UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF TEXAS
`
`TYLER DIVISION
`
`CHRIMAR SYSTEMS, INC., et al.,
`
`Plaintiffs,
`
`V_
`
`Case No. 6:15-CV-163-JDL
`
`ALCATEL-LUCENT, INC., et al.,
`
`LEAD CASE
`
`Defendants.
`
`CHRIMAR SYSTEMS, INC., et al.,
`
`Plaintiffs,
`
`AMX
`
`Defendant.
`
`Case No. 6:15-CV-164-JDL
`
`DECLARATION OF RICH SEIFERT
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`INTRODUCTION
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`1.
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`I am an expert in the field of communications systems, and have been
`
`retained by McDermott, Will & Emery, representing Defendant AMX and by Williams
`
`Morgan, P.C., representing Defendants Alcatel-Lucent USA, Inc., Alcatel-Lucent
`
`Holdings, Inc., and ALE USA Inc., to analyze, render opinions, and/ or provide expert
`
`testimony regarding the meaning of certain terms in U.S. Patent Nos. 8,155,012 ( ”the
`
`’012 patent), 8,942,107 (”the ’107 patent), 8,902,760 ("the ’760 patent”), and 9,019,838
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`(”the ’838 patent”) (collectively, the Patents-in-Suit) as asserted by Chrimar Systems,
`
`Inc., et al. (collectively, hereinafter "Chrimar” or "Plaintiff”).
`
`2.
`
`I am being compensated at my usual rate of $400 per hour for the time
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`spent by me in connection with this case. This compensation is not contingent upon my
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`opinions or the outcome of the case. I have personal knowledge of the facts set forth in
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`this declaration and, if called to testify as a witness, could and would competently
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`testify to them under oath.
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`3.
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`This declaration is responsive to the December 17, 2015 declaration of Les
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`Baxter on behalf of Plaintiffs in which he provides his conclusions as to the meaning of
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`certain terms.
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`4.
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`This declaration also provides my opinions as to the indefiniteness of
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`certain claims.
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`5.
`
`I incorporate by reference my expert report regarding the invalidity of
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`certain asserted claims of the ’012 patent dated Mar 10, 2015, submitted in prior case
`
`nos. 13-cv-880-]DL and 13-cv-881-JDL, which includes, inter alia, my background and
`
`qualifications, previous documents reviewed, statements of legal principles, claim
`
`construction, and my opinion regarding a person of ordinary skill in the art. For
`
`convenience, some of this material is reproduced below.
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`-2-
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`DECLARATION OF RICH SEIFERT
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`BACKGROUND/QUALIFICATIONS
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`6.
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`I am currently the President of Networks 8: Communications Consulting
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`in Los Gatos, California. I received a Bachelor of Engineering (Electrical Engineering)
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`degree from the City College of New York in 1976. I received a Master of Science
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`(Electrical Engineering) degree in 1979 from the Worcester Polytechnic Institute, a
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`Master of Business Administration degree in 1984 from Clark University, and a Iuris
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`Doctor degree in 2006 from Santa Clara University. I have over 45 years of experience in
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`computer and communications technology, and have worked for the past 35 years on
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`the architecture and design of data communications networks and networking
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`products. My curriculum Vitae is attached hereto as Exhibit A, which includes lists of
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`publications I have authored and legal cases in which I have been involved.
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`DOCUMENTS AND MATERIALS CONSIDERED
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`7.
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`A list of additional materials (beyond those listed in my earlier report)
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`that I have considered in rendering the opinions expressed herein is attached as Exhibit
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`B. In forming my opinions, I have also relied on my experience and education.
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`LEGAL PRINCIPLES
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`8.
`
`I am not a patent attorney and offer no opinions on the law. However, I
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`have been informed by counsel of the legal standards that apply, and I have applied
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`them in arriving at my conclusions.
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`9.
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`I understand that a patent is invalid for indefiniteness if its claims, read in
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`light of the intrinsic record, fail to inform, with reasonable certainty, those skilled in the
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`art about the scope of the invention.
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`-3-
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`DECLARATION OF RICH SEIFERT
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`10.
