Reply in Support of Petition for Inter Partes Review of U.S. Patent No. 9,019,838
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Juniper Networks, Inc., Ruckus Wireless, Inc., Brocade Communication
`Systems, Inc. and Netgear, Inc.,
`Petitioners
`v.
`ChriMar Systems, Inc.,
`Patent Owner
`
`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`Petitioners' Reply Brief
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`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 No. IPR2016-01397
`U.S. Patent No. 9,019,838
`Petitioners' Reply Brief
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
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`TABLE OF CONTENTS
`
`Page
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`
`
`INTRODUCTION ........................................................................................ 1
`I.
`CHRIMAR RELIES ON INCORRECT PRIORITY DATE ....................... 2
`II.
`III. ADDITIONAL CIRCUITRY IS NOT REQUIRED FOR OBVIOUSNESS2
`A.
`BST and CMC Overview ................................................................... 3
`B.
`BSTs and CMCs Are Not Required By The Claims Or Prior Art ..... 3
`C.
`POSITA Would Have Know How To Implement Grounds 1 and 2 . 5
`IV. CHALLENGED CLAIMS ARE OBVIOUS IN VIEW OF PRIOR ART
`TEACHING POWER DELIVERY OVER ETHERNET DATA LINES ... 5
`A.
`Ethernet Phantom Power Is Prior Art ................................................ 6
`B.
`Chrimar Did Not Invent Or Enable Ethernet Phantom Power ........... 8
`C.
`The IEEE's Standardization Of Ethernet Phantom Power Supports
`Obviousness ........................................................................................ 9
`There is No Evidence That Ethernet Signals Would be Compromised
`In the Combined Systems ................................................................. 10
`V. ALTERNATIVE PRIOR ART POWER DELIVERY METHODS DO NOT
`NEGATE OBVIOUSNESS ........................................................................ 12
`A. A Combination Does Not Become Less Obvious Because It Relies On
`A Reference Teaching Alternative Embodiments............................ 13
`The Prior Art Favored Phantom Power ............................................ 13
`B.
`C. Unused Pairs Often Were Not Available ......................................... 14
`VI. GROUND 1: HUNTER AND BULAN TEACH THE CHALLENGED
`CLAIMS ..................................................................................................... 15
`
`D.
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`Petitioners' Reply Brief for IPR2016-01397
`U.S. Patent No. 9,019,838
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`Page
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`c.
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`d.
`
`e.
`
`A. Hunter Teaches "Contacts Used to Carry BaseT Ethernet
`Communication Signals" .................................................................. 15
`a.
`Hunter Teaches "Ethernet" .......................................... 15
`b.
`Hunter Teaches "Contacts Used to Carry BaseT Ethernet
`Communication Signals" ............................................. 16
`Hunter Teaches Phantom Powering Ethernet Terminal
`Devices ....................................................................... 20
`Hunter Figures 1 and 2 Teach Non-Limiting
`Embodiments ............................................................... 22
`Hunter Teaches Sending Power And 10Base-T Data Over
`The Same Conductors .................................................. 23
`Bulan's Protective Device Improves Upon The Teachings Of Hunter
` .......................................................................................................... 24
`The Hunter-Bulan Combination Teaches Information Conveyed by
`Different DC Currents that Differentiates One TE From Another .. 25
`The Hunter-Bulan Combination Teaches a "Detection Protocol" ... 26
`D.
`VII. CONCLUSION ........................................................................................... 27
`
`
`B.
`
`C.
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`10193287.2 01
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`
`TABLE OF AUTHORITIES
`
`
`Cases
`In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ......................................... 13
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 420-421 (2007) .................... 5
`Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
`2008) ....................................................................................................... 10
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
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`LIST OF EXHIBITS
`
`Number
`1001
`
`Short Name
`'838 Patent
`
`1002
`
`1003
`1004
`1005
`1006
`
`10071
`1008
`1009
`1010
`
`Crayford
`
`Hunter
`Bulan
`Bloch
`IEEE-1993
`
`IEEE-1995 (part 1)
`IEEE-1995 (part 2)
`Huizinga
`Blacharski
`
`1011
`
`Katz
`
`1012
`
`Related Matters
`
`Description
`U.S. Patent 9,019,838 to Austermann, III
`et al.
