Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 73
`Entered: April 26, 2018
`
`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 IPR2016-013991
`Patent 8,902,760 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 IPR2017-00719 (now terminated), and were
`joined to this proceeding.
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`
`I.
`INTRODUCTION
`Juniper Networks, Inc. filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1, 31, 37, 59, 69, 72, 73, 106, 112, 134, 142,
`and 145 of U.S. Patent No. 8,902,760 B2 (Ex. 1001, “the ’760 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, 31, 37, 59, 69, 72, 73, 106, 112, 134, 142,
`and 145 (“the challenged claims”) of the ’760 patent on the following
`grounds:
`Claims
`1, 31, 37, 59,
`69, 72, 73,
`106, 112,
`134, 142, and
`145
`
`Applied References
`Statutory Basis
`35 U.S.C. § 103(a)2 Hunter et al., PCT Publication No.
`WO 96/23377 (published Aug. 1,
`1996) (Ex. 1003, “Hunter”); and
`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, 31, 37, 59,
`69, 72, 73,
`106, 112,
`134, 142, and
`145
`
`
`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 ’760 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
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`
`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, 31, 37, 59,
`69, 72, 73,
`106, 112,
`134, 142, and
`145
`Paper 8 (“Dec. on Inst.”), 20–21.
`After institution, Ruckus Wireless, Inc., Brocade Communication
`Systems, Inc., and Netgear, Inc. filed a petition in IPR2017-00719
`requesting an inter partes review of the challenged claims of the ’760 patent
`and filed a motion requesting joinder to this case. Paper 25, 2. On March
`16, 2017, we joined Ruckus Wireless, Inc., Brocade Communication
`Systems, Inc., and Netgear, Inc. to this case and terminated IPR2017-00719.
`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 26, “PO Resp.”) to the Petition, and Petitioner filed a Reply
`(Paper 33, “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.”).
`On September 18, 2017, an ex parte reexamination certificate issued
`for the ’760 patent. Ex. 2056. The ex parte reexamination certificate
`amends independent claim 73 and dependent claim 145. Id. at 1:18–19,
`1:23–2:9. The ex parte reexamination certificate also amends dependent
`claims 106, 112, 134, and 142, by virtue of their dependency from amended
`claim 73. Id. at 1:20–22. We instituted an inter partes review of claims 73,
`106, 112, 134, 142, and 145, as originally issued, and, thus, we address the
`patentability of original claims 73, 106, 112, 134, 142, and 145 in this
`
`3
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`Decision.3 See infra Sections II.C, II.D; 35 U.S.C. § 318(a) (“the Patent
`Trial and Appeal Board shall issue a final written decision with respect to
`the patentability of any patent claim challenged by the petitioner”).
`Petitioner, however, does not challenge the patentability of claims 73, 106,
`112, 134, 142, and 145, as amended by the ex parte reexamination
`certificate, in the Petition. See Pet. 7. Therefore, we did not institute an
`inter partes review of amended claims 73, 106, 112, 134, 142, and 145, and
`we do not address the patentability of amended claims 73, 106, 112, 134,
`142, and 145 in this Decision. See infra Section II.E; 35 U.S.C. § 318(a).
`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, 31, 37, 59, 69, and 72, and
`original claims 73, 106, 112, 134, 142, and 145 of the ’760 patent are
`unpatentable.
`A.
`Related Proceedings
`The parties indicate that the ’760 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 Patent Owner’s amendment of original claims 73, 106, 112, 134, 142, and
`145 in the ex parte reexamination also may be considered a concession of
`unpatentability, and, thus, a request for adverse judgment as to original
`claims 73, 106, 112, 134, 142, and 145. See 37 C.F.R. § 42.73(b)(3); Bloom
`Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247, 1249 (Fed. Cir. 1997) (“the
`making of substantive changes in the claims is treated as an irrebuttable
`presumption that the original claims were materially flawed”).