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`I understand that patent claims have their plain and ordinary meaning to
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`one of skill in the art when read in the context of the intrinsic record unless the patentee
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`has acted as his own lexicographer or disclaimed some scope of the claim.
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`PRIOR CLAIM CONSTRUCTION
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`11. My understanding is that some of the terms in the claims of the ’012
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`patent were construed by the Court in case nos. 13-cv-880-IDL and 13-cv-881-JDL, as
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`shown below. See, generally, Memorandum Opinion and Order, dated Oct. 22, 2014 (the
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`"10 / 22/ 14 Order”), Memorandum Opinion and Order dated Jan. 8, 2015 (the "1 / 8/ 15
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`Order”), and Memorandum Opinion and Order dated Ian. 16, 2015 (the "1 / 16/ 15
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`Order”).
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`”distinguishing information about the
`piece of Ethernet terminal equipment”
`(Claim 31)
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`”to distinguish the piece of terminal
`equipment”
`(Claim 67)
`
`”impedance”
`(Claims 31, 35, 67, 77)
`
`”terminal equipment”
`(Claims 67, 106)
`
`”Ethernet data terminal equipment”
`(Claims 31, 35, 43, 55)
`
`"information to distinguish the piece of
`Ethernet data terminal equipment from at
`least one other piece of Ethernet data
`terminal equipment” 10/22/14 Order at 15;
`1/16/15 Order at 3.
`
`"to distinguish the piece of data terminal
`equipment having an Ethernet connector
`from at least one other piece of terminal
`equipment having an Ethernet connector”
`10/22/14 Order at 15; 1/16/ 15 Order at 3.
`
`"opposition to the flow of current” 1 / 16 / 15
`Order at 3.
`
`”deVice at which data transmission can
`originate or terminate” 1/ 16/ 15 Order at 4.
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`"device at which data transmission can
`originate or terminate and that is capable of
`Ethernet communication” 1/ 16/15 Order at
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`”[A]n ada ted iece of Ethernet data
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`These reambles are limitin and have their
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`-4-
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`terminal equipment”
`(Claim 31) and
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`plain and ordinary meaning. 1/ 16/ 15 Order
`at 4 (emphasis in original).
`
`” [A] method for adapting a piece of
`terminal equipment”
`(Claim 67)
`
`”arranging impedance within the at least Plain meaning. 1 / 16 / 15 Order at 14.
`one path”
`(Claim 67)
`
`(Claim 31)
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`”wherein distinguishing information
`about the piece of Ethernet data terminal
`equipment is associated to impedance
`within the at least one path”
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`Plain meaning. 1 / 16 / 15 Order at 16.
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`PERSON OF ORDINARY SKILL IN THE ART
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`12.
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`I have been informed and understand that the following criteria are useful
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`in determining the level of ordinary skill in the art with respect to a given patent: (a) the
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`educational level of the inventor; (b) the type of problems encountered in the art;
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`(c) prior art solutions to those problems; ((1) rapidity with which innovations are made;
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`(e) sophistication of the technology in the art; and (f) the educational level of active
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`workers in the field. A person of ordinary skill in the art with respect to the asserted
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`patent would have had at least a B.S. degree in electrical engineering or computer
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`science, or the equivalent, and at least three years of experience in the design of network
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`communications products.
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`13.
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`Specifically, such a person would be familiar with, inter alia, data
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`communications protocols, data communications standards (and standards under
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`development at the time), and the behavior and use of common data communications
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`products available on the market.
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`DECLARATION OF RICH SEIFERT
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`14.
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`At the time of the filing of the Patents-in-Suit, through the time of the
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`earliest claimed priority date of April 10, 1998, I was at least a person of ordinary skill in
`
`the art, and regularly worked with and supervised others at that level of skill.
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`ADMITTED PRIOR ART
`
`(A)
`
`Ethernet Connectors
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`15.
