United States Patent and Trademark Office
`
`________________________________________________
`
`Before the Patent Trial and Appeal Board
`________________________________________________
`
`
`
`Juniper Networks, Inc.,
`Petitioner
`
`v.
`
`Chrimar Systems, Inc.
`Patent Owner
`
`
`
`________________________________________________
`
`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`________________________________________________
`
`
`Patent Owner’s Preliminary Response
`Under 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`

`
`Table of Contents
`
`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`
`
`
`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 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 
`A.  Legal Standard . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 
`B.  Claim Construction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 
`1.  Prior Claim Constructions from the District
`Court Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 
`2.  Prior Claim Constructions from the Board . . . . . . . . . . . . . . . . 14 
`C.  Ground 1: Petitioner has not made a prima facie
`case that the ’838 Patent’s claims are obvious in
`view of the combination of Hunter and Bulan. . . . . . . . . . . . . . . . . 15 
`1.  Hunter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 
`2.  Bulan . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16 
`3.  The Hunter and Bulan references teach away
`from combining the two references to create the
`system proposed by Petitioner. . . . . . . . . . . . . . . . . . . . . . . . 18 
`4.  The combination of Hunter and Bulan does not
`disclose or teach every limitation of dependent
`claims 26 and 29. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21 
`5.  The combination of Hunter and Bulan does not
`disclose or teach every limitation of dependent
`claim 47. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24 
`
`– ii –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`
`D. Ground 2: Petitioner has not made a prima facie
`case that the ’838 Patent is obvious in view of
`Bloch, Huizinga, and the IEEE Ethernet standards. . . . . . . . . . . . . . 25 
`1.  There was no motivation to combine Bloch and
`Huizinga. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26 
`2.  There was no motivation to combine Bloch and
`Huizinga with the IEEE Ethernet standards. . . . . . . . . . . . . . . . 27 
`Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32 
`Certificate of Compliance with Word Count . . . . . . . . . . . . . . . . . . . . . 33 
`Certificate of Service . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34 
`
`
`
`– iii –
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`

`
`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`
` Table of Authorities
`
`Federal Cases 
`
`AMX, LLC v. Chrimar Sys., Inc.,
`IPR2016-00569, Paper No. 19 ....................................................................... 14, 15
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F. 3d 1375 (Fed. Cir. 2015) ........................................................................... 11
`Gordon .................................................................................................................... 21
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 20
`In re Sponnoble,
`405 F.2d 578 (C.C.P.A. 1969) ............................................................................ 19
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 18
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................... 26
`Leo Pharm. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) ........................................................................... 19
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ........................................................................... 12
`Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) ............................................................................ 19
`Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., IPR2014-01248, Paper No. 39
`(2016) .................................................................................................................. 11
`
`
`
`
`
`
`– iv –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`
`State Cases 
`
`35 U.S.C. § 313 ......................................................................................................... 2
`35 U.S.C. § 314(a) ............................................................................................... 1, 11
`37 C.F.R. § 42.107 .................................................................................................... 2
`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. §42.100(b) .............................................................................................. 12
`37 C.F.R. §42.104 ................................................................................................... 11
`
`
`
`
`
`
`– v –
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`

`
`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`
` Patent Owner’s Exhibit List
`
`Chrimar
`System, Inc.
`Exhibit No.
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2035
`
`2036
`
`Exhibit Description
`
`Date Filed
`
`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
`
`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
`
`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
`
`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
`
`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
`
`Oct. 12, 2016
`
`Oct. 12, 2016
`
`Oct. 12, 2016
`
`Oct. 12, 2016
`
`Oct. 12, 2016
`
`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
`
`Oct. 12, 2016
`
`Response to Office Action (Reexam Control No.
`90/009,513) (June 15, 2010)
`
`Oct. 12, 2016
`
`– vi –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
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`
`Chrimar
`System, Inc.
`Exhibit No.
