throbber
2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 1 of 130 Pg ID 904
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`
`
`
`
`CISCO SYSTEMS, INC.
`
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`
`
`
`
`Case No. 2:17-cv-13770-AC-RSW
`
`Honorable Avern Cohn
`
`Magistrate Judge R. Steven Whalen
`
`
`
`
`
`Case No. 2:17-cv-13784-AC-RSW
`
`Honorable Avern Cohn
`
`Magistrate Judge R. Steven Whalen
`
`
`JURY TRIAL DEMANDED
`
`
`
`HEWLETT-PACKARD
`ENTERPRISE COMPANY, HP INC.
`f/k/a HEWLETT-PACKARD
`COMPANY, AND ARUBA
`NETWORKS, INC.
`
`
`
`
`
`Plaintiffs,
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`DEFENDANT’S ANSWER, AFFIRMATIVE
`DEFENSES, JURY DEMAND AND
`COUNTERCLAIM TO FIRST AMENDED
`COMPLAINT OF PLAINTIFF CISCO
`
`HPE 1014-0001
`
`HPE Co. v. ChriMar Sys., Inc.
`IPR Pet. - U.S. Patent No. 8,902,760
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 2 of 130 Pg ID 905
`
`
`
`
`
`In the 1990’s Defendant ChriMar Systems Inc., d/b/a CMS Technologies
`
`(“Chrimar” or “Defendant”) developed commercial products that could distinguish
`
`and identify Ethernet equipment remotely, even when that equipment did not have
`
`any of its operational power applied. The Ethernet equipment industry later adopted
`
`standards that used Chrimar’s technology in a way that pushed Chrimar’s products
`
`off the Ethernet data lines they used to distinguish and identify Ethernet equipment.
`
`Chrimar obtained several patents covering its technology and has licensed its product
`
`to and/or successfully enforced them against numerous parties in the industry. On
`
`February 17, 2018, Plaintiff Cisco Systems, Inc. (“Cisco”) filed a First Amended
`
`Complaint and Jury Demand declaring that Cisco does not infringe Chrimar’s U.S.
`
`Patent Nos. 8,155,012 (“the ‘012 Patent”), 8,942,107 (“the ‘107 Patent”), 8,902,760
`
`(“the ‘760 Patent”), 9,049,019 Patent (“the ‘019 Patent”), 9,019,838 (“the ‘838
`
`Patent”), and 9,812,825 (“the ‘825 Patent”), but does not identify any limitation of
`
`any claim from those patents that Cisco does not practice. Cisco raises other claims
`
`as well. As explained below, Chrimar denies Cisco’s allegations and counterclaims
`
`for infringement. More specifically, Chrimar by and through its attorneys, Brooks
`
`Kushman P.C., and for its answer to Plaintiff’s Complaint, states as follows:
`
`
`
`
`
`
`
`1
`
`HPE 1014-0002
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 3 of 130 Pg ID 906
`
`
`
`PARTIES
`
`1.
`
`Cisco Systems, Inc. is a California corporation with its principal place
`
`of business on Tasman Drive in San Jose, California 95134.
`
`ANSWER:
`
`Admitted.
`
`
`
`2.
`
`On information and belief, ChriMar Systems, Inc. d/b/a CMS
`
`Technologies is a Michigan corporation with its principal place of business at 36528
`
`Grand River Avenue, Suite A-1 in Farmington Hills, Michigan.
`
`ANSWER:
`
`Admitted that Chrimar Systems, Inc. is a Michigan corporation,
`
`the remaining allegations are denied.
`
`
`
`JURISDICTION AND VENUE
`
`3.
`
`This action is predicated on the patent laws of the United States, Title
`
`35 of the United States Code, with a specific remedy sought based upon the laws
`
`authorizing actions for declaratory judgment in the courts of the United States, 28
`
`U.S.C. §§ 2201 and 2202. This court has jurisdiction over this action pursuant to 28
`
`U.S.C. §§ 1331, 1338(a), and 1367.
`
`ANSWER:
`
`Admitted that this action is predicated on the patent laws of the
`
`United States, otherwise denied.
`
`
`
`2
`
`HPE 1014-0003
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 4 of 130 Pg ID 907
`
`
`
`4.
