United States Patent and Trademark Office
`
`________________________________________________
`
`Before the Patent Trial and Appeal Board
`________________________________________________
`
`
`
`Dell Inc.,
`Petitioner
`
`v.
`
`Chrimar Systems, Inc.
`Patent Owner
`
`
`
`________________________________________________
`
`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
`________________________________________________
`
`
`Patent Owner’s Preliminary Response
`Under 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`

`
`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
`
`
`Table of Contents
`
`
`
`Table of Authorities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . iv 
`Patent Owner’s Exhibit List . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . vi 
`Introduction and Summary of Arguments . . . . . . . . . . . . . . . . . . . . . . . . 1 
`Background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 
`A.  Status of Related Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 
`B.  Chrimar . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 
`C.  The ’838 Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 
`D. Person of Ordinary Skill . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 
`Arguments and Authorities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 
`A.  Legal Standard . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 
`B.  Ground 1: Petitioner has not made a prima facie
`case that the ’838 Patent’s claims are obvious in
`view of the De Nicolo references. . . . . . . . . . . . . . . . . . . . . . . . . 11 
`1.  Obviousness Standard . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 
`2.  The De Nicolo References . . . . . . . . . . . . . . . . . . . . . . . . . . 16 
`a.  The ’666 Patent discloses a method and
`apparatus for allocating power among
`processor cards in a closed, modular system. . . . . . . . . . . . . . 16 
`b.  The ’468 Patent discloses a system for
`powering Ethernet-based telephones. . . . . . . . . . . . . . . . . . 19 
`3.  Petitioner does not assert that a person of
`ordinary skill in the art would have been
`motivated to combine the De Nicolo references
`to achieve the apparatus claimed by the ’838
`Patent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23 
`4.  Petitioner offers only a conclusory statement
`that a person of ordinary skill would have
`known how to combine the De Nicolo
`references. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27 
`
`– ii –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`
`5.  Petitioner does not contend that a person of
`ordinary skill in the art would have had a
`reasonable expectation of success . . . . . . . . . . . . . . . . . . . . . . 32 
`C.  Ground 2: Petitioner has not made a prima facie
`case that the ’838 Patent’s claims are obvious in
`view of the autonegotiation references. . . . . . . . . . . . . . . . . . . . . 33 
`1.  Autonegotiation Operation . . . . . . . . . . . . . . . . . . . . . . . . . 33 
`2.  Petitioner has not shown, because it cannot,
`that the autonegotiation references disclose
`every element of the claims. . . . . . . . . . . . . . . . . . . . . . . . . . 37 
`Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41 
`Certificate of Compliance with Word Count . . . . . . . . . . . . . . . . . . . . . 42 
`Certificate of Service . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43 
`
`
`
`– iii –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
`
`
` Table of Authorities
`
`Federal Cases 
`
`Dome Patent L.P. v. Lee,
`799 F.3d 1372 (Fed. Cir. 2015) ............................................................................15
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F. 3d 1375 (Fed. Cir. 2015) ........................................................................... 11
`In re Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ............................................................................15
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ........................................................................... 37
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................ 13, 14, 15, 27
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`— F.3d —, 2016 WL 2620512 (Fed. Cir. May 9, 2016) ................................ 16, 32
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................... 14
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 14
`Princeton Biochems., Inc. v. Beckman Coulter, Inc.,
`411 F.3d 1332 (Fed. Cir. 2005) ........................................................................... 26
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`IPR2015-00155, Paper No. 30 (Apr. 7, 2016) ..................................................... 14
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ............................................................................13
`Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) .............................................................................13
`Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., IPR2014-01248, Paper No. 39
`(2016) .................................................................................................................. 11
`Wowza Media Systems, LLC v. Adobe Systems Inc.,
`IPR2013-00054, Paper No. 12 (Apr. 8, 2013) ................................................ 15, 27
`
`
`
`
`
`
`– iv –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`
`State Cases 
`
`35 U.S.C. § 103(a) ...................................................................................................13
`35 U.S.C. § 313 ......................................................................................................... 3
`35 U.S.C. § 314(a) ............................................................................................... 1, 10
`37 C.F.R. § 42.107 .................................................................................................... 3
`Federal Statutes 
`
`37 C.F.R. 42.8 ........................................................................................................ 11
`37 C.F.R. § 42.108(c) .......................................................................................... 1, 11
`37 C.F.R. § 42.22 .................................................................................................... 11
`37 C.F.R. § 42.22(a)(2) ........................................................................................... 11
`37 C.F.R. § 42.23 .................................................................................................... 11
`37 C.F.R. § 42.6 ...................................................................................................... 11
`37 C.F.R. § 42.65(a) ............................................................................................... 32
`37 C.F.R. §42.104 ................................................................................................... 11
`
`
`
`– v –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
`
`
` Patent Owner’s Exhibit List
`
`Chrimar
`System, Inc.