`Declaration of Ian Crayford in Support of
`Petition
`WO 96/23377 to Hunter
`U.S. Patent 5,089,927 to Bulan et al.
`U.S. Patent 4,173,714 to Bloch et al.
`IEEE International Standard ISO/IEC 8802-
`3: 1993
`IEEE Standard 802.3u-1995
`IEEE Standard 802.3u-1995
`U.S. Patent 4,046,972 to Huizinga et al.
`Dan Blacharski, "Maximum Bandwith: A
`Serious Guide to High-Speed Networking",
`Que Corporation (1997)
`Randy H. Katz, "High Performance Network
`and Channel-Based Storage", Report
`UCB/CSD 91/650, September 1991
`List of Pending Cases Involving U.S. Patent
`9,019,838
`
`
`1 IEEE Standard 802.3u-1995 has been separated into Exhibits 1007 and
`
`1008 to comply with file size limitations for Exhibits. Exhibits 1007 and 1008 are
`
`continuously paginated, from 1-200, and 201-415, respectively.
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`10193287.2 01
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`Short Name
`Number
`1013
`Crayford C.V.
`1014
`IEEE Press Release
`
`Description
`Resume of Ian Crayford
`IEEE Standards Association News &
`Events: Press Releases "IEEE 802.3
`Standard for Ethernet Marks 30 Years of
`Innovation and Global Market Growth"
`
`1015
`
`1016
`1017
`
`1018
`
`1019
`1020
`
`1021
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`1022
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`1023
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`1024
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`1025
`1026
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`10193287.2 01
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`Complaint
`
`'058 patent
`N/A
`
`N/A
`
`Chrimar Systems, Inc. et al. v. Juniper
`Networks, Inc., Case No. 6:15-cv-00630
`(N.D. Cal.), Dkt. No. 1.
`U.S. Patent 6,247,058 to Miller et al.
`Gordnia Declaration in support of pro hac
`vice motion
`Kagan Declaration in support of pro hac
`vice motion
`Reserved
`Deposition transcript for the July 21 and
`July 22, 2017 deposition of Dr. Vijay
`Madisetti
`Level One LXT914 Data Sheet, June 1997,
`Revision 2.2
`Pulse LAN Isolation Transformer Catalog,
`May 1998
`Valor Electronic Products Catalog, 1992
`(excerpts)
`Halo TD43-2006K Drawing, December 18,
`1996
`Fisher or '998 patent U.S. Patent 5,994,998 to Fisher et al.
`'911 Patent
`U.S. Patent 6,140,911 to Fisher et al.
`
`N/A
`Madisetti
`Declaration
`
`Level One
`
`Pulse
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`Valor
`
`Halo
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`Short Name
`Number
`1027
`De Nicolo or '468
`patent
`'356 patent
`Smith
`Chrimar
`Presentation to IEEE
`
`1028
`1029
`1030
`
`Madisetti Deposition
`Exhibit 1
`
`IEEE 802.9
`IEEE Dictionary
`
`Madisetti Deposition
`Exhibit 2
`Lucent
`
`Agenda
`
`Muir
`
`Frazier
`
`
`1031
`
`1032
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
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`10193287.2 01
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`Description
`U.S. Patent 6,115,468 to De Nicolo
`
`U.S. Patent 6,295,356 to De Nicolo
`U.S. Patent 5,321,372 to Smith
`"Power on the 802.3 connection July 11th &
`12th, 2000 Power, Detection and Discovery
`over the Existing Ethernet Wiring" by CMS
`Technologies
`Madisetti Deposition Exhibit 1, Belden
`"Conduit and Media Twist" white paper,
`August 25, 1997
`IEEE 802.9 Standard, 1994
`The IEEE Standard Dictionary of Electrical
`and Electronics Terms, Sixth Edition, 1996
`(excerpts)
`Madisetti Deposition Exhibit 1, July 22,
`2017
`Lucent Technologies, "TransTalk™ 9000
`Digital Wireless System MDW 9030P
`Wireless Pocketphone Installation and Use,"
`March 1997 (excerpts)
`Steve Carlson, "802.3 DTE Power via MDI
`Study Group" (November 1999)
`Robert Muir, "DTE power over MDI - DTE
`Discovery Process Proposal" (November
`1999)
`Howard Frazier, Karl Nakamura and Roger
`Karam, "Power over the MDI" (January
`2000)
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`Short Name
`Number
`1039
`Karam
`
`
`1040
`
`1041
`
`Nootbar
`
`Love
`
`1042
`
`Nakamura
`
`1043
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`1044
`
`1045
`
`1046
`
`'012 patent
`
`'107 patent
`
`'760 patent
`
`Crayford-2
`
`Description
`Roger Karam, "Common mode Rejection
`Through Center Tap of Magnetics" (March
`2000)
`Michael Nootbar, "Why Power Over Signal
`Pairs?" (March 2000)
`Robert Love and Dave Kooistra, "User
`Requirements for Cabling Support" (May
`2000)
`Karl Nakamura and Roger Karam, "Power
`over the MDI using the two Signal Pairs"
`(May 2000)
`U.S. Patent 8,155,012 to Austermann, III
`et al.
