UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION
`SYSTEMS, INC., and NETGEAR, INC,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-013911
`Patent 8,942,107 B2
`____________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and
`Netgear, Inc. filed a petition in (now terminated) IPR2017-00718, who have
`been joined to the instant proceeding. Paper 25.
`
`HPE 1008-0001
`
`HPE Co. v. ChriMar Sys., Inc.
`IPR Pet. - U.S. Patent No. 8,155,012
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION
`SYSTEMS, INC., and NETGEAR, INC,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-013911
`Patent 8,942,107 B2
`____________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and
`Netgear, Inc. filed a petition in (now terminated) IPR2017-00718, who have
`been joined to the instant proceeding. Paper 25.
`
`HPE 1008-0001
`
`HPE Co. v. ChriMar Sys., Inc.
`IPR Pet. - U.S. Patent No. 8,155,012
`
`
`
`I. INTRODUCTION
`Juniper Networks, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–19 to institute an inter partes review of claims
`1, 5, 31, 43, 70, 72, 74, 75, 83, 103, 104, 111, 123, and 125 (“the challenged
`claims”) of U.S. Patent No. 8,942,107 B2 (“the ’107 patent,” Ex. 1001),
`filed February 10, 2012.2 ChriMar Systems, Inc. (“Patent Owner”) filed a
`Preliminary Response (“Prelim. Resp.,” Paper 7). We instituted an inter
`partes review of the challenged claims (Paper 9, “Institution Decision” or
`“Inst. Dec.”). We then joined the other three Petitioner parties listed above.
`See note 1; Paper 25. Patent Owner filed a Response (“PO Resp.,” Paper 26)
`and Petitioner filed a Reply (“Pet. Reply,” Paper 33). The Board filed a
`transcription of the Final Hearing held on August 31, 2017. (Paper 63,
`“Tr.”).
`Petitioner relies on, inter alia, First Declaration of Ian Crayford
`(“First Crayford Decl.,” Ex. 1002) filed with the Petition and Second
`Declaration of Ian Crayford (“Second Crayford Decl.,” Ex. 1046) filed with
`its Reply. A Third Declaration of Ian Crayford authenticates certain
`exhibits3 (Ex. 1048). Patent Owner took a first deposition of Mr. Crayford
`(“First Crayford Deposition,” “First Crayford Dep.,” Ex. 2039) and a second
`
`2 The cover page of the ’107 patent alleges it is a “[C]ontinuation of
`application No. 12/239,001, filed on Sep. 26, 2008, now Pat. No. 8,155,012,
`which is a continuation of application No. 10/668,708, filed on Sep. 23,
`2003, now Pat. No. 7,457,250, which is a continuation of application No.
`09/370,430, filed on Aug. 9, 1999, now Pat. No. 6,650,622, which is a
`continuation-in-part of application No. PCT/US99/07846, filed on Apr. 8,
`1999.” Ex. 1001 (63). A provisional application was filed April 10, 1998.
`Id. (1).
`3 Exhibits 1021–1024, 1030, 1031, and 1035–1042.
`
`HPE 1008-0002
`
`
`
`deposition of Mr. Crayford (“Second Crayford Deposition,” “Second
`Crayford Dep.,” Ex. 2055) for which it filed Observations (“Obs.,” Paper
`44) and Petitioner filed an Opposition to Observations (“Opp. Obs.,” Paper
`55).
`
`Patent Owner relies on, inter alia, a Declaration by Dr. Vijay K.
`Madisetti (“Madisetti Decl.,” Ex. 2038) filed with its Response. Petitioner
`took the deposition of Dr. Madisetti (“Madisetti Deposition,” “Madisetti
`Dep.,” Ex. 1020).
`Petitioner’s Motion to Exclude (Paper 46) is denied. Patent Owner’s
`Motion to Exclude (Paper 45) is denied-in-part and dismissed-in-part.
`Patent Owner’s Motion to Strike Petitioner’s Reply (Paper 47) is denied.
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision issues pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that the challenged claims are unpatentable.
