Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 66
`Entered: December 29, 2017
`
`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.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-013971
`Patent 9,019,838 B2
`_______________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and
`Netgear, Inc. filed a petition in IPR2017-00720 (now terminated), and were
`joined to this proceeding.
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`IPR2016-01397
`Patent 9,019,838 B2
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`
`INTRODUCTION
`I.
`Juniper Networks, Inc. filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55, and 69 of
`U.S. Patent No. 9,019,838 B2 (Ex. 1001, “the ’838 patent”). Chrimar
`Systems, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”) to the Petition. On January 4, 2017, we instituted an inter
`partes review of claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55, and 69 (“the
`challenged claims”) of the ’838 patent on the following grounds:
`Claims
`Statutory Basis
`Applied References
`1, 2, 7, 26,
`35 U.S.C. § 103(a)2 Hunter et al., PCT Publication No.
`29, 38, 39,
`WO 96/23377 (published Aug. 1,
`40, 47, 55,
`1996) (Ex. 1003, “Hunter”); and
`and 69
`Bulan et al., U.S. Patent No.
`5,089,927 (issued Feb. 18, 1992)
`(Ex. 1004, “Bulan”)
`35 U.S.C. § 103(a) Bloch et al., U.S. Patent No.
`4,173,714 (issued Nov. 6, 1979) (Ex.
`1005, “Bloch”); The Institute of
`Electrical and Electronics Engineers,
`Inc., IEEE Standard 802.3-1993
`(1993) (Ex. 1006, “IEEE 802.3-
`1993”); and The Institute of
`Electrical and Electronics Engineers,
`Inc., IEEE Standard 802.3u-1995
`(1995) (Exs. 1007–1008, “IEEE
`802.3-1995”)
`
`1, 2, 7, 26,
`29, 38, 39,
`40, 47, 55,
`and 69
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to 35 U.S.C.
`§§ 102, 103. AIA § 3(b), (c). Those amendments became effective eighteen
`months later on March 16, 2013. Id. at § 3(n). Because the application from
`which the ’838 patent issued was filed before March 16, 2013, any citations
`herein to 35 U.S.C. §§ 102, 103 are to their pre-AIA versions.
`2
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`IPR2016-01397
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`
`Applied References
`Statutory Basis
`35 U.S.C. § 103(a) Bloch; IEEE 802.3-1993; IEEE
`802.3-1995; and Huizinga et al., U.S.
`Patent No. 4,046,972 (issued Sept. 6,
`1977) (Ex. 1009, “Huizinga”)
`
`Claims
`1, 2, 7, 26,
`29, 38, 39,
`40, 47, 55,
`and 69
`Paper 8 (“Dec. on Inst.”), 17–18.
`After institution, Ruckus Wireless, Inc., Brocade Communication
`Systems, Inc., and Netgear, Inc. filed a petition in IPR2017-00720
`requesting an inter partes review of the challenged claims of the ’838 patent
`and filed a motion requesting joinder to this case. Paper 24, 2. On March
`16, 2017, we joined Ruckus Wireless, Inc., Brocade Communication
`Systems, Inc., and Netgear, Inc. to this case and terminated IPR2017-00720.
`Id. at 5–6. In this Decision, we refer to Juniper Networks, Inc., Ruckus
`Wireless, Inc., Brocade Communication Systems, Inc., and Netgear, Inc.
`collectively as Petitioner.
`Also, after institution, Patent Owner filed a Response (Paper 25, “PO
`Resp.”) to the Petition, and Petitioner filed a Reply (Paper 32, “Pet. Reply”)
`to the Response. An oral hearing was held on August 31, 2017, and a
`transcript of the hearing is included in the record. Paper 63 (“Tr.”). We
`issue this Final Written Decision pursuant to 35 U.S.C. § 318(a) and 37
`C.F.R. § 42.73. For the reasons set forth below, Petitioner has shown by a
`preponderance of the evidence that claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55,
`and 69 of the ’838 patent are unpatentable.
`A.
`Related Proceedings
`The parties indicate that the ’838 patent is the subject of several cases
`in the United States District Court for the Eastern District of Michigan, the
`United States District Court for the Eastern District of Texas, and the United
`States District Court for the Northern District of California. Pet. 1; Paper 5,
`3
`
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`

`Involved U.S. Patent No.