`U.S. Patent 8,942,107 to Austermann, III
`et al.
`U.S. Patent 8,902,760 to Austermann, III
`et al.
`Second Declaration of Ian Crayford In
`Support Of Reply
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`10193287.2 01
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`I.
`INTRODUCTION
`Grounds 1 and 2 disclose the Challenged Claims ("Claims") and a POSITA
`
`would have made the combinations. Relying on the evidence, the Board instituted
`
`inter partes review for all Claims. Paper 8.
`
`In Ground 1, Hunter teaches hubs and terminal equipment ("TE") networked
`
`over standards including 10Base-T Ethernet. Pet., 7-25. Hunter teaches data and
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`power delivery over the same conductors, and a current limiting device. Id., 7-8.
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`A POSITA would have been motivated to replace this device with Bulan's circuit,
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`which intelligently detects and distinguishes overcurrent from terminal equipment
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`(e.g., normal start-up versus fault). Id., 8-15. The combination teaches Claim 1,
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`including "central piece of network equipment," "Ethernet connector," and
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`"detect[ing] different magnitudes of DC current flow." Id., 25-41.
`
`Ground 2 further confirms the Claims are obvious. Bloch teaches a
`
`telephone system delivering data and power over the same conductors. Id., 42-64.
`
`A POSITA would have been motivated to combine Bloch with the Ethernet
`
`standard, which was developed based on legacy telephone systems. Id., 52-54.
`
`Chrimar does not dispute Ground 2 teaches the Claims.
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`Unable to contest the evidence, Chrimar avoids responding to the Petition
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`and the Board's decision. Instead, it fabricates a series of arguments that either
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`have no relation to the scope of the Claims or disregard the teachings of the
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`asserted prior art. The arguments in Chrimar's Response are either incorrect or
`
`immaterial, and should be rejected.
`
`II. CHRIMAR RELIES ON INCORRECT PRIORITY DATE
`Chrimar's Response is based on the wrong invention date. The earliest
`
`priority date listed on the '838 patent is an April 10, 1998 provisional application
`
`filing date. Ex. 1001, 1. Chrimar has not substantiated an earlier invention date.
`
`Chrimar's arguments and its expert's testimony based on an imprecise time of
`
`invention in 1997 or 1997-98 should be disregarded. Resp., 7-8, 30.
`
`III. ADDITIONAL CIRCUITRY IS NOT REQUIRED FOR
`OBVIOUSNESS
`The Board already rejected Chrimar's "unworkable network environment"
`
`arguments and instructed "[i]t is well-established that a determination of
`
`obviousness based on teachings from multiple references does not require an
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`actual, physical substitution of elements." IPR2016-01389, Paper 12, 22-23.
`
`Disregarding the Board's order, Chrimar makes an even more untenable argument
`
`that requires the references be physically combined not only with other
`
`reference(s) in the Ground, but with additional circuitry that is neither required by
`
`the Claims nor mentioned in the references or the '838 patent—Bob Smith
`
`Terminations ("BST") and common mode chokes ("CMC"). Resp., 13-16.
