UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`
`v.
`
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`___________
`Case No. IPR2019-00033
`Patent No. 8,902,760
`___________
`
`DECLARATION OF GEORGE ZIMMERMAN UNDER 37 C.F.R. § 1.68
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,902,760
`
`
`
`HPE 1001-0001
`HPE Co. v. ChriMar Sys., Inc.
`IPR Pet. - U.S. Patent No. 8,902,760
`
`
`___________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`
`v.
`
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`___________
`Case No. IPR2019-00033
`Patent No. 8,902,760
`___________
`
`DECLARATION OF GEORGE ZIMMERMAN UNDER 37 C.F.R. § 1.68
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,902,760
`
`
`
`HPE 1001-0001
`HPE Co. v. ChriMar Sys., Inc.
`IPR Pet. - U.S. Patent No. 8,902,760
`
`
`
`
`
`TABLE OF CONTENTS
`Background and Qualifications .................................................................... 3
`I.
`II. Materials and Other Information Considered ........................................... 6
`III. Understanding of Patent Law ....................................................................... 7
`IV. Background on the ’760 patent .................................................................. 11
`A.
`Level of Ordinary Skill in the Art ................................................... 15
`V. Claim Construction ..................................................................................... 16
`A.
`’760 Patent .......................................................................................... 17
`VI. Detailed Analysis .......................................................................................... 21
`A.
`’760 Patent .......................................................................................... 22
`1.
`Ground 1: Hunter in View of Bulan ...................................... 22
`2.
`Ground 2: Hunter in view of Bulan, and Nelson ................. 47
`3.
`Ground 3: Bloch in View of IEEE 802.3 and Peguiron ....... 57
`VII. Secondary Indicia of Non-Obviousness ..................................................... 78
`VIII. Public Availability of IEEE Standards ...................................................... 78
`IX. Conclusion .................................................................................................... 80
`
`
`i
`
`HPE 1001-0002
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`
`I, George Zimmerman, do hereby declare as follows:
`1.
`I have been retained as an expert witness on behalf of Hewlett Packard
`
`Enterprise Compnay (“HPE” or “Petitioner”) for the Petition for Inter Partes Review
`
`(“IPR”) of U.S. Patent No. 8,902,760 (“the ’760 patent”).1 I am being compensated
`
`for my time in connection with this IPR at my standard consulting rate of $300 per
`
`hour. My compensation is not affected by the outcome of this matter.
`
`2.
`
`I have been asked to provide my opinions regarding whether claims 73,
`
`106, 112, 134, 142, 145, 146, 175, 203, 216, and 219 of the ’760 patent (“Challenged
`
`’760 Claims”) are invalid as obvious to a person having ordinary skill in the art at
`
`the time of the alleged invention.
`
`3.
`
`The ’760 patent is a continuation of U.S. Patent No. 6,650,622. The
`
`’760 patent issued on December 2, 2014, from U.S. Patent Appl. No. 13/370,918,
`
`which was filed on February 10, 2012. Ex.1004, Cover. For the purposes of my
`
`
`1
`Separately and independently of HPE, I have been retained as an expert
`
`witness on behalf of Cisco Systems, Inc. (“Cisco”) for the Petitions for Inter
`
`Partes Review (“IPR”) of U.S. Patent No. 8,155,012 (“the ’012 patent”),
`
`8,902,760 (“the ’760 patent”); 9,049,019 (“the ’019 patent”); and 9,812,825
`
`(“the ’825 patent”) (collectively, the “ChriMar Patents”).
`
`
`
`1
`
`HPE 1001-0003
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`Declaration, I have been asked to assume that the priority date of the alleged
`
`invention recited in the ’760 patent is April 10, 1998.
`
`4.
`
`In forming the opinions expressed in this Declaration, I relied upon my
`
`education and experience in the relevant field of the art, and I have considered the
`
`viewpoint of a person having ordinary skill in the relevant art as of the priority date
`
`of the ’622 parent patent, i.e., April 10, 1998. My opinions are based, at least in part,
`
`on the following prior art references:
`
`Reference
`WO 96/23377 (“Hunter”)
`(Ex.1033)
`
`U.S. Patent No. 5,089,927
`(“Bulan”) (Ex.1027)
`
`U.S. Patent No. 4,823,070
`(“Nelson”) (Ex.1026)
`
`U.S. Patent No. 4,173,714
`(“Bloch”) (Ex.1025)
`
`Date of Public Availability
`Hunter was filed on January 26,
`1996, was published on August 1,
`1996, has a priority date of January
`27, 1995.
