Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 1 of 16 PageID #: 2152
`
`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.
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`§
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is Defendants Alcatel-Lucent USA, Inc., Alcatel-Lucent Holdings, Inc.,
`
`
`Civil No. 6:13-cv-880-JDL
`
`
`Civil No. 6:13-cv-881-JDL
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`
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`and AMX LLC’s (collectively, “Defendants”)1 Motion for Summary Judgment of Indefiniteness.
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`Case No. 6:13cv880, Doc. No. 87; Case No. 6:13cv881, Doc. No. 90 (“Mot.”).2 Plaintiffs
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`ChriMar Systems, Inc. d/b/a CMS Technologies and Chrimar Holding Company LLC
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`(“Plaintiffs” or “Chrimar”) filed a Response (Doc. No. 90) (“Resp.”) and Defendants filed a
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`Reply (Doc. No. 94). The Court additionally considers arguments contained within Plaintiffs’
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`Opening Brief on Claim Construction (Doc. No. 83) (“Pls.’ Br.”), Defendants’ response (Doc.
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`No. 88) and Plaintiffs’ reply (Doc No 91). On October 30, 2014, the Court held a hearing.
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`1 Defendants Grandstream Networks, Inc. and Samsung Electronics Co., Ltd. have since settled. Chrimar Systems,
`Inc. v. Grandstream Networks, Inc., No. 6:13-cv-882, Doc. No. 92; Chrimar Systems, Inc. v. Samsung Electronics
`Co., Ltd, No. 6:13-cv-883, Doc. No. 96. Defendant Samsung Electronics Co., Ltd. was substituted for Samsung
`Telecommunications America, LLC. Doc. No. 94.
`2 Hereinafter, all citations will be to the Docket in Case No. 6:13-cv-880 unless otherwise indicated.
`
`
`
`1
`
`Chrimar Systems, Inc.
`Exhibit 2019-1
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 2 of 16 PageID #: 2153
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`Having considered the parties’ arguments and for the reasons stated below, the Court DENIES
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`Defendants’ Motion for Summary Judgment.
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`BACKGROUND
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`
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`Plaintiffs allege Defendants infringe independent claims 31 and 67 and dependent claims
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`35, 42, 43, 49, 50, 55, 66, 72, 73, 77, 88, 89, and 106 (“the asserted claims”) of U.S. Patent No.
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`8,115,012 (“the ‘012 Patent”). COMPL. The ‘012 Patent is titled “System and Method for
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`Adapting a Piece of Terminal Equipment,” and relates to tracking of devices that are connected
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`to a wired network. ‘012 Patent. More specifically, the ’012 patent describes permanently
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`identifying an “asset,” such as a computer, “by attaching an external or internal device to the
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`asset and communicating with that device using existing network wiring or cabling.” ‘012
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`Patent at 1:67–2:2. Independent claims 31 and 67 are recited 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;
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`and
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`at least one path coupled across selected contacts, the selected contacts
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`comprising at least one of the plurality of contacts of the Ethernet
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`connector and at least another one of the plurality of contacts of the
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`Ethernet connector,
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`wherein distinguishing information about the piece of Ethernet data
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`terminal equipment is associated to impedance within the at least
`
`
`one path.
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`67. A method for adapting a piece of terminal equipment, the piece of terminal
`equipment having an Ethernet connector, the method comprising:
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`coupling at least one path across specific contacts of the Ethernet
`
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`connector, the at least one path permits use of the specific contacts
`
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`for Ethernet communication, the Ethernet connector comprising
`
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`the contact 1 through the contact 8, the specific contacts of the
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`Ethernet connector comprising at least one of the contacts of the
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`Ethernet connector and at least another one of the contacts of the
`
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`Ethernet connector; and
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`arranging impedance within the at least one path to distinguish the piece of
`
`
`terminal equipment.
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`’012 Patent, claims 31 and 67.
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`
`
`2
`
`Chrimar Systems, Inc.