`
`2037
`
`
`
`Exhibit Description
`
`Date Filed
`
`Notice of Intent to Issue Ex Parte Reexamination
`Certificate (Reexam Control No. 90/009,513)
`(Nov. 22, 2010)
`
`Oct. 12, 2016
`
`– vii –
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`

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`Case No. IPR2016-01397
`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 obvious in view of two sets of references:
`
`(1) WO 96/23377 to Hunter (Ex. 1003) and U.S. Patent No. 5,089,927 to Bulan
`
`(Ex. 1004); and (2) U.S. Patent No. 4,173,714 to Bloch (Ex. 1005), IEEE
`
`International Standards ISO/IEC 802.3 (Exs. 1006, 1007, 1008), and U.S. Patent
`
`No. 4,046,972 to Huizinga (Ex. 1009).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). Specifically, Petitioner has failed
`
`to make a prima facie case that the ’838 Patent is obvious in view of the combination
`
`of either Hunter and Bulan or of Bloch, Huizinga, and the IEEE Ethernet
`
`standards.
`
`With respect to Ground 1, Petitioner fails to show that the combination of
`
`Hunter and Bulan meets or discloses every limitation of the claims. Further,
`
`
`1 In each case, the claims at issue are independent claim 1 and its dependent
`
`claims 2, 7, 26, 29, 38, 39, 40, 47, 55, 69.
`
`– 1 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
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`Petitioner has not shown that a person of ordinary skill in the art would have been
`
`motivated to combine Hunter and Bulan to create the inventions claimed in the
`
`’838 Patent. In fact, the two references actually teach away from such a
`
`combination because doing so would result in an unacceptable and unworkable
`
`network environment. Accordingly, Petitioner has not made a prima facie case that
`
`any claim of the ’838 Patent is obvious in light of Hunter and Bulan. The Board
`
`should reject Ground 1 of the Petition.
`
`With respect to Ground 2, Petitioner has not shown that a person of ordinary
`
`skill in the art would have been motivated to combine Bloch, Huizinga, and the
`
`IEEE Ethernet standards to create the inventions claimed in the ’838 Patent. As a
`
`result, Petitioner has not made a prima facie case that any claim of the ’838 Patent is
`
`obvious in light of Bloch, Huizinga, and the IEEE Ethernet standards. The Board
`
`should reject Ground 2 of the Petition.
`
`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 July 12, 2016, granting the Petition a
`
`filing date of July 8, 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.
`
`
`
`
`
`– 2 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`
` Background
`A. Status of Related Litigation
`
`The ’838 Patent is currently one of four related patents asserted in litigation
`
`pending in the Northern District of California against Petitioner: Chrimar Systems,
`
`Inc., et al. v. Juniper Networks, Inc., Case No. 3:16-cv-558.2 The case against
`
`Juniper Networks is currently stayed. The ’838 Patent is also asserted against
`
`several defendants in litigation pending in the Eastern District of Texas.3 The
`
`court in Eastern District of Texas construed certain terms of the ’838 Patent.4 A
`
`2 The four related patents are U.S. Patent Nos. 9,019,838 (Ex. 1001);
`
`8,942,107; 8,155,012; and 9,049,019.
`
`3 Chrimar Systems, Inc., et al. v. Alcatel-Lucent S.A., et al., Case No. 6:15-cv-163
`
`and Chrimar Systems, Inc., et al. v. ADTRAN, Inc., et al., Case No. 6:15-cv-618.
`
`4 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
`
`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.
`
`– 3 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
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`jury trial was held against Alcatel-Lucent Enterprise, USA, Inc. (“ALE”) the week
`
`of October 3, 2016, resulting in a jury verdict in favor of Chrimar
`
`B. Chrimar
`
`Chrimar was founded in 1993 by Chris Young and Marshall Cummings.5 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
`
`Detecting Removal of Electronic Equipment.” The ’260 Patent claimed inventions
`
`related to monitoring the physical connection of a piece of equipment (e.g., a
`
`
`July 29, 2016 (ECF No. 223)); and 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.