`
`Bulan was filed on October 12,
`1989, and issued on February 18,
`1992.
`
`Nelson was filed on August 3,
`1987, and issued on April 18, 1989.
`
`Bloch was filed on June 3, 1977,
`and issued on November 6, 1979.
`
`IEEE International Standard
`ISO/IEC 8802-3: 1993 (“IEEE-
`1993”) (Ex.1022)
`
`IEEE-1993 was published and
`publicly available by at least
`August 5, 1993.
`
`IEEE Standard 802.3u-1995
`(“IEEE-1995”) (Ex.1021)
`
`IEEE-1995 was published and
`publicly available by at least June
`1996.
`
`
`
`2
`
`HPE 1001-0004
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`Swiss Patent No. CH 643 095 A5
`(“Peguiron”) (Ex.1034)
`
`Peguiron was filed in July 14,
`1981, and issued and published on
`May 15, 1984.
`
`5.
`
`The references relied upon in this Petition are prior art to the ’760 patent
`
`because they all predate April 10, 1998, the earliest possible priority date for the
`
`’760 patent.
`
`6.
`
`I may rely upon these materials and/or additional materials to rebut
`
`arguments raised by ChriMar Systems, Inc. (“ChriMar” or “Patent Owner”). I may
`
`also consider additional documents and information, including documents that may
`
`not yet have been provided to me.
`
`7. My analysis of the materials relating to this matter is ongoing and I will
`
`continue to review any new material as it is provided. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials.
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`8.
`A detailed record of my professional qualifications, including a list of
`
`patents, academic and professional publications, is set forth in my curriculum vitae,
`
`which I understand has been submitted as Exhibit 1002.
`
`9.
`
`In 1985, I received a Bachelor of Science degree in Electrical
`
`Engineering from Stanford University. In 1988, I received a Master of Science
`
`degree in Electrical Engineering from the California Institute of Technology. In
`
`
`
`3
`
`HPE 1001-0005
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`1990, I received a Ph.D. in Electrical Engineering from the California Institute of
`
`Technology.
`
`10. From 1985 to 1995, I held systems engineering, digital design, and
`
`engineering management positions as a Member of Technical Staff at Jet Propulsion
`
`Laboratory in Pasadena, California. From 1989 to 1995, I was an independent
`
`consultant in the areas of communications and signal processing analysis. Between
`
`1992 and 1994, I was a lecturer at the California Institute of Technology.
`
`11. From May 1995 through June 2000, I was Chief Scientist at PairGain
`
`Technologies. PairGain was a pioneering firm in the DSL and broadband
`
`networking space and made line-powered broadband access products including
`
`chipsets.
`
`12. From January 2001 through May 2011, I was the founder and Chief
`
`Technical Officer of SolarFlare Communications, a leading provider of 10 Gigabit
`
`Ethernet server adapters and silicon.
`
`13. From May 2011 to date, I have been the principal consultant at CME
`
`Consulting, Inc., specializing in wireline communications.
`
`14.
`
`I have been involved in numerous IEEE 802.3 standards, including
`
`Power over Ethernet standards. I have been a contributor to the IEEE 802.3 working
`
`group, contributing actively to IEEE Std 802.3an-2006, IEEE Std 802.3az-2010, and
`
`was a participant in IEEE Std 802.3at-2009 (commonly referred to as Power over
`
`
`
`4
`
`HPE 1001-0006
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`Ethernet Plus). For the past five years, I have been an active participant in many
`
`IEEE 802.3 standards, and have am currently serving as the Chief Editor for two
`
`standards, the IEEE P802.3bq 25G/40GBASE-T Task Force and the IEEE P802.3bz
`
`2.5G/5GBASE-T Task Force. In addition, I am a current, active participant in the
`
`IEEE P802.3bt Task Force, commonly referred to as 4 Pair Power over Ethernet.
`
`15.