`Exhibit 2019-2
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 3 of 16 PageID #: 2154
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`Defendants move for summary judgment that the asserted claims of the ’012 Patent are
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`invalid because the following phrases fail to comply with the definiteness requirement of 35
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`U.S.C. § 112, ¶2: (1) the “distinguishing” terms (claims 31 and 67); and (2) the entire clauses
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`“distinguishing information . . . associated to impedance” (claim 31) and “arranging impedance .
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`. . to distinguish” (claim 67).
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`In total, there are six disputed terms or phrases in the asserted claims. One term has been
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`construed by the Court following early claim construction briefing and oral argument on
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`September 3, 2014. Doc. No. 92 (“EARLY CLAIM CONSTRUCTION”). In its Order, the Court
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`denied Defendants’ summary judgment motion and construed the “distinguishing” term as
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`follows:
`
`Term
`“distinguishing information about the piece of
`Ethernet terminal equipment”
`
`(Claim 31)
`“to distinguish the piece of terminal
`equipment”
`
`(Claim 67)
`EARLY CLAIM CONSTRUCTION at 15.
`
`Construction
`“information to distinguish the piece of
`Ethernet data terminal equipment from at least
`one other piece of Ethernet data terminal
`equipment”
`“to distinguish the piece of terminal equipment
`having an Ethernet connector from at least one
`other piece of terminal equipment having an
`Ethernet connector”
`
`Following further briefing and oral argument on October 30, 2014, the terms
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`“impedance,” “terminal equipment,” “Ethernet data terminal equipment,” “a method for adapting
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`a piece of terminal equipment” and “an adapted piece of Ethernet data terminal equipment” were
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`construed as follows:
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`
`
`Term
`
`“impedance”
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`(Claims 31, 35, 50, 67, 73, 77, and 72)
`
`
`
`3
`
`Construction
`“opposition to the flow of current.”
`
`Chrimar Systems, Inc.
`Exhibit 2019-3
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 4 of 16 PageID #: 2155
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`“terminal equipment”
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`(Claims 67, 72 & 106)
`“Ethernet data terminal equipment”
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`(Claims 31, 35, 42, 43, 49, 50 & 55)
`“a method for adapting a piece of terminal
`equipment” and “an adapted piece of Ethernet
`data terminal equipment”
`
`(Claims 31 and 67)
`Doc. No. 99 (“CLAIM CONSTRUCTION ORDER”).
`
`“device at which data transmission can
`originate or terminate”
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`“device at which data transmission can
`originate or terminate and that is capable of
`Ethernet communication”
`These preambles are limiting and have their
`plain and ordinary meaning.
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`
`
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`Pursuant to the parties’ briefings and oral argument on October 30, 2014, the Court now
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`considers whether the terms “distinguishing,” “distinguishing information . . . associated to
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`impedance,” and “arranging impedance . . . to distinguish” are indefinite. Trial is scheduled for
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`September 8, 2015.
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`LEGAL STANDARD
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`Summary Judgment Standard
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`“Summary judgment is appropriate in a patent case, as in other cases, when there is no
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`I.
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`
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`genuine issue as to any material fact and the moving party is entitled to judgment as a matter of
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`law.” Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994); FED. R. CIV.
`
`P. 56(c).
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`II.
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`Indefiniteness
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`
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`Indefiniteness is a question of law. Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d
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`1363, 1368 (Fed. Cir. 2013). “[D]etermination of claim indefiniteness is a legal conclusion that
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`is drawn from the court's performance of its duty as the construer of patent claims.” Exxon
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`Research & Eng'g Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001) abrogated on
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`other grounds by Nautilus v. Biosig Instruments, Inc., - U.S. -, - n. 9, 134 S.Ct. 2120, 2130 n. 9,
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`189 L.Ed.2d 37 (2014). Indefiniteness is a challenge to the validity of the patent that must be
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`
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`4
`
`Chrimar Systems, Inc.
`Exhibit 2019-4
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 5 of 16 PageID #: 2156
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`established by clear and convincing evidence. Nautilus, 134 S.Ct. at 2230, n. 10 (citing Microsoft
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`Corp. v. i4i Ltd. Partnership, - U.S. -, -, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011) for the
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`clear-and-convincing standard applicable to challenges to invalidity and declining to alter this
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`standard).