`
`318)).
`
`5 Chrimar is a combination of “Chri” from Chris and “Mar” from Marshall.
`
`– 4 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`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, 1998.6
`
`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,
`
`
`6 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. 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. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`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 star-wired Ethernet 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.”7 The “invention is particularly adapted to be used with
`
`an existing Ethernet communications link or equivalents thereof.”8
`
`More specifically, the patent discloses identifying an “asset,” such as a
`
`computer, “by attaching an external or internal device to the asset and
`
`communicating with that device using existing network wiring or cabling.”9 An
`
`asset can be managed, tracked, or identified by using a “remote module” to
`
`communicate information about the asset to a “central module.”10
`
`The basic configuration of an embodiment of the system claimed by the patent
`
`
`7 Ex. 1001: ’838 Patent at 1:227–30.
`
`8 Ex. 1001: ’838 Patent at 3:41–43.
`
`9 Ex. 1001: ’838 Patent at 2:4–6 (emphasis added).
`
`10 Ex. 1001: ’838 Patent at 3:27–32; 6:7–12; 8:64–9:5.
`
`– 6 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`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
`
`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 different magnitudes of DC
`
`current convey information about the PC, and this can happen even when the PC is
`
`– 7 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`powered off.
`
` 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
`
`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
`
`– 8 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`
`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.11
`
`In short, the patentees were looking for a way to identify, communicate with,
`
`and manage distributed assets in a network, over existing network wires, even when
`
`the assets are powered off. The innovative devices, methods, and systems
`
`described and claimed by the ’838 Patent achieve each of these goals. Specifically,
`
`they are able to: (1) convey information about assets—e.g., a company’s
`
`computers—over the same lines already being used to convey high-frequency data
`
`communications to the assets, without substantially interfering with the high-
`
`
`11 Ex. 1001: ’838 Patent at 1:65–2:15 (emphasis added).
`
`– 9 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`frequency data communications12; and (2) convey information about the assets
`
`even when the assets are powered off.13
`
`D. Person of Ordinary Skill
`
`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.
`
`
`12 See, e.g., Ex. 1001: ’838 Patent at 12:3–5 (“The system transmits a signal
`
`over pre-existing network wiring or cables without disturbing network communi-
`
`cations . . . .”).
`
`13 See, e.g., Ex. 1001: ’838 Patent at 5:4–6 (describing an embodiment of the
`
`invention “capable of identifying the existence and location of network assets
`
`without power being applied to the assets.”); id. at 12:54–56 (“[T]he system
`
`provides a means for permanently identifying the location of network assets
`
`without applying power to the assets.”).
`
`– 10 –
`
`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`
` 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
`
`“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).
`
`– 11 –
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`

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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
`
`B. Claim Construction
`
`In inter partes review of an unexpired patent, the Board gives the claims the
`
`“broadest reasonable construction in light of the specification . . . .” 37 C.F.R.
`
`§ 42.100(b). The broadest reasonable construction, however, is still bounded by
`
`what is legally correct and supported by the patent specification. Microsoft Corp. v.
`
`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
`
`1. Prior Claim Constructions from the District Court Litigation
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`Certain terms of the ’107 Patent, and several of its related patents sharing a
`
`common specification, have been construed in district-court litigation, and have
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`faced several motions for summary judgment of invalidity and noninfringement.
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`None of the claims involved were found invalid as indefinite. The following orders
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`are included as exhibits and provide claim-construction guidance from the district-
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`court litigation.