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`A. BST And CMC Overview
`BSTs can minimize electromagnetic emissions in devices subject to the
`
`FCC's regulations and are not relevant to the claimed inventions. In 1994, Robert
`
`("Bob") Smith received a patent for his eponymous terminations. Ex. 1029
`
`("Smith"). Smith explains "[g]overnment regulations mandate that emissions be
`
`limited to a particular level in order to minimize interferences with other
`
`apparatus." Id., 2:5-7. "[T]he signal strength for twisted pairs is governed by the
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`standards set forth by the FCC." Id., 2:8-9. Smith provides one way to meet these
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`standards. Id., 2:61-3:2. CMCs are another method for minimizing radiation from
`
`a twisted pair. Crayford-2, ¶13.2 Dr. Madisetti clarified that the CMCs discussed
`
`in the Response are meant to be used with BSTs, and not instead of BSTs. Ex.
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`1020, 144:6-18.
`
`B.
`BSTs And CMCs Are Not Required By The Claims Or Prior Art
`BSTs and CMCs are not relevant to the invalidity questions at hand. The
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`BRI of the Claims does not require BSTs, CMCs, or compliance with any FCC
`
`regulation. Dr. Madisetti testified he has not offered any opinions on whether the
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`claims require BSTs or CMCs and agreed "[t]he words 'Bob Smith' don't explicitly
`
`appear" in the claims. Ex. 1020, 128:19-129:6, 139:4-9, 140:8-9,133:18-19.
`
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`2 "Crayford-1" and "Crayford-1" are Mr. Crayford's Declarations in support
`
`of the Petition (Ex. 1002) and Reply (Ex. 1046), respectively.
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`Neither BSTs nor CMCs appear in the common specification to the '838
`
`patent, '760 patent, '107 patent, and '012 patent ("Shared Specification") or the
`
`prior art. Reading them into the claims would be reversible error. Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1323 (Fed Cir. 2005); Exs. 1001, 1043-1045. Dr. Madisetti
`
`explained BSTs and CMCs are part of an unclaimed and undisclosed "specific
`
`method of implementation" (Ex. 1020, 142:20-143:12) and are optional in an
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`Ethernet system. Whether they are used is part of the innovation left "to the hand
`
`of the designer." Id.
`
`Thus, the mere mention of "pre-existing wiring or cables" in the Shared
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`Specification does not mean the claims require BSTs or CMCs. Resp., 8, 13.
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`There is no evidence that "pre-existing wiring or cables" required either component
`
`in April 1998. To the contrary, Dr. Madisetti admitted he "cannot verify each and
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`every system out there" used BSTs in April 1998, and he cannot "speak of every
`
`system." Ex. 1020, 80:16-20, 55:19-23.3 And Dr. Madisetti formed his opinions
`
`without even considering the purpose of BSTs and CMCs, i.e., to address FCC
`
`emission requirements. Id., 84:7-13, 88:19-89:2, 90:13-91:5, 115:5-14; §III.A.
`
`3 A POSITA would know of ways to satisfy the territorial FCC emissions
`
`regulations without BSTs or CMCs. Crayford-2, ¶¶18-21. For example, Level
`
`One sold a 10BASE-T repeater chip in 1997 that was designed to allow FCC
`
`compliance without requiring either. Crayford-2, ¶¶18-21; Exs. 1021, 1022.
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`Moreover, the claims do not even recite or otherwise require "pre-existing wiring
`
`or cables" or "existing infrastructure." Ex. 1020, 376:14-17.
`
`C.
`POSITA Would Have Know How To Implement Grounds 1 and 2
`Notwithstanding the irrelevance of its red herring BST and CMC arguments
`
`(§IIIA-B), Chrimar ignores the knowledge and ordinary creativity a POSITA
`
`would have in April 1998, and from this, speculates a POSITA could not make the
`
`combinations of Grounds 1 or 2 for use in an Ethernet network that includes BSTs
`
`and CMCs. Resp., 13-16. Indeed, a POSITA would possess sufficient knowledge
`
`and creativity to implement BSTs and CMCs in Grounds 1 and 2 without damage
`
`to the circuitry. Crayford-2, ¶¶22-26. For example, a POSITA knew in April 1998
`
`that a blocking capacitor could be used to block DC current from flowing through
`
`the BSTs. Id. The Shared Specification uses capacitors in this manner to form a
`
`filter for blocking current from flowing in a particular path of the circuit. Id.; Ex.