`
`An actual and justiciable controversy exists between ChriMar and
`
`Cisco as to the noninfringement and unenforceability of U.S. Patent Nos. 8,155,012
`
`(“’012 Patent”) (attached as Exhibit A), 8,942,107 (“’107 Patent”) (attached as
`
`Exhibit B), 8,902,760 (“’760 Patent”) (attached as Exhibit C), 9,049,019 (“’019
`
`Patent”) (attached as Exhibit D), 9,019,838 (“’838 Patent”) (attached as Exhibit E),
`
`and 9,812,825 (“’825 Patent”) (attached as Exhibit F). As further alleged below,
`
`ChriMar is and has been engaged in a campaign to license and enforce its patent
`
`portfolio against manufacturers and sellers of Power over Ethernet (“PoE”)
`
`networking products, including Cisco. In connection with ChriMar’s licensing
`
`campaign targeting PoE products, Cisco is currently involved in litigation against
`
`ChriMar with respect to U.S. Patent Nos. 7,457,250 (“‘250 Patent”)1, and filed
`
`declaratory judgment actions involving the ’0122, ’107, ’760 Patent3, ’019, and ’838
`
`Patents4. The ’250 Patent litigation involves PoE products implementing the IEEE
`
`
`1 ChriMar Systems, Inc. v. Cisco Systems, Inc., No. 4:13-cv-1300-JSW (N.D.
`Cal.).
`
`2 Cisco Systems, Inc. et al v. ChriMar Systems, Inc. d/b/a CMS Technologies,
`No. 2:14-cv-10290 (E.D. Mich.) (Cisco has voluntarily dismissed this action for the
`reasons described in paragraph 4 herein.)
`
`3 Cisco Systems, Inc. v. ChriMar Systems, Inc. d/b/a CMS Technologies, No.
`2:15-cv-10817 (E.D. Mich.) (Cisco has voluntarily dismissed this action for the
`reasons described in paragraph 4 herein.)
`
`4 Cisco Systems, Inc. v. ChriMar Systems, Inc. d/b/a CMS Technologies, No.
`2:15-cv-12565 (E.D. Mich.) (Cisco has voluntarily dismissed this action for the
`reasons described in paragraph 4 herein.)
`
`3
`
`HPE 1014-0004
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 5 of 130 Pg ID 908
`
`
`
`802.3af and 802.3at standards. Cisco also filed (and has since voluntarily dismissed
`
`in order to consolidate those allegations in the instant complaint and to drop Cisco’s
`
`requests for of invalidity so that Cisco is free to pursue, if warranted, inter partes
`
`review (“IPR”) proceedings challenging the validity of the patents at issue in those
`
`cases (numerous claims of which have already been found to be invalid in other IPR
`
`proceedings)) declaratory judgment actions in this District concerning the ‘012, ‘107,
`
`‘760, ‘019, and ‘838 Patents. Cisco maintains that the ’012, ’107, ’760, ’019, ’838,
`
`and ’825 Patents are unenforceable, and are not infringed by Cisco’s PoE products
`
`implementing IEEE Standards 802.3af/at.
`
`ANSWER:
`
`Denied.
`
`
`
`5.
`
`This Court has personal jurisdiction over ChriMar at least because, on
`
`information and belief, ChriMar is a Michigan corporation having its principal place
`
`of business within the Eastern District of Michigan at 36528 Grand River Avenue,
`
`Suite A-1 in Farmington Hills, Michigan. ChriMar has had substantial business
`
`contacts with Michigan including product sales to Michigan entities, and ChriMar’s
`
`campaign to enforce and license its patent portfolio, including the ‘012, ‘107, ‘760,
`
`‘019, ‘838, and ‘825 Patents, has a substantial relationship to Michigan. ChriMar
`
`has availed itself of the laws of this District in connection with its current portfolio
`
`4
`
`HPE 1014-0005
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 6 of 130 Pg ID 909
`
`
`
`licensing efforts targeting PoE products, including by litigating patent infringement
`
`claims involving that portfolio in this district.
`
`ANSWER:
`
`Chrimar does not dispute personal jurisdiction in this District,
`
`otherwise denied.
`
`
`
`6.
`
`Venue is proper in this Court under 28 U.S.C. § 1391(b)(1), (c) and §
`
`1400(b) including because ChriMar is incorporated in the state of Michigan, has a
`
`regular and established place of business in the state of Michigan, and has had
`
`substantial contacts with
`
`the state of Michigan. ChriMar Systems, Inc.