`
`The Patents-in-Suit disclose and incorporate by reference U.S. Patent
`
`5,406,260 (also assigned to Plaintiff Chrimar Systems, Inc., in the instant case) as
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`relevant prior art. They state that the ’260 patent had already disclosed:
`
`is disclosed in U.S. Pat. No. 5,406,260 issued to Cummings, et al., (hereby
`One method
`incorporated by reference) which discusses a means for detecting the unauthorized
`removal of a networked device by injecting a low current power signal into each existing
`communications link. A sensor monitors the returning current flow and can thereby
`detect a removal of the equipment. This method provides a means to monitor the
`connection status of any networked electronic device thus providing an effect theft
`detection / deterrent system.”
`
`See, e.g., ‘O12 Patent, 2:12-19.
`
`16.
`
`Coupling a path across specific contacts of an Ethernet connector
`
`comprising 8 contacts (numbered 1 through 8) was also known to persons of ordinary
`
`skill. The IEEE 802.3i-1990 specification (10BASE-T) discloses such an Ethernet
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`connector, with eight contacts numbered 1 through 8:
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`DECLARATION OF RICH SEIFERT
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`IEEE 802.3i-1990 Figures 14-20 and 14-21: MAU MDI Connect and Twisted-pair Link
`Segment Connector
`IEEE 802.3i-1990 at 52 (§14.5.2); see also IEEE 802.3-1993 at 268.
`
`17. Mr. Baxter has conceded that having a path coupled across selected
`
`contacts of a given Ethernet connector was already known to persons of ordinary skill
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`and was not part of any inventive element of claim 31 of the ’012 patent.
`
`Q: And you say a person would understand what it means to have a path coupled
`between contacts of an Ethernet connector, correct?
`
`A: Mm-hmm.
`
`Q: But you're not asserting that the inventors invented having a path across the two
`contacts, right?
`A: No.
`
`Q: ...Would a person of ordinary skill in the art at the date of filing of the earliest patent
`application or the date of invention have already seen something similar to the schematic
`in paragraph 77?
`
`A: Whether they would have seen this exact schematic or not, I don't know, but certainly
`you would be familiar with what the Ethernet connector is, what an impedance is, and
`what a path is. So I think those are very familiar concepts to anyone of skill in the art at
`that time and since Ethernet, you know, twisted pairing had been around for some years,
`certainly they would have seen schematics that had connections across the contacts of a
`modular jack.
`
`Baxter October 22, 2014 Deposition at 114-116 (objections omitted).
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`DECLARATION OF RICH SEIFERT
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`(B)
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`Ohm’s Law
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`18.
`
`Voltage (V), current (I), and impedance (Z) are interrelated as expressed
`
`by Ohm’s law. See, generally, Crow at 109-126. When analyzing circuits carrying DC
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`current, impedance may be simplified to resistance (R).3
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`19.
`
`Ohm’s Law states that Voltage (V) = Current (I) x Resistance (R), i.e.,
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`V = I x R. Crow at 112.
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`20.
`
`Applying Ohm’s law, one could maintain a constant voltage, and change
`
`the current by changing the resistance. Any increase in current would be due to a
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`decrease in the resistance, and vice-versa. Similarly, for a constant resistance, Ohm’s
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`law says that you can change the current by changing the applied voltage.
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`21.
`
`Any conductive path inherently has the capability to draw different
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`magnitudes of current because it is governed by the principles of Ohm’s law. One can
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`always apply voltages of different magnitudes to yield currents of different
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`magnitudes. Or, one can simply change the impedance (resistance) within the path to
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`produce a different magnitude of current.
`
`22.
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`Direct current (DC) is a current that does not change in polarity. While the
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`magnitude of the current may vary, the net flow of electric charge does not change
`
`direction in a DC circuit.
`
`23.
`
`Alternating current (AC) is a current that does change in polarity. Over
`
`time, the net flow of electric charge changes directions, either periodically or
`
`aperiodically.
`
`24.
`
`In the real-world environment for Ethernet data terminal equipment (e.g.,
`
`the end devices claimed in the Patents-in-Suit), any DC current drawn by the device
`
`will always correlate to a draw of power by the device, related to that current. In other
`
`3 In the general case of combined AC/ DC circuits, Voltage, current, and impedance are all
`vector quantities requiring the use of complex numbers in the mathematical analysis. Since the
`claims of the Patents-in-Suit relate to DC currents, we can simplify the analysis and consider
`Voltage, current, and resistance to be scalars with a given Value.