`
`I have written numerous technical publications, many of which focus
`
`on networking technology. Exemplary publications include:
`
`G. Zimmerman, “Power Backoff,” IEEE P802.3an Task Force Contributions:
`Zimmerman_1_0205.pdf,
`Zimmerman_1_0305.pdf,
`Zimmerman_2_0305.pdf, February and March 2005;
`
`G.A. Zimmerman, “Approaches to CSA-Reach Single-Pair HDSL,” PairGain
`contribution, T1E1.4/96-063, April 1996; and
`
`G.A. Zimmerman, “Achievable rates vs. operating characteristics of local
`loop transmission: HDSL, HDSL2, ADSL and VDSL,” Signals, Systems &
`Computers, 1997. Conference Record of
`the Thirty-First Asilomar
`Conference on Signals, Systems and Computers, Volume 1, 2-5 Nov. 1997
`Pages: 573-577 vol. 1.
`
`16.
`
`I am also the named inventor on numerous patents and patent
`
`applications in networking technology, including high-speed networking devices. A
`
`full list of my patents and publications can be found in Exhibit 1002.
`
`17. As set forth herein, I am a person skilled in the art to which the ’760
`
`patent pertains. Thus, I am well qualified to provide an opinion on whether the
`
`Challenged Claims would have been obvious to a person having ordinary skill in the
`
`
`
`5
`
`HPE 1001-0007
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`art at the time of the alleged invention. Exhibit 1002 contains a list of my expert
`
`engagements over the last six years.
`
`II. MATERIALS AND OTHER INFORMATION CONSIDERED
`18.
`In forming my opinions, I have considered the materials referenced
`
`herein including the ’760 patent and other continuations of the ’622 patent, the file
`
`history of the ’760 patent and other continuations of the ’622 patent, prior-art
`
`references, technical references from the time of the alleged inventions, the Petitions,
`
`expert declarations of Dr. Ian Crayford from the IPRs filed by Juniper (IPR2016-
`
`01389 (relating to U.S. Patent No. 8,155,012); IPR2016-01391 (relating to U.S.
`
`Patent No. 8,942,107); IPR2016-01397 (relating to U.S. Patent No. 9,019,838); and
`
`IPR2016-01399 (relating to U.S. Patent No. 8,902,760)), expert declarations of Dr.
`
`Vijay Madisetti from ChriMar Sys., v. Cisco Sys. Inc., Case No. 4:13-cv-13800-JSW
`
`(N.D. Cal.), oral hearing transcript, and Final Written Decisions in IPR2016-01389
`
`(relating to U.S. Patent No. 8,155,012); IPR2016-01391 (relating to U.S. Patent No.
`
`8,942,107); IPR2016-01397 (relating to U.S. Patent No. 9,019,838); and IPR2016-
`
`01399 (relating to U.S. Patent No. 8,902,760), expert reports of Dr. Vijay Madisetti
`
`in ChriMar Sys. and ChriMar Holding Company LLC v. Cisco Sys. Inc., Case No.
`
`4:13-cv-1300-JSW (N.D. Cal.), and statements made regarding the alleged meaning
`
`and scope of terms and phrases recited in the Challenged Claims. My opinions are
`
`also based on my years of education, research, and work experience, as described in
`
`
`
`6
`
`HPE 1001-0008
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`Section I (Background and Qualifications) and in my curriculum vitae attached
`
`hereto as Exhibit 1002.
`
`III. UNDERSTANDING OF PATENT LAW
`19.
`I understand that a patent or other publication must first qualify as prior
`
`art before it can be used to invalidate a patent claim.
`
`20.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is prior to the invention of the
`
`asserted patent. I further understand that a printed publication, such as an article
`
`published in a magazine or trade publication, qualifies as prior art to an asserted
`
`patent if the date of publication is prior to the invention of the asserted patent.
`
`21.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is more than one year before the
`
`earliest filing date of the asserted patent. I further understand that a printed
`
`publication, such as an article published in a magazine or trade publication,
`
`constitutes prior art to an asserted patent if the publication occurs more than one year
`
`before the earliest filing date of the asserted patent.
`
`22.
`
`I understand that documents and materials that qualify as prior art may
`
`be used to invalidate a patent claim as anticipated or as obvious.
`
`23.