`
`4
`
`

`

`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. 9,019,838
`U.S. Patent No. 8,155,012
`U.S. Patent No. 9,019,838
`
`IPR2016-01399
`Patent 8,902,760 B2
`
`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
`IPR2016-01397
`IPR2016-01425
`IPR2016-01426
`Pet. 1; Paper 5, 3.
`B.
`The ’760 Patent
`The ’760 patent relates to a system for managing, tracking, and
`identifying remotely located electronic equipment. Ex. 1001, 1:27–30.
`According to the ’760 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 ’760 patent describes a system for
`tracking an electronic asset. Id. at 2:3–6, 3:23–27. In one embodiment
`described in the ’760 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
`
`5
`
`

`

`
`
`IPR2016-01399
`Patent 8,902,760 B2
`
`determines if the status or location of the electronic asset changes. Id. at
`3:30–32, 3:34–40.
`C.
`Illustrative Claim
`Claims 1 and 73 are independent. Claim 1 is reproduced below.
`1. A BaseT Ethernet system comprising:
`a piece of central BaseT Ethernet equipment;
`a piece of BaseT Ethernet terminal equipment;
`data signaling pairs of conductors comprising first and
`second pairs used to carry BaseT Ethernet communication
`signals between the piece of central BaseT Ethernet equipment
`and the piece of BaseT Ethernet terminal equipment, the first
`and second pairs physically connect between the piece of BaseT
`Ethernet terminal equipment and the piece of central BaseT
`Ethernet equipment, the piece of central BaseT Ethernet
`equipment having at least one DC supply, the piece of BaseT
`Ethernet terminal equipment having at least one path to draw
`different magnitudes of current flow from the at least one DC
`supply through a loop formed over at least one of the
`conductors of the first pair and at least one of the conductors of
`the second pair, the piece of central BaseT Ethernet equipment
`to detect at least two different magnitudes of the current flow
`through the loop and to control the application of at least one
`electrical condition to at least two of the conductors.
`Ex. 1001, 17:16–36.
`
`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,
`
`6
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`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 ¶¶ 49–51). 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
`of network communications products.” PO Resp. 14 (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. 14 (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. 14. 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. at 14–15. 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.
`
`7
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`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.
`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).
`1.
`BaseT
`The challenged claims include the term “BaseT.” See, e.g., Ex. 1001,
`17:16–36, 21:37–52. In a decision on institution in IPR2016-01391, which
`involves the same parties, 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).
`
`8
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`Our construction is consistent with Petitioner’s proposal that the term
`“BaseT” be construed to mean “10BASE-T and 100BASE-T.” Pet. 6. Our
`construction also is consistent with the construction adopted by the United
`States District Court for the Eastern District of Texas (“District Court”) in a
`related case. Ex. 2021, 18. Further, Patent Owner “does not contest” our
`construction. PO Resp. 19. We note 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
`the challenged claims to mean “twisted pair Ethernet in accordance with the
`10Base-T or 100Base-T standards.”
`2.
`Protocol
`Claim 59 and original claim 134 recite “wherein at least one of the
`different magnitudes of current flow through the loop is part of a detection
`protocol.” Ex. 1001, 20:61–63, 25:13–15. Patent Owner proposes
`construing the term “protocol” to mean “a mutually agreed upon method of
`communication.” PO Resp. 18. 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. (citing Ex. 2038 ¶ 104; Ex. 2047, 1). Petitioner
`responds that Patent Owner’s proposed construction improperly “reads in a
`requirement that two devices use an agreed upon communication method,”
`which is not supported by the claim language or the specification. Pet.
`Reply 21–22.
`We agree with Petitioner that Patent Owner’s proposed construction is
`not the broadest reasonable interpretation. First, Patent Owner does not
`
`9
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`direct us to any intrinsic evidence to support its proposed construction, but
`instead relies on a single piece of extrinsic evidence. PO Resp. 18.
