UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JUNIPER NETWORKS INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION SYSTEMS, INC.,
`and NETGEAR, INC.,
`
`Petitioners,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`Patent Owner.
`
`
`
`Case IPR2016-013971
`
`U.S. Patent No. 9,019,838 B2
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONS
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.220
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc. and Netgear, Inc.
`
`(“Ruckus et al.”) filed a petition in (now terminated) IPR2017-00720, and Ruckus
`
`et al. has been joined to the instant proceeding.
`
`

`

`Case No.: IPR2016-01397
`Patent No.: 9,019,838
`
`Atty. Dkt. No.: CHRMC0111IPR1
`
`Table of Contents
`
`
`
`
`
`Table of Authorities ................................................................................................. iii
`
`List of Exhibits ......................................................................................................... iv
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Summary of Patent Owner Response .............................................................. 1
`
`III. Background ...................................................................................................... 4
`
`A.
`
`B.
`C.
`D.
`E.
`
`Background of the technology relevant to the patent ........................... 4
`1.
`Telephone technology ................................................................. 4
`2.
`Ethernet technology differs substantially from telephony .......... 6
`The invention of the ‘838 Patent claims ............................................... 8
`The challenged claims of the ‘838 Patent ............................................. 8
`Level of ordinary skill .........................................................................10
`The prior art on which Petitioners rely ...............................................10
`
`IV. Standard for Inter Partes Review ..................................................................11
`
`V.
`
`Claim Construction ........................................................................................12
`
`A.
`B.
`
`"BaseT" (Claim 1) ...............................................................................12
`“protocol” (Claim 2) ............................................................................12
`
`VI. No Reason To Combine - An Ordinary Artisan Would Not Have
`Made Petitioners’ Proposed Combinations ...................................................13
`
`A.
`
`B.
`
`For both combinations: at the time of the invention, an ordinary
`artisan would not have had a reason to apply telephone-based
`phantom operating power to Ethernet terminal equipment .................13
`1.
`Applying operating power to pre-existing Ethernet
`terminal equipment would have destroyed Bob Smith
`terminations, saturated the common mode chokes, and
`thus degraded the propagation of Ethernet data .......................13
`2. When an unused pair of contacts is available – as in
`Ethernet – an ordinary artisan would have supplied
`power over the unused pairs, not the data pairs as
`Petitioners assert .......................................................................16
`Additionally for Bloch-Huizinga-IEEE: An ordinary artisan
`would not have applied Bloch’s telephone-based phantom
`power to Ethernet terminal equipment for the additional reason
`
`i
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`Atty. Dkt. No.: CHRMC0111IPR1
`
`Case No.: IPR2016-01397
`Patent No.: 9,019,838
`
`
`
`C.
`
`that Bloch would have disrupted and degraded the Ethernet data
`signal....................................................................................................26
`Additionally for Hunter-Bulan: An ordinary artisan would not
`have replaced Hunter’s “preferable” protective device with the
`unnecessarily complicated currently limiting circuit of Bulan. ..........28
`
`VII. The Proposed Hunter-Bulan Combination Does Not Disclose the
`Limitations of the Claims ..............................................................................32
`
`A. All challenged claims: The Hunter-Bulan combination does not
`teach the claimed “Ethernet connection . . . contacts” that both
`(1) are “used to carry BaseT Ethernet communication signals,”
`and (2) via which “different magnitudes of DC current flow” ...........32
`1.
`Petitioners have failed to show that Hunter’s discussion
`of “Ethernet®” discloses the claimed “contacts used to
`carry BaseT Ethernet communication signals” .........................34
`Petitioners have not proven their assertion that Hunter
`teaches hub 170 providing phantom power to Ethernet
`terminal devices; on the contrary, Hunter’s phantom-
`power circuit connects a hub to other hubs – not to
`Ethernet terminal devices ..........................................................35
`Hunter’s specification confirms that Figure 2 does not
`apply to Ethernet communication signals .................................40
`Claim 2: The Hunter-Bulan combination does not teach a
`“detection protocol” ............................................................................43
`Claims 26 and 29: The Hunter-Bulan combination does not
`teach a central piece of Ethernet network equipment configured
`to “distinguish” one “end device”/“network object” from
`another “end device”/“network object” ..............................................44
`
`2.