`U.S. Patent No. 8,942,107
`U.S. Patent No. 9,019,838
`U.S. Patent No. 8,902,760
`U.S. Patent No. 8,155,012
`U.S. Patent No. 9,019,838
`U.S. Patent No. 8,155,012
`U.S. Patent No. 8,942,107
`U.S. Patent No. 8,902,760
`U.S. Patent No. 8,155,012
`U.S. Patent No. 9,019,838
`
`IPR2016-01397
`Patent 9,019,838 B2
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`2–3; Ex. 1012. The parties also indicate that the following petitions for inter
`partes review are related to this case:
`Case No.
`IPR2016-00569
`IPR2016-00573
`IPR2016-00574
`IPR2016-00983
`IPR2016-01151
`IPR2016-01389
`IPR2016-01391
`IPR2016-01399
`IPR2016-01425
`IPR2016-01426
`Pet. 1; Paper 5, 3.
`B.
`The ’838 Patent
`The ’838 patent relates to a system for managing, tracking, and
`identifying remotely located electronic equipment. Ex. 1001, 1:27–30.
`According to the ’838 patent, one of the difficulties in managing a
`computerized office environment is keeping track of a company’s electronic
`assets. Id. at 1:32–57. Previous systems for tracking electronic assets
`suffered from several deficiencies. Id. at 1:62–65. For example, previous
`systems could not determine the connection status or physical location of an
`asset and could only track assets that were powered-up. Id. at 1:65–2:2.
`To address these deficiencies, the ’838 patent describes a system for
`tracking an electronic asset. Id. at 2:3–6, 3:23–27. In one embodiment
`described in the ’838 patent, the system includes a central module and a
`remote module. Id. at 3:27–30. The remote module attaches to the
`electronic asset and transmits a low frequency signal. Id. A receiver in the
`central module monitors the signal transmitted by the remote module and
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`determines if the status or location of the electronic asset changes. Id. at
`3:30–32, 3:34–40.
`C.
`Illustrative Claim
`Claim 1 is independent and is reproduced below.
`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.
`Ex. 1001, 17:13–23.
`
`II. ANALYSIS
`A.
`Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art would have
`had “at least a B.S. degree in electrical engineering or computer science, or
`the equivalent, and at least three years of experience in the design of
`network communication products.” Pet. 5. Petitioner also argues that a
`person of ordinary skill in the art would have been “familiar with, inter alia,
`data communications protocols, data communications standards (and
`standards under development at the time), and the behavior and use of
`common data communications products available on the market.” Id. (citing
`Ex. 1002 ¶¶ 49–50). Patent Owner argues that a person of ordinary skill in
`the art would have had “a B.S. degree (or equivalent) in electrical
`engineering or computer science, and three years of experience in the design
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`of network communications products.” PO Resp. 10 (citing Ex. 2038 ¶ 26).
`Patent Owner also argues that a person of ordinary skill in the art would
`have been “familiar with data communications protocols, data
`communications standards (and standards under development at the time,
`including the 802.3 standard), and the behavior of data communications
`products available on the market.” PO Resp. 10 (citing Ex. 2038 ¶ 26).
`Patent Owner indicates that the only difference between the parties’
`respective definitions of the level of ordinary skill in the art is that Petitioner
`uses the phrase “at least.” PO Resp. 10. According to Patent Owner, the
`phrase “at least” is “too open ended” and “would result in an expert, who
`has a Ph.D. and 15 years of experience, being considered an ordinary
`artisan.” Id. Patent Owner, however, does not identify any specific instance
`in which the difference between the parties’ respective definitions of the
`level of ordinary skill in the art impacts the analysis or conclusions of either
`party, or either party’s declarant, in this case. See id.
`Our findings and conclusions in this case would be the same under
`either party’s definition of the level of ordinary skill in the art. To the extent
`necessary, though, we adopt Patent Owner’s definition, which is supported
`by the declaration of Dr. Vijay K. Madisetti. Id.; Ex. 2038 ¶ 26. As such,
`we determine that a person of ordinary skill in the art would have had a B.S.