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`-8-
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`DECLARATION OF RICH SEIFERT
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`words, current flow across Ethernet cable wiring, through the recited contacts of an
`
`Ethernet connector, and through a conductive path within circuitry in a device will
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`always consume power. This is because each of these elements will have some
`
`appreciable resistance.
`
`25.
`
`In a DC circuit, power (P) is defined as the voltage (V) applied, multiplied
`
`by the resulting current (I), i.e. P = V x I. Crow at 184. Combining Ohm’s law with the
`
`power equation, P = V x I = (I x R) x I = I2 x R. Because R will always have a non-zero
`
`Value, a device that is drawing current will always consume power as well.
`
`(C)
`
`Ethernet Networks and Naming Conventions
`
`26.
`
`10BASE-T networks use twisted-pair wiring to send signals. See, e.g.,
`
`Seifert Report at HI 151. The same connector discussed above (R]-45) is used to connect
`
`the communications cable to the network circuitry inside the end device. On each pair
`
`used, an isolation transformer blocks continuous DC current from passing across the
`
`transformer, but AC currents (representing digital data) or DC pulses can pass across
`
`the magnetic coupling between the two coils in the isolation transformer.
`
`27.
`
`The term "Base-T” standing alone is not used in the IEEE specification.
`
`The only use of the term is in the context of an entire designation, e.g., 10BASE-T (or
`
`100BASE-TX, 1000BASE-T, etc.)
`
`28.
`
`The IEEE Standards introduced shorthand names for the the Various
`
`Ethernet physical media systems. A complete list of these shorthand names (as of 1998)
`
`can be found in Rich Seifert, Gigabit Ethernet: Technology and Applications for High-Speed
`
`LANs (Addison-Wesley 1998) at 15. There is no standard that is simply designated
`
`BASE-T (or ”BaseT”, as used in the Patents-in-Suit). Neither are all twisted-pair
`
`configurations designated as XBASE-T. For example, 1BASE5 is an Ethernet standard
`
`employing a single unshielded twisted pair, operating at 1 Mb/ 5, with a 500 meter
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`maximum length. Similarly, the AUI in 10BASE5 employs four twisted pairs, but has no
`
`designation of XBASE-T.
`
`29.
`
`The naming convention for the variety of Ethernet media systems is
`
`explained below:
`
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`
`Id. at 14
`
`30.
`
`Thus, a person of ordinary skill in the art would not consider the term
`
`”Base-T” standing alone to define a type of Ethernet network. The definition is
`
`incomplete, nor is the naming or spelling correct. As discussed above, even if the intent
`
`is to provide a shorthand notation for Ethernet operation over twisted pair, the term is
`
`not inclusive of systems such as 1BASE5 or the AUI of IOBASES. ”Base-T” is simply not
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`-10-
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`a term of art as of any of the claimed priority dates. A person of ordinary skill would
`
`not know the complete set (if any) of Ethernet media systems to which it refers.
`
`31.
`
`The specification only discusses 10BASE-T, and makes no mention of
`
`other systems that were known at the time, including 100BASE-TX, 100BASE-T4, and
`
`the emerging 1000BASE-T. Those other system operate at higher data rates, using lower
`
`signaling Voltages and multi-level signaling, which results in significantly lower
`
`margins for error due to noise or inteference. See, generally, IEEE 802.3. This is further
`
`demonstrated by the fact that 10BASE-T allows for the use of (lower quality) Category 3
`
`wiring where 100BASE-TX and 1000BASE-T require at least Category 5 wiring. Id.
`
`32.
`
`Since the system of the Patents-in-Suit (and the prior art ’260 patent,
`
`incorporated by reference) all depend on superimposing a low DC current onto the
`
`operational Ethernet cabling, without causing appreciable interference to the Ethernet
`
`signals, it is possible (if not likely) that the disclosed embodiments would not function
`
`correctly in the more constrained environment of those higher-speed systems. Thus,
`
`there is no reason for a person of ordinary skill to assume that the inventors meant their
`
`invention to include operation over any system other than 10BASE-T, the only one
`
`disclosed in the patents.
