Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 1 of 15 PageID #: 2037
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`ALCATEL-LUCENT, INC. et al.,
`
`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`AMX, LLC,
`
`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`GRANDSTREAM NETWORKS, INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`et al.
`
`
`
`
`
`
`
`1
`
`
`
`
`Civil No. 6:13-cv-880-JDL
`
`
`Civil No. 6:13-cv-881-JDL
`
`
`Civil No. 6:13-cv-882-JDL
`
`
`Civil No. 6:13-cv-883-JDL
`
`Chrimar Systems, Inc.
`Exhibit 2017-1
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 2 of 15 PageID #: 2038
`
`MEMORANDUM OPINION AND ORDER
`
`
`
`Before the Court are Defendants’1 Combined Motions for Summary Judgment and Claim
`
`Construction (No. 6:13-cv-880, Doc. No. 71; No. 6:13-cv-881, Doc. No. 73; No. 6:13-cv-882,
`
`Doc. No. 67; and No. 6:13-cv-883, Doc. No. 68)2 (“Mot.”). Plaintiff ChriMar Systems, Inc.
`
`d/b/a CMS Technologies and Chrimar Holding Company LLC filed a Response (Doc. No.
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`74)(“Resp.”) and Defendants filed a Reply (Doc. No. 76) (“Reply”). The Court held a hearing
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`on September 3, 2014. For the reasons set forth herein, the Court adopts the constructions set
`
`forth below, and DENIES Defendants’ Motion for Summary Judgment.
`
`BACKGROUND
`
`Plaintiff alleges Defendants infringe Claims 31 and 67 of U.S. Patent No. 8,115,012 (“the
`
`‘012 Patent”).3 The ‘012 Patent is titled “System and Method for Adapting a Piece of Terminal
`
`Equipment,” and relates to tracking of devices that are connected to a wired network. More
`
`specifically, the ’012 patent describes permanently identifying an “asset,” such as a computer,
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`“by attaching an external or internal device to the asset and communicating with that device
`
`using existing network wiring or cabling.” ‘012 Patent at 1:67–2:2. The ’012 patent refers to that
`
`device as the “remote module.” Id. at 3:22–26. The asset can then be managed, tracked, or
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`identified by using the remote module to communicate a unique identification number, port ID,
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`or wall jack location to the network monitoring equipment, or “central module.” Id. at 6:7–13
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`and 8:66–9:4. The ’012 patent further discloses that “asset identification” may be done in a way
`
`
`1 Defendants include Alcatel-Lucent USA, Inc., Alcatel-Lucent Holdings, Inc., AMX LLC, Grandstream Networks,
`Inc., Samsung Telecommunications America, LLC, and Samsung Electronics Co., Ltd. Defendants Aastra
`Technologies, Ltd., and Aastra USA Inc have since settled. Chrimar Systems, Inc. v. Aastra Technologies Limited,
`No. 6:13-cv-879, Doc. No. 70.
`2 All citations hereinafter will be to the Docket in Chrimar Systems, Inc. v Alcatel-Lucent, Inc, No. 6:13-cv-880.
`3 Chrimar additionally asserts infringement of claims 35, 40, 42–43, 49–50, 52, 55–56, 65–66, 72–73, 77, 82, 88–90,
`and 106–107, each of which depends from either claim 31 or claim 67.
`
`
`
`2
`
`Chrimar Systems, Inc.
`Exhibit 2017-2
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 3 of 15 PageID #: 2039
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`“that does not use existing network bandwidth.” Id. at 3:10–12. These concepts are reflected in
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`the patents’ asserted claims, including independent Claims 31 and 67 as set forth below:
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`31. An adapted piece of Ethernet data terminal equipment comprising:
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`an Ethernet connector comprising a plurality of contacts;
`
`
`and
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`at least one path coupled across selected contacts, the selected contacts
`
`
`comprising at least one of the plurality of contacts of the Ethernet
`
`
`connector and at least another one of the plurality of contacts of the
`
`
`Ethernet connector,
`wherein distinguishing information about the piece of Ethernet data
`
`
`
`terminal equipment is associated to impedance within the at least
`
`
`one path.