`
`(Identification Number 800003893) was incorporated in the state of Michigan on
`
`July 9, 1993 for a perpetual term under Section 284-1972 of the Business
`
`Corporation Act. Its 2017 Annual Report lists John Austermann at 36528 Grand
`
`River Ave, Ste. A1, Farmington Hills, MI 48335 as its registered agent. ChriMar’s
`
`principal place of business is within the Eastern District of Michigan at 36528 Grand
`
`River Avenue, Suite A-1 in Farmington Hills, Michigan. ChriMar’s website lists this
`
`same address as a location out of which ChriMar operates. In addition, in its Answer,
`
`ChriMar alleged that it “does not dispute venue in the Eastern District of Michigan
`
`. . . .” (Dkt. No. 9 at 6.)
`
`ANSWER:
`
`Chrimar does not dispute venue in the Eastern District of
`
`Michigan, otherwise denied.
`
`5
`
`HPE 1014-0006
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 7 of 130 Pg ID 910
`
`
`
`BACKGROUND
`
`A. CHRIMAR’S PATENTS
`
`7.
`
`ChriMar’s patent portfolio includes the ‘250, ‘012, ‘107, ‘760, ‘019,
`
`‘838, and the ‘825 Patents, U.S. Patent No. 6,650,622 (the “‘622 Patent”), U.S.
`
`Patent No. 5,406,260 (the “‘260 Patent”), and others. The phrase “the ’622 Patent
`
`Family” as used throughout Cisco’s Complaint refers to the ’622, ’250, ’012, ’107,
`
`’760, ’019, ’838, and ’825 Patents and any application to which they may purport to
`
`claim priority, including without limitation Application No. PCT/US99/07846 and
`
`Provisional Application No. 60/081,279.
`
`ANSWER:
`
`Denied.
`
`
`
`8.
`
`The ’012 Patent, entitled “System and Method for Adapting a Piece of
`
`Terminal Equipment,” reports that it was filed on September 26, 2008 as Application
`
`No. 12/239,001, and issued on April 10, 2012. The '012 Patent reports that it is a
`
`continuation of Application No. 10/668,708, filed on September 23, 2003, now the
`
`'250 Patent, which is a continuation of Application No. 09/370,430, filed on August
`
`9, 1999, now the ’622 Patent, which is a continuation-in-part of application No.
`
`PCT/US99/07846, filed on April 8, 1999. The inventors named on the ’012 Patent
`
`are John F. Austermann, III and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`6
`
`HPE 1014-0007
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 8 of 130 Pg ID 911
`
`
`
`
`
`9.
`
`As alleged herein, the ’012 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`10. On information and belief, ChriMar is the current assignee of the ’012
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`11. The ’107 Patent, entitled “Piece of Ethernet Terminal Equipment,”
`
`reports that it was filed on February 10, 2012 as Application No. 13/370,918, and
`
`issued on January 27, 2015. The ’107 Patent reports that it is a continuation of
`
`Application No. 12/239,001, filed on September 26, 2008, now the ’012 Patent,
`
`which is a continuation of Application No. 10/668,708, filed on September 23, 2003,
`
`now the ’250 Patent, which is a continuation of Application No. 09/370,430, filed
`
`on August 9, 1999, now the ’622 Patent, which is a continuation-in-part of
`
`application No. PCT/US99/07846, filed on April 8, 1999. The inventors named on
`
`the ’107 Patent are John F. Austermann, III and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`
`
`
`
`7
`
`HPE 1014-0008
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 9 of 130 Pg ID 912
`
`
`
`12. As alleged herein, the ’107 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`13. On information and belief, ChriMar is the current assignee of the ’107
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`14. The ’760 Patent, entitled “Network Systems and Optional Tethers,”
`
`reports that it was filed on September 14, 2012 as Application No. 13/615,755, and
`
`issued on December 2, 2014. The ’760 Patent reports that it is a continuation of
`
`Application No. 13/370,918, filed on February 10, 2012, which is a continuation of
`
`Application No. 12/239,001, filed on September 26, 2008, now the ’012 Patent,
`
`which is a continuation of Application No. 10/668,708, filed on September 23, 2003,
`
`now the ’250 Patent, which is a continuation of Application No. 09/370,430, filed
`
`on August 9, 1999, now the ’622 Patent, which is a continuation-in-part of
`
`application No. PCT/US99/07846, filed on April 8, 1999. The inventors named on
`
`the '760 Patent are John F. Austermann, III and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`
`
`8
`
`HPE 1014-0009
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 10 of 130 Pg ID 913
`
`
`
`15.