`
`33.
`
`100BASE-TX was formally adopted by the IEEE in 1995. 1000BASE-T was
`
`available in draft form at least as early as 1998 but was not formally adopted by the
`
`IEEE until 1999. A person of ordinary skill in the art would have known and had access
`
`to these standards and recognized the differences between the systems described in
`
`them vis-a-vis 10BASE-T. Limiting the recitation in the provisional and utility
`
`applications solely to 10BASE-T provides the only meaning for the term "BaseT,” which
`
`appears to be a creation of the applicants or their attorney.
`
`-11-
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`PROSECUTION HISTORY
`
`34.
`
`The ’012 patent was filed as application no. 12/239,001 on September 26,
`
`2008. ’012 Patent at 1. The ’012 patent states that it is a continuation of an earlier
`
`application no. 10/ 668,708 filed on September 23, 2003, which is a continuation of
`
`application no. 09/370,430 filed on August 9, 1999, which is a continuation-in-part of a
`
`PCT filing PCT / US99 / 07846 filed on April 8, 1999, which claims the benefit of
`
`provisional application no. 60/ 081,279, filed on April 10, 1998. ’012 Patent at 1.
`
`35.
`
`The ’107 patent was filed as application no. 13/ 370,918 on February 10,
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`2012 as a continuation of application no. 12/239,001, which issued as the ’012 patent.
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`The '760 patent was filed as application no. 13/615,755 on September 14, 2012 as a
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`continuation of application no. 13/370,918, which issued as the ’107 patent. The ’838
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`patent was filed as application no. 13/615,734 on September 14, 2012 as a continuation
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`of application no. 13/370,918, which issued as the ’107 patent.
`
`36.
`
`The specifications of the asserted patents all have the same figures,
`
`Summary of the Invention, and for the most part, detailed description sections. The
`
`Background of the Invention sections are also the same except for clerical changes to
`
`mention the additional related Chrimar patent filings. Where citations below are made
`
`to just one of the Patents-in-Suit, they should be considered applicable to all of them
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`since the text and figures are substantially identical, even if line and column numbers
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`may have changed due to re-pagination.
`
`37.
`
`The specification acknowledges that the prior art ’260 patent already
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`discussed "injecting a low current power signal into each existing communications
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`lir1 ” with a "sensor monitor[ing] the returning current flow [to] detect removal of
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`equipment.” ’012 Patent, 2:12-19. The ’260 patent is incorporated by reference. ’012
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`Patent, 2:13-14.
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`38.
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`The ’260 patent discloses the use of 10BASE-T wiring. ’260 Patent, 3:34-35.
`
`It also explains how DC current can be sent via a pair of wires:
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`Wiring schemes of the 10BaseT type are commonly employed to provide
`data communication lines for electronic computer equipment. In
`accordance with conventional wiring approaches, data communications
`link 14 generally includes a plurality of pairs of transmit wires 44 and 46
`as well as a plurality of pairs of receive wires (not shown) connected to
`each of personal computers 12a through 12d. Each pair of transmit wires
`44 and 46 are internally coupled to an associated personal computer 12
`via one winding 53 of an internally located isolation transformer 52. Each
`pair of transmit wires 44 and 46 along with isolation transformer 52
`thereby form a current loop through the personal computer 12. .
`.
`
`’260 Patent, 3:35-48.
`
`[A]n isolation power supply 26 [] supplies a continuous direct current
`(DC) power signal to each of the current loops 50a through 50d.
`
`’260 Patent, 3:53-56.
`
`The power supply lines 28a through 28d each are electrically coupled to
`respective transmit wires 44a through 44d found within data
`communication link 14. Receive power lines 30a through 30d are
`likewise electrically coupled to transmit wires 46a through 46d also
`found within the data communication link 14. Transmit wires 44a
`
`through 44d and 46a through 46d are existing wires found within data
`communication link 14 that are selectively tapped as pairs in accordance
`with the present invention to provide current loops 50a through 50d.