`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 ’760 patent. For
`example, the ’760 patent relates to tracking electronic equipment in an
`Ethernet network. Ex. 1001, 1:27–30, 17:16–36. 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 ’760 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. Claims 59 and 134, though, recite a detection
`protocol, not a communication protocol. Id. at 20:61–63, 25:13–15. Claims
`59 and 134 further specify that the detection protocol is based on at least one
`magnitude of current flow detected by the central Base-T Ethernet
`equipment. Id. Patent Owner does not explain specifically why the central
`Base-T Ethernet equipment must mutually agree upon a method of
`communication with other network equipment to detect a magnitude of
`current flow. See PO Resp. 18; Pet. Reply 21–22.
`Third, the specification of the ’760 patent indicates that the detection
`protocol does not require a mutually agreed upon method of communication.
`For example, the ’760 patent describes one embodiment as follows:
`
`10
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`
`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 to verify that both remote module 16a and PC 3A
`are connected to central module 15a.
`Ex. 1001, 8:6–24 (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 ’760 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 claims 59 and 134 is not limited to a mutually agreed upon
`method of communication.4 We also determine that further construction of
`
`4 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.
`
`11
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`the term “protocol” is not necessary to resolve the parties’ dispute regarding
`claims 59 and 134 in this case. See infra Section II.C.5; 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.
`Powered-Off
`Claim 72 and original claim 145 recite “wherein the piece of BaseT
`Ethernet terminal equipment is a powered-off piece of BaseT Ethernet
`equipment.” Ex. 1001, 21:33–36, 25:46–49. In a decision on institution in
`IPR2016-01391, which involves the same parties, we construed the term
`“powered-off” in a related patent to mean “without operating power.”
`Juniper Networks, Case IPR2016-01391, slip op. at 9–10 (Paper 9). Our
`construction is consistent with Petitioner’s proposal that the term “powered-
`off” be construed to mean “without operating power.” Pet. 6. Our
`construction also is consistent with the construction adopted by the District
`Court in a related case. Ex. 2021, 20.
`The parties do not dispute our previous construction, but the parties’
`arguments indicate that our interpretation of “without operating power”
`requires further clarification. Pet. 6; PO Resp. 16–18; Pet. Reply 24–28.
`Specifically, Petitioner argues that “without operating power” allows for
`power to be applied to the Base-T Ethernet terminal equipment (Pet. 6), such
`as power for a component of the Base-T Ethernet terminal equipment (Pet.
`Reply 24–28). Patent Owner contends that the phrase “without operating
`power” does not allow for operating power to be applied to the Base-T
`Ethernet terminal equipment. PO Resp. 17–18. We find that both parties’
`requested clarifications are supported by the intrinsic evidence. Specifically,
`
`12
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`the ’760 patent indicates that power can be applied to a component of the
`Base-T Ethernet terminal equipment (as Petitioner contends), even though
`operating power is not applied to the Base-T Ethernet terminal equipment
`(as Patent Owner contends).
`The ’760 patent explains that one of the problems with previous
`tracking systems is that they could only track assets that were powered-up.
`Ex. 1001, 1:62––2:2. To address that problem, the ’760 patent describes a
`tracking system that can “identify[] the location of network assets without
`applying power to the assets.” Id. at 12:57–59 (emphasis added); see also
`id. at 5:4–6 (“identifying the existence and location of network assets
`without power being applied to the assets”). Specifically, the ’760 patent
`describes a remote module that attaches to an electronic asset, such as a
`piece of Base-T Ethernet terminal equipment. Id. at 3:27–30. A central
`module then supplies a DC current for powering the remote module so that
`the central module can track the connection status of the remote module and
`the attached Base-T Ethernet terminal equipment. Id. at 5:39–43, 5:64–67,
`8:6–24. Thus, the specification of the ’760 patent describes applying power
`to the remote module even when the attached Base-T Ethernet terminal
`equipment is powered-off.
