.S.C. §§ 2201 and 2202; and the patent Laws of the United States, 35 U.S.C. §
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`1 et seq.
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`8.
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`The Court also has supplemental jurisdiction over the state law claims
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`asserted in this Complaint under 28 U.S.C. § 1367 because the state and federal
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`claims arise from a common nucleus of operative facts.
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`9.
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`An actual and justiciable controversy exists between ChriMar and HP
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`as to the noninfringement, invalidity, and unenforceability of the ‘012 patent. As
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`further alleged below, ChriMar is and has been engaged in a campaign to license
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`and enforce its patent portfolio against manufacturers and sellers of Power over
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`Ethernet (“PoE”) networking products, including HP. In connection with
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`ChriMar’s campaign targeting PoE products, HP is currently involved in litigation
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`against ChriMar with respect to U.S. patent No. 7,457,250 (the “‘250 patent”).1
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`HP’s Complaint against ChirMar involves PoE products implementing the IEEE
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`802.3af and 802.3at standards. HP maintains that the ‘012 patent is invalid,
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`1 ChriMar Systems, Inc. v. Cisco Systems, Inc., No. 3:13-cv-1300-JSW (N.D. Cal.)
`(“the NDCA case”).
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`unenforceable, and not infringed by HP’s PoE products, including products
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`implementing the IEEE 802.3af and 802.3at standards.2
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`10. This Court has personal jurisdiction over ChriMar at least because, on
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`information and belief, ChriMar is a Michigan corporation having its principal
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`place of business within the Eastern District of Michigan at 36528 Grand River
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`Avenue, Suite A-1 in Farmington Hills, Michigan. ChriMar has made substantial
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`business contacts in Michigan including product sales to Michigan entities and
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`ChriMar’s campaign to enforce and license its patent portfolio, including the ‘012
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`patent. ChriMar has availed itself of the laws of this district through its portfolio
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`licensing efforts targeting PoE products and its patent infringement claims
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`involving that portfolio in this district.
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`11. Venue is proper in this Court under 28 U.S.C. §§ 139l(b)(l), (c) and
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`§ 1400(b) at least because ChriMar is subject to personal jurisdiction in this
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`District and is located within this District and because a substantial part of the
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`events that give rise to the claims herein occurred in this district.
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`2 In the NDCA case, HP has counterclaimed for a declaratory judgment that the
`‘250 patent, parent to the ‘012 patent, is invalid, unenforceable, and not infringed
`by HP’s PoE products, including products implementing the IEEE 802.3af and
`802.3at standards.
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`A. CHRIMAR’S PATENTS
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`BACKGROUND
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`12. ChriMar’s patent portfolio includes the ‘012 patent, the ‘250 patent,
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`U.S. patent No. 6,650,622 (the ‘“622 patent”), and U.S. patent No. 5,406,260 (the
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`“‘260 patent”).
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`13. The ‘012 patent, entitled “System and Method for Adapting a Piece of
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`Terminal Equipment,” reports that it was filed on September 26, 2008 as
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`Application No. 12/239,001, issued on April 10, 2012. The ‘012 patent reports
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`that it is a continuation of Application No. 10/668,708, filed on September 23,
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`2003, now U.S. patent No. 7,457,250 (“the ‘250 patent”), which is a continuation
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`of Application No. 09/370,430, filed on August 9, 1999, now U.S. patent No.
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`6,650,622, which is a continuation-in-part of Application No. PCT/US99/07846,
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`filed on April 8, 1999. The inventors named on the ‘012 patent are John F.
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`Austermann, III, and Marshall B. Cummings.
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`14. As alleged herein, the ‘012 patent was not duly and legally issued.
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`15. On information and belief, ChriMar is the current assignee of the ‘012
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`patent.
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`16. The ‘250 patent, entitled “System for Communicating with Electronic
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`Equipment,” reports that it was filed on September 23, 2003, issued on November
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`25, 2008 and then had a reexamination certificate issued on March 1, 2011. The
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`‘250 patent reports that it is a continuation of Application No. 09/370,430, filed on
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`August 9, 1999, now U.S. patent No. 6,650,622, which is a continuation-in-part of
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`Application No. PCT/US99/07846, filed on April 8, 1999. The inventors named
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`on the ‘250 patent are John F. Austermann, III, and Marshall B. Cummings.