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`
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`Under 35 U.S.C. § 112 ¶ 2, “[t]he specification shall conclude with one or more claims
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`particularly pointing out and distinctly claiming the subject matter which the applicant regards as
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`his invention.” “A lack of definiteness renders invalid ‘the patent or any claim in suit.’”
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`Nautilus, 134 S.Ct. at 2125 (citing 35 U.S.C. § 282, ¶ 2(3)). Until recently, a claim was
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`indefinite “only when it [was] not amendable to construction or insolubly ambiguous.” Id. at
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`2127. The Supreme Court rejected this standard as too imprecise. Id. at 2130.
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`
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`Under the new standard, “a patent is invalid for indefiniteness if its claims, read in light
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`of the specification ..., and the prosecution history, fail to inform, with reasonable certainty,
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`those skilled in the art about the scope of the invention.” Id. at 2124 (emphasis added). In
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`rejecting the prior standard, the court found it insufficient “that a court [could] ascribe some
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`meaning to a patent's claims.” Id. at 2130. Reasonable certainty is something more precise than
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`insolubly ambiguous, but short of absolute precision. Id. at 2129–30. In describing the new
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`standard the court “mandates clarity.” Id. at 2129.
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`
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`The Supreme Court noted the “delicate balance” to the indefiniteness analysis. Id. at
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`2128. In summarizing this balance post-Nautilus, the Federal Circuit explained that “[t]he
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`definiteness standard ‘must allow for a modicum of uncertainty’ to provide incentives for
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`innovation, but must also require ‘clear notice of what is claimed, thereby appris[ing] the public
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`of what is still open to them.’” Interval Licensing LLC v. AOL, 766 F.3d 1364, 1370 (Fed. Cir.
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`2014) (emphasis added) (quoting Nautilus, 134 S.Ct. at 2128–29).
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`
`
`5
`
`Chrimar Systems, Inc.
`Exhibit 2019-5
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 6 of 16 PageID #: 2157
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`
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`The Supreme Court did not apply the new standard in Nautilus.3 The Federal Circuit,
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`however, has both applied the new standard and provided guidance on the level of precision
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`required. Interval, 766 F.3d at 1369–71. “Although absolute precision or mathematical
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`precision is not required, it is not enough as some of the language in ... prior cases may have
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`suggested, to identify ‘some standard for measuring the scope of the phrase.’” Id. at 1370–71
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`(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005)).
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`“The claims, when read in light of the specification and the prosecution history, must provide
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`objective boundaries for those of skill in the art.” Id at 1371 (emphasis added) (relying on
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`Nautilus, 134 S.Ct. at 2130 & n. 8). In noting the necessity for objective boundaries, the Federal
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`Circuit relied on the finding in Halliburton Energy Servs., Inc. v. M–I LLC that “[e]ven if a claim
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`term's definition can be reduced to words, the claim is still indefinite if a person of ordinary skill
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`in the art cannot translate the definition into meaningfully precise claim scope.” Id. (emphasis
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`added) (relying on Halliburton, 514 F.3d 1244, 1251 (Fed. Cir. 2008)).
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`
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`Other parts of the indefiniteness inquiry remain the same. Indefiniteness is still
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`“evaluated from the perspective of someone skilled in the relevant art at the time the patent was
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`filed.” Nautilus, 134 S.Ct. at 2128. Claims must also still “be read in light of the patent's
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`specification and prosecution history.” Id. at 2128.
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`DISCUSSION
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`
`
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`3 The court declined to apply the new “reasonable certainty” standard to the claim language at issue in Nautilus,
`“mounted ... in spaced relationship with each other.” Nautilus, 134 S.Ct. at 2131. The language describes the
`location of two electrodes on a cylinder held in the user's hand. Id. at 2127. In concluding the language was not
`indefinite, the reversed Federal Circuit decision had concluded the spaced relationship could not be greater than the
`width of a user's hand. Id. at 2127.
`
`
`
`6
`
`Chrimar Systems, Inc.
`Exhibit 2019-6
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 7 of 16 PageID #: 2158
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`“distinguishing information about the piece of Ethernet terminal equipment” and
`I.