`
`1043, 7:40-41. He also knew that CMCs were available that would not saturate
`
`from the application of power. Crayford-2, ¶26; Exs. 1023, 1024. A POSITA's
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`knowledge and creativity, not to mention common sense, must be considered for
`
`obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 420-421 (2007).
`
`IV. CLAIMS ARE OBVIOUS IN VIEW OF PRIOR ART TEACHING
`POWER DELIVERY OVER ETHERNET DATA LINES
`Chrimar makes a series of incorrect and unsupported arguments about power
`
`over Ethernet. First, to clarify, Chrimar did not invent or enable power delivery
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`over data lines to Ethernet networks. The application of this textbook concept
`
`existed in April 1998 and later became an IEEE standard generically referred to as
`
`"Power over Ethernet" or "PoE". Ex. 1020, 190:7-20. While Chrimar has used
`
`patent continuations and creative claim drafting to try to capture technology related
`
`to Ethernet phantom power, it cannot take credit for what was already known in the
`
`prior art.
`
`A.
`Ethernet Phantom Power Is Prior Art
`Chrimar says PoE did not exist in 1997. Resp., 8. If Chrimar refers to the
`
`PoE standard, this statement is irrelevant. If Chrimar means that phantom power—
`
`the concept of power delivery over data lines—was not known or had not been
`
`applied to Ethernet networks in 1997 ("Ethernet phantom power"), this is false.
`
`First, 1997 is not the time of invention. §II. Second, prior art predating Chrimar's
`
`priority date show Ethernet phantom power was well known by April 1998.
`
`Hunter confirms that by 1996, "the concept of phantom power ha[d] been
`
`extended significantly to operate with data bearing-LAN buses," including the
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`10Base-T bus of the preferred embodiment. Ex. 1003 ("Hunter")4, 20:14-16,
`
`19:13-17, 21:11-13. Each of the two conductors in the 10Base-T bus is "used for
`
`unidirectional transmission of data" and "as a rail by which to deliver DC power to
`
`
`4 Hunter citations reference the document's internal pagination.
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`the equipment." Id., 21:22-29. This "allow[s] power to be introduced into the
`
`conductors and throughout the computer network." Id., 20:11-16.
`
`The prior art cited in the '838 patent confirms Ethernet phantom power
`
`predates Chrimar's alleged invention. Chrimar and its expert did not consider this
`
`art. Ex. 1020, 200:23-201:11; §II.
`
`For example, the Fisher '998 and '911 patents, filed May 29, 1997, teach
`
`powering an Ethernet device over the same Cat-3 or Cat-5 twisted pair cable that
`
`carry Ethernet data. Ex. 1025 ("Fisher"), 2:21-41, 3:65-67, 6:7-10; Ex. 1026; Ex.
`
`1001, 5. Fisher teaches a "combined power and data signal that can eventually be
`
`supplied to the network device." Fisher, 3:49-63; 2:21-26, 2:27-41. Fisher also
`
`explains the "network device" can be a personal computer having a network
`
`interface card. Id., 4:1-7.
`
`Similarly, the De Nicolo '468 and '356 patents, filed March 26, 1998, teach
`
`"provid[ing] electrical power to ethernet-based telephones over an ethernet wire
`
`link." Ex. 1027 ("De Nicolo"), 1:7-9; Ex. 1028; Ex. 1001, 5. De Nicolo Figure 3
`
`illustrates "Ethernet devices requiring power to be transmitted to them in addition
`
`to data over Ethernet twisted pair lines." De Nicolo, Fig. 3, 3:5-12.
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`The combinations in the Grounds yield predictable results as Ethernet
`
`phantom power was well known to a POSITA. Crayford-2, ¶¶28-33; KSR, 550
`
`U.S. at 416-17.
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`B.
`Chrimar Did Not Invent Or Enable Ethernet Phantom Power
`If Chrimar contends its invention enabled Ethernet phantom power to
`
`function with BSTs and CMCs (Resp., 8.), the Shared Specification shows this is
`
`untrue. The Shared Specification describes an asset tracking system with two
`
`modules that communicate over conductors carrying network data (e.g. Ethernet).