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`17. On information and belief, ChriMar is the current assignee of the ‘250
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`patent.
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`18. A true and correct copy of the ‘250 patent is attached hereto as
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`Exhibit B.
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`19. As alleged herein, on information and belief, HP believes that
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`ChriMar asserts, and will assert, that the ‘012 patent covers products with Power
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`over Ethernet (“PoE”) functionality.
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`B. CHRIMAR’S LICENSING AND ENFORCEMENT EFFORTS
`TARGETING PRODUCTS WITH POWER OVER ETHERNET
`FUNCTIONALITY
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`20. For many years, ChriMar has actively pursued a patent licensing and
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`enforcement campaign using its patent portfolio to target products with PoE
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`functionality specified by certain standards promulgated by the Institute of
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`Electrical and Electronics Engineers (“IEEE”) and sellers of such products,
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`including numerous California-based companies.
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`21. ChriMar’s licensing and enforcement campaign began in 2001 when it
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`sued manufacturers of products with PoE functionality in this district for allegedly
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`infringing the ‘260 patent. ChriMar initially sued Cisco Systems, Inc., for alleged
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`infringement of the ‘260 patent in 2001, accusing, for example, Cisco’s IP phones.3
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`ChriMar thereafter claimed that the ‘260 patent was “essential” to the IEEE PoE
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`standards.4 ChriMar also sued D-Link Systems (“D-Link”)5 and Foundry
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`Networks (“Foundry”),6
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` two other California-based companies, and also
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`PowerDsine, Ltd. (“PowerDsine”),7 based on their respective sales of products
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`with PoE functionality accusing those companies of infringing the ‘260 patent
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`based on sales of those products. D-Link and PowerDsine took licenses to the ‘260
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`patent after favorable rulings were issued, and ultimately an additional claim of the
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`‘260 patent (claim 17) was invalidated by the court in the Foundry action, leading
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`to dismissal of that action and summary affirmance by the Federal Circuit.
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`22. Shortly after issuance of the ‘250 patent, which ChriMar deliberately
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`failed to disclose to the IEEE standards bodies that developed the PoE standards,
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`3 ChriMar Sys., Inc. v. Cisco Sys., Inc., No. 2:01-cv-71113 (E.D. Mich.) (filed Mar.
`21, 2001, terminated Sept. 15, 2005).
`4See
`at
`available
`Assurance,
`of
`Letter
`ChriMar
`http://standards.ieee.org/about/sasb/patcom/loa-802_3af-chrimar-03Dec2001.pdf.
`5 ChriMar Sys., Inc. v. D-Link Sys., Inc., No. 2:06-cv-13937 (E.D. Mich.) (filed
`Sept. 6, 2006, terminated Apr. 21, 2010).
`6ChriMar Sys., Inc. v. Foundry Networks, Inc., No. 2:06-cv-13936 (E.D. Mich.)
`(filed Sept. 6, 2006, terminated Aug. 1, 2012).
`7 ChriMar Sys., Inc. v. PowerDsine LTD., No. 2:01-cv-74081 (E.D. Mich.) (filed
`Oct. 26, 2001, terminated Mar. 31, 2010).
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`ChriMar continued its licensing and enforcement campaign against sellers of
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`products with PoE functionality, including HP and a number of other California-
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`based companies. ChriMar sued Waters Network Systems, LLC for allegedly
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`infringing the ‘250 patent in 2008, and went on to sue multiple additional sellers of
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`products with PoE functionality (including California-based companies Danpex
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`Corp., Garrettcom, Inc., and Edgewater Networks) in 2009. 8 Following
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`conclusion of a reexamination proceeding involving the ‘250 patent, ChriMar sued
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`HP, and also California-based Cisco Systems, Inc., Avaya, Inc., and Extreme
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`Networks, both in the International Trade Commission, 9 and in district court, 10 for
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`allegedly infringing the ‘250 patent by selling products with PoE functionality,
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`including among other products, IP telephones, wireless access points, and wireless
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`network cameras.
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`8 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).
`9 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).
`10 ChriMar Systems, Inc. v. Cisco Systems, Inc., No. 1:11-cv-01050 (D. Del.),
`subsequently transferred as No. 3:13-cv-1300-JSW (N.D. Cal.).