`“to distinguish the piece of terminal equipment”
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`As discussed above, the Court construed these terms in its Early Claim Construction
`
`Opinion as set forth below:
`Term
`“distinguishing information about the piece of
`Ethernet terminal equipment” (Claim 31)
`
`“to distinguish the piece of terminal
`equipment” (Claim 67)
`
`EARLY CLAIM CONSTRUCTION at 15.
`
`Construction
`“information to distinguish the piece of
`Ethernet data terminal equipment from at least
`one other piece of Ethernet data terminal
`equipment”
`“to distinguish the piece of terminal equipment
`having an Ethernet connector from at least one
`other piece of terminal equipment having an
`Ethernet connector”
`
`
`
`In its renewed summary judgment arguments, Defendants argue the claim terms as
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`construed4 are
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`indefinite because determining whether
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`infringement occurred requires
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`comparison of the accused “distinguishing” device with an “unspecified device.” MOT. at 4.
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`More specifically, because “the determination of infringement is dependent on factors wholly
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`outside the alleged infringer’s control,” “a person of ordinary skill in the art would not know if
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`an Ethernet device standing alone is within the scope of the claim or not.” Id. at 4-5. Further,
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`the “construction essentially preempts all information, as any information can later be used to be
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`‘distinguishing.’” Id. at 6.
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`
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`In response, Plaintiffs’ expert proffers that “one of ordinary skill in the art knows that
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`certain information about a piece of equipment varies among pieces of equipment…Thus one of
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`ordinary skill in the art does not need to have a specific piece of equipment for comparison to
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`know whether certain information (e.g. processor type) distinguishes a piece of equipment from
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`4 The Court notes Defendants motion was submitted prior to the issuance of its Early Claim Construction Order
`which substantially adopted Plaintiffs early proposed constructions of the term “distinguishing.” However,
`Defendants’ instant arguments are based on the Court adopting Plaintiffs’ constructions. Defendants’ reply brief
`was filed after the Court issued the Early Claim Construction.
`
`
`
`7
`
`Chrimar Systems, Inc.
`Exhibit 2019-7
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 8 of 16 PageID #: 2159
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`at least one other piece of equipment.” Doc. No. 90-2, Ex. B ¶ 43, Decl. of Les Baxter (“Baxter
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`Decl.”).
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`
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`As enumerated above, a claim is indefinite if, when viewed in light of the intrinsic
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`evidence, it fails to “inform those skilled in the art about the scope of the invention with
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`reasonable certainty.” Nautilus, 134 S. Ct. at 2129. The Federal Circuit has since applied
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`Nautilus to hold that, to be definite, “the claims, when read in light of the specification and the
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`prosecution history, must provide objective boundaries for those of skill in the art.” Interval
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`Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371-74 (Fed. Cir. 2014) (finding that the term
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`“unobtrusive manner” rendered claims invalid as indefinite).
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`
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`Defendants properly note that “[a] claim can be found indefinite even if it is subject to
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`being construed.” MOT. at 5 n.4; see Nautilus, 134 S. Ct. at 2127 (vacating reversal of district
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`court grant of summary judgment that the term “spaced relationship,” as construed, was
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`indefinite). Also, “[w]hen a proposed construction requires that an artisan make a separate
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`infringement determination for every set of circumstances in which the composition may be
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`used, and when such determinations are likely to result in differing outcomes (sometimes
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`infringing and sometimes not), that construction is likely to be indefinite.” Halliburton, 514 F.3d
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`at 1246.
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`
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`Defendants have cited two Federal Circuit cases proffering that the court rejected
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`constructions in both as indefinite. MOT. at 4 (citing Geneva Pharmaceuticals, Inc. v.
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`GlaxoSmithKline PLC, 349 F.3d 1373 (Fed. Cir. 2003) and Halliburton). In Geneva, Defendants
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`argue that the court rejected a proposed construction as “the epitome of indefiniteness” because
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`the formulation at issue “might infringe or not depending on its usage in changing
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`circumstances” Id. (citing Geneva, 349 F3d at 1373). However, it appears that the court instead
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`
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`8
`
`Chrimar Systems, Inc.