`
`3.
`
`B.
`
`C.
`
`VIII. Conclusion .....................................................................................................45
`
`Certificate of Service ...............................................................................................47
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .......................................49
`
`
`
`
`
`ii
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`

`

`Case No.: IPR2016-01397
`Patent No.: 9,019,838
`
`Atty. Dkt. No.: CHRMC0111IPR1
`
`Table of Authorities
`
`Cases
`
`
`
`
`
`Endo Pharms. Inc. v. Depomed, Inc.,
`
`IPR2014-00656, Paper 66 (September 21, 2015) ................................... 26, 31
`
`Gillette Co. v. S.C. Johnson & Son, Inc.,
`
`919 F.2d 720 (Fed. Cir. 1990) .......................................................................21
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d 1342 (Fed. Cir. 2012) .....................................................................11
`
`KSR Int’l. Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007).......................................................................................11
`
`MasterImage 3D, Inc. v. RealD Inc.,
`
`IPR2015-00877, Paper 8 (September 9, 2015) ....................................... 25, 31
`
`Monarch Knitting Mach. v. Sulzer Morat GmbH,
`
`139 F.3d 877 (Fed. Cir. 1998) .......................................................................21
`
`Stryker Corp. v. Karl Storz Endoscopy Am., Inc.,
`
`IPR2015-00764, Paper 13 (September 2, 2015) ............................................29
`
`WBIP, LLC v. Kohler Co.,
`
`829 F.3d 1317 (Fed. Cir. 2016) .....................................................................21
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................11
`35 U.S.C. § 316(e) ...................................................................................................11
`37 C.F.R. § 42.220 ..................................................................................................... 1
`
`
`
`
`
`iii
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`

`

`Case No.: IPR2016-01397
`Patent No.: 9,019,838
`
`Atty. Dkt. No.: CHRMC0111IPR1
`
`Identifier
`
`List of Exhibits
`
`
`
`
`
`Exhibit
`Description
`No.
`2017 Memorandum Opinion and Order,
`Dkt. No. 96, filed in Chrimar Systems,
`Inc., et al. v. AMX, LLC, Civil Action
`No. 6:13-cv-881-JDL, Eastern District
`of Texas
`2018 Memorandum Opinion and Order,
`Dkt. No. 105, filed in Chrimar
`Systems, Inc., et al. v. AMX, LLC,
`Civil Action No. 6:13-cv-881-JDL,
`Eastern District of Texas
`2019 Memorandum Opinion and Order,
`Dkt. No. 108, filed in Chrimar
`Systems, Inc., et al. v. AMX, LLC,
`Civil Action No. 6:13-cv-881-JDL,
`Eastern District of Texas
`2020 Memorandum Opinion and Order,
`Dkt. No. 122, filed in Chrimar
`Systems, Inc., et al. v. Alcatel-Lucent,
`et al., Civil Action No. 6:15-cv-163-
`JDL, Eastern District of Texas
`2021 Memorandum Opinion and Order,
`Dkt. No. 123, filed in Chrimar
`Systems, Inc., et al. v. Alcatel-Lucent,
`et al., Civil Action No. 6:15-cv-163-
`JDL, Eastern District of Texas
`2035 Memorandum Opinion and Order,
`Dkt. No. 318, filed in Chrimar
`Systems, Inc., et al. v. AMX, LLC,
`Civil Action No. 6:13-cv-881-JDL,
`Eastern District of Texas
`2036 Response to Office Action (Reexam
`Control No. 90/009,513) (June 15,
`2010)
`
`Date
`10/22/2014
`
`1/8/2015
`
`1/16/2015
`
`3/28/2016
`
`3/28/2016
`
`9/27/2016
`
`6/15/2010
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`Atty. Dkt. No.: CHRMC0111IPR1
`
`Date
`11/22/2010
`
`
`
`Identifier
`
`
`
`11/5/1999
`
`Madisetti Decl.
`Crayford Dep.