`
`I understand that, in an inter partes review proceeding invalidity must
`
`be shown by a preponderance of evidence.
`
`
`
`7
`
`HPE 1001-0009
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`24.
`I understand that a claim is invalid if it is anticipated or obvious.
`
`Anticipation of a claim requires that every element of a claim be disclosed expressly
`
`or inherently in a single prior-art reference, arranged in the prior-art reference as
`
`arranged in the claim. Obviousness of a claim requires that the claim be obvious
`
`from the perspective of a person having ordinary skill in the relevant art at the time
`
`of the alleged invention. I understand that a claim may be obvious in view of a
`
`combination of two or more prior-art references.
`
`25.
`
`I understand that obviousness analysis requires an understanding of the
`
`scope and content of the prior art, any differences between the alleged invention and
`
`the prior art, and the level of ordinary skill in evaluating the pertinent art.
`
`26.
`
`I understand
`
`that certain
`
`factors—often called “secondary
`
`considerations”—may support or rebut the obviousness of a claim. I understand that
`
`such secondary considerations include, among other things, commercial success of
`
`the alleged invention, skepticism of those having ordinary skill in the art at the time
`
`of the alleged invention, unexpected results of the alleged invention, any long-felt
`
`but unsolved need in the art that was satisfied by the alleged invention, the failure of
`
`others to make the alleged invention, praise of the alleged invention by those having
`
`ordinary skill in the art, and copying of the alleged invention by others in the field.
`
`I further understand that there must be a nexus—a connection—between any such
`
`secondary considerations and the alleged invention. I also understand that
`
`
`
`8
`
`HPE 1001-0010
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`contemporaneous and independent invention by others is a secondary consideration
`
`tending to show obviousness.
`
`27.
`
`I further understand that a claim is obvious if it unites old elements with
`
`no change to their respective functions, or alters prior art by mere substitution of one
`
`element for another known in the field, and that combination yields predictable
`
`results. While it may be helpful to identify a reason for this combination, common
`
`sense should guide, and there is no rigid requirement for a teaching, suggestion, or
`
`motivation to combine. When a product is available, design incentives and other
`
`market forces can prompt variations of it, either in the same field or different one.
`
`28.
`
`I understand that the combination of familiar elements according to
`
`known methods may be proven obvious when it does no more than yield predictable
`
`results. When a work is available in one field of endeavor, design incentives and
`
`other market forces can prompt variations of it, either in the same field or a different
`
`one. If a person of ordinary skill can implement a predictable variation, obviousness
`
`likely bars its patentability. Similarly, if a technique has been used to improve one
`
`device, and a person having ordinary skill in the art would recognize that the
`
`technique would improve similar devices in the same way, use of the technique is
`
`obvious. I further understand that a claim may be obvious if common sense directs
`
`one to combine multiple prior art references to reproduce the alleged invention
`
`recited in the claims.
`
`
`
`9
`
`HPE 1001-0011
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`29.
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a person of ordinary skill in the art
`
`(“POSITA”), not just the patentee. Accordingly, I understand that any need or
`
`problem known in the field of endeavor at the time of invention and addressed by
`
`the patent can provide a reason for combining the elements in the manner claimed.
`
`30.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common sense
`
`of one of skill in the art.
`
`31.
`
`I understand that a person of ordinary skill could have combined two
`
`pieces of prior art or substituted one prior art element for another if the substitution
`
`can be made with predictable results, even if the swapped-in element is different
`
`from the swapped-out element. In other words, the prior art need not be like two
`
`puzzle pieces that must fit together perfectly. The relevant question is whether prior
`
`art techniques are interoperable with respect to one another, such that that a person
`
`of skill would view them as a design choice, or whether a person of skill could apply
`
`prior art techniques into a new combined system.
`
`32.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a person of ordinary skill in the art having the understanding and
`
`knowledge reflected in the prior art and motivated by the general problem facing the
`
`
`
`10
`
`HPE 1001-0012
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`inventor, would have been led to make the combination of elements recited in the
`
`claims. Under this analysis, the prior art references themselves, or any need or
`
`problem known in the field of endeavor at the time of the invention, can provide a
`
`reason for combining the elements of multiple prior art references in the claimed
`
`manner.