`
`Exhibit
`
`2017
`
`2018
`
`Description
`Memorandum Opinion and order denying AMX’s motion for
`summary judgment of non-infringement of the ’012 Patent (Chrimar
`Systems, Inc., et al. v. AMX, LLC, Civil Action No. 6:13-cv-881-JDL,
`Eastern District of Texas, ECF No. 96)
`Memorandum Opinion and order construing certain terms of the
`’012 Patent (Chrimar Systems, Inc., et al. v. AMX, LLC, Civil Action
`No. 6:13-cv-881-JDL, Eastern District of Texas, ECF No. 105)
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`Case No. IPR2016-01397
`U.S. Patent No. 9,019,838
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`Exhibit
`
`2019
`
`2020
`
`2021
`
`2035
`
`Description
`Memorandum Opinion and order construing certain terms of the
`’012 Patent and denying AMX’s motion for summary judgment of
`indefiniteness regarding the “distinguishing” terms of the ’012
`Patent (Chrimar Systems, Inc., et al. v. AMX, LLC, Civil Action No.
`6:13-cv-881-JDL, Eastern District of Texas, ECF No. 108)
`Memorandum Opinion and order denying AMX’s motion for
`summary judgment of indefiniteness regarding certain claims of the
`’012, ’107, and ’760 Patents (Chrimar Systems, Inc., et al. v. AMX,
`LLC, Civil Action No. 6:13-cv-881-JDL, Eastern District of Texas,
`ECF No. 122)
`Markman order construing certain terms of the ’012, ’107, ’760, and
`’838 Patents (Chrimar Systems, Inc., et al. v. AMX, LLC, Civil Action
`No. 6:13-cv-881-JDL, Eastern District of Texas, ECF No. 123)
`Memorandum Opinion and order on ALE’s motion to construe
`certain claim terms of the ’012 and ’760 Patents (Chrimar Systems,
`Inc., et al. v. AMX, LLC, Civil Action No. 6:13-cv-881-JDL, Eastern
`District of Texas, ECF No. 318)
`
`The table below identifies relevant terms of the ’107 Patent together with the
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`Court’s construction for each term.
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`Claim Language
`
`“Ethernet terminal
`equipment” / “Ethernet
`data terminal equipment”
`
`“at least one condition”
`
`Court’s Construction
`“device at which data transmission can originate or
`terminate and that is capable of Ethernet
`communication”
`Ex. 2019, order construing certain terms of the ’012
`Patent, at 13.
`
`“at least one electrical condition”
`Ex. 2021, order construing certain terms of the ’012,
`’107, ’760, and ’838 Patents , at 8.
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`Claim Language
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`“current” / “current flow”
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`“BaseT”
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`“powered off”
`
`“path coupled across”
`
`Court’s Construction
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`“a flow of electric charge.”
`Ex. 2021, order construing certain terms of the ’012,
`’107, ’760, and ’838 Patents, at 16.
`
`“twisted pair Ethernet in accordance with the
`10BASE-T or 100BASE-T standards.”
`Ex. 2021, order construing certain terms of the ’012,
`’107, ’760, and ’838 Patents, at 18.
`
`“without operating power”
`Ex. 2021, order construing certain terms of the ’012,
`’107, ’760, and ’838 Patents, at 20.
`
`“path permitting energy transfer”
`Ex. 2021, order construing certain terms of the ’012,
`’107, ’760, and ’838 Patents, at 22.
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`2. Prior Claim Constructions from the Board
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`In an earlier IPR proceeding involving the ’107 Patent, the Board construed
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`the following terms.
`
`Claim Language
`
`“path coupled across
`
`Board’s Construction
`“path permitting energy transfer” (adopting the
`District Court’s construction)14
`
`“pair of contacts”
`
`“at least two contacts which define a path for
`carrying electrical signals”15
`
`
`14 AMX, LLC v. Chrimar Sys., Inc., IPR2016-00569, Paper No. 19, at 8.
`
`15 Id. at 10.
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`Case No. IPR2016-01397
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`Claim Language
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`“powered off”
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`Board’s Construction
`“without operating power” (adopting the District
`Court’s construction)16
`
`C. Ground 1: Petitioner has not made a prima facie case that the ’838 Patent’s
`claims are obvious in view of the combination of Hunter and Bulan.