`
`
`
`As alleged herein, the ’760 Patent was not duly and legally
`
`issued.
`
`ANSWER:
`
`Denied.
`
`
`
`16.
`
`
`
`On information and belief, ChriMar is the current assignee of the
`
`’760 Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`17.
`
`
`
`The ’019 Patent, entitled “Network Equipment and Optional
`
`Tether,” reports that it was filed on September 14, 2012 as Application No.
`
`13/615,726, and issued on June 2, 2015. The ’019 Patent reports that it is a
`
`continuation of Application No. 13/370,918, now the ’107 Patent, which is a
`
`continuation of Application No. 12/239,001, filed on September 26, 2008, now the
`
`’012 Patent, which is a continuation of Application No. 10/668,708, filed on
`
`September 23, 2003, now the ’250 Patent, which is a continuation of Application
`
`No. 09/370,430, filed on August 9, 1999, now the ’622 Patent, which is a
`
`continuation-in-part of application No. PCT/US99/07846, filed on April 8, 1999.
`
`The inventors named on the '019 Patent are John F. Austermann, III and Marshall B.
`
`Cummings.
`
`ANSWER:
`
`Admitted.
`
`9
`
`HPE 1014-0010
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 11 of 130 Pg ID 914
`
`
`
`
`
`18.
`
` As alleged herein, the ’019 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`19.
`
` On information and belief, ChriMar is the current assignee of the ’019
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`20. The ’838 Patent, entitled “Central Piece of Network Equipment,”
`
`reports that it was filed on September 14, 2012, and issued on April 28, 2015. The
`
`’838 Patent reports that it is a continuation of Application No. 13/370,918, now the
`
`’107 Patent, which is a continuation of Application No. 12/239,001, filed on
`
`September 26, 2008, now the ’012 Patent, which is a continuation of Application
`
`No. 10/668,708, filed on September 23, 2003, now the ’250 Patent, which is a
`
`continuation of Application No. 09/370,430, filed on August 9, 1999, now the ’622
`
`Patent, which is a continuation-in-part of application No. PCT/US99/07846, filed on
`
`April 8, 1999. The inventors named on the '838 Patent are John F. Austermann, III
`
`and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`10
`
`HPE 1014-0011
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 12 of 130 Pg ID 915
`
`
`
`
`
`21. As alleged herein, the ’838 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`
`
`22. On information and belief, ChriMar is the current assignee of the ’838
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`23. The ‘825 Patent, entitled “Ethernet Device,” reports that it was filed on
`
`January 1, 2015 as Application No. 14/726,940, and issued on November 7, 2017.
`
`The ‘825 Patent reports that it is a continuation of Application No. 13/615,726, filed
`
`on September 14, 2012, now the ‘019 Patent, which is a continuation of Application
`
`No. 13/370,918, filed on February 10, 2012, now the ‘107 Patent, which is a
`
`continuation of Application No. 12/239,001, filed on September 26, 2008, now the
`
`‘012 patent, which is a continuation of Application No. 10/668,708, filed on
`
`September 23, 2003, now the ‘250 Patent, which is a continuation of Application
`
`No. 09/370,430, filed on August 9, 1999, now the ‘622 Patent, which is a
`
`continuation-in-part of application No. PCT/US99/07846, filed on April 8, 1999.
`
`11
`
`HPE 1014-0012
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 13 of 130 Pg ID 916
`
`
`
`The inventors named on the ‘825 Patent are John F. Austermann, III and Marshall B.
`
`Cummings.
`
`ANSWER:
`
`Admitted.
`
`
`
`24. As alleged herein, ’825 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`25. On information and belief, ChriMar is the current assignee of the ’825
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`26. The ’250 Patent, entitled “System for Communicating with Electronic
`
`Equipment,” reports that it was filed on September 23, 2003, issued on November
`
`25, 2008 and then had a reexamination certificate issued on March 1, 2011. The ’250
`
`Patent reports that it is a continuation of Application No. 09/370,430, filed on August
`
`9, 1999, now the ’622 Patent, which is a continuation-in-part of Application No.
`
`PCT/US99/07846, filed on April 8, 1999. The inventors named on the ’250 Patent
`
`are John F. Austermann, III, and Marshall B. Cummings.
`
`ANSWER:
`
`Admitted.
`
`
`
`12
`
`HPE 1014-0013
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 14 of 130 Pg ID 917
`
`
`
`27. As alleged herein, the ’250 Patent was not duly and legally issued.