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`23. ChriMar recently expanded its licensing and enforcement campaign
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`against products with PoE functionality to include the ‘012 patent. ChriMar
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`recently filed five actions in the United States District Court for the Eastern
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`District of Texas alleging infringement of the ‘012 patent by various manufacturers
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`and re-sellers of products with PoE functionality, including IP telephones, wireless
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`access points, and wireless network cameras.
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`24. ChriMar brought suit against Aastra Technologies Limited and Aastra
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`USA Inc. in the Eastern District of Texas, Case No. 6:13-cv-879, on November 8,
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`2013, alleging infringement of the ‘012 patent, for among other things, making,
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`using, offering for sale, selling, and/or importing IP telephones, which, on
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`information and belief, include PoE functionality.
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`25. ChriMar brought suit against Alcatel-Lucent, Inc., Alcatel-Lucent
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`USA, Inc., and Alcatel-Lucent Holdings, Inc., in the Eastern District of Texas,
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`Case No. 6:13-cv-880, on November 8, 2013, alleging infringement of the ‘012
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`patent, for among other things, making, using, offering for sale, selling, and/or
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`importing wireless access points, which, on information and belief, include PoE
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`functionality.
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`26. ChriMar brought suit against AMX, LLC, in the Eastern District of
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`Texas, Case No. 6:13-cv-881, on November 8, 2013, alleging infringement of the
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`‘012 patent, for among other things, making, using, offering for sale, selling,
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`and/or importing wireless access points, which, on information and belief, include
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`PoE functionality.
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`27. ChriMar brought suit against Grandstream Networks, Inc., in the
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`Eastern District of Texas, Case No. 6:13-cv-882, on November 8, 2013, alleging
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`infringement of the ‘012 patent, for among other things, making, using, offering
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`for sale, selling, and/or importing IP telephones and wireless network cameras,
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`which, on information and belief, include PoE functionality.
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`28. ChriMar brought suit against Samsung Electronics Co, Ltd., Samsung
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`Electronics America, Inc. and Samsung Telecommunications in the Eastern
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`District of Texas, Case No. 6:13-cv-883, on November 8, 2013, alleging
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`infringement of the ‘012 patent, for among other things, making, using, offering
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`for sale, selling, and/or importing IP telephones, which, on information and belief,
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`include PoE functionality.
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`29. ChriMar’s website, www.cmspatents.com, confirms that ChriMar’s
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`licensing and enforcement campaign targets products with PoE functionality for
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`allegedly infringing ChriMar’s patents, including the ‘012 and ‘250 patents.
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`ChriMar’s website includes a number of public statements concerning ChriMar’s
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`licensing of the ‘012 and ‘250 patents. Specifically, ChriMar publicly states on
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`that website that its licensing campaign involves the ‘012 and ‘250 patents, and
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`targets “PoE equipment.” ChriMar states on that website that it “is engaged in
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`active licensing with vendors of PoE equipment. Licenses for our patents are
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`being offered to manufacturers and resellers of PoE equipment.”11 This same
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`page specifically identifies the ‘012 patent, the ‘250 patent, and the ‘622 patent as
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`U.S. patents awarded to ChriMar. Additionally, ChriMar lists Avaya, Inc. as a PoE
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`licensee to the ‘012 patent and ‘250 patent under the heading “PoE Licensees and
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`Products Include:”.12 As alleged above, Avaya was previously a named party to
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`the ‘250 patent litigation, when that action was pending in Delaware prior to
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`transfer, but was dismissed after Avaya entered into a licensing agreement with
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`ChriMar, which ChriMar publicly states includes a license to the ‘012 patent.
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`Further, ChriMar’s website describes ChriMar’s “EthernetConnect Program,”
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`which ChriMar states “allows for certain vendors of PoE products to receive
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`special terms under the patent Licensing Program, the EtherLock Reseller
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`Program and/or the EtherLock OEM Program.”13 Finally, ChriMar’s website
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`www.cmstech.com includes the statement that “CMS Technologies is the
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`innovator in putting a DC current signal to the 802.3i connection. In April of 1995
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`CMS received a US patent for impressing a DC current signal onto associated
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`current loops . . . . The IEEE 802.3af Standards Committee now refers to this
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`11 EthernetConnect Program, http://www.cmspatents.com/index.html (emphasis
`added).