`
`As a consequence, power supply line 28a continuously supplies a low
`current DC power signal to remote personal computer 12a via transmit
`wire 44a. The lower current power signal flows through an internal path
`provided by existing circuitry in personal computer 12a. The low current
`power signal then exits the remote personal computer 12a via transmit
`wire 46a and in turn is picked up by receive power line 30a. The lower
`current power signal is continuously supplied to current loops 50a
`through 50d at all times regardless of whether the computer network 10
`or any personal computers 12a through 12d are operating or not. In
`addition, the very low current DC power signal is so small that it does
`not interfere with or adversely affect the operafion of the associated
`computers 12a through 12d or computer network 10. To prevent the flow
`of DC current to or from hub 20, each of the transmit wires 44a through
`44d and 46a through 46d are further coupled to DC blocking capacitors
`C5 between each of the current loops 50a through 50d and hub 20. DC
`blocking capacitors C5 thereby prevent unwanted DC current paths
`through hub 20.
`
`’260 Patent, 4:15-46.
`
`39.
`
`Figure 2 of the ’260 patent, highlighted to show a DC current path is
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`shown below:
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`40.
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`As shown above, the current loop path of the ’260 patent uses the network
`
`side (top half) of the isolation transformer to pass DC current across one pair of transmit
`
`wires (44a and 46a). Elements in boxes 12a — 12d show corresponding transformers in
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`the other remote devices in the system, and box 20 is a central hub. Otherwise all of
`
`which is shown in the figure relates to a device that sends a low DC current over the
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`existing Ethernet wiring and detects whether the path is present or broken, by the
`
`presence (or lack of) current flow in the path.
`
`41.
`
`The Patents-in-Suit use the above described scheme to detect the presence
`
`or removal of the Ethernet hub or the remote device.
`
`42.
`
`The provisional application for the Patents-in-Suit included only block
`
`diagrams. What now constitute Figures 4-10 and 16-22 of the Patents-in-Suit were not
`
`present in the provisional application. Only the following sections of text in the Patents-
`
`in-Suit can be identified in the provisional application: 1:22-53; 1:66-2:2; 2:8-27; 2:30-32;
`
`5:14-32; 5:30-40 (”central module” and ”remote module” in Patents-in-Suit specification
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`replacing ”network identification receiver” and ”network identification circuitry,”
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`respectively in provisional); 5:53-61; 6:1-3 ("remote module” replaces ”network
`
`identification circuitry”); 6:7-13; 6:20-31 (”central module” and ”remote module” in the
`
`’012 specification replacing ”network identification receiver” and ”network
`
`identification circuitry,” respectively in provisional); 10:49-11:19 ("remote module”
`
`replaces ”network identification circuitry”).
`
`43.
`
`Figures 4-10, 16-18 first appeared in application no. PCT/ US99 / 07846
`
`filed on April 8, 1999. The text in the ’012 patent through column 12, line 61, with the
`
`exception of the text identified above, was first added in this filing.
`
`44.
`
`Figures 19a, 19b, 20, 21, and 22, their accompanying descriptions in the
`
`"Brief Description of the Drawings” (4224-35), and the text from col. 12, line 62 through
`
`col. 16, line 64 first appeared in continuation-in-part application no. 09/370,430, filed on
`
`August 9, 1999.
`
`45.
`
`The specification explains that the "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 the network.” (’012 patent, 1:23-26.) The objective of the invention is to provide "a
`
`method for permanently identifying an asset by attaching an external or internal device
`
`to the asset and communicating with that device using existing network wiring or
`
`cabling. ’012 Patent, 1:66-2-2.
`
`46.
`
`The specification of the Patents-in-Suit distinguishes the invention from
`
`the ’260 patent, stating, ”It would, however, be desirable to provide a further means in
`
`which a networked device may also be identified by a unique identification number
`
`using the existing wiring or cabling as a means of communicating this information back
`
`to a central location. More particularly, it is desirable to provide a means for
`
`identification that feasibly employs the same cable (and if desired, the same wires in the
`
`cable) that normally carries high frequency data communications in an existing
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`network.” ’012 Patent, 2:22-30.
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`47.