`
`ANSWER:
`
`Denied.
`
`
`
`28.
`
` On information and belief, ChriMar is the current assignee of the ’250
`
`Patent.
`
`ANSWER:
`
`Admitted.
`
`
`
`29.
`
` The ’012, ’107, ’760, ’019, ’838, and ’825 Patents share nearly
`
`identical specifications with the ’250 Patent to which each ultimately claims priority.
`
`ANSWER:
`
`Because the term “nearly identical” in this allegation is unclear
`
`Chrimar denies this allegation.
`
`
`
`30. As alleged herein, on information and belief, Cisco believes that
`
`ChriMar asserts, and will assert, that the ’012, ’107, ’760, ’019, ’838, and ’825
`
`Patents cover products with PoE functionality.
`
`ANSWER:
`
`Chrimar is not privy to what Cisco believes and, therefore, denies
`
`this allegation.
`
`
`
`31. The below diagram summarizes ChriMar’s ’622 Family of Patents:
`
`13
`
`HPE 1014-0014
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 15 of 130 Pg ID 918
`
`
`
`ANSWER:
`
`Denied.
`
`
`
`
`B. CHRIMAR’S LICENSING AND ENFORCEMENT EFFORTS
`TARGETING PRODUCTS WITH POWER OVER ETHERNET
`FUNCTIONALITY
`
`
`
`32. For many years, ChriMar has actively pursued a patent licensing and
`
`enforcement campaign targeting products with Power Over Ethernet (“PoE”)
`
`functionality specified by certain standards promulgated by the Institute of Electrical
`
`and Electronics Engineers (“IEEE”) and sellers of such products.
`
`ANSWER:
`
`Denied.
`
`
`
`33. ChriMar’s licensing and enforcement campaign began in 2001, when
`
`ChriMar sued Cisco in this district for allegedly infringing the ‘260 Patent, accusing,
`
`14
`
`HPE 1014-0015
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 16 of 130 Pg ID 919
`
`
`
`for example, Cisco’s IP phones.5 ChriMar thereafter claimed that the ‘260 Patent
`
`was “essential” to the IEEE PoE standards.6 After the Court in that action entered
`
`an order granting Cisco’s motion for summary judgment that claim 1 of the ‘260
`
`Patent was invalid, that litigation between Cisco and ChriMar was resolved by way
`
`of settlement, with Cisco taking a license to ChriMar’s alleged technology. ChriMar
`
`also sued D-Link Systems (“D-Link”)7, Foundry Networks (“Foundry”)8, and
`
`PowerDsine, Ltd. (“PowerDsine”)9, based on their respective sales of products with
`
`PoE functionality accusing those companies of infringing the ‘260 Patent based on
`
`sales of those products. D-Link and PowerDsine took licenses to the ‘260 Patent
`
`after favorable rulings were issued, and ultimately an additional claim of the ‘260
`
`Patent (claim 17) was invalidated by the Court in the Foundry action, leading to
`
`dismissal of that action and summary affirmance by the Federal Circuit.
`
`ANSWER:
`
`Denied.
`
`
`5 ChriMar Sys., Inc. v. Cisco Sys., Inc., No. 2:01-cv-71113 (E.D. Mich.) (filed
`Mar. 21, 2001, terminated Sept. 15, 2005).
`
`6
`at
`available
`See
`Assurance,
`of
`Letter
`ChriMar
`http://standards.ieee.org/about/sasb/patcom/loa-802_3af-chrimar-03Dec2001.pdf.
`
`7 See ChriMar Sys., Inc. v. D-Link Sys., Inc., No. 2:06-cv-13937 (E.D. Mich.)
`(filed Sept. 6, 2006, terminated Apr. 21, 2010).
`
`8 See ChriMar Sys., Inc. v. Foundry Networks, Inc., No. 2:06-cv-13936 (E.D.
`Mich.) (filed Sept. 6, 2006, terminated Aug. 1, 2012).
`
`9 ChriMar Sys., Inc. v. PowerDsine LTD., No. 2:01-cv-74081 (E.D. Mich.)
`(filed Oct. 26, 2001, terminated Mar. 31, 2010).