`12 www.cmspatents.com/licensees.html.
`13 EthernetConnect Program, http://www.cmspatents.com/index.html.
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`important technique as Power over Ethernet.”14 ChriMar’s actions and statements
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`all make clear that ChriMar is targeting products with PoE functionality for
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`allegedly infringing ChriMar’s patents, including the ‘012 and ‘250 patents.
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`C. CHRIMAR’S PATENT PORTFOLIO AND THE POWER OVER
`ETHERNET STANDARDS
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`1. STANDARDS IN GENERAL
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`30. A technical standard is an established set of specifications or
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`requirements that either provides or is intended to provide for interoperability
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`among products manufactured by different entities. Once a standard is established,
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`competing manufacturers can offer their own products and services that are
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`compliant with the standard.
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`31.
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`“Industry standards are widely acknowledged to be one of the engines
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`driving the modem economy.” (See U.S. Dep’t of Justice and U.S. Fed’l Trade
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`Comm’n, Antitrust Enforcement and Intellectual Property Rights: Promoting
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`Innovation and Competition (2007) at 33.) Standards, such as those related to
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`Power over Ethernet-enabled products, allow U.S. enterprises to create data and
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`voice communications networks knowing that the different elements of the
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`network will work together. Standards help drive innovation by making new
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`products available and ensuring interoperability of components.
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`14 www.cmstech.com/power.htm.
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`32. Technical standards serve an
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`important
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`role
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`in developing
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`technologies and have the potential to encourage innovation and promote
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`competition. As the technical specifications for most standards are published and
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`broadly available, entities interested in designing, manufacturing and producing
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`products that comply with a standard are more willing to invest heavily in the
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`development of such products because they will operate effectively and be
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`compatible with other products from third parties so long as their products are
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`compliant with the published technical standard.
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`33. One goal of a typical standards-setting body is to create a standard
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`that everyone in the industry can practice without the threat of patent infringement
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`lawsuits that would prevent a company from practicing the standard. In
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`furtherance of this goal, most standards-setting organizations have adopted
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`intellectual property rights policies to address the problems that may arise from
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`patent hold-up. A patent hold-up situation can occur where, after a standard is set
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`and compliant products are being manufactured/sold, a patentee then claims rights
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`to the technology covered by the standard. Typically, the royalty that a patentee
`
`may obtain from a patent license for its technology is limited in part by the
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`availability of alternative technical approaches to perform that function. If,
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`however, an issued standard requires the use of that patented technology, other
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`technological approaches are generally no longer available as substitutes and will
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`no longer serve to limit the patentee’s ability to demand royalties far in excess of
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`what is warranted by the intrinsic value of the technology. This is compounded
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`because companies that have designed, had made and sold standards-compliant
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`products, such as HP, invest significant resources in developing innovative, new
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`products that also comply with the technical standard. Even if there were an
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`alternative standard, the costs and disruption associated with switching is typically
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`prohibitively expensive. Such high switching costs result in “lock-in” where
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`companies become locked into manufacturing and selling products that are in
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`compliance with the standard. Indeed, the public comes to rely upon standards-
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`compliant equipment which can make it prohibitively difficult to subsequently
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`switch to alternative, non-infringing substitutes once the standard has been issued.
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`The high cost of switching applies to all elements of the standard regardless of how
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`small the marginal contribution of the element would be (if not required by the
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`standard) to the functionality of a standards-compliant product.
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`34. To address these concerns, standards-setting organizations typically
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`have policies that set forth requirements concerning, among other things: (a) the
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`timely and prompt disclosure of intellectual property such as patents or patent
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`applications that may claim any portion of the specifications of the standard in
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`development (i.e., are believed to be infringed by implementing the standard (also
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`sometimes referred to as “Essential Patent Rights”)); and (b) a process of assurance
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`by which members or participants in the standard setting organization who hold
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`purported Essential Patent Rights commit to licensing those rights on RAND
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`terms, or at minimum indicate that they will not provide such licenses to any
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`Essential Patent Rights.