`A. Related Proceedings
`Petitioner advises us that the ’107 patent is the subject of fifty one
`(51) civil actions filed in the Eastern District of Michigan, Eastern District of
`Texas, and Northern District of California. Pet. 1 (citing Docket Navigator
`printout dated July 7, 2016, Ex. 1012). Petitioner is a defendant in Chrimar
`Systems, Inc., et al. v. Juniper Networks, Inc., Case No. 3:16-cv-558 (N.D.
`Cal.).4 Id. The ’107 patent was the subject of a now terminated inter partes
`review, AMX, LLC, and Dell Inc. v. Chrimar Systems, Inc., IPR2016-00569
`(“’569 IPR”). Id. 5
`
`4 Patent Owner advises us that this lawsuit is stayed. Prelim. Resp. 3.
`5 We instituted trial in the ’569 IPR on August 10, 2016. ’569 IPR, Paper
`
`HPE 1008-0003
`
`
`
`Patent Owner identifies nineteen (19) related actions. Paper 6, 2–3.
`Patent Owner cites specifically to Chrimar Systems, Inc., et al. v. ADTRAN,
`Inc., et al., Civil Action No. 6:15-cv-618-JRG-JDL (E.D. Tex.) (the ’618
`lawsuit”), Chrimar Systems, Inc., et al. v. Alcatel-Lucent, et al., Civil Action
`No. 6:15-cv-163-JDL (E.D. Tex.) (the “’163 lawsuit”), and Chrimar
`Systems, Inc., et al. v. AMX LLC., No. 6:13-cv-881-JDL (E.D. Tex.) (the
`“’881 lawsuit”) (collectively the “District Court”) as having construed
`several terms of the ’107 patent and several of Patent Owner’s related
`patents sharing a common specification. Prelim. Resp. 3 n4, 12–13. The
`Patent Owner indicates that the following petitions for inter partes review
`are related to this case:
`Case No.
`IPR2016-00569 (see n.5)
`IPR2016-00573
`IPR2016-00574
`IPR2016-00983
`IPR2016-01151
`IPR2016-01389
`IPR2016-01397
`IPR2016-01399
`IPR2016-01425
`IPR2016-01426
`Paper 6, 3.
`
`Involved U.S. Patent No.
`U.S. Patent No. 8,942,107
`U.S. Patent No. 9,019,838
`U.S. Patent No. 8,902,760
`U.S. Patent No. 8,155,012
`U.S. Patent No. 9,019,838
`U.S. Patent No. 8,155,012
`U.S. Patent No. 9,019,838
`U.S. Patent No. 8,902,760
`U.S. Patent No. 8,155,012
`U.S. Patent No. 9,019,838
`
`19. Trial was terminated as to Petitioner AMX LLC only on November 9,
`2016. Id. at Paper 27. Petitioner Dell Inc. was terminated on January 20,
`2017, terminating the proceeding. Id. at Paper 40.
`
`HPE 1008-0004
`
`
`
`B. Technology and the ’107 Patent
`1. Technology
`The ’107 patent “relates generally to computer networks and, more
`particularly, to a network management and security system for managing,
`tracking, and identifying remotely located electronic equipment on a
`network.” Ex. 1001, col. 1, ll. 27–30. The ’107 patent is “adapted to be
`used with an existing Ethernet communications link or equivalents thereof.”
`Id. at col. 3, ll. 41–43.
`2. The ’107 Patent (Ex. 1001)
`The ’107 patent describes a communication system that generates and
`monitors data relating to the electronic equipment, and can for example use
`the “pre-existing wiring or cables that connect pieces of networked computer
`equipment to a network.” Ex. 1001, col. 3, ll. 24–27. In a first embodiment,
`the system includes a remote module attached to the electronic equipment
`being monitored. Id. at col. 3, ll. 27–30. The remote module transmits a low
`frequency signal containing equipment information to a central module over
`the cable. Id.