`Anderson 1999
`slides
`
`3/7-8/2000
`
`5/24-25/2000
`
`
`
`
`
`5/24/2000
`
`Dove slides
`
`5/24/2000
`
`Anderson 2000
`slides
`
`7/11-12/2000
`
`
`
`
`
`Karam slides
`
`Case No.: IPR2016-01397
`Patent No.: 9,019,838
`
`
`
`2041
`
`2042
`
`2043
`
`Exhibit
`Description
`No.
`2037 Notice of Intent to Issue Ex Parte
`Reexamination Certificate (Reexam
`Control No. 90/009,513) (Nov. 22,
`2010)
`2038 Declaration of Dr. Vijay Madisetti
`2039 Deposition transcript of Ian Crayford
`2040
`Slides titled “DTE Power via MDI:
`System Requirements,” presented on
`November 5, 1999 by Arlan Anderson
`of Nortel Networks
`IEEE Power via MDI Task Force
`Meeting Minutes from March 7-8,
`2000
`IEEE Power via MDI Task Force
`Meeting Minutes from May 24-25,
`2000
`Slides titled “DTE Power over MDI:
`Building Consensus,” presented on
`May 24, 2000 by Ralph Andersson of
`TDK Semiconductor, Daniel Dove of
`Hewlett Packard, and Robert Muir of
`Level One Communications
`Slides titled “Powering and Discovery
`Alternatives,” presented on May 24,
`2000 by Arlan Anderson of Nortel
`Networks
`IEEE Power via MDI Task Force
`Meeting Minutes from July 11-12,
`2000
`Slides titled “Technical Feasibility of
`Sending Common Mode Power on the
`Signal Pairs,” presented on May 24,
`2000 by Roger Karam and Karl
`Nakamura of Cisco Systems
`
`2044
`
`2045
`
`2046
`
`v
`
`

`

`Atty. Dkt. No.: CHRMC0111IPR1
`
`Date
`May 1993
`
`Identifier
`Krol RFC
`
`
`
`
`
`Camp Decl.
`
`
`
`Case No.: IPR2016-01397
`Patent No.: 9,019,838
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`
`
`Exhibit
`No.
`2047
`
`Description
`E. Krol & E. Hoffman, Internet
`Engineering Task Force Network
`Working Group, Request for
`Comments: 1462, “FYI on “What is
`the Internet?’”
`2048 Declaration of Clyde Camp
`2049 U.S. Patent No. 5,995,392
`2050 Madisetti Curriculum Vitae
`
`
`
`vi
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`

`

`Atty. Dkt. No.: CHRMC0111IPR1
`
`Case No.: IPR2016-01397
`Patent No.: 9,019,838
`
`
`
`Pursuant to 37 C.F.R. § 42.220, Patent Owner, Chrimar Systems, Inc.
`
`(“Chrimar”), submits the following Response to the consolidated Petitions.
`
`I.
`
`Introduction
`
`On January 4, 2017, the Board instituted IPR2016-01397, filed by Juniper
`
`Networks, Inc. (“Juniper”), concerning claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55, 69
`
`of U.S. Patent No. 9,019,838 (“the ‘838 Patent”). (Paper 8 at 17.) That IPR is
`
`referred to as the “Juniper IPR.” Unless otherwise stated, all references to Paper
`
`numbers, Petition page numbers, and Exhibit page and paragraph numbers are
`
`references to the Juniper IPR.
`
`On March 16, 2017, the Board instituted IPR2017-00720 and joined it with
`
`the Juniper IPR. (Paper 24.) Except for insubstantial differences, the arguments
`
`made in IPR2017-00720 are identical to those made in the Juniper IPR, and this
`
`Response applies equally to the arguments in both IPRs.
`
`The various Petitioners are referenced collectively as “Petitioners.”
`
`II.