`Exhibit No.
`
`Exhibit Description
`
`Date Filed
`
`2015
`
`2016
`
`2024
`
`Declaration of Dr. Vijay K. Madisetti
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`Rich Seifert, Gigabit Ethernet (1998) (selected
`portions)
`
`Sept. 9, 2016
`
`Sept. 9, 2016
`
`Sept. 9, 2016
`
`
`
`– vi –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`
`
`
`Introduction and Summary of Arguments
`
`Petitioner wrongly contends that certain claims of U.S. Patent No. 9,019,838
`
`(Ex. 1001; the “’838 Patent”) are rendered obvious in view of two sets of
`
`references: (1) the De Nicolo references— U.S. Patent Nos. 6,115,468 (Ex. 1019,
`
`the “’468 Patent”) and 6,134,666 (Ex. 1020, the “’666 Patent”) and the
`
`autonegotiation references— the Am79C971 Datasheet (Ex. 1019); IEEE Standard
`
`802.3u-1995 (Ex. 1009); and IEEE Standard 802.3-1993 (Ex. 1008).1
`
`The Board should dismiss the Petition and decline to institute a trial in this
`
`case. Petitioner has not met its burden to show a reasonable likelihood that one or
`
`more challenged claims of the ’838 Patent will be found unpatentable, as required
`
`by 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(c).
`
`With respect to Ground 1, the De Nicolo references, Petitioner points to no
`
`evidence that a person of ordinary skill in the art, facing the problems discussed in
`
`the ’838 Patent, would have been motivated to combine them to achieve the
`
`inventions claimed by the ’838 Patent. Further, Petitioner offers only conclusory
`
`argument, unsupported by fact, that a person of ordinary skill would have
`
`
`1 In each case, the claims at issue are independent claim 1 and its dependent
`
`claims 2, 7, 26, 29, 38, 40, 47, 55, 69.
`
`– 1 –
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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`understood how to combine the references. Further still, Petitioner fails to argue,
`
`much less point to evidence, that a person of ordinary skill would have had a
`
`reasonable expectation that combining the references would have resulted in the
`
`inventions claimed by the patent. Accordingly, Petitioner has not made a prima
`
`facie case that any claim of the ’838 Patent is obvious in light of the De Nicolo
`
`references. The Board should reject Ground 1 of the Petition.2
`
`With respect to Ground 2, the autonegotiation references, Petitioner has not
`
`shown that combining the references meets every limitation of the claims.
`
`Petitioner ignores the language of the claims, statements by its own expert, and
`
`provisions in the references that contradict its arguments. As a result, Petitioner
`
`has not made a prima facie case that any claim of the ’838 Patent is obvious in light
`
`of the autonegotiation references. The Board should reject Ground 2 of the
`
`
`2 The Board has considered Petitions regarding the de Nicolo references with
`
`respect to two related patents and instituted review in each. See Case Nos.
`
`IPR2016-00569, Paper No. 19; and IPR2016-00574, Paper No. 24.
`
`– 2 –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
`
`Petition.3
`
`This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is being
`
`filed within three months of the Notice dated June 9, 2016, granting the Petition a
`
`filing date of June 3, 2016. While Patent Owner here addresses some limited
`
`aspects of the Petition, if instituted, Patent Owner expects to address these and
`
`other aspects of the petition in greater detail.
`
` Background
`A. Status of Related Litigation
`
`The ’838 Patent is currently one of four related patents asserted in litigation
`
`pending in the Eastern District of Texas against Petitioner: Chrimar Systems, Inc., et
`
`al. v. ADTRAN, Inc., et al., Case No. 6:15-cv-618.4 The court in that case
`
`construed certain terms of the ’838 Patent.5 Trial is scheduled for January of 2016
`
`3 The Board has considered Petitions regarding similar autonegotiation
`
`references and two related patents and it did not institute review in either case. See
`
`Case Nos. IPR2016-00569, Paper No. 19; and IPR2016-00574, Paper No. 24.
`
`4 The four related patents are U.S. Patent Nos. 9,019,838 (Ex. 1001);
`
`8,942,107 (Ex. 1023); 8,155,012; and 9,049,019.
`
`5 Mem. Op. & Order, Chrimar Systems, Inc., et al. v. ADTRAN, Inc., et al., No.
`
`6:15-cv-618-JRG-JDL (E.D. Tex., June 20, 2016 (ECF No. 454)). In another case
`
`– 3 –
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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`against Dell.
`
`B. Chrimar
`
`Chrimar was founded in 1993 by Chris Young and Marshall Cummings.6 After
`
`learning about a number of thefts of networked equipment at the University of
`
`Michigan, where Mr. Cummings worked, the two began developing security
`
`solutions for networked equipment. While many in the industry focused on locking
`
`computers to desks and installing video surveillance systems, Messrs. Cummings
`
`and Young began focusing on an easily overlooked fact—these devices were already
`
`individually wired to the network by their own network cabling.
`
`In 1992, Messrs. Cummings and Young filed a patent application, which
`
`issued in 1995 as U.S. Patent No. 5,406,260 entitled “Network Security System for
`
`
`involving the ’838 Patent, the Court also construed certain terms of the ’838
`
`Patent and denied Defendants’ motion of summary judgment of invalidity. See
`
`Mem. Op. & Order, Chrimar Systems, Inc., et al. v. Alcatel-Lucent, et al., No. 6:15-
`
`cv-163-JDL (E.D. Tex. Mar. 28, 2016 (ECF No. 123)); Mem. Op. & Order,
`
`Chrimar Systems, Inc., et al. v. Alcatel-Lucent, et al., No. 6:15-cv-163-JDL (E.D. Tex.
`
`July 29, 2016 (ECF No. 223)).
`
`6 Chrimar is a combination of “Chri” from Chris and “Mar” from Marshall.
`
`– 4 –
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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`Detecting Removal of Electronic Equipment.”7 The ’260 Patent claimed
`
`inventions related to monitoring the physical connection of a piece of equipment
`
`(e.g., a computer) to a network using existing network wiring—even when the
`
`piece of equipment was powered off. Realizing the uniqueness and potentially
`
`broad appeal of this idea, Messrs. Cummings and Young founded Chrimar in 1993
`
`and began working on a commercial product they called EtherLock.
`
`In response to customer demand, Chrimar expanded and John Austermann
`
`joined the company in 1997 to oversee its general management and direct its sales
`
`and marketing efforts. He and Mr. Cummings began contemplating ideas to expand
`
`the company’s product offerings. They soon conceived of inventions related to
`
`managing, tracking, and controlling assets that physically connect to a network,
`
`which led to the ’838 Patent and six other granted patents—all of which claim
`
`priority to Chrimar’s provisional patent application dated April 10, 1998.8
`
`
`7 Ex. 1004, the “’260 Patent.”
`
`8 Those patents are U.S. Pat. Nos. 6,650,622; 7,457,250; 9,049,019;
`
`8,155,012; 8,902,760; and 8,942,107; each of which claims priority to provisional
`
`application no. 60/081,279 (Ex. 1001). U.S. Pat. No. 7,457,250 was subjected to a
`
`reexam, and all reexamined claims were confirmed as patentable.
`
`– 5 –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`
`In early 1998, Chrimar began developing a new generation of products based
`
`on the inventions disclosed and claimed in those patents. And in the fall of 1998,
`
`Chrimar began selling new products that enabled physical control, tracking,
`
`management, and security of computer assets and network ports.
`
`C. The ’838 Patent
`
`The ’838 Patent is directed to methods and systems for managing devices
`
`connected in a wired network. The claims “relate[] 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.”9 The “invention is particularly adapted to be used with an existing
`
`Ethernet communications link or equivalents thereof.”10
`
`More specifically, the patent discloses identifying an “asset,” such as a
`
`computer, “by attaching an external or internal device to the asset and
`
`
`9 ’838 Patent at 1:227–30 (Ex. 1001); see also Declaration of Dr. Vijay K.
`
`Madisetti (“Madisetti Dec.”) ¶ 17 (Ex. 2015 (originally filed in Case No. IPR2016-
`
`00983)).
`
`10 ’838 Patent at 3:41–43 (Ex. 1001).
`
`– 6 –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`communicating with that device using existing network wiring or cabling.”11 An
`
`asset can be managed, tracked, or identified by using a “remote module” to
`
`communicate information about the asset to a “central module.”12
`
`The basic configuration of an embodiment of the system claimed by the patent
`
`is illustrated in Figure 4, reproduced below with highlights and annotations.
`
`
`
`
`High-frequency data in an Ethernet network propagates between a hub (1) and
`
`a PC (3a) over two pairs of conductive cable lines—a pair of transmit cable lines,
`
`highlighted in green (conductors 1 & 2), and a pair of receive cable lines,
`
`highlighted in red (conductors 3 and 6). A central module (15a) and a remote
`
`module (16a) are placed between the hub and the PC, with the high-frequency data
`
`
`11 ’838 Patent at 2:4–6 (emphasis added) (Ex. 1001).
`
`12 ’838 Patent at 3:27–32; 6:7–12; 8:64–9:5 (Ex. 1001); see also Madisetti Dec.
`
`¶ 18 (Ex. 2015).
`
`– 7 –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`propagating through them. One novel aspect of the system is that the remote
`
`module can convey information about the PC to the central module wherein the
`
`information is carried by different magnitudes of DC current flowing through the
`
`same conductive cable lines as the high-frequency data without adversely affecting
`
`the high-frequency data and/or the use of those cable lines for carrying high-
`
`frequency data. This is generally represented in the figure above by the black
`
`arrows between the central and remote modules.
`
` The central module has a direct connection to the remote module via a
`
`conventional Ethernet cable. More importantly, the central module can be
`
`connected to multiple remote modules. The diagram below shows an exemplary
`
`configuration consisting of a central module connected to four remote modules.
`
`
`This arrangement is commonly referred to as being part of a “star” or “hub
`
`and spoke” configuration, in which the central module has a direct electrical
`
`connection to the remote modules, allowing it to identify, communicate with, and
`
`manage each of the assets—as opposed to a “bus” configuration where
`
`– 8 –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`communication cable lines (and thus the electrical connection) are shared among
`
`several devices.
`
`This system allowed the patentees to solve a number of problems associated
`
`with prior-art asset-management systems. As the patent explains:
`
`[The prior art was] generally incapable of detecting the electrical
`
`connection status of equipment[;] it cannot detect the physical
`
`location of equipment, the identifying name of equipment is not
`
`permanent, and the monitored assets must be powered-up.
`
`Therefore, a method for permanently identifying an asset by
`attaching an external or internal device to the asset and
`communicating with that device using existing network
`wiring or cabling is desirable. . . . Such a device would allow a
`
`company to track its assets, locate any given asset, and count the
`
`total number of identified assets at any given time, thus
`
`significantly reducing its [total cost of ownership] of identified
`assets.13
`
`In short, the patentees were looking for a way to identify, communicate with,
`
`and manage distributed assets in a network. The innovative devices, methods, and
`
`systems described and claimed by the ’838 Patent achieve this goal. Specifically,
`
`they are able to convey information about assets—e.g., a company’s computers—
`
`
`13 ’838 Patent at 1:65–2:15 (Ex. 1001); see also Madisetti Dec. ¶ 32 (Ex. 2015).
`
`– 9 –
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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
`
`over the same lines already carrying high-frequency data communications to the
`
`assets, without substantially interfering with the high-frequency data
`
`communications.14
`
`D. Person of Ordinary Skill
`
`The Parties appear to agree that a person of ordinary skill in the art with
`
`respect to the ’838 Patent would have, at a minimum, an undergraduate degree or
`
`the equivalent in the field of electrical engineering or a related ancillary field, and
`
`one to three years of experience with data-communications networks, such as
`
`Ethernet networks. Having experience with data-communications networks, such a
`
`person would also be familiar with data-communications protocols and standards.
`
` Arguments and Authorities
`A. Legal Standard
`
`An inter partes review may be instituted only if “the information presented in
`
`the petition . . . and any response . . . shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a). The petitioner bears the burden of proof to
`
`14 See, e.g., ’838 Patent at 12:3–5 (“The system transmits a signal over pre-
`
`existing network wiring or cables without disturbing network communi-
`
`cations . . . .”) (Ex. 1001).
`
`– 10 –
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`Case No. IPR2016-01151
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`“demonstrate that there is a reasonable likelihood that at least one of the claims
`
`challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c). At all stages of
`
`the IPR, this burden of proof stays with the petitioner and never shifts to the patent
`
`owner to prove the patentability of the challenged claims. See Dynamic Drinkware,
`
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015); see also Tietex
`
`Int’l, Ltd. v. Precision Fabrics Group, Inc., IPR2014-01248, Paper No. 39 at 11
`
`(2016).
`
` When filing an IPR Petition, the petitioner must include sufficient evidence
`
`and argument to meet its burden of proof. The petition must include “[a] full
`
`statement of the reasons for the relief requested, including a detailed explanation of
`
`the significance of the evidence including material facts, the governing law, rules,
`
`and precedent.” 37 C.F.R. § 42.22(a)(2); see also 37 C.F.R. § 42.104 (requiring IPR
`
`petitions to meet the requirements of §§ 42.6, 42.8, 42.22, and 42.23).
`
`B. Ground 1: Petitioner has not made a prima facie case that the ’838 Patent’s
`claims are obvious in view of the De Nicolo references.
`
`Petitioner contends the ’838 Patent is obvious in view of the De Nicolo
`
`references—the ’468 and ’666 Patents—each of which was before the examiner
`
`– 11 –
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`

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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
`
`during prosecution of the ’838 Patent.15 Both of the De Nicolo references are
`
`directed to powering devices. Neither is directed to the subject matter disclosed in
`
`the ’838 Patent— e.g., systems and devices for managing multiple remote assets in
`
`a network—and Petitioner has not provided a basis for assuming that a person of
`
`ordinary skill would have been motivated to combine them to create such an
`
`apparatus. In fact, Petitioner fails to explain how the references could be combined
`
`to arrive at the invention, and it does not contend that a person of ordinary skill
`
`would have had a reasonable expectation that combining them would result in the
`
`invention.
`
`1. Obviousness Standard
`
`
`15 See ’838 Patent at p. 5 (Ex. 1001). The priority dates for the ’666 and ’468
`
`Patents are March 12 and 26, 1998, respectively, just a few weeks before the ’838
`
`Patent’s provisional application was filed on April 10, 1998. If the Board ultimately
`
`determines to review the ’838 Patent, the evidence will show that Messrs.
`
`Austermann and Cummings conceived the inventions claimed by the ’838 Patent
`
`before the priority date for at least one of the De Nicolo references and then
`
`worked diligently to constructively reduce them to practice by filing the provisional
`
`application on April 10, 1998.
`
`– 12 –
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`Case No. IPR2016-01151
`U.S. Patent No. 9,019,838
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`
`To establish a prima facie case of obviousness based on a combination of
`
`elements disclosed in the prior art, it is necessary to show that it would have been
`
`obvious to make the claimed invention. In re Kahn, 441 F.3d 977, 986 (Fed. Cir.
`
`2006). This requires explaining why a person of ordinary skill in the art would have
`
`been motivated to select the references and to combine them to render the claimed
`
`invention obvious. Id.16 Without such an explanation for the motivation to combine
`
`the references, the Federal Circuit infers hindsight was used to conclude the
`
`invention was obvious. Id. Indeed, “the great challenge of the obviousness
`
`judgment is proceeding without any hint of hindsight.” Star Sci., Inc. v. R.J.
`
`Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
`
`As the Board recently explained, allegations of the motivation to combine fail
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`if the analysis is not explicit:
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`The key to supporting a conclusion of unpatentability under 35
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`U.S.C. § 103(a) is the clear articulation of reasons why the
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`16 See also, e.g., Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1359 (Fed.
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`Cir. 1999) (“To establish a prima facie case of obviousness, [it is necessary to] show
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`some objective teaching in the prior art or that knowledge generally available to one
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`of ordinary skill in the art would lead that individual to combine the relevant
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`teachings of the references.”) (internal citation and quotation omitted).
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`– 13 –
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`claimed invention would have been obvious. The Supreme Court
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`has clarified the requirements that the “analysis should be made
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`explicit.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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`Although the reasoning may draw from numerous intrinsic and
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`extrinsic sources, conclusions of obviousness “cannot be
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`sustained by mere conclusory statements; instead, there must be
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`some articulated reasoning with some rational underpinning to
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`support the legal conclusion of obviousness.” Id. (quoting In re
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`Kahn, 441 F.3d at 988).
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`Securus Techs., Inc. v. Global Tel*Link Corp., IPR2015-00155, Paper No. 30 at 15
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`(Apr. 7, 2016).17
`
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`17 See also, e.g., Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330
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`(Fed. Cir. 2009) (“Although the obviousness analysis should ‘take account of the
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`inferences and creative steps that a person of ordinary skill in the art would
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`employ,’ the Supreme Court emphasized that this evidentiary flexibility does not
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`relax the requirement that, [t]o facilitate review, this analysis should be made
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`explicit.’” (quoting KSR, 550 U.S. at 418); Kahn, 441 F.3d at 988 (“[R]ejections
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`on obviousness grounds cannot be sustained by mere conclusory statements;
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`instead, there must be some articulated reasoning with some rational underpinning
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`to support the legal conclusion of obviousness.”).
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`Applying this standard, the Board denied review in Wowza Media Systems,
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`LLC v. Adobe Systems Inc., IPR2013-00054, Paper No. 12 at 14–17 (Apr. 8, 2013),
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`because the petitioner offered only a conclusory argument that a person of ordinary
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`skill would have been motivated to combine the references at issue. See also In re
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`Kahn, 441 F.3d at 988 (“[R]ejections on obviousness grounds cannot be sustained
`
`by mere conclusory statements; instead, there must be some articulated reasoning
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`with some rational underpinning to support the legal conclusion of obviousness. . . .
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`This requirement is as much rooted in the Administrative Procedures Act, which
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`ensures due process and non-arbitrary decision making, as it is in § 103.”