`Some of the aforementioned features of the ’760 patent are included
`in claims 1 and 73, which recite that the piece of central Base-T Ethernet
`equipment has a “DC supply,” and the piece of Base-T Ethernet terminal
`equipment has “at least one path to draw different magnitudes of current
`flow from the at least one DC supply.” Id. at 17:26–30, 21:43–47. Notably,
`claims 1 and 73 do not recite a remote module separate from the Base-T
`Ethernet terminal equipment, thereby supporting Petitioner’s position that
`
`13
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`the remote module is a component of the Base-T Ethernet terminal
`equipment. Id. Thus, we determine that the intrinsic evidence indicates that
`“without operating power” allows for power to be applied to a component of
`the Base-T Ethernet terminal equipment, but does not allow for operating
`power to be applied to the Base-T Ethernet terminal equipment.
`For the foregoing reasons, we maintain our previous construction that
`the term “powered-off” in claims 72 and 145 means “without operating
`power.” We clarify, though, that “without operating power” includes
`applying power to a component of the Base-T Ethernet terminal equipment,
`but does not include applying operating power to the Base-T Ethernet
`terminal equipment.
`C. Obviousness of Claims 1, 31, 37, 59, 69, 72, 73, 106, 112, 134,
`142, and 145 over Hunter and Bulan
`Petitioner argues that claims 1, 31, 37, 59, 69, 72, 73, 106, 112, 134,
`142, and 145 would have been obvious over Hunter and Bulan. Pet. 7. 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
`
`14
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`evidence that claims 1, 31, 37, 59, 69, and 72, and original claims 73, 106,
`112, 134, 142, and 145 would have been obvious over Hunter and Bulan.
`1.
`Overview of Hunter and Bulan
`Hunter relates to a system for providing power to terminal equipment
`in a computer network. Ex. 1003, Abstract, 16:26.5 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
`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.
`
`
`5 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.
`
`15
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`
`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.6
`Ex. 1002 ¶ 100 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
`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-
`
`
`6 Thus, contrary to Patent Owner’s argument that the asserted prior art
`relates to telephone technology (PO Resp. 4), Hunter relates to Ethernet
`technology.
`
`16
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`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
`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.
`Claims 1 and 73
`Claim 1 recites “[a] BaseT Ethernet system” comprising “a piece of
`central BaseT Ethernet equipment” and “a piece of BaseT Ethernet terminal
`equipment.” Ex. 1001, 17:16–18. Hunter teaches a 10Base-T Ethernet
`system with a piece of central 10Base-T Ethernet equipment, such as a hub,
`and a piece of 10Base-T Ethernet terminal equipment, such as an Integrated
`Services Terminal Equipment (“ISTE”) device. Pet. 25–29; Ex. 1003,
`23:18–20, 32:7–9, 34:18–19, 37:19–28, 39:14–15, Figs. 1, 2.
`
`17
`
`

`

`IPR2016-01399
`Patent 8,902,760 B2
`
`
`Patent Owner responds that Petitioner does not show sufficiently that
`Hunter teaches a Base-T Ethernet system. PO Resp. 34–35, 45–47.
`Specifically, Patent Owner argues that Hunter repeatedly refers to
`“Ethernet®,” but does not explain what the term “Ethernet®” means. Id. at
`34 (citing Ex. 1003, 12, 14, 21, 23, 28, 35, 36). Patent Owner contends that
`the term “Ethernet®” in Hunter refers to the original trademarked version of
`Ethernet owned by Xerox Corporation, not the subsequent non-trademarked
`versions of Ethernet, such as 10Base-T and 100Base-T. PO Resp. 34 (citing
`Pet. 26; Ex. 1002 ¶ 101 n.6). In addition, Patent Owner alleges that “[w]hile
`Hunter mentions the terms ‘10Base-T’ and ‘100Base-T,’ he is referring to
`twisted pair wiring, not Ethernet.” PO Resp. 46–47 (citing Ex. 1003, 21:22–
`24, 26:5–8, 51 (claim 3); Ex. 2038 ¶¶ 197–198).
`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. 18–19. As discussed above, Hunter teaches a 10Base-T
`Ethernet bus comprising two twisted pair conductors for the transmission of
`data. Pet. 25–30; Pet. Reply 11–12; 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-pa