`degree (or equivalent) in electrical engineering or computer science and
`three years of experience in the design of network communications products,
`and would have been familiar with data communications protocols, data
`communications standards (and standards under development at the time,
`including the 802.3 standard), and the behavior of data communications
`products available on the market.
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`
`B.
`Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). In applying that standard, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the
`specification. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An applicant may provide a different definition of the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`definition, limitations are not to be read into the claims from the
`specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`BaseT
`1.
`Claim 1 recites “at least one Ethernet connector comprising first and
`second pairs of contacts used to carry BaseT Ethernet communication
`signals.” Ex. 1001, 17:14–16. In a decision on institution in IPR2016-
`01391, we construed the term “BaseT” in a related patent to mean “twisted
`pair Ethernet in accordance with the 10BASE-T or 100BASE-T standards.”
`Juniper Networks, Inc. v. Chrimar Systems, Inc., Case IPR2016-01391, slip
`op. at 11–12 (PTAB Dec. 22, 2016) (Paper 9). Our construction is
`consistent with Petitioner’s proposal that the term “BaseT” be construed to
`mean “10BASE-T and 100BASE-T.” Pet. 5. Our construction also is
`consistent with the construction adopted by the United States District Court
`for the Eastern District of Texas in a related case. Ex. 2021, 18. Further,
`Patent Owner “does not contest” our construction. PO Resp. 12. We note
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`that our findings and conclusions in this case are not dependent on a
`particular construction of the term “BaseT.” Nonetheless, because neither
`party disputes our prior construction of that term, we adopt it in this case.
`Specifically, we construe the term “BaseT” in claim 1 to mean “twisted pair
`Ethernet in accordance with the 10Base-T or 100Base-T standards.”
`Protocol
`2.
`Claim 2 recites “wherein the different magnitudes of DC current flow
`are part of a detection protocol.” Ex. 1001, 17:24–26. Patent Owner
`proposes construing the term “protocol” to mean “a mutually agreed upon
`method of communication.” PO Resp. 12. Patent Owner argues that its
`proposed construction is supported by a document entitled “FYI on ‘What is
`the Internet?’” produced by the User Services Working Group of the Internet
`Engineering Task Force. Id. at 12–13 (citing Ex. 2038 ¶ 104; Ex. 2047, 1).
`Petitioner responds that Patent Owner’s proposed construction improperly
`“reads in a requirement that two devices knowingly communicate with each
`other using an agreed upon method,” which is not supported by the claim
`language or the specification. Pet. Reply 26–27.
`We agree with Petitioner that Patent Owner’s proposed construction is
`not the broadest reasonable interpretation. First, Patent Owner does not
`direct us to any intrinsic evidence to support its proposed construction, but
`instead relies on a single piece of extrinsic evidence. PO Resp. 12–13.
`Specifically, Patent Owner cites to a document that discusses the term
`“protocol” in the context of explaining how “networks that make up the
`Internet” communicate with one another. Ex. 2047, 1. That, however, is not
`the context in which the term “protocol” is used in the ’838 patent. For
`example, the ’838 patent relates to tracking electronic equipment in an
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`Ethernet network. Ex. 1001, 1:27–30, 17:13–23. As a result, we are not
`persuaded that the extrinsic evidence cited by Patent Owner establishes the
`meaning of the term “protocol” in the context of the ’838 patent.
`Second, Patent Owner’s proposed construction addresses the term
`“protocol” in isolation from the remainder of the claim language. By
`limiting the term “protocol” to a mutually agreed upon method of
`communication, Patent Owner’s proposed construction appears to require a
`communication protocol. Claim 2, though, recites a detection protocol, not a
`communication protocol. Id. at 17:24–26. Claim 2 further specifies that the
`detection protocol is based on different magnitudes of DC current flow
`detected by the central piece of network equipment via Ethernet contacts.
`Id. at 17:13–26. Patent Owner does not explain specifically why the central
`piece of network equipment must mutually agree upon a method of
`communication with other network equipment in order to detect different
`magnitudes of DC current flow. See PO Resp. 12–13; Pet. Reply 26–27.
`Third, the specification of the ’838 patent indicates that the detection
`protocol does not require a mutually agreed upon method of communication.