`
`15
`
`HPE 1014-0016
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 17 of 130 Pg ID 920
`
`
`
`34. Shortly after issuance of the ‘250 Patent, which ChriMar deliberately
`
`failed to disclose to the IEEE standards bodies that developed the PoE standards, as
`
`alleged below, ChriMar continued its licensing and enforcement campaign against
`
`sellers of products with PoE functionality, including Cisco and a number of other
`
`California-based companies. ChriMar sued Waters Network Systems, LLC for
`
`allegedly infringing the ‘250 Patent in 2008, and went on to sue multiple additional
`
`sellers of products with PoE functionality (Danpex Corp., Garrettcom, Inc., and
`
`Edgewater Networks) in 2009.10 Following conclusion of a reexamination
`
`proceeding involving the ‘250 Patent, ChriMar sued Cisco, and also California-
`
`based Hewlett-Packard, Avaya, Inc., and Extreme Networks, both in the
`
`International Trade Commission,11 and in district court,12 for allegedly infringing the
`
`
`10 See ChriMar Sys., Inc. v. Waters Network Sys., LLC, No. 2:08-cv-00453
`(E.D. Tex.) (filed Nov. 25, 2008, terminated June 19, 2009); ChriMar Sys., Inc. v.
`Danpex Corp., No. 2:09-cv-00044 (E.D. Tex.) (filed Feb. 6, 2009, terminated May
`20, 2009); ChriMar Sys., Inc. v. Garrettcom, Inc., No. 2:09-cv-00085 (E.D. Tex.)
`(filed Mar. 23, 2009), No. 3:09-cv-04516 (N.D. Cal.) (terminated Dec. 22, 2009);
`ChriMar Sys., Inc. v. KTI Network, Inc., No. 2:09-cv-00230 (E.D. Tex.) (filed July
`30, 2009, terminated Nov. 25, 2009).
`
`11 In the Matter of Certain Communication Equipment, Components Thereof,
`and Products Containing the same, including Power over Ethernet Telephones,
`Switches, Wireless Access Points, Routers and other Devices Used in LANs, and
`Cameras, Inv. No. 337-TA-817 (instituted Dec. 1, 2011, terminated Aug. 1, 2012).
`
`12 ChriMar Systems, Inc. v. Cisco Systems, Inc., No. 4:13-cv-1300-JSW (N.D.
`Cal.) (“the NDCA case”).
`
`16
`
`HPE 1014-0017
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 18 of 130 Pg ID 921
`
`
`
`‘250 Patent by selling products with PoE functionality, including among other
`
`products, IP telephones, wireless access points, and wireless network cameras.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`35. ChriMar has also expanded its licensing and enforcement campaign
`
`against products with PoE functionality to include the ‘012 Patent, which issued in
`
`2012. ChriMar subsequently filed five actions in the United States District Court for
`
`the Eastern District of Texas alleging infringement of the ‘012 Patent by various
`
`manufacturers and re-sellers of PoE products. The complaints in these actions accuse
`
`specific models of IP phones and/or Wireless Access Points, each of which includes
`
`PoE functionality.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`36. ChriMar brought suit against Aastra Technologies Limited and Aastra
`
`USA Inc. in the Eastern District of Texas, Case No. 6:13-cv-879, on November 8,
`
`2013, alleging infringement of the ‘012 Patent, for among other things, making,
`
`using, offering for sale, selling, and/or importing IP telephones, which, on
`
`information and belief, include PoE functionality.
`
`17
`
`HPE 1014-0018
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 19 of 130 Pg ID 922
`
`
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`37. ChriMar brought suit against Alcatel-Lucent, Inc., Alcatel-Lucent
`
`USA, Inc., and Alcatel-Lucent Holdings, Inc., in the Eastern District of Texas, Case
`
`No. 6:13-cv-880, on November 8, 2013, alleging infringement of the ‘012 Patent,
`
`for among other things, making, using, offering for sale, selling, and/or importing
`
`wireless access points, which, on information and belief, include PoE functionality.
`
`ANSWER:
`
`ChriMar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations. ChriMar also
`
`states that Alcatel-Lucent was found to infringe ChriMar’s patents and all the
`
`defenses related to IEEE activities as raised by Cisco in this complaint were rejected.