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`The summary of the invention explains that the invention provides a
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`communication system for ”generating and monitoring data over a pre-existing wiring
`
`or cables that connect pieces of networked computer equipment to a network” and that
`
`”a remote module attached to the electronic equipment [] transmits information to a
`
`central module by impressing a low frequency signal on the wires of the cable.” ’O12
`
`Patent, 3:18-25.
`
`48.
`
`The specification explains that the remote module to be attached to the
`
`asset being tracked requires power, which is provided to it by the central module by
`
`way of a DC power supply attached to a current loop passing through the network
`
`wiring to which remote module and the asset to be tracked are both connected. ’012
`
`Patent, 5:14-52.
`
`49.
`
`The remote module receives the DC current supply and uses it to power
`
`the circuitry providing for a "preprogrammed unique identification number,” which is
`
`then encoded via a modulation technique, such as Manchester encoding, which is then
`
`transmitted back, as a modulation of the DC current signal. ’012 Patent, 629-30.
`
`50.
`
`The other embodiments also contemplate the modulation of current to
`
`provide an information stream. ’012 Patent, 8:49-57; 9:47-53; 10:9-25; 12:6-47; 14:21-28.
`
`51.
`
`The embodiments disclosed in the specification all incorporate a remote
`
`module that draws DC current via one wire of a pair of wires connecting the Ethernet
`
`connectors of the central and remote module. The remote module returns the DC
`
`current via a different pair with the total DC current split between the two wires of that
`
`second pair. The variation in the relative amount of current in the two wires of the
`
`second pair provides the manner by which information (the encoded bits) are sent to
`
`the central module. See ‘O12 Patent Figs. 6, 8, 10; and corresponding text.
`
`52.
`
`The embodiments do not include any examples in which the (total) DC
`
`current drawn by the remote module from the central module provides any information
`
`about the remote module, as required by certain claims. See, e.g., ’107 Patent, Claim 1
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`(”the piece of Ethernet terminal equipment to draw different magnitudes of DC current
`
`flow to convey information about the piece of Ethernet terminal equipment”) They
`
`also do not disclose any examples in which a single magnitude of current drawn by the
`
`module is indicative of any feature of the remote module, other than what is already
`
`disclosed by the ’260 patent.
`
`53.
`
`The ’012 patent was filed as an application on September 26, 2008. The
`
`claims as issued first appear in an amendment dated March 25, 2011. See ’012 Patent
`
`Prosecution History, March 25, 2011 Response.
`
`54.
`
`The ’107 patent was filed as a continuation of the application that issued
`
`as the ’012 patent.
`
`55.
`
`The prosecution history of the ’107 patent is informative as to the meaning
`II II
`
`of ”at least one path coupled across for the purpose of drawing DC current,
`
`current,”
`
`and ”current flow,” and the meaning of the use of infinitives in the claims.
`
`56.
`
`Claim 1 of the ’107 patent as filed is reproduced below:
`
`
`
`’107 Prosecution History at 41 (CMS049925).
`
`57.
`
`The Examiner rejected the claims as failing to meet the written description
`
`requirement of 35 U.S.C. § 112:
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`2.
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`Claims 1-71 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 {pre-
`
`AIA). first paragraph. as iaiting to comply with the written description requirement.
`
`The clalmlsl contains subject matter which was not descrbed in the specification
`
`in such a way as to reasonably convey to one siciled in the relevant an that the
`
`inventor or a joint inventor. or for pre-AIA the if'IVel'IlO|’[5]. at the time the
`
`application was filed. had possession ol the claimed invention.
`
`Claim 1 recites ‘electrical signal to convey clatlngulshlng infomtatlon about
`
`the piece oi terminal equipment even it the piece at tenninal equipment is
`
`powered-eff‘ and claim 7 disclose 'cistinguisl1ing infonnstion comprises a
`
`preprogrammed pattern‘.
`
`The specification discloses ln[o01o]. ‘Tito power signal to the
`
`com munlcatton device may also be fluctuated to provide useiul hfcnnation. such
`
`as status information. to the communication device’.
`
`Thespeciicetion lactrs howto make the powersignal to convey
`
`dstlngulshing hlormation about the terminal equipment. Merely stating power
`
`signal fluctuation can be used to convey useful information