`
`33.
`
`I understand that the obviousness analysis requires a comparison of the
`
`properly construed claim language to the prior art on a limitation-by-limitation basis.
`
`34.
`
`I have written this declaration with the understanding that obviousness
`
`must be shown by a preponderance of evidence.
`
`IV. BACKGROUND ON THE ’760 PATENT
`35. The ’760 patent relates to “a network management and security system
`
`for managing, tracking, and identifying remotely located electronic equipment on a
`
`network.” (Ex.10042 at 1:27-30.) According to the ’760 patent, this type of system
`
`can be used to reduce Total Cost of Ownership (“TCO”) of business “assets” such
`
`as computers, by permanently attaching a device to the asset that provides a unique
`
`identification number. (Id., 2:3-36.) The patent describes the invention’s
`
`
`2
`All of the ChriMar Patents share a common specification. For convenience I
`
`have cited to the ’012 patent specification.
`
`
`
`11
`
`HPE 1001-0013
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`application to other elements of an office environment such as telephones, fax
`
`machines, robots, and printers.
`
`36. The ’760 patent disclose four embodiments. The first embodiment is
`
`shown in, for example, Figure 3:
`
`
`
`37. Figure 3 depicts the remote module 16 and central module 15. The
`
`remote module 16 transmits a unique identification number to the central module
`
`using known techniques for transmission of digital data, such as Manchester, 4B/5B,
`
`PAM5x5, Polar NRZ (non-return to zero), Bipolar, and frequency-shift keying
`
`(FSK) encoding. (Id., 6:19-23.) This information is encoded and modulated as low
`
`frequency changes in the current from the remote module to the central module in
`
`order to prevent interfering with high-frequency network traffic (Ethernet). (Id.,
`
`
`
`12
`
`HPE 1001-0014
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`12:15-21 (“Coupling a lower frequency signal to the data lines of such a network
`
`permits increased utilization of the available transmitting medium . . . [t]o ensure
`
`that the added lower frequency signal does not interfere with normal network
`
`communications the added signal must not contain frequency components that
`
`interfere with the network signals.”).) As an example, the patent describes using a
`
`150 kHz high-pass filter to remove Ethernet data signals from the line and isolating
`
`the low-frequency encoded signal bearing the remote module’s unique identifier.
`
`38. The ’760 patent purports to teach equipment networked over pre-
`
`existing wiring or cables that connect pieces of networked computer equipment to a
`
`network. (Id., 3:23-27, 4:62-66.) The ’760 patent explains that existing
`
`communications links such as Ethernet were known and used at the time of the
`
`invention. (Id., 3:41-43, 5:20-24 (“The invention described herein is particularly
`
`suited to be implemented in conjunction with a computer network 17 which
`
`preferably employs a conventional wiring approach of the type which may include
`
`twisted pair wiring such as Ethernet, Token Ring, or ATM.”). The ’760 patent gives
`
`examples of “networked equipment” such as “PCs,...telephones, fax machines,
`
`robots, and printers” connected to a hub in a network. (Id., 4:66-5:3.) The
`
`networked equipment is connected over “conventional multi-wire cables that include
`
`a plurality of transmit and receive data communication links.” (Id., 5:12-19, 5:26-
`
`
`
`13
`
`HPE 1001-0015
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`31 (“data communication links 2A-2D generally include a pair of transmit wires . . .
`
`as well as a pair of receive wires…connected to each of personal computers”).3
`
`39. The ’760 patent explains that the central module utilizes the unique
`
`identification number for asset tracking (the stated objective of the patent): “The
`
`information sent from the remote module 16 is received by the signal receiver 6
`
`within the central module 15, decoded by Manchester decoder 5, and passed on to
`
`the firmware kernel 4. The firmware kernel may now pass this received information
`
`on to an external device 19, such as a computer responsible for asset tracking.” (Id.
`
`at 6:31-36.) The absence of a unique identifier can also be used for asset blocking
`
`to deny access to an unauthorized computer. (Id. at 6:37-53.)