`Exhibit 2019-8
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 9 of 16 PageID #: 2160
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`rejected a proposed construction to read an additional limitation into the claim term at issue
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`where it found that “effective amount” is “a common and generally acceptable term for
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`pharmaceutical claims and is not ambiguous or indefinite, provided that a person of ordinary
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`skill in the art could determine the specific amounts without undue experimentation.” 349 F.3d
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`at 1383-84. Geneva further found that “synergistically effective amount” means “any amount
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`that is synergistic against any bacteria.” Id. at 1384. Geneva thus did not find “synergistically
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`effective amount” to be indefinite but instead rejected a proposed interpretation in which “GSK
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`[sought] to read more into these claim terms to make the dosage range depend on the particular
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`antibiotic and bacteria.” Id. Likewise, Halliburton is distinguishable from the instant case for
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`essentially the same reasons. Halliburton, 514 F.3d at 1256 (concluding that because neither
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`Halliburton’s proposed definition nor any other possible construction resolved the ambiguity in
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`the scope of the term “fragile gel,” the claims containing that term were indefinite). While the
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`Federal Circuit in Halliburton demanded “meaningfully precise claim scope” and that the
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`specification of the patent provide “specifics,” an accused infringer must provide clear and
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`convincing evidence that the boundaries of a claim cannot be discerned by a person of ordinary
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`skill in the art based on the claim language, information contained in the specification, the
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`prosecution history, as well as that skilled person’s knowledge of the relevant art. Id.
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`
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`As to the claim language at issue here, claims 31 and 67 of the ‘012 Patent recite as
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`follows:
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`31. An adapted piece of Ethernet data terminal equipment comprising:
`
`an Ethernet connector comprising a plurality of contacts; and
`
`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.
`
`9
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`
`
`
`
`Chrimar Systems, Inc.
`Exhibit 2019-9
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 10 of 16 PageID #: 2161
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`‘012 Patent, claim 31 (emphasis added).
`
`
`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.
`
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`‘012 Patent, claim 67 (emphasis added).
`
`
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`On their face, claims 31 and 67 require more than merely distinguishing. The disputed
`
`terms refer to an impedance that represents some characteristic of a piece of terminal equipment
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`so that by measuring the impedance, one piece of terminal equipment can be distinguished from
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`some other piece of terminal equipment based on that characteristic. Rather than merely
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`attempting to claim the function of distinguishing, the patentee claimed using impedance to
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`identify a characteristic, and that characteristic can distinguish pieces of equipment. Possible
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`characteristics include equipment processor type, hard drive capacity, authorization information,
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`physical attributes, physical configuration, electronic attributes, software configuration, network
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`attributes, and date of entry. ‘012 Patent, 4:48-53, 2:49-58, 6:33-41, 15:67-16:4. Thus one of
`
`ordinary skill in the art does not need to have a specific piece of equipment for comparison to
`
`know whether certain characteristics can distinguish a piece of equipment from at least one other
`
`piece of equipment.
`
`
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`Further, as discussed in the Early Claim Construction, the specification and embodiments
`
`of the ‘012 Patent refer to authorization, status information, and configuration. EARLY CLAIM
`
`CONSTRUCTION at 11. Thus, because the “distinguishing information” in the claims is not
`
`
`
`10
`
`Chrimar Systems, Inc.
`Exhibit 2019-10
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 11 of 16 PageID #: 2162
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`limited to “identifying” information, the Court rejected Defendants’ constructions, finding that
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`the constructions “improperly attempt[] to import limitations into the claims.” Id. at 13. This is
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`distinguishable from Defendants’ characterizations of Geneva and Halliburton because rather
`
`than
`
`rejecting a proposed construction as ambiguous,
`
`the Court’s construction of
`
`“distinguishing” rejected Defendants’ attempt to read in additional limitations.
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`
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`Because Defendants have failed to proffer clear and convincing evidence supporting a
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`finding of indefiniteness, Defendants’ motion for summary judgment of indefiniteness is
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`DENIED as to the “distinguishing” terms as construed by the Court.
`
`“arranging impedance within the at least one path”
`II.
`Plaintiffs’ Proposal
`Defendants’ Proposal
`Plain and ordinary meaning. No construction
`Indefinite
`necessary.