`For example, the ’838 patent describes one embodiment as follows:
`The existence of a connection between hub 1 and central module
`15a is monitored by test voltage source 64 and test voltage
`monitor 66 through a pair of receive data lines. Current from test
`voltage source 64 flows through a data line to an isolation
`transformer within hub 1. The current flows through the primary
`winding of the isolation transformer and returns on the other
`receive data line to the test voltage monitor 66. An interruption
`in the flow of current is detected by the test voltage monitor 66.
`. . . Similarly, current sourced onto a transmit line from signal
`modulator 7 and isolation power supply 8 through remote
`module 16a to the isolation transformer of PC 3A which returns
`on the other transmit line is monitored by test voltage monitor 84
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`
`to verify that both remote module 16a and PC 3A are connected
`to central module 15a.
`Ex. 1001, 8:6–23 (emphases added). In other words, central module 15a
`(i.e., the central piece of network equipment) monitors the existence of
`connections with hub 1, remote module 16a, and PC 3A simply by detecting
`interruptions in the DC current flow between central module 15a and those
`other pieces of network equipment. Id. Thus, the detection protocol
`described in at least this embodiment of the ’838 patent does not require a
`mutually agreed upon method of communication.
`For the foregoing reasons, we do not adopt Patent Owner’s proposed
`construction of the term “protocol.” Specifically, we determine that the term
`“protocol” in claim 2 is not limited to a mutually agreed upon method of
`communication.3 We also determine that further construction of the term
`“protocol” is not necessary to resolve the parties’ dispute regarding claim 2
`in this case. See infra Section II.C.3; Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`
`
`3 Our determination that the term “protocol” does not require a mutually
`agreed upon method of communication is consistent with the opinion of
`Patent Owner’s expert in a related district court case that “[i]n the context of
`these claims, ‘detection protocol’ means that the equipment is configured or
`designed so that the magnitude of the current (flow) or the impedance in the
`path allow it to detect or determine some information about the equipment at
`the other end of the path.” Ex. 2020, 9.
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`
`C. Obviousness of Claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55, and 69
`Over Hunter and Bulan
`Petitioner argues that claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55, and 69
`would have been obvious over Hunter and Bulan. Pet. 6. A claim is
`unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between
`the claimed subject matter and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which the subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) any objective indicia of non-obviousness. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`We have considered the parties’ arguments and supporting evidence,
`and we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55, and 69 would have
`been obvious over Hunter and Bulan.
`Overview of Hunter and Bulan
`1.
`Hunter relates to a system for providing power to terminal equipment
`in a computer network. Ex. 1003, Abstract, 16:26.4 Hunter explains that
`power can be provided to terminal equipment in one of three ways. Id. at
`16:26. First, a local power supply (e.g., in the office) can provide power to
`
`
`4 Petitioner cites to the original page numbers of Hunter, whereas Patent
`Owner cites to the page numbers that Petitioner added when Hunter was
`filed as Exhibit 1003 in this case. To avoid confusion, we cite to the original
`page numbers of Hunter.
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`the terminal equipment. Id. at 16:27–17:1. This is known as “local” power.
`Id. at 17:1–2. Second, power may be delivered to the terminal equipment
`using the same cable that carries data through the network. Id. at 17:2–3.
`This is known as “phantom” power. Id. at 17:3–5. Third, power may be
`delivered to the terminal equipment using a separate, dedicated power cable.
`Id. at 17:5–6. This is known as “third pair” power. Id. at 17:6–8.
`Hunter explains that there are advantages and disadvantages to each
`type of power. Id. at 17:9–26. For example, the advantage of phantom
`power is that it does not require a dedicated power cable, but the
`disadvantage is that it must be implemented carefully to avoid potential
`interactions between the power and the data. Id. at 17:13–19. The
`advantage of third pair power is that it separates the power from the data,
`thereby avoiding potential interactions between them, but the disadvantage
`is that it requires a dedicated power cable, which can be expensive to install.
`Id. at 17:20–26.