`
`Ex. 1043, Figs. 1-8, 10. A remote module is attached to or integrated into a
`
`network asset such as a personal computer. Id., Figs. 1-4, 13-15. A central module
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`provides current to the remote module; but does not power the asset. Id., 4:65-67,
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`5:40-48, 7:40-42, 7:48-50, 12:48-50. It also does not control (selectively turn on
`
`and off) power to either the remote module or the asset. Id.; Crayford-2, ¶¶34-35.
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`The central module, unaware that there may be a BST or CMC in the asset or
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`remote module, continuously provides current to the remote module (unless of
`
`course, the two modules are unplugged from one another). Ex. 1043, 5:33-35,
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`5:43-48; Crayford-2, ¶34-35. Chrimar cannot rely on its expert to argue its patent
`
`teaches something more, because when asked whether Chrimar invented "phantom
`
`power for Ethernet," he responded "I'm not offering an opinion as to Chrimar's –
`
`Chrimar's specific contributions." Ex. 1020, 192:17-194:1.5
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`5 Notably, when Chrimar presented its invention to the IEEE in 2000, the
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`IEEE rejected it. Ex. 1030; Ex. 2045, 1-3 (Chrimar did not get enough votes to
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`advance to next round).
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`C.
`The IEEE's Standardization Of Ethernet Phantom Power Supports
`Obviousness
`Chrimar attempts to fabricate skepticism about Ethernet phantom power
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`from a selection of IEEE presentations and meeting minutes to argue a POSITA
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`would not have made the combinations in the Grounds. Resp., 7, 21-25. This is
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`another red herring argument. First, the IEEE's analysis for determining whether
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`Ethernet phantom power should become a standard has nothing to do with
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`obviousness. Obviousness does not require that a proposed combination meet the
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`criteria of becoming a standard. Second, a more complete review of the IEEE
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`documents confirms members favored phantom power and questioned the
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`availability of unused pairs.
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`As background, the presentations identified by Chrimar were made during
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`IEEE meetings related to the development of a standard for power delivery to data
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`terminal equipment (DTE). Crayford-2, ¶¶36-37; Ex. 1036. Ethernet phantom
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`power was so well known (§IV.A) that the IEEE considered adopting it as a
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`standard. Id.; Ex. 1037, 3.
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`Chrimar's cherry-picked selection of meeting documents paints an
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`incomplete and inaccurate picture. Resp., 7, 21-25. In those and other meetings,
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`various presenters favored phantom power and questioned the presence of unused
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`pairs. Crayford-2, ¶38; Exs. 1036-1042. IEEE records show it was well known
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`that BSTs could be replaced and/or modified using simple capacitive decoupling to
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`prevent damage by the application of power. Id.; Ex. 1037, 4. Dr. Madisetti does
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`not know whether he reviewed these available IEEE documents. Ex. 1020, 359:3-
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`19.
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`Even if some IEEE members were skeptic—which they were not—that
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`skepticism would have been about whether Ethernet phantom power should
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`become a standard, not whether the technology worked. Because Chrimar did not
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`invent Ethernet phantom power, any alleged skepticism about it is immaterial. To
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`be a secondary consideration of non-obviousness, alleged skepticism has to be
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`about the claimed invention; there must be a nexus. Muniauction, Inc. v. Thomson
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`Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008). Chrimar completely misses this
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`point, and also mischaracterizes the cases it cites that confirm this rule. Resp., 21.
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`D. There is No Evidence That Ethernet Signals Would be
`Compromised In the Combined Systems
`Chrimar inaccurately claims telephone and Ethernet are so unrelated that a
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`POSITA would not have looked to the telephone arts while working on Ethernet
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`systems. Resp., 4-7. Hunter disproves this claim and confirms Ethernet was built
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`on legacy phone technology. Hunter, 2:22-23 ("multimedia extension to the voice-
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`only services of the ubiquitous telephone network"); 15:8-13 ("evolve the
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`proprietary telephony of the PBX … into standards-based systems … LAN
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`systems of today."); 17:3-5; 33:19-21. Indeed, Hunter's objectives included "[a]n
`
`interactive multimedia system must closely follow the availability of the legacy
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`voice systems." Id., 8:14-16. Mr. Crayford, who worked with Ethernet LAN
`
`switching in April 1998, confirms POSITAs working in Ethernet were indeed
`
`consulting the related telephone arts. Ex. 1013; Crayford-2, ¶¶46-47. And Dr.