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`PLS.’ BR. at 11; RESP. at 15. This disputed term appears in Claims 67, 72, 73, and 77. Id.
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`
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`
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`Defendants argue that the disputed term is indefinite because “[t]here is no way for a
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`person of ordinary skill in the art to determine whether an impedance measurement is arranged
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`or associated to distinguish because a basis for making that determination is not provided within
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`the claimed subject matter.” MOT. at 2. Additionally, Defendants argue “[Plaintiffs’] expert
`
`deems a non-PoE Ethernet device just as distinguishable as four other PoE compliant Ethernet
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`devices because the non-PoE device does not comply with the standard,” and Defendants urge
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`that “[t]his inability to distinguish the claimed invention from the admitted prior art (non-PoE
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`device), renders the claims indefinite.” Id. at 7. Finally, Defendants argue that claim 67’s
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`“arranging language is indefinite because it fails to provide any objective basis to discern what
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`is required for impedance on the circuit” and “fails to recite any circuit components (or any other
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`discrete devices) in any particular manner. One cannot arrange impedance just as one cannot
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`arrange length, temperature, or other measurable characteristics.” Id. at 8.
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`
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`11
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`Chrimar Systems, Inc.
`Exhibit 2019-11
`IPR2016-01426 USPN 9,019,838
`
`

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`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 12 of 16 PageID #: 2163
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`
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`Plaintiffs contend that “[t]he term ‘arranging’—and arranging impedance within the at
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`least one path—means just what it says, is readily comprehensible, and does not require
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`construction.” PLS.’ BR.. at 12. Specifically, Plaintiffs argue that if Defendants propose that
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`“arranging” means “varying,” “Defendants’ alternative proposal would amount to nothing more
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`than an unsupported attempt to alter the meaning of ‘arrange’ so that Defendants can later
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`advance a non-infringement argument that ‘arranging the impedance’ somehow requires the
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`impedance to be changed, altered, or varied when the accused products are in operation.” Id. at
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`13.
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`
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`Turning to the claims at issue, claim 67 is the only independent claim where the disputed
`
`term appears and is reiterated below:
`
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`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, claim 67 (emphasis added). A read of the related dependent claims suggest that
`
`“arranging” need not occur when a device is in operation but instead could occur at some other
`
`time. Specifically, dependent Claims 87, 95, 96, and 99 recite:
`
`
`
`87. The method according to claim 67 wherein the piece of terminal equipment is
`powered-on.
`
`‘012 Patent, claim 87 (emphasis added).
`
`95. The method according to claim 67 wherein the specific contacts are used for
`Ethernet communication and at least some of the specific contacts are actually
`carrying DC current.
`
`
`
`12
`
`Chrimar Systems, Inc.
`Exhibit 2019-12
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 13 of 16 PageID #: 2164
`
`
`
`‘012 Patent, claim 95 (emphasis added).
`
`
`96. The method according to claim 67 wherein the specific contacts are used for
`Ethernet communication and at least some of the specific contacts are actually
`carrying Ethernet signals and DC current.
`
`‘012 Patent, claim 96 (emphasis added).
`
`
`99. The method according to claim 67 further comprising at least one electrical
`condition applied to the specific contacts.
`
`
`‘012 Patent, claim 99 (emphasis added). The parties addressed whether "arranging impedance"
`
`might be interpreted as requiring varying impedance during operation. The dependent claims
`
`refer to a piece of equipment being "powered-on" or "actually carrying" current, which implies
`
`that the "arranging impedance" limitation in claim 67 can be satisfied regardless of whether the
`
`equipment is powered-on. Thus, to whatever extent Defendants maintain that there is an
`
`irreconcilable ambiguity as to whether "arranging" requires the equipment to be in operation, the
`
`dependent claims weigh against Defendants' position.
`
`
`
`Defendants’ argument regarding whether a person of ordinary skill in the art could
`
`determine whether an impedance is arranged to distinguish is akin to arguing that a means-plus-
`
`function term is indefinite because insufficient structure is disclosed. Defendants have not
`
`argued that the "arranging" term is a means-plus-function term subject to 35 U.S.C. § 112, ¶ 6.