`
`40. The ’760 patent also explain that the central module contains a DC
`
`power supply, from which voltage powering the remote module is provided in some
`
`embodiments. “Signal modulator 7 inserts this [DC] power supply across the
`
`transmit and receive lines or into either the transmit lines or the receives lines in
`
`order to supply the remote module 16 with both status information and power.” (Id.,
`
`5:64-67.) The ’760 patent further describes that the remote module can send
`
`Manchester-encoded (or otherwise digitally encoded) information to the central
`
`module by altering the current draw by the remote module.
`
`
`3 Emphases added to all citations unless otherwise stated.
`
`
`
`14
`
`HPE 1001-0016
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`41. As I explain below, this basic concept phantom powering (i.e.,
`
`providing power with a DC power supply over the same conductors that carry data
`
`signals) was well known well before the invention date of the ’760 patent. For
`
`instance, Bloch, which relates to phantom powering, was issued in 1979—more than
`
`a decade before the earliest possible priority date of the ’760 patent. Moreover,
`
`supplying power with a DC power supply over the same conductors used for
`
`Ethernet communication was well known by the time of the alleged invention date
`
`of the ’760 patent, as further explained below with respect to the Hunter reference
`
`that was published in 1996, and the IEEE specifications published in 1993 and 1995.
`
`Additionally, by the time of the alleged invention date of the ’760 patent, references
`
`like Hunter, Bulan, Bloch, and Peguiron disclosed the concept of communicating
`
`“information” from an equipment to another equipment by modulating the current
`
`drawn from the DC power supply over the same conductors used for, e.g., Ethernet
`
`communication or by modulating the voltage supplied by the DC power supply.
`
`A. Level of Ordinary Skill in the Art
`42.
`In determining the characteristics of a hypothetical person of ordinary
`
`skill in the art of the ’760 patent at the time of the claimed invention, I considered
`
`several things, including the type of problems encountered in this field, and the
`
`rapidity with which innovations were made. I also considered the sophistication of
`
`the technology involved, and the educational background and experience of those
`
`
`
`15
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`HPE 1001-0017
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`actively working in the field, and the level of education that would be necessary to
`
`understand the ’760 patent. Finally, I placed myself back in the relevant period of
`
`time, and considered the state of the art and the level of skill of the engineers working
`
`in this field at that time. It is my opinion that the art of the subject matter of the ’760
`
`patent is network communication products. Based on the materials I have
`
`considered, my own involvement in the IEEE 802.3 working group, the knowledge
`
`required to design and implement network communication products, I came to the
`
`conclusion that the characteristics of a person of ordinary skill in the field of art of
`
`the ’760 patent would be someone who has had at least a B.S. degree in electrical
`
`engineering or computer science, or the equivalent, and at least three years of
`
`experience in the design of network communication products. By this definition, I
`
`was a person of ordinary skill in the art in 1998.
`
`V. CLAIM CONSTRUCTION
`43.
`I understand that in an inter partes review, a claim in an unexpired
`
`patent must be given its broadest reasonable interpretation (“BRI”) in light of the
`
`specification of the patent in which it appears. In other words, under the BRI
`
`standard, the Patent Office must give claims their “broadest reasonable construction
`
`consistent with the specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259
`
`(Fed. Cir. 2010). I understand that in an inter partes review, a claim in an expired
`
`patent must be construed under the Phillips standard, in which the ordinary and
`
`
`
`16
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`HPE 1001-0018
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`customary meaning of a claim term is the meaning that the term would have to a
`
`person of skill in the art in question at the time of invention, in light of the
`
`specification, and prosecution history, as well as pertinent evidence extrinsic to the
`
`patent.
`
`44.
`
`A.
`53.
`
` [paragraphs 44 through 52 intentionally omitted]
`
`’760 Patent
`I have been informed that the ’760 patent is set to expire during the
`
`pendency of this IPR proceeding (if instituted), on April 8, 2019. Therefore, it is my
`
`understanding the the Phillips standard should be applied in construing any claim
`
`terms.
`
`“BaseT” (Challenged ’760 Claims):
`a.
`In IPR2016-01399, the Board construed the term “BaseT” as “twisted
`
`54.