`
`Madisetti even admitted he was working on voice over IP switches in April 1998
`
`(i.e., sending voice data over IP (e.g. Ethernet)). Ex. 1020, 159:2-160:1.
`
`Chrimar's theories about noise and interference in the combination of
`
`Ground 2 are also incorrect. Resp., 26-28. Without evidence or reasoning,
`
`Chrimar claims that the switching of R201 would cause noise that would interfere
`
`with the Ethernet signal. Id. Mr. Crayford tested this conclusion and found that
`
`the communication signaling rate proposed by Bloch results in a lower frequency
`
`than the signaling rates proposed for the remote module in Chrimar's patent.
`
`Crayford-2, ¶¶49-51. Additionally, a POSITA's knowledge would include prior art
`
`filters, including those mentioned in the Shared Specification, to segregate the
`
`higher Ethernet frequencies from the lower Bloch frequencies. Ex. 1043, 8:39-42;
`
`10:25-27; Crayford-2, ¶¶49-51.
`
`When questioned about his unsupported theory, Dr. Madisetti backed away
`
`and claimed that it was the square edges (i.e., instantaneous switching) of the
`
`waveform, not the signaling frequency, that would cause noise. Ex. 1020, 204:14-
`
`205:10 (frequency does not matter). However, Dr. Madisetti incorrectly assumes
`
`that the instantaneous switching illustrated in Bloch Figure 7B is not only feasible
`
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`- 11 -
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`but required by Bloch. Id. A POSITA would understand that completely
`
`instantaneous transitions, particularly in 1977, were not possible. Crayford-2,
`
`¶¶52-23. The POSITA would not have been motivated to use instantaneous edge
`
`rates, because they would be faster than those taught by the Ethernet specification,
`
`particularly given the approximately 1000 times slower data rate in Bloch
`
`compared to Ethernet. Crayford-2, ¶5¶52-53. Regardless, Dr. Madisetti explained
`
`that noise from the edges would not interfere with Ethernet communications if a
`
`filter is used. Ex. 1020, 205:11-206:5.
`
`Chrimar's arguments about the path in the Hunter and Bulan combination
`
`causing saturation (Resp. 27) are incorrect and rely solely on its disingenuous
`
`misrepresentations
`
`regarding
`
`annotations
`
`in Petition Figure
`
`3
`
`and
`
`mischaracterization of Mr. Crayford's testimony. When deposed, Mr. Crayford
`
`explained the purpose of his annotations and that Hunter disclosed current flow
`
`across both conductors in each of the two pairs of conductors, 240 and 250,
`
`without transformer saturation. Ex. 2039, 85:2-4, 167:23-168:4; 168:20-169:4;
`
`Crayford-1, ¶¶75, 97; Hunter, Fig. 2.
`
`V. ALTERNATIVE PRIOR ART POWER DELIVERY METHODS DO
`NOT NEGATE OBVIOUSNESS
`Chrimar's argument that phantom powering would have been avoided
`
`because cables used in Ethernet networks had unused pairs (Resp., 16-21) is
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`another red herring argument relating to implementations outside the scope of the
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`Claims and Grounds. Chrimar's underlying assumption—unused pairs were
`
`widely available—is incorrect, and the evidence shows phantom power was
`
`favored just as much as or more than unused pairs.
`
`A. A Combination Does Not Become Less Obvious Because It Relies On
`A Reference Teaching Alternative Embodiments
`Chrimar nonsensically argues
`that Hunter's
`teaching of alternative
`
`technologies, phantom power and third pair power, means a POSITA would not
`
`have used the phantom power embodiment in the combination of Ground 1 (Resp.,
`
`17). In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Hunter claims and
`
`describes phantom power as a "preferred embodiment." Hunter, 20:24-21:9, cls. 1,
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`11. While Hunter acknowledges introducing phantom power may result in
`
`interactions between the power and the data, it describes known solutions to avoid
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`these potential interactions, including balance circuits, isolation transformers, filter
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`circuits, etc. Id., 17:13-19, 22:1-23:2; Crayford-2, ¶56.