`
`67. A method for adapting a piece of terminal equipment, the piece of terminal
`equipment having an Ethernet connector, the method comprising:
`
`coupling at least one path across specific contacts of the Ethernet
`
`
`connector, the at least one path permits use of the specific contacts
`
`
`for Ethernet communication, the Ethernet connector comprising
`
`
`the contact 1 through the contact 8, the specific contacts of the
`
`
`Ethernet connector comprising at least one of the contacts of the
`
`
`Ethernet connector and at least another one of the contacts of the
`
`
`Ethernet connector; and
`arranging impedance within the at least one path to distinguish the piece of
`
`
`
`terminal equipment.
`
`’012 patent, claims 31 and 67.
`In its motion, Defendants present variations on the term “distinguishing”4 for
`
`construction, and argue that summary judgment of non-infringement is warranted if the Court
`
`adopts its construction. Doc. No. 71. Plaintiff presented its proposed construction, as well as its
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`position on infringement in its responsive brief. Doc. No. 74. The Court heard argument on
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`September 3, 2014. A full claim construction hearing is set for October 30, 2014, and trial is set
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`for September 2015.
`
`
`
`4 Defendants’ letter brief originally requested, and the Court permitted, an early Markman on two disputed terms: (1)
`“distinguishing information about the piece of Ethernet data terminal equipment” / “to distinguish the piece of
`terminal equipment”; and (2) “impedance.” Defendants’ Motion, however, addresses only the “distinguish[ing]”
`terms. Defendants decided to reserve the “impedance” term for the full claim construction hearing if the case is not
`resolved by the Court’s ruling on their Motion. See MOT. at 1 n.2; Doc. No. 61.
`
`
`
`
`3
`
`Chrimar Systems, Inc.
`Exhibit 2017-3
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 4 of 15 PageID #: 2040
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`CLAIM CONSTRUCTION PRINCIPLES
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
`
`to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
`
`F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define
`
`the patented invention’s scope. Id. at 1313-1314; Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes
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`the claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at
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`1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their
`
`ordinary and customary meaning as understood by one of ordinary skill in the art at the time of
`
`the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
`
`1368 (Fed. Cir. 2003). Claim language guides the Court’s construction of claim terms.
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`Phillips, 415 F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be
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`highly instructive.” Id. Other claims, asserted and unasserted, can provide additional
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`instruction because “terms are normally used consistently throughout the patent.” Id.
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`Differences among claims, such as additional limitations in dependent claims, can provide
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`further guidance. Id.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
`
`Corp.v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N.
`
`Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his
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`own terms, give a claim term a different meaning than it would otherwise possess, or
`
`
`
`4
`
`Chrimar Systems, Inc.
`Exhibit 2017-4
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 5 of 15 PageID #: 2041
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`disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court
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`generally presumes terms possess their ordinary meaning, this presumption can be overcome
`
`by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular
`
`Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when
`
`the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite
`
`Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
`
`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
`
`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
`
`example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
`
`claim ‘is rarely, if ever, correct.” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362
`
`F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough
`
`the specification may aid the court in interpreting the meaning of disputed language in the
`
`claims, particular embodiments and examples appearing in the specification will not generally be
`
`read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
`
`1988); see also Phillips, 415 F.3d at 1323.
`
`The prosecution history is another tool to supply the proper context for claim
`
`construction because a patentee may define a term during prosecution of the patent. Home
`
`Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
`
`specification, a patent applicant may define a term in prosecuting a patent.”). The well-
`
`established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
`
`claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
`
`Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
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`patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
`
`
`
`5
`
`Chrimar Systems, Inc.
`Exhibit 2017-5
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 6 of 15 PageID #: 2042
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`prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir.
`
`2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir.
`
`2003) (“The disclaimer . . . must be effected with ‘reasonable clarity and deliberateness.’”)
`
`(citations omitted)). “Indeed, by distinguishing the claimed invention over the prior art, an
`
`applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d
`
`1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). “As a basic principle of claim
`
`interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
`
`evidence and protects the public’s reliance on definitive statements made during prosecution.”
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`Omega Eng’g, Inc., 334 F.3d at 1324.
`
`Although “less significant than the intrinsic record in determining the legally operative
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`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
`
`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
`
`treatises may help the Court understand the underlying technology and the manner in which one
`
`skilled in the art might use claim terms, but such sources may also provide overly broad
`
`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid the Court in determining the particular meaning of a term in the
`
`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
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`term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
`
`prosecution history in determining how to read claim terms.” Id.
`
`I.