`Hunter describes a preferred embodiment in which phantom power is
`provided to terminal equipment using a 10Base-T Ethernet bus. Id. at
`19:18–19, 21:17–18, 37:19–20. 10Base-T is an IEEE Ethernet standard.5
`Ex. 1002 ¶ 92 n.5; Ex. 2038 ¶ 32. Hunter explains that the 10Base-T
`Ethernet bus comprises two twisted pair conductors, with one pair used for
`transmitting data from the terminal equipment and the other pair used for
`receiving data into the terminal equipment. Ex. 1003, 21:22–27, 37:20–26.
`In order to implement phantom power, Hunter teaches that the same two
`
`
`5 Thus, contrary to Patent Owner’s argument that the asserted prior art
`relates to telephone technology (PO Resp. 4), Hunter relates to Ethernet
`technology.
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`twisted pair conductors of the 10Base-T Ethernet bus that transmit data are
`used to deliver DC power to the terminal equipment. Id. at 21:27–29,
`37:26–28. Hunter explains that its phantom power embodiment is not
`limited to networks that use the 10Base-T Ethernet standard and indicates
`that it “is also compatible with Ethernet®, Token Ring®, ATM, and
`isoEthernet® standards.” Id. at 21:17–21, 26:3–11.
`Hunter further describes the preferred embodiment as including a
`current protection circuit. Id. at 22:27–23:7, 38:12–20. The current
`protection circuit can be a resettable device, such as a thermistor or polyfuse,
`which protects both the power supply and the bus from a potentially
`damaging overcurrent. Id. at 23:3–6, 38:15–19.
`Bulan relates to an improved current protection circuit. Ex. 1004,
`2:9–14. Bulan explains that a typical current protection circuit with just a
`single threshold value, such as the one described in Hunter, is inadequate
`because it cannot distinguish between a normal power up event for a DC-to-
`DC converter and an operational fault. Id. at 1:26–31, 1:52–2:8. As a result,
`a typical current protection circuit may stop current from flowing during a
`normal power up event and prevent the terminal equipment from starting
`properly, or may allow current to flow during an operational fault and
`jeopardize the terminal equipment. Id. at 1:65–2:8.
`Bulan describes an improved current protection circuit that addresses
`the aforementioned problem. Id. at 2:9–14. Specifically, Bulan teaches a
`current control apparatus that detects whether DC current flow in a path
`exceeds static and dynamic current limits, and, if so, switches a high
`impedance into the path. Id. at 3:5–21, 4:35–40, 6:34–43. If the high
`impedance reduces the DC current flow to a trickle and then zero, the
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`current control apparatus detects a normal start up event for a DC-to-DC
`converter and switches the high impedance out of the path to allow the
`terminal equipment to start up properly. Id. at 3:22–25, 4:62–5:1, 6:43–58.
`On the other hand, if the high impedance only reduces the DC current flow
`to a trickle, the current control apparatus detects an operational fault and
`keeps the high impedance in the path to protect the terminal equipment. Id.
`2.
`Claim 1
`Claim 1 recites “[a] central piece of network equipment.” Ex. 1001,
`17:13. Hunter teaches a network with a central piece of network equipment,
`such as a hub. Pet. 25–27; Ex. 1003, 32:3–9. Patent Owner does not dispute
`that the combination of Hunter and Bulan teaches the above limitation of
`claim 1.
`Claim 1 recites “at least one Ethernet connector comprising first and
`second pairs of contacts used to carry BaseT Ethernet communication
`signals.” Ex. 1001, 17:14–16. Hunter teaches a 10Base-T Ethernet bus
`comprising two twisted pair conductors for the transmission of data. Pet.
`27–28; Ex. 1002 ¶ 94; Ex. 1003, 37:19–28. Hunter also teaches connectors
`for connecting network equipment to the 10Base-T Ethernet bus. Pet. 28;
`Ex. 1002 ¶ 95; Ex. 1003, 38:21–25, Fig. 2.
`Patent Owner responds that Petitioner does not show sufficiently that
`Hunter teaches “‘Base T Ethernet’ as construed by the Board.” PO Resp.
`35. Specifically, Patent Owner argues that Hunter repeatedly refers to
`“Ethernet®,” but does not explain what the term “Ethernet®” means. Id.