`
`B.
`The Prior Art Favored Phantom Power
`The prior art clearly recognized the benefits of phantom power. For
`
`example, Hunter explains: "[p]hantom powering has the advantage of not requiring
`
`the installation of a dedicated power cable." 17:13-14. By contrast, "third pair
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`powering requires a dedicated power cable, increasing the cost of new installations
`
`and existing installations where a dedicated power cable is not already in place."
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`Id., 17:23-26.
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`Similarly, Fisher explains: "it is desirable to be able to eliminate the need for
`
`the second cable [for power]." Fisher, 1:19-20. This "simplifies the installation of
`
`a wireless access point and can reduce the cost of the installation." Id., 1:66-2:4,
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`9:19-21. Also, "additional, unused wire pairs … may not always be available," and
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`"a change in the networking standard in the future [may] dictate[] the use of the
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`currently unused wire pairs in the networking cable."6 Id., 2:8-14. Ethernet
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`phantom power "reduce[d] the wiring requirements to transmit data and power to a
`
`wireless access point without having to use additional wire pairs." Id., 2:15-17; see
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`also De Nicolo, 2:20-24, 2:31-35.
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`And IEEE members including from Cisco, preferred phantom power over
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`unused pair power. Exs. 1036-1042; IV.C.
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`C. Unused Pairs Often Were Not Available
`Chrimar wrongly assumes that 10BASE-T and 100BASE-T using Cat-3 and
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`Cat-5 cables with RJ-45 connectors necessarily meant there were always 4 pairs
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`available, two of which were used. Resp., 16-20. Yet, Dr. Madisetti agreed that he
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`"wouldn't say all" of the "Ethernet infrastructure existing at the time of the
`
`invention was exclusively four pair." Ex. 1020, 343:3-12. In April 1998, there
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`were Cat-3 and Cat-5 cables with only 2 pairs, which were both used for data.
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`6 1000BASE-T Ethernet, which Dr. Madisetti admits had no unused pairs,
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`was not yet standardized. Ex. 1020, 382:12-15.
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`IPR2016-01397 Petitioners' Reply
`U.S. Patent No. 9,019,838
`Crayford-2, ¶¶60-62; Ex. 1031. Likewise, a POSITA would not assume that an
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`RJ-45 connector with 8 pins necessarily has 8 wires (4 pairs) connected. Resp.,
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`18-20; Crayford-2, ¶¶60-62; Ex. 1006, 266; Ex. 1008, 214 (showing those pins as
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`not used and not populated). Dr. Madisetti was not even aware that 2-pair Cat-3
`
`and Cat-5 cables existed in 1998. Ex. 1020, 348:1-13.
`
`Also, the 10BASE-T standard shows that cables with 25 pairs of wire were
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`used in April 1998. Crayford-2, ¶¶63-34; Ex. 1006, 265 (14.4.3.1.1). Mr.
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`Crayford testified that of the 25 pairs, 24 were used to deliver data to 12 devices; 2
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`pairs were used per device. Ex. 2039, 146:6-147:13. Only a single unused pair
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`was left for 12 devices. Id. Again, Dr. Madisetti was not aware that 25-pair cables
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`were used with 10BASE-T Ethernet. Ex. 1020, 345:21-346:7, 363:1-9, 364:21-
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`365:5. Even the IEEE could not determine what percentage of installations had
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`unused pairs. §IV.C.
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`VI. GROUND 1: HUNTER AND BULAN TEACH THE CLAIMS
`A. Hunter Teaches "Contacts Used to Carry BaseT Ethernet
`Communication Signals"
`Chrimar incorrectly disputes that Hunter teaches "contacts used to carry
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`BaseT Ethernet communication signals." Resp., 32-40.
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`a. Hunter Teaches "Ethernet"
`Chrimar argues Hunter is not relevant because Hunter's disclosure of
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`"Ethernet®" is not the same "Ethernet" claimed by the '838 patent. Resp., 34-35.
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`IPR2016-01397 Petitioners' Reply
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