`
`Disputed Terms
`
`DISCUSSION
`
`“distinguishing information about the piece of Ethernet terminal equipment” (Claim 31)
`Plaintiff’s Proposed Construction
`Defendants’ Proposed Construction
`“information to distinguish the piece of
`“information to differentiate each piece of
`Ethernet data terminal equipment from at least
`Ethernet data terminal equipment from each
`one other piece of Ethernet data terminal
`other piece of Ethernet data terminal
`equipment”
`equipment”
`
`
`
`6
`
`Chrimar Systems, Inc.
`Exhibit 2017-6
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 7 of 15 PageID #: 2043
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`“to distinguish the piece of terminal equipment” (Claim 67)
`Plaintiff’s Proposed Construction
`Defendants’ Proposed Construction
`“to distinguish the piece of terminal equipment
`“to differentiate each piece of terminal
`having an Ethernet connector from at least one
`equipment from each other piece of terminal
`other piece of terminal equipment having an
`equipment”
`Ethernet connector”
`
`
`
`
`
`A.
`
`The Parties’ Contentions
`
`Defendants argue that “[o]ne of ordinary skill in the art considering all of this intrinsic
`
`evidence would have understood the ‘distinguishing’ terms in the ’012 patent to require
`
`differentiating each piece of data terminal equipment from each other piece of data terminal
`
`equipment; otherwise, the stated purpose of the invention—‘managing, tracking, and identifying
`
`remotely located electronic equipment in a network’—would be completely defeated.” MOT. at
`
`12. In other words, “[t]he only way to manage, track, and identify remotely located electronic
`
`equipment—and the only way the ’012 patent describes—is to provide certain information,
`
`whether it is an equipment identification number, port ID, or wall jack location, that enables
`
`network equipment to recognize each piece of terminal equipment as different from each other
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`piece.” Id. at 13. Defendants urge that Plaintiff’s proposed constructions “[n]ot only . . .
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`undermine the stated purpose of the invention, but they also render the terms ‘distinguishing’ and
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`‘adapting’ (or ‘adapted’) virtually meaningless in the claims.” Id. at 14.
`
`
`
`Plaintiff responds that “[t]his is a classic case of Defendants improperly attempting to
`
`import limitations from the preferred embodiment in the specification into the claims in order to
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`avoid infringement.” RESP. at 2. Further, “Defendants repeatedly state that their proposed
`
`construction is ‘consistent’ with the intrinsic record. However, in every case, a construction
`
`importing limitations from preferred embodiments would always be ‘consistent’ with the
`
`specification.” Id. at 6.
`
`
`
`Plaintiff argues that “the specification makes clear that the distinguishing information
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`associated to impedance in the claims is not limited to ‘identifying’ information, but instead
`
`
`
`7
`
`Chrimar Systems, Inc.
`Exhibit 2017-7
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 8 of 15 PageID #: 2044
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`includes information about an attribute of the device that serves to distinguish it from another
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`device.” Id. at 5 (citing ‘012 Patent at 4:48-56). “[T]he disputed phrases,” Plaintiff argues,
`
`“should be construed to include . . . categorizing information . . . .” Id. at 12 (citing ‘012 Patent
`
`at 2:49-58, 5:56-65, 6:19-24, 6:33-41, 13:56-59, 15:60-64 & 15:66-16:4). Plaintiff also argues
`
`that Defendants’ proposed “requirement that the equipment be ‘on the network’ or connected to a
`
`network is not supported by the intrinsic record.” Id. at 13. Plaintiff notes that such limitations
`
`are set forth in dependent claims, such as Claims 54 and 98 of the ‘012 Patent. Id. at 13-14.
`
`
`
`Plaintiff also submits that whereas Claim 9 of the parent ‘250 Patent5 recites
`
`“information that identifies each piece of equipment and its location on the network,” the claims
`
`of the ‘012 Patent do not include such a limitation. Id. at 9. Plaintiff further urges that
`
`“Defendants[’] citation to the prosecution history of the ‘250 patent does not address the claim
`
`language at issue in the ‘012 patent.” Id. Finally, Plaintiff argues claim differentiation as to
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`Claims 69 and 71, which depend from independent Claim 67. Id. at 8.
`
`
`
`As to the proper construction, Plaintiff argues that “[t]he plain and ordinary meaning of
`
`this term is apparent from the claim language and there is no need to substitute ‘differentiate’ as
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`Defendants propose.” Id. at 12. Plaintiff also cites a July 9, 2014 declaration by its expert, Mr.