`
`Further, Defendants have not identified any requirement that arranging be accomplished with a
`
`particular structure or particular "circuit components." MOT. at 2. Instead, the claims merely
`
`require that a device is configured to have an impedance that gives some distinguishing
`
`information about the device.
`
`
`
`Additionally, Defendants’ arguments are primarily directed to whether particular accused
`
`instrumentalities or processes infringe. However, arguments regarding whether instrumentalities
`
`
`
`13
`
`Chrimar Systems, Inc.
`Exhibit 2019-13
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 14 of 16 PageID #: 2165
`
`or processes infringe is not proper at this stage of the litigation. That determination is for a
`
`finder of fact. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998)
`
`(“[A]fter the court has defined the claim with whatever specificity and precision is warranted by
`
`the language of the claim and the evidence bearing on the proper construction, the task of
`
`determining whether the construed claim reads on the accused product is for the finder of fact.”).
`
`Further, the test for indefiniteness is not whether a prior art device would infringe. Instead, the
`
`test is whether the claim read in light of the specification delineating the patent, and the
`
`prosecution history, informs, with reasonable certainty, those skilled in the art about the scope of
`
`the invention. Nautilus, 134 S. Ct. at 2124. Overall, Defendants have failed to demonstrate
`
`indefiniteness under this standard. Therefore, the Court DENIES Defendants’ summary
`
`judgment arguments and construes “arranging impedance within the at least one path” to
`
`have its plain meaning.
`
`“wherein distinguishing information about the piece of Ethernet data terminal
`III.
`equipment is associated to impedance within the at least one path”
`
`Plaintiffs’ Proposal
`Plain and ordinary meaning. No construction
`necessary.
`
`Defendants’ Proposal
`Indefinite.
`
`Alternatively:
`“distinguishing information about the piece
`of Ethernet data terminal equipment” and
`“impedance” as used in this phrase have the
`same meanings as in their individually
`proposed constructions
`
`PLS.’ BR. at 15; RESP. at 20. This disputed term appears in Claim 31. Id.
`
`Defendants argue this disputed term is indefinite because “[w]hether an impedance in an
`
`
`
`accused device is associated with distinguishing information requires a comparison to some other
`
`unclaimed, undisclosed device.” MOT. at 7-8. Defendants additionally contend Plaintiffs have
`
`“made no attempt to provide context and clarity regarding this phrase from the intrinsic record,
`
`
`
`14
`
`Chrimar Systems, Inc.
`Exhibit 2019-14
`IPR2016-01426 USPN 9,019,838
`
`

`
`Case 6:13-cv-00881-JDL Document 108 Filed 01/16/15 Page 15 of 16 PageID #: 2166
`
`because it cannot.” Doc. No. 88 at 21. Finally, Defendants argue, “[t]o the extent associated
`
`pertains to conducting an associating act, claim 31 violates the bar against the mixing of statutory
`
`classes of apparatus and method claims. The act by which distinguishing information is/was
`
`associated to impedance constitutes a method step that happens by some actor at some
`
`unspecified time, and the lack of clarity regarding when infringement would occur renders
`
`apparatus claim 31 indefinite.” MOT. at 8.
`
`
`
`Plaintiffs submit that “impedance” and “distinguishing information about the piece of
`
`Ethernet data terminal equipment” have been addressed separately by the parties, and that the
`
`remainder—“associated to impedance within the at least one path”—“contains simple words that
`
`are readily comprehensible and do not require construction.” PLS.’ BR. at 16.
`
`
`
`“[R]eciting both an apparatus and a method of using that apparatus renders a claim
`
`indefinite under [35 U.S.C.] section 112, paragraph 2.” IPXL Holdings, L.L.C. v. Amazon.com,
`
`Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); see H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d
`
`1329, 1336 (Fed. Cir. 2014) (citing IPXL and finding that “it is unclear here when infringement
`
`would occur”).
`
`
`
`Claim 31 of the ‘012 Patent recites:
`
`31. An adapted piece of Ethernet data terminal equipment comprising:
`
`an Ethernet connector comprising a plurality of contacts; and
`
`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