`
`
`
`38. ChriMar brought suit against AMX, LLC, in the Eastern District of
`
`Texas, Case No. 6:13-cv-881, on November 8, 2013, alleging infringement of the
`
`‘012 Patent, for among other things, making, using, offering for sale, selling, and/or
`
`importing wireless access points, which, on information and belief, include PoE
`
`functionality.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`18
`
`HPE 1014-0019
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 20 of 130 Pg ID 923
`
`
`
`39. ChriMar brought suit against Grandstream Networks, Inc., in the
`
`Eastern District of Texas, Case No. 6:13-cv-882, on November 8, 2013, alleging
`
`infringement of the ‘012 Patent, for among other things, making, using, offering for
`
`sale, selling, and/or importing IP telephones and wireless network cameras, which,
`
`on information and belief, include PoE functionality.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`40. ChriMar brought suit against Samsung Electronics Co, Ltd., Samsung
`
`Electronics America, Inc. and Samsung Telecommunications in the Eastern District
`
`of Texas, Case No. 6:13-cv-883, on November 8, 2013, alleging infringement of the
`
`‘012 Patent, for among other things, making, using, offering for sale, selling, and/or
`
`importing IP telephones, which, on information and belief, include PoE
`
`functionality.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`19
`
`HPE 1014-0020
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 21 of 130 Pg ID 924
`
`
`
`41.
`
` On June 22, 2015, ChriMar filed six suits in the Eastern district of
`
`Texas, alleging infringement of the ’012, ’107, and ’019 Patents13. ChriMar asserts
`
`infringement predicated on the accused products’ compliance with the PoE standards
`
`embodied in IEEE 802.3af and/or 802.3at.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patents, but denies all remaining allegations.
`
`
`
`42. On July 1, 2015, ChriMar expanded its litigation campaign in the
`
`Eastern District of Texas, initiating lawsuits against thirty-nine defendants, alleging
`
`infringement by PoE power sourcing equipment (PSEs) and powered devices (PDs)
`
`of the ‘012, ‘107, ‘760, ‘019, and ‘838 patents: Alcatel-Lucent,14 AMX, LLC,15
`
`Aacton Technology Corp., Edgecore USA, and SMC Networks,16 Adtran &
`
`
`13 ChriMar Systems, Inc. et al. v. Advanced Network Devices, Inc., No. 6:15-cv-0577
`(E.D. Texas June 22, 2015) (asserting '012, '107, and '019 Patents); ChriMar Systems,
`Inc. et al. v. Arrowspan, Inc., No. 6:15-cv-0579 (E.D. Texas June 22, 2015) (asserting
`'012, '107, and '019 Patents); ChriMar Systems, Inc. et al. v. Biamp Systems Corp.,
`No. 6:15-cv-0578 (E.D. Texas June 22, 2015) (asserting '012, '107, and '019 Patents);
`ChriMar Systems, Inc. et al. v. Hawk-I Security Inc., No. 6:15-cv-0580 (E.D. Texas
`June 22, 2015) (asserting '012, '107, and '019 Patents); ChriMar Systems, Inc. et al.
`v. IPitomy Communications, LLC, No. 6:15-cv-0582 (E.D. Texas June 22, 2015)
`(asserting '012, '107, and '019 Patents); ChriMar Systems, Inc. et al. v. KeyScan, Inc.,
`No. 6:15-cv-0583 (E.D. Texas June 22, 2015) (asserting '012, '107, and '019 Patents).
`14 6:15-cv-00614
`
`15 6:15-cv-00615
`
`16 6:15-cv-00616
`
`20
`
`HPE 1014-0021
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 22 of 130 Pg ID 925
`
`
`
`TRENDNet, Inc.,17 Advantech Corporation,18 Allworx Corp.,19 Alpha Networks,
`
`Inc.,20 Black Box Corporation,21 ASUSTek Computer International, Inc.,22 ASUS
`
`Computer International, Inc.,23 Buffalo Americas, Inc.,24 Costar Technologies,
`
`Inc.,25 Eagle Eye Networks, Inc.,26 Comtrend & Edimax,27 EnGenius Technologies,
`
`Inc.,28 Juniper Networks, Inc.,29 Korenix USA,30 Leviton Manufacturing Co., Inc.,31
`
`Moxa Americas Inc.,32 Netgear, Inc.,33 NetMedia Inc.,34 Phihong USA
`
`
`17 6:15-cv-00617
`