`
`Les Baxter, testifying that Plaintiff’s proposed constructions are the same as one of ordinary skill
`
`in art would understand the claim language. Id. at 14.
`
`
`
`
`5 U.S. Patent No. 7,457,250. The Court notes that the parent ‘250 Patent is presently being asserted in ChriMar Sys.,
`Inc. v. Cisco Sys., Inc., No. 4:13-cv-1300, where the Northern District of California has tentatively construed
`“information about the first [second] piece of equipment / an object” to mean “information sufficient to, but not
`necessarily limited to, identify or distinguish each piece of equipment or object connected to the network.” ChriMar
`Sys., Inc. v. Cisco Sys., Inc., No. 4:13-cv-1300, Doc. No. 179 at 6 (N.D. Cal. Feb. 3, 2014). As of October 16, 2014,
`a final construction has not been issued.
`
`
`
`8
`
`Chrimar Systems, Inc.
`Exhibit 2017-8
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 9 of 15 PageID #: 2045
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`
`
`B.
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`Claim Construction Analysis
`
`Claim Differentiation
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`
`
`As a threshold matter, the Court considers Plaintiff’s argument of claim differentiation as
`
`to Claims 69 and 71, which depend from Claim 67, which recites:
`
`67. A method for adapting a piece of terminal equipment, the piece of terminal
`equipment having an Ethernet connector, the method comprising:
`
`coupling at least one path across specific contacts of the Ethernet
`connector, the at least one path permits use of the specific contacts for Ethernet
`communication, the Ethernet connector comprising the contact 1 through the
`contact 8, the specific contacts of the Ethernet connector comprising at least one
`of the contacts of the Ethernet connector and at least another one of the contacts
`of the Ethernet connector; and
`arranging impedance within the at least one path to distinguish the piece of
`
`terminal equipment.
`
`
`
`69. The method according to claim 67 wherein the arranging impedance within
`the at least one path to distinguish the piece of terminal equipment comprises
`arranging impedance within the at least one path to uniquely distinguish the piece
`of terminal equipment.
`
`71. The method according to claim 67 wherein the arranging impedance within
`the at least one path to distinguish the piece of terminal equipment comprises
`arranging impedance within the at least one path to uniquely identify the piece of
`terminal equipment.
`
`
`
`The only substantive differences between Claim 67 and Claims 69 and 71 are the
`
`additions of the phrases “uniquely distinguish” and “uniquely identify,” respectively. Therefore,
`
`the doctrine of claim differentiation weighs against requiring unique identification of terminal
`
`equipment in Claim 67. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim
`
`that adds a particular limitation gives rise to a presumption that the limitation in question is not
`
`present in the independent claim.”); Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d
`
`1225, 1233 (Fed. Cir. 2001) (“Claim differentiation, while often argued to be controlling when it
`
`does not apply, is clearly applicable when there is a dispute over whether a limitation found in a
`
`
`
`9
`
`Chrimar Systems, Inc.
`Exhibit 2017-9
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 10 of 15 PageID #: 2046
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`dependent claim should be read into an independent claim, and that limitation is the only
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`meaningful difference between the two claims.”).
`
`
`
`At the September 3, 2014 hearing, Plaintiff also argued claim differentiation as to Claim
`
`33, which recites:
`
`
`33. The piece of Ethernet data terminal equipment according to claim 31 wherein
`the distinguishing information about the piece of Ethernet data terminal
`equipment associated to impedance within the at least one path comprises
`identifying information about the piece of Ethernet data terminal equipment.
`
`Because this recital of "distinguishing information . . . compris[ing] identifying information"
`
`appears in a dependent claim, the doctrine of claim differentiation weighs against construing the
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`"distinguishing" terms to require identification. See Phillips, 415 F.3d at 1315; see also Wenger,
`
`239 F.3d at 1233.
`
`
`
`Defendants argue that the “specification [(‘012 Patent at 13:13-30)] and these dependent
`
`claims [(id. at Claims 69 & 71)] are not inconsistent (under the principle of claim differentiation
`
`or otherwise) with Defendants’ proposed constructions, which are broader and do not require
`
`unique identification numbers.” REPLY at 2. Further, Defendants argue, “the only plain and
`
`logical reading of the claims is that the ‘distinguishing information’ [must] be distinguishing at
`
`the time the equipment is adapted or the method for adapting is being performed or when the
`
`claimed ‘association’ or ‘arranging’ occurs.” Id. at 4. Although Defendants claim that their
`
`proposed construction of “differentiation” is broader than uniquely distinguish/identify, they fail
`
`to point to anything in the intrinsic record supporting that claim. The Court sees no distinction
`
`between Defendants’ proposal and what is required in Claims 69 and 71. Therefore, such a
`
`limitation should not be read into Claim 67. Because Defendants’ proposed constructions would
`
`require unique identification of terminal equipment, claim differentiation weighs against
`
`Defendants’ proposed constructions.