`(citing Ex. 1003, 12, 14, 21, 23, 28, 35, 36). Patent Owner also contends
`that the term “Ethernet®” in Hunter refers to the original trademarked
`version of Ethernet owned by Xerox Corporation, not the subsequent non-
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`trademarked versions of Ethernet, such as 10Base-T and 100Base-T. PO
`Resp. 35 (citing Pet. 27; Ex. 1002 ¶ 93 n.8).
`Patent Owner’s argument is not persuasive. Patent Owner does not
`dispute that the term “BaseT Ethernet” in claim 1 includes 10Base-T
`Ethernet. PO Resp. 34–35. As discussed above, Hunter teaches a 10Base-T
`Ethernet bus comprising two twisted pair conductors for the transmission of
`data. Pet. 27–28; Pet. Reply 16; Ex. 1003, 26:3–6, 37:19–28. For example,
`Hunter teaches the following:
`In the illustrated embodiment, the bus comprises a 10Base-T bus.
`A l0Base-T bus conventionally comprises two twisted-pair
`conductors 240, 250, each used for unidirectional transmission
`of data. Thus, in this embodiment, one of the twisted pairs (say,
`250) is employed for transmitting data from the equipment 260,
`while the other of the twisted-pairs (say, 240) is used for
`receiving data into the equipment 260. The present invention
`preferably employs each of the twisted-pair conductors as a rail
`by which to deliver DC power to the equipment 260.
`Ex. 1003, 37:19–28 (emphasis added). Thus, regardless of whether Hunter’s
`use of the term “Ethernet®” includes 10Base-T Ethernet, Hunter
`independently teaches 10Base-T Ethernet.6 Id.
`Patent Owner also responds that Petitioner does not show sufficiently
`that the two twisted pair conductors of the 10Base-T Ethernet bus in Hunter
`carry Base-T Ethernet communication signals, as required by claim 1. PO
`Resp. 40–42. Specifically, Patent Owner argues that hubs 140, 150, 160,
`180 in Figure 1 of Hunter are connected to multimedia hub 120 through
`isoEthernet interfaces. Id. at 41 (citing Ex. 1003, 34:19–21, 35:14–16,
`
`
`6 There is no dispute that 10Base-T is an IEEE Ethernet standard. Ex. 1002
`¶ 92 n.5; Ex. 2038 ¶ 32.
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`35:27–28, 36:13–17, 36:28–37:2). According to Patent Owner, isoEthernet
`interfaces only carry Integrated Services Digital Network (“ISDN”) signals,
`not Ethernet signals. PO Resp. 41 (citing Ex. 1003, 17:15–18; Ex. 2038 ¶
`250). Patent Owner also argues that hub 170 in Figure 1 of Hunter is
`connected to multimedia hub 120 through a 10Base-F interface. PO Resp.
`41 (citing Ex. 1003, 36:20). According to Patent Owner, a 10Base-F
`interface requires a fiber connection, and “fiber cannot carry electrical
`current.” PO Resp. 41–42 (citing Ex. 2038 ¶ 252).
`Patent Owner’s argument is not persuasive. Patent Owner focuses on
`the embodiment shown in Figure 1 of Hunter. PO Resp. 40–42. Hunter,
`though, is not limited to that embodiment. Hunter teaches that preferably
`“the bus comprises a 10Base-T bus,” but notes that “[t]hose of skill in the art
`will recognize . . . that the present invention is also compatible with
`Ethernet®, Token Ring®, ATM and isoEthernet® standards.” Ex. 1003,
`21:17–21, 26:3–11 (emphasis added). Similarly, claim 3 of Hunter states
`that the “bus comprises a two-pair twisted-pair bus selected from the group
`consisting of: 10Base-T, Ethernet®, Token Ring®, ATM, 100Base-T, and
`isoEthernet®.” Ex. 1003, 51 (emphases added). These portions of Hunter
`teach a network that preferably uses a 10Base-T Ethernet bus for connecting
`network equipment, but alternatively may use an isoEthernet bus.
`Therefore, contrary to Patent Owner’s argument, Hunter is not limited to an
`embodiment in which network equipment is connected by isoEthernet
`interfaces.