`1. Hunter
`
`Hunter discloses “[a] power subsystem and method for providing phantom
`
`power and third pair power via a computer network bus.”17 “In a preferred
`
`embodiment of the first aspect of the present invention, the bus comprises a
`
`10Base-T bus.”18 Thus, Hunter teaches providing indiscriminate power to multiple
`
`devices on a bus. Specifically, Hunter states that “the power is supplied at about
`
`48V,” which Hunter states “is consistent with the ISDN BRI requirements.”19
`
`
`16 Id.
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`17 Ex. 1003: Hunter at Abstract (emphasis added); see also, e.g., id. at 19:13–17
`
`(“[T]he present invention provides a power subsystem and method for providing
`
`phantom power and third pair power via a computer network backbone, the bus
`
`including first and second conductors.”).
`
`18 Ex. 1003: Hunter at 21:17–18.
`
`19 Ex. 1003: Hunter at 23:9-11.
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`Because Hunter teaches a power bus, the Hunter system provides operating
`
`power indiscriminately to multiple end devices. Thus, unlike the system described
`
`in the ’838 Patent, where each the central module is independently connected to
`
`each remote module in a star configuration, the power supply of the Hunter system
`
`is not independently connected to each of the devices. Petitioner ignores this
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`distinction, which is fatal to its arguments.20
`
`2. Bulan
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`Bulan discloses an “apparatus and methods for powering a digital signal
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`telecommunications terminal equipment wherein an initial power-up current in-
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`rush may exceed a normal load current by many times.”21 More specifically, it
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`describes circuitry between a power source and a single piece of network terminal
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`equipment that: (i) prevents overcurrents caused by unintended operational
`
`faults— such as power line crosses or short circuits—from damaging equipment;
`
`
`20 Hunter was also a primary reference in an ex parte reexamination of U.S.
`
`Patent No. 7,457,250 (Reexam Control No. 90/009,513), which is related to the
`
`’838 Patent. The PTO referred to Hunter by its assignee, “Intecom,” and
`
`confirmed the patentability of all claims at issue in the reexamination.
`
`21 Ex. 1004: Bulan at 1:9–12 (emphasis added).
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`while also (ii) allowing the terminal equipment to start up despite the momentary
`
`power surge that occurs when the piece of equipment is first plugged in or turned
`
`on.22 The allegedly innovative feature of Bulan is that it can protect equipment
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`from large current draws, but still allow a terminal device to start-up.
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`Bulan recognizes that a device with a DC-DC converter will present an
`
`overcurrent when the device is first plugged-in, as the DC-DC converter begins to
`
`start-up. This behavior is similar to a faulty device that is plugged-in and has a short
`
`circuit. When there is an overcurrent event, the Bulan circuitry switches a high
`
`impedance into a line providing current to substantially reduce the amount of
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`current flowing to the connected device, down to what Bulan calls a “trickle.” If
`
`the overcurrent is caused by an operational fault, the power source and the terminal
`
`equipment will remain isolated until the fault has been corrected.23 If the
`
`overcurrent is caused by the power surge accompanying startup, the Bulan system
`
`also reduces the amount of current to the device down to a “trickle” amount, but
`
`then will switch out the high impedance and allow the equipment to continue its
`
`
`22 See Ex. 1004: Bulan at 1:26–31, 1:52–2:1.
`
`23 Ex. 1004: Bulan at 6:44–46.
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`startup after the end device presents itself as an open circuit (drawing no current at
`
`all).
`
`In the case of a terminal device that is trying to startup, the system of Bulan
`
`will cut the current to the terminal device each time the current exceeds a
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`threshold. The Bulan circuitry will allow the equipment to attempt to restart
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`multiple times until it can do so without drawing current above Bulan’s threshold
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`(which should be a current magnitude within the device’s normal operating
`
`power).24 What’s important here is that in either event—operational fault or
`
`normal startup—current to the piece of equipment is substantially reduced down to
`
`a “trickle.” And in the case of a terminal device trying to startup, current is