`
`
`
`
`
`10
`
`Chrimar Systems, Inc.
`Exhibit 2017-10
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 11 of 15 PageID #: 2047
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`Specification
`
`
`
`Turning to the specification, the term “distinguish” does not appear within the ‘012
`
`Patent outside of the claim language. The “Technical Field” subsection of the Background of the
`
`Invention section states:
`
`
`This invention relates 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.
`
`Id. at 1:23-26. The specification recites “identifying” while the claims recite “distinguishing.”
`
`(emphasis added). Defendants rely on four embodiments focused on identifying: one
`
`embodiment that “illustrates the general teachings of the invention,” specifically, “achieving
`
`identification of electronic computer equipment associated with a computer network” and three
`
`embodiments that are directed towards identifying specific pieces of equipment individually.
`
`MOT. at 9 (citing ’012 Patent at 4:41-42, 4:46–47, 6:7–9, 4:24-31, 9:1–9, 10:27–30, 11:10–13,
`
`11:57–61, 12:48–13:63, 14:40–52, 15:33–42, and 16:57–64).
`
`
`
`However, the specification also repeatedly refers to authorization, status information, and
`
`configuration, rather than a unique identification:
`
`The existence of an unauthorized device connected to the company network may
`indicate the presence of someone with electronic equipment that has the capability
`to defeat a company’s internal security measures. A method of blocking
`communications with such a device connected to a network is desirable. Further,
`automatically blocking communications with an unauthorized device is desirable.
`An active system that interrogates the devices connected to a network and blocks
`communications with unauthorized devices would provide enhanced security for
`sensitive information. ‘012 Patent at 2:49-58.
`
`Status data encoder 9 receives its status data from the firmware kernel 4. Signal
`modulator 7 inserts this low power supply across the transmit and receive lines or
`into either the transmit lines or the receive lines in order to supply the remote
`module 16 with both status information and power. The scope of the invention
`includes transmitting status information as a single bit or as a pulse train. Types
`of transmitted status information include whether the protection circuit is active,
`date, time, and port location. Id. at 5:56-65.
`
`
`
`11
`
`Chrimar Systems, Inc.
`Exhibit 2017-11
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 12 of 15 PageID #: 2048
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`In addition to transmitting an identification number the firmware kernel 10 may
`also elect to send additional information such as confirmation of the status
`information or additional data provided by an external device 18, such as the
`computer 3A to which the remote module 16 is attached. Id. at 6:19-24.
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`[I]f someone uses a laptop to attempt to plug into the network, the central module
`15 detects the absence of the proper identification code from the laptop and, as
`noted before, kernel 4 would issue a suitable signal to blocking circuit 20 to
`prevent access to the network information and also generate an alarm.
`Furthermore, if the potential thief later disconnects protected equipment from the
`network, this action is also detected and an alarm can be generated. Id. at 6:33 41.
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`The control manager 216 includes a database for storing communicated
`information such as initial and subsequent locations and configurations for
`identified objects. Id. at 13:56 59.
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`The control manager 216 evaluates the response from the computer 204a. The
`evaluation by the control manager 216 includes comparing and updating the
`configuration and location information of the queried objects with previously
`stored information in the associated database. The initial physical identity and
`initial physical location of an object is input to the database during setup of an ID
`sender tag 202 by an operator such as a user. Information related to the object is
`also inputted to the database. Related object information includes the object serial
`number, physical attributes, physical configuration, electronic attributes, software
`configuration, network attributes, and date of entry. Id. at 15:60-16:4.