`The communication or monitoring of the network equipment can be
`accomplished “over preexisting network wiring or cables without disturbing
`network communications.” Ex. 1001, col. 12, ll. 1–7. This is accomplished
`“by coupling a signal that does not have substantial frequency components
`within the frequency band of network communications.” Id. For example, a
`high frequency network such as an Ethernet network operates at higher
`frequencies of between 5 MHz to 10 MHz. Id. at col. 12, ll. 19–23. A
`
`HPE 1008-0005
`
`
`
`lower frequency signal on the order of 150 kHz may use the same
`networking wires or cables as the higher frequency network communications
`with “no disruption of the high frequency network information.” Id. at col.
`12, ll. 19–28.
`C. Illustrative Claims
`Of the challenged claims, claims 1 and 104 are independent apparatus
`claims. Claims 5, 31, 43, 70, 72, 74, 75, 83, and 103 depend directly or
`indirectly from claim 1. Claims 111, 123, and 125 depend from claim 104.
`Claim 1 is reproduced below:
`1. A piece of Ethernet terminal equipment comprising:
`
`an Ethernet connector comprising:
`
`first and second pairs of contacts used to carry Ethernet
`communication signals,
`
`at least one path for the purpose of drawing DC current, 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, the piece of
`Ethernet terminal equipment to draw different
`magnitudes of DC current flow via the at least one path,
`
`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,
`
`wherein at least one of the magnitudes of the DC current
`flow to convey information about the piece of Ethernet
`terminal equipment.
`
`Ex. 1001, col. 17, ll. 11–25.
`
`HPE 1008-0006
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 5, 31, 43, 53, 58, 70, 72, 75, 83,
`84, 103, 104, 111, 123, and 125 of the ’107 patent as unpatentable on
`the following grounds. Pet. 7–66.
`
`
`References
`Hunter6 and Bulan7
`
`Bloch,9 Huizinga,10 and
`IEEE 802.311
`
`
`Basis
`§ 103(a)8
`
`§ 103(a)
`
`Claims Challenged
`1, 5, 31, 43, 70, 72, 74, 75, 83,
`103, 104, 111, 123, and 125
`1, 5, 31, 43, 70, 72, 74, 75, 83,
`103, 104, 111, 123, and 125
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms are given their broadest
`reasonable interpretation in light of the Specification in which they appear.
`See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`6 WO 96/23377, Richard K. Hunter et al., published August 1, 1996,
`(“Hunter,” Ex. 1003).
`7 US 5,089,927, Sergio Bulan et al., issued February 18, 1992, (“Bulan,” Ex.
`1004).
`8 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. The ’107 patent has an effective filing date of at least April 10, 1998,
`prior to the effective date of the AIA. See Pet. Reply 2. Thus, the grounds
`asserted are under the pre-AIA version of § 103.
`9 US 4,173,714, Alan Bloch et al., issued November 6, 1979 (“Bloch,” Ex.
`1005).
`10 US 4,046,972, Donald D. Huizinga et al., issued September 6, 1977
`(“Huizinga,” Ex. 1009).
`11 IEEE Standard 802.3-1993 (“IEEE-93,” Ex. 1006) and IEEE Standard
`802.3-1995, Parts 1 and 2 (“IEEE-95,” Ex. 1007 (Part 1) and Ex. 1008 (Part
`2)), collectively “IEEE 802.3.”
`
`HPE 1008-0007
`
`
`
`2131, 2142 (2016). We presume that claim terms have their ordinary and
`customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1061-
`62 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of
`the claim must be given their plain meaning, unless such meaning is
`inconsistent with the specification and prosecution history”) (internal
`citation omitted); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Any special definition for a claim term must be set forth in the
`Specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`special definition or other consideration, “limitations are not to be read into
`the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). “[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d
`1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner identifies “powered off” and “BaseT” as requiring
`construction. Pet. 5–6. Patent Owner identifies those same two terms plus
`“protocol.” PO Resp. 15–18.
`The parties have not disputed the meaning of either “Ethernet terminal
`equipment” or “end device.” Patent Owner equates the two terms. See, e.g.,
`PO Resp. 45, Heading A. We apply the ordinary and customary meaning of
`the claim terms not specifically addressed.