`
`Summary of Patent Owner Response
`
`The ‘838 Patent describes and claims an improved central piece of network
`
`equipment that includes among other things an Ethernet connector having both
`
`Ethernet data and DC current features. Specifically, the novel central piece of
`
`network equipment includes “at least one Ethernet connector” both (1) comprising
`
`first and second pairs of contacts used to carry BaseT Ethernet communication
`
`1
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`

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`Atty. Dkt. No.: CHRMC0111IPR1
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`Case No.: IPR2016-01397
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`signals,” (Ethernet data) and (2) configured “to detect different magnitudes of DC
`
`current flow via at least one of the contacts of the first and second pairs of contacts”
`
`(DC current). (Ex.1001.)
`
`Petitioners argue that the ‘838 Patent claims would have been obvious in view
`
`of two combinations of references: (1) WO 96/23377 (“Hunter”) (Ex.1003) in view
`
`of U.S. Patent No. 5,089,927 (“Bulan”) (Ex.1004); and (2) U.S. Patent No.
`
`4,173,714 (“Bloch”) (Ex.1005) in view of U.S. Patent 4,046,972 (“Huizinga”)2
`
`(Ex.1009) and IEEE 802.3 (1993 and 1995) 10Base-T and 100Base-T Ethernet
`
`specifications (Exs.1006-1008).
`
`Petitioners argue that these references teach providing operating DC current
`
`over data lines (“phantom powering”), that such “phantom powering” would have
`
`been used to power Ethernet terminal equipment in an Ethernet network, and that
`
`their proposed combinations meet all of the claim limitations. Petitioners fail for
`
`several reasons.
`
`
`2 Petitioners’ expert stated emphatically at his deposition that Petitioners have
`
`dropped their reliance on Huizinga (“literally Huizinga, there's no part of his circuit
`
`that’s used in the combination”), leaving just the Bloch-IEEE 802.3 combination.
`
`(Ex.2039 at 173:24-175:20; 179:4-8.)
`
`2
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`Atty. Dkt. No.: CHRMC0111IPR1
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`Case No.: IPR2016-01397
`Patent No.: 9,019,838
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`
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`First, as explained in Section VI., objective, historical evidence shows that an
`
`ordinary artisan would not have combined these references, and applied phantom
`
`operating power, as Petitioners propose. Among other things, applying phantom
`
`power as taught by Petitioners’ references, in an Ethernet network at the time of
`
`Chrimar’s invention, would have destroyed a critical circuit – known by its
`
`inventor’s name as the “Bob Smith” termination – on the millions of installed
`
`Ethernet terminal devices. Petitioners’ expert could not articulate how this problem
`
`could have been solved at the time of the Chrimar invention. These objective facts
`
`apply to both combinations, and there are additional reasons not to combine specific
`
`to each of the combinations (see Sections VI. B.-C.).
`
`Second, Petitioners’ Hunter-Bulan combination fails to meet several claim
`
`limitations, e.g.:
`
`(1) Hunter-Bulan combination does not teach “Ethernet connector . . .
`
`contacts” that meet both the Ethernet data (“used to carry BaseT Ethernet
`
`communication signals”) and DC current (“different magnitudes of DC current
`
`flow”) limitations of claim 1 (and hence all challenged claims);
`
`(2) the Hunter-Bulan combination does not teach the “protocol” limitation of
`
`claim 2, nor the “distinguish” limitations of claims 26 and 29.
`
`3
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`

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`Atty. Dkt. No.: CHRMC0111IPR1
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`Case No.: IPR2016-01397
`Patent No.: 9,019,838
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`
`
`III. Background
`
`A. Background of the technology relevant to the patent
`
`1.
`
`Telephone technology
`
`Petitioners’ prior art references are primarily telephone-based technologies
`
`that Petitioners assert relate to Chrimar’s Ethernet-focused patents. But telephone
`
`technology is not so easily applied to Ethernet technology because the
`
`communications channels for phone systems carry different information (voice) at
`
`lower frequencies, which are not as susceptible to noise and degradation as Ethernet
`
`communications. (Ex.2038, Dr. Madisetti Decl., ¶27.) As Petitioners explain: “At
`
`the time of the invention, conserving [Ethernet] bandwidth was a known
`
`consideration and design motivation in the prior art.” (Pet. at 53.) That issue did
`
`not exist for voice communications. (Ex.2038, ¶27.) Petitioners have failed to
`
`address this issue in their Petitions.