`
`pair Ethernet in accordance with the 10Base-T or 100Base-T standards.” My
`
`understanding is that the Board used the BRI standard in reaching this construction,
`
`and not the Phillips standard. In my opinion, however, the BRI and Phillips
`
`constructions are the same here. The ’760 patent consistently uses the term “BaseT”
`
`as part of the larger phrase “10BASE-T.” (Ex.1004 at 12:19–28.) The ’760 patent
`
`also states that “[t]he invention is particularly adapted to be used with an existing
`
`Ethernet communications,” which would include 100BASE-T at the time of the
`
`purported invention. (Ex.1004 at 3:40–42; IEEE-95 at 2 (“Type 100Base-T”).)
`
`
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`17
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`HPE 1001-0019
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`
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`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`Thus, “BaseT” should be construed as “twisted pair Ethernet in accordance with the
`
`10BASE-T or 100BASE-T standards” under Phillips as well. Ex.1010 at 8-9.
`
`b.
`
`“wherein at least of the different magnitudes of
`current flow through the loop is part of a detection
`protocol” (’760 patent, claim 134):
`In my opinion, under the Phillips standard as apparently applied by
`
`55.
`
`ChriMar at the District Court level, the term “wherein at least of the different
`
`magnitudes of current flow through the loop is part of a detection protocol” used in
`
`claim 134 of the ’760 patent should be construed as “wherein the different
`
`magnitudes of current flow must be capable of being part of a scheme involving
`
`signals, current, and/or voltage, or similar inputs, for detecting current/impedance or
`
`a change in current/impedance.”
`
`58.
`
` ChriMar’s apparent interpretation of this claim under the Phillips
`
`supports this construction. ChriMar’s expert, Les Baxter stated “[i]n the context of
`
`these claims, ‘detection protocol’ means that the equipment is configured or
`
`designed so that the magnitude of the current (flow) or the impedance in the path
`
`allow it to detect or determine some information about the equipment at the other
`
`end of the path.” Ex.1013 at 9. Thus ChriMar has interpreted this term to mean
`
`“wherein the different magnitudes of current flow must be capable of being part of
`
`a scheme involving signals, current, and/or voltage, or similar inputs, for detecting
`
`current/impedance or a change in current/impedance” under Phillips, which is
`
`
`
`18
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`HPE 1001-0020
`
`
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`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`consistent with the Board’s BRI construction of this term. Ex.1010, pp.9-11;
`
`Ex.1007 p.19. I adopt this construction solely for the purposes of this petition.
`
`“powered-off” (’760 patent, claim 59):
`c.
`59. The Board previously determined the BRI of this term is “without
`
`operating power” with the qualification that some power may be applied to the
`
`claimed responsive piece of BaseT Ethernet equipment, and the device may still be
`
`“powered-off.” I agree with this construction and the Board’s determination, which
`
`is consistent with the proper construction of this term under the Phillips standard.
`
`The Board clarified that “the ’760 patent indicates that power can be applied to a
`
`component of the Base-T Ethernet terminal equipment (as Petitioner contends), even
`
`though operating power is not applied to the Base-T Ethernet terminal equipment
`
`(as Patent Owner contends).” Ex.1010 at 11-14.
`
`60. First, this construction is supported by the language of the claims of the
`
`’760 patent. For instance, some of the features of the ’760 patent are included in
`
`claims 1 and 73, which recite that the piece of central Base-T Ethernet equipment
`
`has a “DC supply,” and the piece of Base-T Ethernet terminal equipment has “at
`
`least one path to draw different magnitudes of current flow from the at least one DC
`
`supply.” ’760 patent at 17:26–30, 21:43–47. Therefore, at least some component
`
`of the piece of Base-T Ethernet terminal equipment draws different magnitudes and
`
`yet is still (due to the presence of the term in other limitations) “powered off.”
`
`
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`19
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`HPE 1001-0021
`
`
`
`Declaration of George Zimmerman
`in Support of IPR of U.S. Patent No. 8,902,760
`61. The Board noted that “claims 1 and 73 do not recite a remote module
`
`separate from the Base-T Ethernet terminal equipment, thereby supporting
`
`Petitioner’s position that the remote module is a component of the Base-T Ethernet
`
`terminal equipment.” Ex.1010 at 13-14.
`
`62. This construction is also supported by the specification. The ’760
`
`patent states that one of the drawbacks with previous asset tracking systems is that
`
`they could only track assets that were powered-up. Ex.1004, 1:62–2:2. To coun
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