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`35. The timely disclosure of any arguably Essential Patent Rights and
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`whether the holder of those rights will license them on RAND terms by individuals
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`participating in the standards-setting organization is critical so that those
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`participating in the development of the standard may evaluate any and all technical
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`proposals with knowledge of the potential licensing costs that might be incurred by
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`anyone developing standards-compliant products.
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`36. Any non-disclosure of arguably Essential Patent Rights and/or breach
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`of RAND commitments, as ChriMar has done here, undermine the safeguards that
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`standard setting organizations put in place to guard against abuse and to prevent
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`patent hold-up. By seeking to unfairly exploit intellectual property rights to
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`technology by permitting a standard to be issued with non-disclosure of arguably
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`Essential Patent Rights and/or breach of RAND commitments, the intellectual
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`property owner violates the industry practice and the very commitment that led to
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`incorporation of that technology in the first place.
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`37. Failure to disclose Essential Patent Rights, as ChriMar has done here,
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`also may lead to anti-competitive patent hold-up, where after the industry and the
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`public have become locked into the standard, the patentee seeks to extract
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`exorbitant, unreasonable or otherwise improper royalties through its improperly
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`obtained power over the market for the technology used in standards-compliant
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`equipment.
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`2.
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`THE HISTORY OF THE IEEE’S POWER OVER ETHERNET
`STANDARDS
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`38. The IEEE is a standards setting organization for a broad range of
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`disciplines, including electric power and energy, telecommunications, and
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`consumer electronics. In or about March 1999, there was a call for interest in the
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`IEEE 802.3 working group - which sets standards for physical layer and data link
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`layer’s media access control (MAC) of wired Ethernet - to begin developing what
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`would become the IEEE 802.3af Data Terminal Equipment (DTE) Power via
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`Media Dependent Interface (MDI) Enhancement to the IEEE 802.3 standard (“the
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`IEEE 802.3af amendment”). A task force was formed to field technical proposals
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`from the industry and to create a draft standard to present to the IEEE 802.3
`
`working group. As part of this process, the task force held a number of meetings
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`and received input from multiple industry participants.
`
`39.
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`In or about November 2004, there was a call for interest in the IEEE
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`802.3 working group to begin what would become the IEEE 802.3at Data Terminal
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`Equipment (DTE) Power via Media Dependent Interface (MDI) Enhancement to
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`the IEEE 802.3 standard (“the IEEE 802.3at amendment”). Subsequently, a task
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`force was formed to field technical proposals from the industry and to create a
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`draft standard to present to the IEEE 802.3 working group. As part of this process,
`
`the task force held a number of meetings and received input from multiple industry
`
`participants.
`
`40. The IEEE 802.3af amendment allows for the supply of data and power
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`over Ethernet cables to certain devices such as VoIP phones, switches, wireless
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`access points (“WAPs”), routers, and security cameras. Generally, the IEEE
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`802.3af amendment defines the electrical characteristics and behavior of both
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`Power Sourcing Equipment (“PSE”), which provide up to 15.4 watts of power, and
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`Powered Devices (“PD”), which draw power. The IEEE 802.3at amendment is a
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`standard meant to enhance the capabilities provided by the IEEE 802.3af
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`amendment by allowing a PSE to provide power in excess of 30 watts to a PD.
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`41. The success of the IEEE’s standards-setting process depends on the
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`disclosure by participants as to whether they possess any patents or applications
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`which they believe may be infringed by any proposed standard and whether the
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`participant is willing or unwilling to grant licenses on RAND terms. As such, the
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`IEEE has a “patent disclosure policy” that requires participants in the standards-
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`setting process to disclose patents or patent applications they believe to be
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`infringed by the practice of the proposed standard. This policy is set forth in the
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`IEEE-SA Standards Board Bylaws and the IEEE-SA Standards Board Operations
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`Manual. Further, the IEEE’s patent disclosure policy requires members and
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`participants to disclose intellectual property rights through a “Letter of Assurance.”
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`See, e.g., IEEE, IEEE-SA Standards Board Operations Manual 22 (1998) (“patent
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`holders shall submit letters of assurance to the IEEE Standards Department (to the
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`attention of the Staff Administrator, Intellectual Property Rights) before the time of
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`IEEE-SA Standards Board review for approval.”); see also IEEE, IEEE-SA
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`Standards Board Bylaws 12 (1998). The IEEE’s patent disclosure policy also
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`requires those submitting a Letter of Assurance to affirmatively elect whether or
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`not it would “enforce any of its present or future patent(s) whose use would be
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`required to implement the proposed IEEE standard against any person or entity
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`using the patent(s) to comply with the standard,” or provide a license “to all
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`applicants without compensation or under reasonable rates, with reasonable terms
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`and conditions that are demonstrably free of any unfair discrimination.” IEEE,
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`IEEE-SA Standards Board Bylaws 12 (1998).