`
`A standard cable “in the telco industry” was a “25-pair cable.” (Ex.2039 at
`
`146:23-24.) A telephone installation needed only two wires – a single pair – to carry
`
`voice and power a phone. (Ex.2038, ¶28.) Anyone who has installed their own
`
`home phone wiring knows that telephone wires can be split and spliced to couple
`
`multiple phones to a single pair of wires that ultimately connect to the phone
`
`company’s central office. (Id.) This works because voice communications are bi-
`
`4
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`directional on the single wire pair; no special terminations are needed at each splice.
`
`(Id.)
`
`Voice communication over phone lines historically had a limited frequency
`
`range of about 400 to 3,400 Hz. (Ex.2038, ¶29; see also Ex.2039 at 140:25-141:7.)
`
`High frequency noise or other high frequency interference, especially if in a range
`
`above normal human hearing (about 20,000 Hz), would not affect voice
`
`communications on a telephone line. (Ex.2038, ¶29.) Thus, when dealing with
`
`phone technology, it was relatively simple to send power (and data) over the same
`
`wires that carried the voice channel without affecting the voice communications.
`
`(Id.)
`
`A good example of this is Petitioners’ Bloch reference. Bloch describes a
`
`telephone system that transmits digital data from a control unit to a terminal using
`
`the same wires used for voice communications. (Ex.1005 at 2:39-45.) The terminal
`
`transmits data back to the control unit by switching a resistor into and out of the
`
`phantom power circuit. (Ex.2039 at 172:2-19.) Because the switch is sending data
`
`(1’s and 0’s) at a high rate, the noise it creates would be inaudible to people talking
`
`on the phone lines. (Ex.2038, ¶30.) But Bloch does not contemplate use of his
`
`circuitry in Ethernet systems (Ex.2039 at 166:22-24), and for good reason – the same
`
`noise would interfere with the Ethernet data communications. (Ex.2038, ¶30.)
`
`5
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`Atty. Dkt. No.: CHRMC0111IPR1
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`Case No.: IPR2016-01397
`Patent No.: 9,019,838
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`
`2.
`
`Ethernet technology differs substantially from
`telephony
`
`Unlike telephony, Ethernet systems are designed for high-speed, high
`
`frequency communication of digital data. Ethernet data is transmitted at frequencies
`
`in the tens of megahertz, thousands of times greater than the frequencies used in
`
`telephony (400 to 3,400 Hz). (Ex.2039 at 141:9-14, 140:25-141:7; Ex.2038, ¶31.)
`
`Ethernet communications are much more susceptible to noise and degradation than
`
`voice communications. (Ex.2038, ¶31; Ex.2039 at 143:5-11.)
`
` The IEEE published an Ethernet standard, which covered “10Base-T,” in
`
`1993. (Ex.1006.) The IEEE published another standard covering “100Base-T”
`
`Ethernet in 1995. (Ex.1007; Ex.2038, ¶32.)
`
`By 1995, phantom powering for voice communications was well-
`
`known. Nevertheless, 10Base-T (1993) and 100Base-T (1995) did not employ
`
`phantom powering for Ethernet communications. (Ex.2038, ¶33.) Unlike
`
`telephony, in which a single wire-pair can communicate bi-directionally, Ethernet
`
`data can only travel one direction on a wire-pair. (Id.) To send data back, a second
`
`wire-pair is needed. (Id.)
`
`By 1995, “Bob Smith” terminations – so called because they were invented
`
`by Bob Smith – and “common mode chokes” were prevalent in installed Ethernet
`
`networking equipment. (Ex.2039 at 43:20-44:2, 45:6-8, 195:3-15.) These special
`
`6
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`terminations were necessary for “Base-T” Ethernet “to clean up [the] signal and
`
`minimize emissions.” (Id. at 43:11-18; Ex.2038, ¶34.)