`18 6:15-cv-00618
`
`19 6:15-cv-00620
`
`20 6:15-cv-00621
`
`21 6:15-cv-00622
`
`22 6:15-cv-00623
`
`23 6:15-cv-00624
`
`24 6:15-cv-00625
`
`25 6:15-cv-00626
`
`26 6:15-cv-00627
`
`27 6:15-cv-00628
`
`28 6:15-cv-00629 and 640
`
`29 6:15-cv-00630
`
`30 6:15-cv-00631
`
`31 6:15-cv-00632
`
`32 6:15-cv-00633
`
`33 6:15-cv-00634
`
`34 6:15-cv-00635
`
`21
`
`HPE 1014-0022
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 23 of 130 Pg ID 926
`
`
`
`Corporation,35 Rockwell Automation, Inc.,36 Ruckus Wireless,37 AeroHive
`
`Networks Incorporated & Dell Inc.,38 TP-Link USA Corporation,39 Transition
`
`Networks,40 Huawei,41 TRENDnet,42 StarTech.com USA LLP,43 Tycon Systems,
`
`Inc.,44 VP Networks,45 WatchGuard Technologies, Inc.,46 Belden Inc., GarretCom,
`
`Inc., and Hirschmann Automation and Control, Inc.,47 Belkin International, Inc.,48
`
`Fortinet, Inc.,49 Allied Telesis, Inc.,50 and D-Link Systems, Inc.51
`
`
`35 6:15-cv-00636
`
`36 6:15-cv-00637
`
`37 6:15-cv-00638
`
`38 6:15-cv-00639, which resulted in a jury verdict of non-infringement for
`each of the ‘012, ‘760, ‘107, and ‘838 patents
`
`39 6:15-cv-00641
`
`40 6:15-cv-00642
`
`41 6:15-cv-00643
`
`42 6:15-cv-00644
`
`43 6:15-cv-00645
`
`44 6:15-cv-00646
`
`45 6:15-cv-00647
`
`46 6:15-cv-00648
`
`47 6:15-cv-00649
`
`48 6:15-cv-00650
`
`49 6:15-cv-00651
`
`50 6:15-cv-00652
`
`51 6:15-cv-00653
`
`22
`
`HPE 1014-0023
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 24 of 130 Pg ID 927
`
`
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`43. Recently, ChriMar sued Panasonic on November 9, 2017 in the Eastern
`
`District of Texas52, alleging infringement of the ‘107, ‘760, ‘838, and ‘825 patents.
`
`See Exhibit G. ChriMar’s complaint states the “Patents-in-Suit generally cover plug
`
`and play automation and/or asset control capabilities employed by certain BaseT
`
`Ethernet equipment including PDs and PSE that comply with or are compatible with
`
`certain portions of the IEEE Standards commonly referred to as PoE Standards (e.g.,
`
`the IEEE 802.3af or IEEE 802.3at standards).” Exhibit G at 6.
`
`ANSWER:
`
`Chrimar admits that it has licensed and also brought lawsuits
`
`against infringers of its patent, but denies all remaining allegations.
`
`
`
`44. ChriMar’s complaint specifically alleges that Panasonic infringes these
`
`patents because “Defendant make, use, offer to sell, sell, and/or import Power over
`
`Ethernet powered devices and/or power sourcing equipment”. With respect to the
`
`’107 Patent, the complaint specifically accuses Panasonic of infringing at least
`
`“claim 103 across claims 5, 6, 16, 56, and 71, and claim 125 across claims 113 and
`
`
`52 ChriMar Systems, Inc. d/b/a CMS Technologies and ChriMar Holding
`Company, LLC, v. Panasonic Corporation and Panasonic Corporation of North
`America, No. 6:17-cv-00637 (E.D. Tex.)
`
`23
`
`HPE 1014-0024
`
`

`

`2:17-cv-13770-AC-RSW Doc # 22 Filed 03/16/18 Pg 25 of 130 Pg ID 928
`
`
`
`122” by “making using, offering for sale, selling, and/or importing the Accused PD
`
`Products in the United States.” Exhibit G at 10. With respect to the ’760 Patent, the
`
`complaint specifically accuses Panasonic of infringing at least “claims 166, 177, and
`
`claim 219 across claims 158, 179, and 182 by “making using, offering for sale,
`
`selling, and/or importing the Accused Products in the United States.” Exhibit G at
`
`35. With respect to the ’838 Patent, the complaint specifically accuses Panasonic of
`
`infringing at least claims 6 and 76 by “making using, offering for sale, selling, and/or
`
`importing the Accused PSE Products in the United States.” Exhibit G at 35. With
`
`respect to the ‘825 patent, the complaint specifically accuses Panasonic of infringing
`
`at least claims 5, 13, 15, 16, and 17 by “making using

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket