Paper 13
`Trials@uspto.gov
`Entered: January 12, 2017
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`D-LINK SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01426
`Patent 9,019,838 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: January 12, 2017
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`D-LINK SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01426
`Patent 9,019,838 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-01426
`Patent 9,019,838 B2
`
`
`INTRODUCTION
`I.
`D-Link Systems, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1, 2, 7, 26, 40, 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 7, “Prelim.
`Resp.”) to the Petition. An inter partes review may not be instituted “unless
`. . . 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).
`For the reasons set forth below, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing the unpatentability of claims
`1, 2, 7, 26, 40, and 69 of the ’838 patent. Accordingly, the Petition is
`denied, and no trial is instituted.
`Related Proceedings
`A.
`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,
`2–3; Ex. 1003. The parties also indicate that the following petitions for inter
`partes review are related to this case:
`Case No.
`IPR2016-00569
`IPR2016-00572
`IPR2016-00573
`IPR2016-00574
`IPR2016-00983
`IPR2016-01151
`IPR2016-01389
`IPR2016-01391
`
`Involved U.S. Patent No.
`U.S. Patent No. 8,942,107
`U.S. Patent No. 9,049,019
`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
`
`2
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`IPR2016-01426
`Patent 9,019,838 B2
`
`
`U.S. Patent No. 9,019,838
`U.S. Patent No. 8,902,760
`U.S. Patent No. 8,155,012
`
`IPR2016-01397
`IPR2016-01399
`IPR2016-01425
`Pet. 1–2; Paper 5, 3.
`The ’838 Patent
`B.
`The ’838 patent relates to a system for managing, tracking, and
`identifying remotely located electronic equipment. Ex. 1001, col. 1, ll. 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 col. 1, ll. 32–57. Previous systems for tracking electronic
`assets suffered from several deficiencies. Id. at col. 1, ll. 62–65. For
`example, previous systems could not determine the connection status or
`physical location of the asset and could only track those assets that were
`powered-up. Id. at col. 1, l. 65–col. 2, l. 2.
`To address these deficiencies, the ’838 patent describes a system for
`tracking an electronic asset using existing network wires. Id. at col. 2, ll. 3–
`6, col. 3, ll. 23–27. The system includes a central module and a remote
`module. Id. at col. 3, ll. 27–30. The remote module attaches to the
`electronic asset and transmits information to the central module by
`impressing a low frequency signal on the existing network wires. Id. A
`receiver in the central module monitors the information transmitted by the
`remote module. Id. at col. 3, ll. 30–32. The central module determines if the
`location of the electronic asset changes, and a database is updated
`accordingly. Id. at col. 3, ll. 37–40.
`Illustrative Claim
`C.
`Claim 1 is independent and is reproduced below.
`1. A central piece of network equipment comprising:
`
`
`
`3
`
`
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`IPR2016-01426
`Patent 9,019,838 B2
`
`
`Ex. 1007
`
`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, col. 17, ll. 13–23.
`Evidence of Record
`D.
`Petitioner relies on the following references and declaration (Pet. 3):
`Reference or Declaration
`Exhibit No.
`Chang et al., U.S. Patent No. 5,991,885 (issued Nov. 23,
`Ex. 1006
`1999) (“Chang”)
`Patton, U.S. Patent No. 5,121,482 (issued June 9, 1992)
`(“Patton”)
`Hunter et al., PCT Publication No. WO 96/23377
`(published Aug. 1, 1996) (“Hunter”)
`Bulan et al., U.S. Patent No. 5,089,927 (issued Feb. 18,
`1992) (“Bulan”)
`Declaration of Andrew Wolfe, Ph.D. (“Wolfe Declaration”) Ex. 1014
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 4):
`Claim(s)
`Basis
`1, 2, 7, 26, 40, and 69 35 U.S.C. § 103(a)
`1, 2, 7, 26, 40, and 69 35 U.S.C. § 103(a)
`II. ANALYSIS
`A. 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
`
`Reference(s)
`Chang and Patton
`Hunter and Bulan
`
`Ex. 1008
`
`Ex. 1009
`
`4
`
`
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`IPR2016-01426
`Patent 9,019,838 B2
`
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). The parties identify several claim terms in the
`’838 patent that have been construed in related cases. Pet. 12; Prelim. Resp.
`21–23. On this record and for purposes of this decision, we determine that
`no claim terms require express construction to resolve the parties’ disputes
`regarding the asserted grounds of unpatentability in this case. See infra
`Section II.D; 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.”).
`Priority Date of the ’838 Patent
`B.
`Petitioner argues that the ’838 patent is not entitled to the benefit of
`the filing date of U.S. Provisional Application No. 60/081,279 (Ex. 1005,
`“the ’279 provisional”) because the ’279 provisional does not provide
`sufficient written description of claim 1 of the ’838 patent. Pet. 10–12. As
`discussed below, even if we assume that the references relied on in the
`asserted grounds of unpatentability are prior art to the ’838 patent, Petitioner
`does not demonstrate a reasonable likelihood of prevailing in showing the
`unpatentability of claims 1, 2, 7, 26, 40, and 69 of the ’838 patent. See infra
`Section II.D. Therefore, on this record and for purposes of this decision, we
`need not determine whether the ’838 patent is entitled to the benefit of the
`filing date of the ’279 provisional.
`Identification of Real Parties-in-Interest
`C.
`Patent Owner argues that the Petition should be denied because
`Petitioner did not identify D-Link Corporation as a real party-in-interest in
`the Petition. Prelim. Resp. 13–20. As discussed below, we deny the Petition
`because Petitioner does not demonstrate a reasonable likelihood of
`
`5
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`IPR2016-01426
`Patent 9,019,838 B2
`
`prevailing in showing the unpatentability of claims 1, 2, 7, 26, 40, and 69 of
`the ’838 patent. See infra Section II.D. Therefore, on this record and for
`purposes of this decision, we need not determine whether D-Link
`Corporation is a real party-in-interest.
`Asserted Grounds of Unpatentability
`D.
`Obviousness of Claims 1, 2, 7, 26, 40, and 69 Over
`1.
`Chang and Patton
`Petitioner argues that claims 1, 2, 7, 26, 40, and 69 would have been
`obvious over Chang and Patton. Pet. 4. We have reviewed the parties’
`assertions and supporting evidence. For the reasons discussed below,
`Petitioner does not demonstrate a reasonable likelihood of prevailing in
`showing that claims 1, 2, 7, 26, 40, and 69 would have been obvious over
`Chang and Patton.
`
`Claim 1
`a.
`Claim 1 recites “at least one Ethernet connector comprising first and
`second pairs of contacts used to carry BaseT Ethernet communication
`signals.” Ex. 1001, col. 17, ll. 14–16. Petitioner argues that Chang teaches
`“an 8-pin connector for user interface connector 204 at TABLE II
`specifically for Ethernet 10BaseT and 100BaseTX protocol.” Pet. 18 (citing
`Ex. 1006, col. 5, ll. 27–29). Petitioner, however, does not identify
`specifically which pins in the 8-pin connector are the first and second pairs
`of contacts used to carry BaseT Ethernet communication signals. See Pet.
`18. Nonetheless, Tables I and II in Chang indicate that pins 1, 2, 3, and 6 in
`the 8-pin connector are the two pairs of contacts used to carry BaseT
`Ethernet communication signals. Ex. 1006, col. 9, ll. 45–55, col. 13, ll. 13–
`29. Chang further confirms that “[l]ines 500-1, 500-2, 500-3, and 500-6
`
`6
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`IPR2016-01426
`Patent 9,019,838 B2
`
`carry signals,” whereas “[l]ines 500-4, 500-5, 500-7 and 500-8 are normally
`left open.” Id. at col. 9, ll. 6–9 (emphasis omitted).
`Claim 1 also recites “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.” Ex. 1001, col. 17, ll. 17–19. In other
`words, this limitation requires that the central piece of network equipment
`detect different magnitudes of DC current flow via at least one of the
`contacts of the same pairs of contacts used to carry the BaseT Ethernet
`communication signals. Id. Petitioner argues that Chang teaches remote
`terminals that transmit a continuous presence signal. Pet. 18 (citing Ex.
`1006, col. 11, ll. 11–23). According to Petitioner, the continuous presence
`signal has a different voltage when transmitted by different types of remote
`terminals. Pet. 18 (citing Ex. 1006, col. 11, ll. 11–23). Further, Petitioner
`argues that “different voltages correspond to different current flow” and,
`“[t]hus, one of ordinary skill in the art would have recognized that changes
`in voltage can intrinsically reflect changes in current flow.” Pet. 19.
`As Patent Owner points out, though, Petitioner does not identify
`specific evidence indicating that the central piece of network equipment in
`Chang detects the continuous presence signal via at least one of the contacts
`of the same pairs of contacts used to carry the BaseT Ethernet
`communication signals. Prelim. Resp. 25–28. In fact, Petitioner directs us
`to Table II in Chang, which indicates that the continuous presence signal is
`carried using pins 7 or 8, not any of pins 1, 2, 3, or 6 that are used to carry
`the BaseT Ethernet communication signals. Pet. 19; Ex. 1006, col. 13, ll.
`13–29. Chang explains that the continuous presence signal is carried on a
`different line than the BaseT Ethernet communications signals in order to
`
`7
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`IPR2016-01426
`Patent 9,019,838 B2
`
`avoid interference with the communication signals. Ex. 1006, col. 2, ll. 49–
`62, col. 10, ll. 3–7. Thus, on this record, Petitioner has not shown
`sufficiently that Chang teaches the above limitation in claim 1.
`
`Petitioner also argues that, to the extent Chang does not teach the
`above limitation in claim 1, Patton compensates for that deficiency. Pet. 20.
`Specifically, Petitioner argues that Patton teaches a detection mechanism
`that is coupled directly to data signal lines. Id. (citing Ex. 1006, col. 2, ll.
`49–55; Ex. 1007, Abstract). Petitioner argues that it would have been
`obvious to combine the cited teachings in Chang and Patton because
`“Patton’s circuitry can be adapted by Chang’s system to achieve Chang’s
`described objectives” and because “the detection mechanism based on
`voltage of Chang is functionally similar to Patton’s impedance-based
`detection mechanism.” Pet. 15.
`On this record, Petitioner has not shown sufficiently that it would
`have been obvious to combine the cited teachings in Chang and Patton. To
`show that a claim would have been obvious over a combination of prior art
`references, Petitioner “must articulate a reason why a [person having
`ordinary skill in the art] would combine the prior art references.” In re
`Nuvasive, No. 2015-1670, 2016 WL 7118526, at *4 (Fed. Cir. Dec. 7, 2016);
`see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“there
`must be some articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness”). Here, Petitioner does not
`articulate sufficiently a reason why a person of ordinary skill in the art would
`have combined the cited teachings in Chang and Patton. See Pet. 15. For
`example, Petitioner does not explain specifically what objectives in Chang
`would have been achieved by the circuitry in Patton. See id.
`
`8
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`IPR2016-01426
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`
`For the foregoing reasons, Petitioner does not demonstrate a
`
`reasonable likelihood of prevailing in showing that claim 1 would have been
`obvious over Chang and Patton.
`Claims 2, 7, 26, 40, and 69
`b.
`Claims 2, 7, 26, 40, and 69 depend, directly or indirectly, from claim
`1. Thus, for the same reasons discussed above with respect to claim 1,
`Petitioner does not demonstrate a reasonable likelihood of prevailing in
`showing that claims 2, 7, 26, 40, and 69 would have been obvious over
`Chang and Patton. See supra Section II.D.1.a.
`Obviousness of Claims 1, 2, 7, 26, 40, and 69 Over
`2.
`Hunter and Bulan
`Petitioner argues that claims 1, 2, 7, 26, 40, and 69 would have been
`obvious over Hunter and Bulan. Pet. 4. We have reviewed the parties’
`assertions and supporting evidence. For the reasons discussed below,
`Petitioner does not demonstrate a reasonable likelihood of prevailing in
`showing that claims 1, 2, 7, 26, 40, and 69 would have been obvious over
`Hunter and Bulan.
`
`Claim 1
`a.
`Claim 1 recites “at least one Ethernet connector comprising first and
`second pairs of contacts used to carry BaseT Ethernet communication
`signals.” Ex. 1001, col. 17, ll. 14–16. For this limitation in claim 1,
`Petitioner argues that Hunter teaches a connector for two twisted-pair
`conductors in a BaseT Ethernet system. Pet. 27–28 (citing Ex. 1008, 20:7–
`18). Claim 1 also recites “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.” Ex. 1001, col. 17, ll. 17–19. For this
`limitation in claim 1, Petitioner argues that Bulan teaches a current control
`
`9
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`IPR2016-01426
`Patent 9,019,838 B2
`
`apparatus “that continuously monitors the level of DC current in the path
`that loops from the positive terminal of the Hub’s phantom power supply to
`the TE and back to the negative terminal of the power supply.” Pet. 28–29
`(citing Ex. 1009, col. 2, ll. 26–28, col. 4, ll. 20–33, col. 4, ll. 49–50). Lastly,
`claim 1 recites “the central piece of network equipment . . . 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, col. 17, ll. 17–23. Petitioner
`does not address this limitation in claim 1 in the Petition. See Pet. 28–29.
`Petitioner argues that it would have been obvious to combine the cited
`teachings in Hunter and Bulan. Id. at 25–26. Specifically, Petitioner argues
`that “one of ordinary skill would have understood both Hunter and Bulan
`relate to powering a terminal device via a transmission line.” Id. at 25.
`Petitioner also contends that “one of ordinary skill in the art would have
`understood how to combine Hunter’s teaching with Bulan’s teachings to
`achieve Hunter’s described objectives.” Id. at 26.
`On this record, Petitioner has not shown sufficiently that it would
`have been obvious to combine the cited teachings in Hunter and Bulan. To
`show that a claim would have been obvious over a combination of prior art
`references, Petitioner “must articulate a reason why a [person having
`ordinary skill in the art] would combine the prior art references.” Nuvasive,
`2016 WL 7118526, at *4; see also KSR, 550 U.S. at 418 (“there must be
`some articulated reasoning with some rational underpinning to support the
`legal conclusion of obviousness”). Here, Petitioner does not articulate
`sufficiently a reason why a person of ordinary skill in the art would have
`combined the cited teachings in Hunter and Bulan. See Pet. 25–26. For
`
`10
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`IPR2016-01426
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`
`example, Petitioner does not explain specifically what objectives in Hunter
`would have been achieved by the cited teachings in Bulan. See id.
`In addition, even if it would have been obvious to combine the cited
`teachings in Hunter and Bulan, Petitioner has not shown sufficiently that the
`proposed combination teaches the limitations in claim 1. Claim 1 recites
`“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.” Ex. 1001, col. 17, ll. 17–19. As discussed above, Petitioner
`argues that Hunter teaches an Ethernet connector comprising first and
`second pairs of contacts (Pet. 27–28), and that Bulan teaches a current
`control apparatus that detects different magnitudes of DC current flow (id. at
`28–29). Petitioner, though, does not identify specific evidence indicating
`that, when combined, the current control apparatus in Bulan would detect
`different magnitudes of DC current flow via at least one of the contacts of
`the first and second pairs of contacts in Hunter. See id. at 27–29.
`
`For the foregoing reasons, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that claim 1 would have been
`obvious over Hunter and Bulan.
`Claims 2, 7, 26, 40, and 69
`b.
`Claims 2, 7, 26, 40, and 69 depend, directly or indirectly, from claim
`1. Thus, for the same reasons discussed above with respect to claim 1,
`Petitioner does not demonstrate a reasonable likelihood of prevailing in
`showing that claims 2, 7, 26, 40, and 69 would have been obvious over
`Hunter and Bulan. See supra Section II.D.2.a.
`
`11
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`IPR2016-01426
`Patent 9,019,838 B2
`
`
`III. CONCLUSION
`Petitioner does not demonstrate a reasonable likelihood of prevailing
`on its challenge to the patentability of claims 1, 2, 7, 26, 40, and 69 of the
`’838 patent.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`12
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`IPR2016-01426
`Patent 9,019,838 B2
`
`PETITIONER:
`David Hoffman
`FISH & RICHARDSON P.C.
`IPR40492-0002IP2@fr.com
`
`Victoria Hao
`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`vhao@sjclawpc.com
`mhopkins@sjclawpc.com
`
`PATENT OWNER:
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`justin.cohen@tklaw.com
`
`Richard W. Hoffmann
`REISING ETHINGTON PC
`hoffmann@reising.com
`
`13
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