`
`If the Bob Smith terminations were damaged, for example by adding power
`
`to the data lines, it would impair the signal integrity and degrade the propagation of
`
`Ethernet data. (Ex.2039 at 45:10-21; Ex.2038, ¶35.) Similarly, adding power to an
`
`Ethernet cable could saturate the common mode chokes, interfering with the
`
`Ethernet transmission. (Ex.2038, ¶35.) As late as 1999-2000, the IEEE experts were
`
`skeptical that the same wires used for Ethernet could be used to deliver operating
`
`power to Ethernet terminal equipment without damaging the equipment or degrading
`
`the Ethernet data signal. (Ex.2038, ¶36.)
`
`At the time of Chrimar’s invention (1997), “Standard 10Base-T Ethernet
`
`[was] still the most common type of network architecture in use.” (Ex.1010 at 99;
`
`see also id. at 157; Ex.2039 at 24:18-25:15.3) IEEE 802.3 – the “[s]tandard [for]
`
`10Base-T Ethernet” – required an RJ-45 “MDI connector” having eight contacts.
`
`(Ex.2039 at 77:21-78:8.) Four of those contacts (contacts 1, 2, 3, and 6) were used
`
`to carry data; the other four contacts (contacts 4, 5, 7, and 8) were “Not used.”
`
`(Ex.1006 at 266-267, Fig. 14-22; Ex.1007 at 147, Figure 23-26 and Figure 23- 27;
`
`Ex.2038, ¶37.)
`
`
`3 Throughout this document, all emphasis is added unless otherwise noted.
`
`7
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`Atty. Dkt. No.: CHRMC0111IPR1
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`Case No.: IPR2016-01397
`Patent No.: 9,019,838
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`
`B.
`
`The invention of the ‘838 Patent claims
`
`The Chrimar patent “provides examples of networked equipment” that “would
`
`be connected over ‘conventional multi-wire cables that include a plurality of
`
`transmit and receive data communication links.’” (Ex.1002, ¶45, emphasis in
`
`original.) It “is directed to equipment networked over ‘pre-existing wiring or cables
`
`that connect pieces of networked computer equipment to a network.’” (Ex.1002,
`
`¶45.) As mentioned above, operating Power-over-Ethernet (“PoE”) did not exist in
`
`1997. Rather, Ethernet terminal equipment needed their own power supplies.
`
`(Ex.2038, ¶232.)
`
`The ‘838 Patent describes and claims an improved central piece of network
`
`equipment that includes, among other things an Ethernet connector having both
`
`Ethernet data and DC current features. Specifically, the novel central piece of
`
`network equipment includes “at least one Ethernet connector” both (1) comprising
`
`first and second pairs of contacts used to carry BaseT Ethernet communication
`
`signals,” (Ethernet data) and (2) configured “to detect different magnitudes of DC
`
`current flow via at least one of the contacts of the first and second pairs of contacts”
`
`(DC current). (Ex.1001.)
`
`C. The challenged claims of the ‘838 Patent
`
`Independent claim 1 states in full:
`
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`Atty. Dkt. No.: CHRMC0111IPR1
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`Case No.: IPR2016-01397
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`
`1. A central piece of network equipment comprising: at least one
`
`Ethernet connector comprising first and second pairs of contacts used
`
`to carry BaseT Ethernet communication signals; and the central piece
`
`of network equipment to detect different magnitudes of DC current
`
`flow via at least one of the contacts of the first and second pairs of
`
`contacts and to control application of at least one electrical condition
`
`to at least one of the contacts of the first and second pairs of contacts in
`
`response to at least one of the magnitudes of the DC current flow.
`
`Some of the dependent claim add limitations regarding “magnitudes of DC
`
`current flow” of claim 1. More specifically, claims 2, 26 and 29 state:
`
`2. The central piece of network equipment of claim 1 wherein the
`
`different magnitudes of DC current flow are part of a detection
`
`protocol.
`
`* * *
`
`26. The central piece of network equipment of claim 1 wherein the
`
`central piece of network equipment to distinguish one end device from
`
`at least one other end device based on at least one of the magnitudes
`
`of the DC current flow.
`
`* * *
`
`29. The central piece of network equipment of claim 1 wherein the
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`central piece of network equipment to distinguish one network object
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`from at least one other network object based on at least one of the
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`magnitudes of the DC current flow.
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`(Ex.1001.)
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`Atty. Dkt. No.: CHRMC0111IPR1
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`Case No.: IPR2016-01397
`Patent No.: 9,019,838
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`D. Level of ordinary skill
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`A person of ordinary skill in the art (an “ordinary artisan”) at the time of the
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`invention would have been a person who has a B.S. degree (or equivalent) in
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`electrical engineering or computer science, and three years of experience in the
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`design of network communications products. (Ex.2038, ¶26.) Such a person would
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`also have been familiar with data communications protocols, data communications
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`standards (and standards under development at the time, including the 802.3
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`standard), and the behavior of data communications products available on the
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`market. (Id.)
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`The parties disagree slightly on the level of skill in the art. Chrimar believes
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`that Petitioners’ use of the phrase “at least” (“at least a B.S. degree”; “at least three
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`years of experience”) is too open ended. It would result in an expert, who has a
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`Ph.D. and 15 years of experience, being considered an ordinary artisan. To avoid
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`this, Chrimar has eliminated the phrase “at least” in its description of an ordinary
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`artisan. The parties agree otherwise.
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`E.
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`The prior art on which Petitioners rely
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`Petitioners’ first ground relies on Hunter (Ex.1003) and Bulan (Ex.1004).
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`Hunter teaches a multimedia network hub (120 in Figure 1) that uses isoEthernet
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`interfaces to provide phantom operating power to certain media hubs in the network.
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`Bulan, a telephony reference, adds complex over-current protection circuitry that
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`Hunter describes as unnecessary. (Ex.2038, ¶39.)
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`Petitioners’ second ground relies on the combination of Bloch, Huizinga, and
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`the IEEE 802.3 (-93 and -95) 10Base-T and 100Base-T Ethernet specifications.
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`(Exs.1005-1009.) Bloch and Huizinga, telephony references, do not mention
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`Ethernet. (Ex.2038, ¶40.)
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`None of the prior art on which Petitioners rely describes all of the features of
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`the claimed central piece of networking equipment. (Ex.2038, ¶38.)
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`IV. Standard for Inter Partes Review
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`Petitioners have the burden of proving unpatentability by a preponderance of
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`the evidence. 35 U.S.C. § 316(e).
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`As to Petitioners’ claim of obviousness under 35 U.S.C. § 103, they must
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`show where each claim limitation is found in the prior art. See, e.g., Kinetic
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`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1361 (Fed. Cir. 2012).
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`Petitioners must also show that an ordinary artisan would have had a reason to
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`combine the references in the manner proposed by Petitioners. KSR Int’l. Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007) (obviousness requires proof of an “apparent
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`reason to combine the known elements in the fashion claimed by the patent at
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`issue.”). Petitioners’ minimal discussion of the rationale to combine lacks the
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`requisite specificity to explain how and why an ordinary artisan would have been
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`prompted to combine the prior art references and how such a combination would
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`have worked.
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`V. Claim Construction
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`A.
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`"BaseT" (Claim 1)
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`Claim 1 requires a central piece of network equipment comprising “at least
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`one Ethernet connector comprising first and second pairs of contacts used to carry
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`BaseT Ethernet communication signals.” (Ex.1001.) Petitioners say the BRI for
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`“BaseT Ethernet” is “10BASE-T and 100BASE-T.” (Pet. at 5-6.) And in an IPR
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`concerning a related patent, the Board has construed “BaseT” as “twisted pair
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`Ethernet in accordance with the 10Base-T or 100Base-T standards.” (IPR2016-1391
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`Paper 9 at 11-12.) For purposes of these IPRs only, Chrimar does not contest the
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`Board’s construction of “BaseT.”
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`B.
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`“protocol” (Claim 2)
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`Claim 2 requires “wherein the different magnitudes of DC current flow are
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`part of a detection protocol.” (Ex.1001.) The word “protocol” has a well understood
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`meaning in the networking field. It is used, for example, in both parties’ description
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`of the ordinary artisan: “a POSITA . . . would be familiar with data communications
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`protocols.” (Ex.1002, Crayford Decl., ¶50; see also, Ex.2038, ¶103.)