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`While Defendants argue that these disclosures relate to information that might be
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`exchanged in addition to distinguishing information used to identify a device (REPLY at 2), they
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`fail to explain why such disclosures should be read in this manner. Defendants appear to
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`respond to the passages solely by pointing to embodiments where the data terminal equipment is
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`uniquely identified. But in light of the above-quoted disclosures it seems that uniquely
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`identifying each piece of data terminal equipment is merely a feature of the preferred
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`embodiments. E.g., compare ‘012 Patent at 6:7-9, with ‘012 Patent at 6:19-24, and ‘012 Patent
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`at 6:43-47. Accordingly, the “distinguishing information” in the claims is not limited to
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`“identifying” information, but instead includes information about an attribute of the device that
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`differentiates it from another device. For example, in the context of distinguishing an
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`unauthorized device from authorized devices, as quoted above, unique identification of an
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`12
`
`Chrimar Systems, Inc.
`Exhibit 2017-12
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 13 of 15 PageID #: 2049
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`unauthorized device would presumably be irrelevant. In other words, the specification suggests
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`that once a device is determined to be foreign, access should be blocked, regardless of whether
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`the foreign device can be uniquely identified. Therefore, the unique identification should not be
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`imported into the claims. See Constant, 848 F.2d at 1571 (“particular embodiments and
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`examples appearing in the specification will not generally be read into the claims”); see also
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`Phillips, 415 F.3d at 1323. It is important to remember that the claims recite “distinguishing,”
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`not identifying, making such a reading consistent with the disputed terms themselves.
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`Moreover, Defendants’ proposals are disfavored as tending to read out the above-quoted
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`communication of authorization or attribute information. See Oatey Co. v. IPS Corp., 514 F.3d
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`1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way that excludes
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`embodiments disclosed in the specification.”); see also i4i Ltd. P’ship v. Microsoft Corp., 598
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`F.3d 831, 843 (Fed. Cir. 2010) (“Because the claims themselves do not use the word ‘file’ and
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`the specification discloses embodiments where the storage format is not a file, we conclude that
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`‘distinct’ does not require storage in separate files.”). Therefore, the Court finds Defendants’
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`construction improperly attempts to import limitations into the claims and should be rejected.
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`Prosecution History
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`Finally, the Court considers Defendants’ arguments related to the prosecution of the
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`parent ‘250 Patent. In an Amendment filed February 5, 2008, the ‘250 patentee applicant
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`distinguished the “De Bruycker” reference (U.S. Patent No. 6,272,219) by stating “[w]hile De
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`Bruycker can loosely be characterized as a network, it is not the type of network that includes
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`dedicated cables to each piece of equipment on the network.” Doc. No. 71-2, Ex. K, Feb. 5,
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`2008 Amendment at 8. Further, the Amendment stated “[s]ince there are no dedicated wires,
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`Applicant’s technique for identifying equipment on a network by varying the electrical
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`characteristics across the wires cannot be implemented in De Bruycker…Claim 1 clearly now
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`
`
`13
`
`Chrimar Systems, Inc.
`Exhibit 2017-13
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 96 Filed 10/22/14 Page 14 of 15 PageID #: 2050
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`calls for each piece of equipment to be connected to the central module by its own cable…In the
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`preferred embodiment this [signal] provides an identification signal uniquely associated with the
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`first piece of equipment.” Id. at 10. The passage shows not only patentee’s reliance on the
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`“cable” limitation, but also that the use of an “identification signal uniquely associated with the
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`first piece of equipment” was part of a “preferred embodiment” rather than the claimed invention
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`as a whole. Further, while the Court considers the tentative construction of the ‘250 Patent in the
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`Northern District of California (MOT. at 12), the claim language in the ‘250 patent is different
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`than that of the ‘012 Patent at issue. Defendants have failed to identify any definitive statement
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`as to uniquely identifying each piece of data terminal equipment in the ‘012 Patent. Instead, the
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`prosecution history offered by the Defendants relates specifically to the claim language in the
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`application for the parent ‘250 Patent. Ventana Med. Sys. V. Biogenex Labs, 473 F.3d 1173,
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`1182 (Fed. Cir. 2006) (“[T]he doctrine of prosecution disclaimer generally does not apply when
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`the claim term in the descendant patent uses different language.”). Thus, Defendants cannot rely
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`on the prosecution history of the parent patent in limiting the scope of the disputed term.
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`Construction
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`Defendants’ proposal of requiring differentiating “each piece” of terminal equipment
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`from “each other piece” of terminal equipment is unclear, is inconsistent with the intrinsic
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`evidence as set forth above, and would likely confuse rather than clarify the scope of the claims.
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`It is particularly unclear whether a piece of terminal equipment would need to be differentiated
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`from every other piece of terminal equip