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`(emphasis added)).
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`Further, a party seeking to invalidate a patent as obvious must prove not only
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`that “a skilled artisan would have had reason to combine the teaching of the prior
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`art references to achieve the claimed invention,” but also “that the skilled artisan
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`would have had a reasonable expectation of success from doing so.” In re
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`Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litig., 676 F.3d 1063,
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`1069 (Fed. Cir. 2012) (internal quotations and citation omitted).18 “The reasonable
`
`
`18 See also, e.g., Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015)
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`(“If all elements of a claim are found in the prior art . . . the factfinder must further
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`– 15 –
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`expectation of success requirement refers to the likelihood of success in combining
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`references to meet the limitations of the claimed invention.” Intelligent Bio-Sys.,
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`Inc. v. Illumina Cambridge Ltd., — F.3d —, 2016 WL 2620512, at *6 (Fed. Cir. May
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`9, 2016). Put plainly, “one must have a motivation to combine accompanied by a
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`reasonable expectation of achieving what is claimed in the patent-at-issue.” Id.
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`2. The De Nicolo References
`a. The ’666 Patent discloses a method and apparatus for allocating
`power among processor cards in a closed, modular system.
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`The ’666 Patent, titled “Power Supervisor for Electronic Modular System,”
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`is directed to a method and apparatus for controlling power to processor cards, or
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`modules, in a modular electronic system.19 More specifically, the patent discloses a
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`system in which a “supervisor module” decides whether a newly inserted
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`processor card will receive operational power based on the power demands of the
`
`
`consider the factual questions of whether a person of ordinary skill in the art would
`
`be motivated to combine those references, and whether in making that
`
`combination, a person of ordinary skill would have had a reasonable expectation of
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`success.”).
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`19 ’666 Patent at 1:7–12 (Ex. 1007).
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`individual cards and the total power available to the system as a whole.20 The aim
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`was to protect modular systems from the consequences of human error when “too
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`high a power demand [was placed] upon a particular power supply configuration
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`through the addition of a particular processor card to a previously functioning
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`system.”21 As the patent explains, the consequences of such an energy overload
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`“can vary from a simple shut down or an inability to start up to equipment
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`damage.”22
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`Figure 1 of the ’666 Patent, reproduced below with annotations, illustrates
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`how the system operates.
`
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`20 ’666 Patent at 1:55–2:6 (Ex. 1007); see also Madisetti Dec. ¶ 37 (Ex. 2015).
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`21 ’666 Patent at 1:36–47 (Ex. 1007); see also Madisetti Dec. ¶ 38 (Ex. 2015).
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`22 ’666 Patent at 1:41–42 (Ex. 1007).
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`A microprocessor (24) in the power supervisor (14), at the left of the figure,
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`receives information from the power supplies (18, 20, and 22) defining available
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`power resources.23 The same microprocessor receives information along backplane
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`“query conductor 28”(highlighted in green) from the processor card (26) defining
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`the card’s maximum current or power requirements.24 Based on this information,
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`the microprocessor determines whether enough power is available to meet the
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`card’s power requirements. If so, the power supervisor transmits an “Enable”
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`signal along the query conductor (28) to a Power Circuit Soft Start device (44) in
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`23 ’666 Patent at 2:51–67 (Ex. 1007).
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`24 ’666 Patent at 3:32–44 (Ex. 1007).
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`the processor card.25 The Power Circuit Soft Start device then allows operating
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`current to flow into the card along line 46 (highlighted in yellow) after receiving an
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`Enable signal.
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`The power supervisor connects to each processor card in the system in this
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`manner, thus limiting the risk that excessive power demands will disrupt or damage
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`the system. The ’666 Patent, therefore, discloses a means for budgeting power in a
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`closed, card-based system—not a network—in which each processor card in the
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`system is separately connected to: (1) power, by a dedicated power line that never
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`transmits data; and (2) a power supervisor