`1. “path coupled across” (claims 1 and 104)
`Claims 1 and 104 recite, in part, “at least one path coupled across at
`least one of the contacts of the first pair of contacts and at least one of the
`
`HPE 1008-0008
`
`
`
`contacts of the second pair of contacts.” In the Institution Decision we
`construed the term “path coupled across” to mean “path permitting energy
`transfer.” Inst. Dec. 8. The term is not disputed and we, upon consideration
`of the full record, maintain the construction from the Institution Decision.
`2.“pairs of contacts” (claims 1 and 104)
`Claims 1 and 104 recite, in part, “an Ethernet connector comprising
`first and second pairs of contacts used to carry Ethernet communication
`signals, at least one path for the purpose of drawing DC current.” In the
`Institution Decision we construed “pairs of contacts” to mean “at least two
`contacts which define a path for carrying electrical signals.” Inst. Dec. 9.
`The term is not disputed and we maintain the construction from the
`Institution Decision.
`3.“BaseT” (claim 5)
`Claim 5 depends from claim 1 and recites additionally “wherein the
`Ethernet communication signals are BaseT12 Ethernet communication
`signals.” In the Institution Decision we preliminarily determined that the
`broadest reasonable construction of “BASE-T,” consistent with the
`specification and the knowledge of a person of ordinary skill in the art, is
`“twisted pair Ethernet in accordance with the 10BASE-T or 100BASE-T
`standards.” Inst. Dec. 11–12. Patent Owner does not contest this
`construction. PO Resp. 18. Petitioner’s proposed construction is the same
`as the Institution Decision except that it does not include “twisted pair
`Ethernet.” Pet. 6.
`
`12 “BaseT,” “BASE-T,” and “Base-T” are all used in various parts of the
`record, but we determine they all reference the same Ethernet standard. We
`use the terms interchangeably here.
`
`HPE 1008-0009
`
`
`
`In its Preliminary Response, Patent Owner cited to the District Court’s
`construction in the ’163 lawsuit. Prelim. Resp. 14 (citing Ex. 2021, 16–18).
`The District Court construed the term as meaning “twisted pair Ethernet in
`accordance with the 10BASE-T or 100BASE-T standards.” Ex. 2021, 18.
`We agree with the District Court that the specification lacks any special
`definition of Base-T. Ex. 2021, 17. The record before the District Court
`included evidence “that it was commonly known that ‘Base’ refers to
`baseband and ‘T’ designates twisted pair cabling, and that ‘BASE-T’
`standards were known in the art at the time of invention.” Id. Exhibit 1007,
`IEEE Standard 802.3-1995, does define “100BASE-T” and “10BASE-T.”
`Ex. 1007 ¶¶ 1.4.2 and 1.4.14. The definition of “100BASE-T” does not
`include reference to a “twisted pair,” while the definition of “10BASE-T”
`does. Id. We agree with the District Court’s analysis that “Base-T”
`references a baseband and a twisted pair cable. Extrinsic dictionary
`evidence is that 10Base-T and 100Base-T are “an Ethernet standard for
`baseband LANs (local area networks) using twisted-pair cable.”
`MICROSOFT COMPUTER DICTIONARY, 2 (Microsoft Press 5th ed. 2002)
`(Ex. 3001).
`The parties do not dispute the construction in the Institution Decision.
`See Pet. 6, PO Resp. 18. We maintain our construction from the Institution
`Decision.
`4. “powered off” (claims 103 and 104)
`Claim 103 is a multiple dependent claim which, for purposes of this
`proceeding, depends on challenged claims 1 and 31, and recites “wherein the
`piece of Ethernet of terminal equipment is a piece of powered-off Ethernet
`terminal equipment.” Claim 104 is an independent claim which recites, in
`
`HPE 1008-0010
`
`
`
`pertinent part, “[a] powered-off end device” instead of “Ethernet terminal
`equipment.”
`In the Institution Decision we interpreted “powered off” to mean
`“without operating power.” Inst. Dec. 10. Petitioner proposed this
`construction. Pet. 5–6. Patent Owner also agreed with the Institution
`Decision construction in its Preliminary Response, citing the District Court
`construction from the ’163 lawsuit and our construction in the’569 IPR.
`Prelim. Resp. 14–15 (citing Ex. 2021, 18–20; ’569 IPR, Paper 19, 10); see
`also PO Resp. 16 (citing the same authority).
`Petitioner argues “‘powered-off’ does not mean entirely removed
`from the application of power.” Pet. 6 (citing Ex. 1001, claims 103, 104,
`111, 123, and 125; First Crayford Decl. ¶¶ 52–55). In its Response Patent
`Owner argues that the terminal device cannot be “powered-off” if “operating
`voltage is applied, but not used.” PO Resp. 16. Patent Owner concludes
`that “[o]ne skilled in the art would understand ‘without operating power’ to
`exclude devices that have ‘operating power’ applied to the Ethernet terminal
`equipment/end device.” Id. at 17 (citing Madisetti Decl. ¶ 102). Petitioner
`argues that some power may be applied to the device and the device is
`“powered-off.” Patent Owner disagrees.
`That the “Ethernet terminal device” or “powered-off end device”
`receive some power is supported by the claims, which recite that the devices
`draw “different magnitudes of current flow.” Ex. 1001, claims 1, 103, 104;
`see PO Resp. 16. The Specification describes the isolation power supply of
`the central module as providing “continuous direct current (DC) power
`supply” for the remote module. Ex. 1001, col. 5, ll. 39–43 (“a low current
`preferably on the order of magnitude of about 1mA.”)).
`
`HPE 1008-0011
`
`
`
`We maintain our construction of “powered-off” from the Institution
`Decision with the qualification that some power may be applied to the
`claimed “Ethernet terminal equipment” or “end device” and the devices may
`still be “powered-off.”
`5. “protocol” (claims 72 and 123)
`Claims 72 and 123 depend from claims 1 and 104, each reciting
`“wherein at least one magnitude of the DC current is part of a detection
`protocol.” Patent Owner contends “[a] protocol, as defined in the computer
`networking field, is ‘a mutually agreed upon method of communication.’”
`PO Resp. 17 (citing Madisetti Decl. ¶ 104; Network Working Group, RFC
`1462, “What is the Internet,” May 1993, 1 (Ex. 2047)). Patent Owner does
`not cite to the Specification or the claim language to support its construction.
`As Petitioner contends, neither “detect” nor “protocol” requires that
`two devices “agree to a method of communication.” Pet. Reply 21–22
`(citing Second Crayford Decl. ¶ 90). Petitioner argues as follows:
`Instead, a POSITA understood that “detection” simply requires a
`discovery of something, and a “protocol” as rules. . . . In other
`words, a detection protocol is merely rules for making a
`discovery.
`
`The claim language and the Specification support Petitioner’s
`contentions. Claim 72, a device claim, does not require communication with
`any other device. Any disclosed communication involves control module
`15, but claim 72, drawn to “Ethernet terminal equipment,” reads on remote
`module 16a and PC 3a, and does not necessarily encompass the central
`module. See Ex. 1001, col. 8, ll. 33–56, Figs. 4, 5. Further, the claimed
`device at most only needs to be capable of being part of a detection protocol.
`See In re Schreiber, 128 F.3d 1473, 75–77 (Fed. Cir. 1997).
`
`HPE 1008-0012
`
`
`
`Accordingly, “wherein at least one magnitude of the DC current is
`part of a detection protocol” means that the claimed magnitude of DC
`current must be capable of being part of a “detection protocol,” which may
`involve, but is not limited to, rules for making a discovery or a mutually
`agreed upon method of communication.
`B. Law of Obviousness
`A patent claim is unpatentable as obvious if the differences between
`the claimed subject matter and the prior art are “such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a).
`The ultimate determination of obviousness is a question of law,
`but that determination is based on underlying factual findings.
`The underlying factual findings include (1) “the scope and
`content 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) the presence of secondary considerations
`of nonobviousness such “as commercial success, long felt but
`unsolved needs, failure of others,” and unexpected results.
`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (internal citation
`omitted) (citing inter alia Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966)).
`In assessing the prior art, the Board must consider whether a person of
`ordinary skill would have had a reason to combine the prior art to achieve
`the claimed invention. Nuvasive, 842 F.3d at 1381. As observed by our
`reviewing court in Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d
`987, 991–92 (Fed. Cir. 2017):
`The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007), explained that,
`
`HPE 1008-0013
`
`
`
`“because inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense,
`is already known,” “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant
`field to combine the elements in the way the claimed new
`invention does.”
`1. Level of Ordinary Skill
`The Institution Decision substantially tracks Petitioner’s proposal.
`Inst. Dec. 12–13; Pet. 5 (citing First Crayford Decl. ¶¶ 49–51). Patent
`Owner’s only issue with Petitioner’s proposal, and our prior determination,
`is that use of “at least” with respect to education and experience is too open
`ended because it would include persons having more than ordinary skill. PO
`Resp. 13–14 (citing Madisetti Decl. ¶ 26).
`We agree with Patent Owner. Petitioner does not contest the change
`in its Reply.13 We determine the level of ordinary skill at the time of the
`invention was a person having an undergraduate degree in electrical
`engineering or computer science, or the equivalent, and three years of
`experience. In addition, a person of ordinary skill would have had a
`familiarity with data communications protocols, data communications
`standards (and standards under development at the time, including the 802.3
`standard), and the behavior of data communications products available on
`the market. Madisetti Decl. ¶ 26.
`C. Obviousness over Hunter and Bulan
`Petitioner alleges claims 1, 5, 31, 43, 70, 72, 74, 75, 83, 103, 104, 111,
`123, and 125 would have been obvious to a person of ordinary skill in the art
`
`13 At the Final Hearing Petitioner objected to a definition that did not include
`“at least.” Tr. 14:13–19.
`
`HPE 1008-0014
`
`
`
`over Hunter and Bulan. Pet. 7–42. Petitioner cites the First Crayford
`Declaration in support of its positions. See First Crayford Decl. ¶¶ 63–142.
`Based on Petitioner’s arguments and supporting evidence, we find Petitioner
`has made its case by a preponderance of the evidence and adopt the
`Petitioner’s reasoning and factual assertions as our factual findings as
`summarized and discussed below.
`1. Hunter (Exhibit 1003)
`Hunter discloses “[a] power subsystem and method for providing
`phantom power and third pair power via a computer network bus.” Ex.
`1003, Abstract. Phantom power is power that may be routed through the
`same cable employed to carry data through the network. Id. at col. 17, ll. 2–
`5. “[P]hantom powering [] is employed in current telephone systems.” Id.
`“In a preferred embodiment of the first aspect of the present invention, the
`bus comprises a 10Base-T bus.” Id. at 21:17–18.
`Figure 2 of Hunter is reproduced below.
`
`
`Figure 2 is a schematic diagram of a phantom powering subsystem
`200. Ex. 1003, 35:21–23. “The phantom powering subsystem 200
`comprises a power supply 210 having a positive output 211 and a negative
`output 212.” Id. at 35:27–29. The subsystem also includes first and second
`transformers 220 and 230 with windings having end taps and center taps
`
`HPE 1008-0015
`
`
`
`224, 234. Id. at 36:1–6. First and second twisted-pair conductors 240 and
`250 are connected to the respective end taps of the transformers “to allow
`data communication there between.” Id. at 36:7–12. The 10Base-T bus
`includes the “two twisted-pair conductors 240, 250, each used for
`unidirectional transmission of data.” Id. at 37:20–23.