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`A protocol, as defined in the computer networking field, is “a mutually agreed
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`upon method of communication.” (Ex.2038, ¶104; Ex.2047, p. 1.) This definition
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`was provided by the Internet Engineering Task Force in a 1993 paper titled “FYI on
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`‘What
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`is
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`the
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`Internet?’”
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`(Ex.2038,
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`¶104; Ex.2047,
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`available
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`at
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`https://tools.ietf.org/html/rfc1462.)
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`VI. No Reason To Combine - An Ordinary Artisan Would Not Have
`Made Petitioners’ Proposed Combinations
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`Petitioners assert that an ordinary artisan would have combined Hunter
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`(unchanged) with Bulan (unchanged), and Bloch (unchanged) with the IEEE
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`standards, and would have applied phantom power to Ethernet devices. As Chrimar
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`explains in Section VII. below, those proposed combinations would not have created
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`the claimed invention. Regardless, an ordinary artisan never would have combined
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`references and acted as Petitioners propose.
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`A.
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`For both combinations: at the time of the invention, an
`ordinary artisan would not have had a reason to apply
`telephone-based phantom operating power to Ethernet
`terminal equipment
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`1.
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`Applying operating power to pre-existing Ethernet
`terminal equipment would have destroyed Bob Smith
`terminations, saturated the common mode chokes,
`and thus degraded the propagation of Ethernet data
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`Petitioners and their expert admit that the Chrimar invention was “directed to
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`equipment networked over ‘pre-existing wiring or cables that connect pieces of
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`networked computer equipment to a network.’” (Pet. at 3; Ex.1002, ¶45.) That “pre-
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`existing network” would have contained “billions of nodes” (i.e., existing Ethernet
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`terminal equipment). (Ex.2039 at 193:6; Ex.2038, ¶42.) Those nodes would
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`commonly have included Bob Smith terminations in existing terminal equipment
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`and common mode chokes. (Ex.2039 at 43:20-44:2, 45:6-8, 195:3-196:3; Ex.2038,
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`¶42.)
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`In Ground 1, Petitioners propose adding Bulan’s unaltered circuit protector –
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`as used in telephone systems – into Hunter’s Figure 2. Petitioners assert that Hunter
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`discloses circuitry for supplying operating power to Ethernet terminal devices over
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`the same wires that provide Ethernet data. But Hunter does not disclose that
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`arrangement. As discussed in Section VII.A. below, Hunter teaches only a circuit
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`for delivering phantom power to an intermediate device (not a terminal device) over
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`a circuit for a phone system (not an Ethernet system). (Ex.2038, ¶43.)
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`In Ground 2, Petitioners propose adding Bloch’s unaltered circuitry – as used
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`in telephone systems – to an IEEE Ethernet standard. (Ex.2039 at 173:10-12.) As
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`with Ground 1, Petitioners rely on an obviousness argument, but fail to explain how
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`or why an ordinary artisan would redesign Bloch’s telephone-based circuit for use
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`in an Ethernet system and adapt it to work with Ethernet terminal equipment.
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`(Ex.2038, ¶44.)
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`Both Grounds fail to take into consideration the pre-existing Ethernet
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`environment, which Petitioners admit is the environment for the claimed invention.
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`(Pet. at 3; Ex.1002, ¶45.) Petitioners’ unstated assumption is that telephony devices
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`could simply have been added to Ethernet systems, but that is untrue. Using
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`Petitioners’ proposed telephone-based phantom-power combinations – unaltered, as
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`proposed – in an existing Ethernet network would have burned out the existing Bob
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`Smith terminations. (Ex.2038, ¶45.) The result would be impaired signal integrity
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`and degraded propagation of Ethernet data. (Ex.2039 at 45:10-21; Ex.2038, ¶45.)
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`That, of course, would be contrary to the stated motivation of not “using any
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`bandwidth from [the Ethernet] channel.” (Pet. at 53.) Damaging Bob Smith
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`terminations would most certainly have reduced the available bandwidth. (Ex.2038,
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`¶45.)
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`At his deposition, Mr. Crayford admitted that he did not consider the Bob
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`Smith termination problem (Ex.2039 at 170:10-18, 201:7-15) and that he did not
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`know how the Bob Smith termin