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`42. The IEEE 802.3af amendment was set on or around June 18, 2003,
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`and the IEEE 802.3at amendment was set on or around September 11, 2009.
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`43. Power over Ethernet devices that are compliant with the IEEE 802.3af
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`and/or IEEE 802.3at amendments to the IEEE 802.3 standard include network
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`switches that supply data and Power over Ethernet to devices such as VoIP phones,
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`switches, WAPs, routers, and security cameras (previously referred to as “Power
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`over Ethernet-enabled products.”). This allows buildings and other physical
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`infrastructure to be designed so that electrical plugs do not need to be located near
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`where network devices are used. Moreover, because Power over Ethernet-enabled
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`switches that distribute power using Power over Ethernet are often supported by
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`uninterruptible power supplies or other redundant power sources, the use of Power
`
`over Ethernet permits devices like VoIP phones to continue to receive power from
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`a Power over Ethernet switch in the event of power outages. The availability of
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`this method of delivering power has driven government and private enterprise to
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`design not only their networks, but also their physical infrastructure around Power
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`over Ethernet-enabled products.
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`3.
`
`CHRIMAR’S DELIBERATE NON-DISCLOSURE,
`MISREPRESENTATION OF AND FALSE COMMITMENTS
`CONCERNING ITS PURPORTED ESSENTIAL
`INTELLECTUAL PROPERTY
`
`44. ChriMar illegally exploited the IEEE standards-setting process with
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`respect to the IEEE 802.3af and 802.3at amendments by deliberately failing to
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`disclose to the IEEE: (a) the ‘012 patent or its applications,15 (b) ChriMar’s belief
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`of their applicability to the 802.3af or 802.3at amendments to the IEEE 802.3
`
`
`15 The phrase “the ‘012 patent or its applications” as used throughout HP’s
`Complaint refers to U.S. patent No. 8,155,012 or any application to which it may
`purport
`to claim priority,
`including without
`limitation Application Nos.
`12/239,001, 10/668,708, 09/370,430, PCT/US99/07846, or Provisional Application
`No. 60/081,279.
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`standard, and (c) ChriMar’s unwillingness to license the ‘012 patent or its
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`applications on RAND terms, in order to intentionally and knowingly induce the
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`IEEE 802.3 working group to set the IEEE 802.3af and IEEE 802.3at amendments
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`to the IEEE 802.3 standard based upon technology that is purportedly covered by
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`ChriMar’s intellectual property.
`
`45.
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`John Austermann, III, who on information and belief, is President and
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`Chief Executive Officer of ChriMar, and named inventor on the ‘012 patent and its
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`applications, attended certain IEEE meetings regarding the setting of the IEEE
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`802.3af and IEEE 802.3at amendments. The IEEE conducted a “call for patents”
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`at each meeting attended by Mr. Austermann. During the meetings leading up to
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`the setting of the IEEE 802.3af and IEEE 802.3at amendments, Mr. Austermann,
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`on behalf of ChriMar, made presentations at least at the July 11-12, 2000 IEEE
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`802.3af task force meeting in La Jolla, California, as well as the January 26-27,
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`2005 PoE-Plus Study Group. Mr. Austermann failed to disclose the ‘012 patent or
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`its applications to the IEEE. Mr. Austermann also failed to disclose to the IEEE
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`any belief that any proposals for the IEEE 802.3 standard would be covered by the
`
`‘012 patent or its applications.
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`46. Further, ChriMar submitted a Letter of Assurance to the IEEE on or
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`about December 3, 2001, which disclosed only U.S. patent No. 5,406,260. See
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`Letter from John Austermann, ChriMar Systems, Inc., to Secretary, IEEE-SA
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`Standards Board patent Committee (Dec. 3, 2001), (“Letter of Assurance”)
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`available at http://standards.ieee.org/abou