`One of the twisted pairs is employed for transmitting data from
`equipment 260 (Integrated Services Terminal Equipment, “ISTE”) “while
`the other of the twisted pairs (say, 240) is used for receiving data into the
`equipment 260.” Ex. 1003, 23:18–21, 37:22–26. “The subsystem further
`comprises a protective device 213 coupled to the power supply 210 to
`prevent power exceeding a desired amount from passing through the
`protective device 213.” Id. at 38:12–15.
`2. Bulan (Exhibit 1004)
`Bulan discloses a current control apparatus for supplying direct
`current flow from a source of power via a transmission line to a
`telecommunications terminal so that the telecommunications apparatus is
`“continuously operable while drawing a load current which is exceeded by
`an inrush current being greater than the load current at a moment of power
`up.” Ex. 1004, col. 2, ll. 17–23. Bulan’s system is used in a network having
`terminal equipment (“TE”) which includes a DC to DC converter (“DC-
`DC”) in a well-known phantom power feed arrangement. Id. at col. 1, ll.
`52–56, col. 3, ll. 53–56, col. 4, ll. 2–10.
`“The current control apparatus is for connection in series between the
`power source and the transmission line.” Ex. 1004, col. 2, ll. 23–25. A
`current path switch is placed between the power source and the transmission
`line. Id. at col. 4, ll. 17–25.
`
`HPE 1008-0016
`
`
`
`Figure 2 of Bulan is reproduced below.
`
`
`Figure 2 is a schematic diagram of a line interface circuit for coupling
`current from the power source. Ex. 1004, col. 4, ll. 17–22. As shown in
`Figure 2, a static reference generator provides a stable voltage supply on a
`lead for use by a dynamic reference generator and the current path switch.
`Id. at col. 4, ll. 25–30. The dynamic reference generator generates a control
`signal for use by the current path switch. Id. at col. 4, ll. 33–36. The current
`path switch is required to provide a current path which at any one time is of
`a very low impedance, or alternately is of a much higher impedance, in
`accordance with operation of the TE connected to the network. Id. at col. 4,
`ll. 35–40.
`Current exceeding Bulan’s static limit, set by the static reference
`generator, is detected by the current sensor indicating a current inrush
`condition. Ex. 1004, col. 3, ll. 5–12, col. 4, ll. 23–24, col. 5, ll. 37–39. The
`dynamic reference generator responds to this magnitude of current by setting
`a maximum limit on the inrush current. Id. at col. 3, ll. 7–12, col. 5, ll. 6–15,
`ll. 42–46, Fig. 4 (see resistors 52 and 57 and capacitor 53). When the TE’s
`DC-DC has finally completed its startup, the TE can draw operating power
`and proceed to draw a normal operating current that remains below Bulan's
`static limit. Id. at col. 2, ll. 1–8, col. 3, ll. 5–6.
`If “during start up there are several inrushes, the maximum permitted
`current will return to a high point of slightly more than the current which
`
`HPE 1008-0017
`
`
`
`was permitted just before the envelope returned to the normal load current
`level.” Ex. 1004, col. 7, ll. 7–13. “This may happen several times, as may
`be peculiar to the particular terminal equipment being connected to the line.”
`Id.
`
`3. Claim 1
`Addressing the preamble of claim 1, limitation [a],14 “[a] piece of
`Ethernet terminal equipment,” Petitioner alleges the ISTE of Hunter is
`“‘Ethernet terminal equipment’ because (10Base-T) Ethernet data
`transmissions can originate and terminate there.” Pet. 24 (citing Ex. 1003,
`37:19–28 (“[T]he bus [to the ISTE] comprises a 10Base-T bus.”)).
`Petitioner also shows that the TE may include ISTE card 260 coupled to
`voice instrument 299 and drawing power from the circuit, as explained
`further below. Pet. 9 (showing TE on the right-hand side of connectors on
`cards 297 of Hunter’s Figure 2), 25–26 (citing equipment in Hunter that
`draws power); First Crayford Decl. ¶ 102 (discussing “components along the
`path” of Hunter’s Figure 2 (citing Exhibit 1003, 35:27–38:25, Fig. 2)).