`Moreover, even if Hunter is limited to an embodiment in which
`network equipment is connected by isoEthernet interfaces, Patent Owner’s
`argument still is not persuasive. As discussed above, Patent Owner alleges
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`that isoEthernet interfaces only carry ISDN signals, not Ethernet signals. PO
`Resp. 41 (citing Ex. 1003, 17:15–18; Ex. 2038 ¶ 250). The evidence cited
`by Patent Owner, however, does not support that argument. The portion of
`Hunter cited by Patent Owner indicates that isoEthernet interfaces can carry
`ISDN signals, but does not establish that isoEthernet interfaces only carry
`ISDN signals. Ex. 1003, 15:15–18. Further, the portion of Dr. Madisetti’s
`declaration cited by Patent Owner states that “isoEthernet used ISDN
`signals, not Ethernet,” but Dr. Madisetti provides no support for that
`statement other than citing the same portion of Hunter discussed above. Ex.
`2038 ¶ 250. In contrast, the documentary evidence that Petitioner submitted
`with the Petition (Pet. iv (exhibit list); Pet. Reply 16) indicates that
`isoEthernet includes a 10Base-T mode in which the “IsoEthernet layer
`functions as a 10Base-T transceiver” (Ex. 1010, 165).7 As a result, even if
`we accept Patent Owner’s premise that hub 120 in Figure 1 of Hunter
`communicates with hubs 140, 150, 160, 180 using isoEthernet interfaces, the
`evidence of record indicates that isoEthernet interfaces carry 10Base-T
`Ethernet signals at least when used in the 10Base-T mode of isoEthernet.
`Patent Owner’s argument regarding 10Base-T hub 170 in Figure 1 of
`Hunter also is not persuasive for an additional reason. As discussed above,
`Patent Owner alleges that 10Base-T hub 170 is connected to multimedia hub
`120 only through a 10Base-F interface. PO Resp. 41 (citing Ex. 1003,
`36:20). The evidence cited by Patent Owner, however, does not support that
`argument. The cited portion of Hunter states that “[t]he 10Base-T hub 170
`
`
`7 We cite to the page numbers that Petitioner added to Exhibit 1010. Also,
`like Hunter, Exhibit 1010 refers to the IEEE 802.9a standard for isoEthernet.
`Ex. 1003, 15:15–18; Ex. 1010, 160.
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`further provides an Ethernet® AU interface and a single 10Base-F network
`interface.” Ex. 1003, 34:19–20 (emphasis added). The phrase “further
`provides” in this portion of Hunter indicates that 10Base-T hub 170 includes
`an AU interface and a 10Base-F interface, but does not establish that
`10Base-T hub 170 only includes an AU interface and a 10Base-F interface.
`Id. Further, Hunter teaches that multimedia hub 120 includes a 10Base-T
`repeater, and Figure 1 of Hunter shows that the 10Base-T repeater in
`multimedia hub 120 is connected to 10Base-T hub 170 over the 10Base-T
`Ethernet bus. Pet. Reply 16; Ex. 1003, 26:3–8, 32:16–27, 34:18–20, 37:19–
`28, Fig. 1. This indicates that the 10Base-T Ethernet bus in Hunter carries
`10Base-T Ethernet signals from the 10Base-T repeater in multimedia hub
`120 to 10Base-T hub 170.
`
`At the oral hearing, Patent Owner further argued that, although Hunter
`teaches a 10Base-T Ethernet bus, Hunter does not teach that the 10Base-T
`Ethernet bus carries both 10Base-T Ethernet signals and DC power. Tr.
`126:9–127:11. According to Patent Owner, when the 10Base-T Ethernet bus
`carries DC power, it only carries ISDN signals. Id. at 128:22–129:3. Patent
`Owner reads Hunter too narrowly. For example, Hunter teaches the
`following:
`In the illustrated embodiment, the bus comprises a 10Base-T
`bus. A l0Base-T bus conventionally comprises two twisted-pair
`conductors 240, 250, each used for unidirectional transmission
`of data. Thus, in this embodiment, one of the twisted pairs
`(say, 250) is employed for transmitting data from the equipment
`260, while the other of the twisted-pairs (say, 240) is used for
`receiving data into the equipment 260. The present invention
`preferably employs each of the twisted-pair conductors as a rail
`by which to deliver DC power to the equipment 260.
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`Ex. 1003, 37:19–28 (emphases added). In other