`Petitioner concludes it would have been obvious to a person of ordinary skill
`in the art to “implement the teachings of Hunter with terminal equipment
`other than the exemplary ISTE, and/or with a bus applying other Ethernet
`standards (such as 100Base-T).” Id. at 25 (citing Ex. 1003, 16:26–18:1,
`19:2–8 (“primary object” to provide “phantom” power “to equipment
`coupled to a local area network, including, but not limited to, Ethernet®,
`
`14 Petitioner’s convention for identifying the limitations of claim 1 is to
`bracket them in alphabetical order. Accordingly, the preamble, the first
`limitation of claim 1, is designated [a]. See, e.g., Pet. 24. We follow the
`convention for purposes of this Decision.
`
`HPE 1008-0018
`
`
`
`Token Ring®, ATM, and isoEthernet®.”), 21:11–13, 26:7–11, claims 3
`(“bus comprises a two-pair twisted-pair bus selected from the group
`consisting of: “10Base-T, Ethernet®, Token Ring®, ATM, 100Base-T, and
`isoEthernet®”), claims 13, 29: First Crayford Decl. ¶ 100).
`Claim 1 next recites as limitation [b] “an Ethernet connector
`comprising first and second pairs of contacts used to carry Ethernet
`communication signals.” Hunter teaches that “one of the twisted- pairs (say,
`250) is employed for transmitting data from the equipment 260, while the
`other of the twisted-pairs (say, 240) is used for receiving data into the
`equipment 260." Ex. 1003, 7:19–26. Petitioner cites the preceding from
`Hunter as well as Figure 2, reproduced in Section II.C.1 above, as showing
`“the TE includes an Ethernet connector with a first and second pair of
`contacts for connecting to each of the two twisted-pairs (which are used to
`carry both power and Ethernet communication signals).” Pet. 26–27 (citing
`Ex. 1003, 38:21–25, Fig. 2 (“connectors 297”)).
`Addressing limitation [c], “at least one path for the purpose of
`drawing DC current,” Petitioner relies on the combined circuit of Hunter and
`Bulan annotated as “Petition Figure 3” from page 15 of the Petition, which is
`reproduced below.
`
`
`
`HPE 1008-0019
`
`
`
`Petition Figure 3 includes Figure 2 of Hunter (reproduced above in
`Section II.C.1) modified by substituting the current control apparatus from
`Figure 2 of Bulan (reproduced above in Section II.C.2) for the protective
`device 213 from Figure 2 of Hunter. Pet. 15 (citing First Crayford Decl. ¶
`77). Petitioner argues “[t]he purpose of Hunter's phantom-powering system
`is to permit the TE to draw DC current from the same twisted-pairs it uses to
`communicate Ethernet data.” Id. at 27 (citing Ex. 1003, 21:27–29 (“each of
`the twisted-pair conductors as a rail by which to deliver DC power to the
`equipment”). Referencing Petition Figure 3, Petitioner traces the flow of DC
`current, shown in red with arrows indicating current direction, from phantom
`power source 210 to the TE (ISTE Card) and back. Id. at 27–28.
`Claim 1 next recites as limitation [d], “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.” Petitioner relies on the
`showing made above for limitation [c], “at least one path for the purpose of
`drawing DC current.” Pet. 28 (citing Ex. First Crayford Decl. ¶ 103).
`Petitioner cites to its showing regarding coupling of contacts. Id.; see also
`id. at 27 (describing the current path “through a contact in ‘CONNECTOR
`ON ISTE’ 297 . . . through the TE device . . . through the TE's ‘center tap
`274,’ through a contact in ‘CONNECTOR ON ISTE’ 297 . . . ”).
`Addressing limitation [e] of claim 1, the “piece of Ethernet equipment
`to draw different magnitudes of DC current flow via the at least one path”
`recited in claim 1, Petitioner argues both Hunter and Bulan have a DC-to-
`DC-converter (“DC-DC”). Pet. 28 (citing Ex. 1003, 39:5–6; Ex. 1004, col.
`1, ll. 52–56). The First Crayford Declaration states that the DC-DC
`converters of the
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