`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH AND ROSATI
`
`
`
`Paper No. ____
`Filed: September 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`AEROHIVE NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-01758
`U.S. Patent No. 9,019,838 B2
`_____________________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,019,838
`
`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`Introduction .................................................................................................. 1
`
`II.
`
`Compliance with Requirements for Inter Partes Review .............................. 2
`
`A. Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ....................................... 2
`
`1.
`
`2.
`
`3.
`
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)).......................... 2
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) .................................. 2
`
`Designation of Lead and Back-up Counsel and Service
`Information (37 C.F.R. §§ 42.8(b)(3)-(4)) ................................. 2
`
`B.
`
`C.
`
`Fee for Inter Partes Review (37 C.F.R. § 42.103) ............................... 3
`
`Grounds for Standing (37 C.F.R. § 42.104(a)) .................................... 3
`
`III. Relevant Background on the ’838 Patent ...................................................... 4
`
`A.
`
`Level of Ordinary Skill ....................................................................... 4
`
`B.
`
`C.
`
`Description of the Alleged Invention of the ’838 Patent ...................... 4
`
`Priority Claims in the ’838 Patent ....................................................... 6
`
`D.
`
`Priority Date of the ’838 Patent ........................................................... 6
`
`1.
`
`2.
`
`The challenged claims are not entitled to the April 10,
`1998 filing date of the ’279 provisional. ................................... 7
`
`Inventor testimony alone cannot establish an earlier
`invention date as a matter of law. ............................................ 10
`
`3.
`
`The Boenke letters do not establish an invention date. ............ 11
`
`IV. State of the Art ............................................................................................ 11
`
`V.
`
`Claim Construction ..................................................................................... 13
`
`A.
`
`“BaseT” ............................................................................................ 13
`
`i
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`VI.
`
`Identification of Challenge (37 C.F.R. § 42.104(b)) and Reasonable
`Likelihood that the Challenged Claims Are Unpatentable ........................... 14
`
`A.
`
`The challenged claims are invalid based on the De Nicolo
`references. ......................................................................................... 14
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`De Nicolo References ............................................................. 14
`
`Reasons to Combine the De Nicolo References ...................... 15
`
`c.
`
`Independent Claim 1 ............................................................... 17
`a.
`“A central piece of network equipment” ....................... 17
`b.
`“at least one Ethernet connector comprising first
`and second pairs of contacts used to carry BaseT
`Ethernet communication signals” .................................. 18
`“the central piece of network equipment to detect
`different magnitudes of DC current flow via at
`least one of the contacts of the first and second
`pairs of contacts” .......................................................... 20
`“[the central piece of network equipment] to
`control application of at least one electrical
`condition to at least one of the contacts of the first
`and second pairs of contacts in response to at least
`one of the magnitudes of the DC current flow” ............. 22
`
`d.
`
`Dependent Claim 2: “wherein the different magnitudes of
`DC current flow are part of a detection protocol”.................... 24
`
`Dependent Claim 7: “wherein the central piece of
`network equipment to provide at least one DC current via
`at least one of the contacts of the first and second pairs of
`contacts and to detect distinguishing information within
`the DC current via the at least one of the contacts of the
`first and second pairs of contacts” ........................................... 25
`
`Dependent Claim 26: “wherein the central piece of
`network equipment to distinguish one end device from at
`least one other end device based on at least one of the
`magnitudes of the DC current flow” ....................................... 27
`
`Dependent Claim 29: “wherein the central piece of
`network equipment to distinguish one network object
`
`ii
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`
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`from at least one other network object based on at least
`one of the magnitudes of the DC current flow” ....................... 28
`
`8.
`
`9.
`
`Dependent Claim 38: “wherein the central piece of
`network equipment comprises at least one DC supply” ........... 28
`
`Dependent Claim 40: “wherein the central piece of
`network equipment to control application of the at least
`one DC power signal” ............................................................. 29
`
`10. Dependent Claim 47: “wherein the at least one electrical
`condition comprises at least one voltage condition” ................ 30
`
`11. Dependent Claim 55: “wherein the different magnitudes
`of DC current flow comprise a first magnitude followed
`by a second magnitude” .......................................................... 31
`
`12. Dependent Claim 69: “wherein the at least one
`magnitude of DC current flow is used by the central
`piece of network equipment to control application of at
`least one DC power signal” ..................................................... 31
`
`VII. Conclusion .................................................................................................. 32
`
`
`
`iii
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`
`
`LIST OF EXHIBITS
`
`Number
`
`Short Name
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`’760 Patent
`
`U.S. Patent No. 8,902,760
`
`’760 Assignment
`Records
`
`USPTO Assignments on the Web for U.S.
`Patent No. 8,902,760
`
`’107 Patent
`
`U.S. Patent No. 8,942,107
`
`’107 Assignment
`Records
`
`USPTO Assignments on the Web for U.S.
`Patent No. 8,942,107
`
`’838 Patent
`
`U.S. Patent No. 9,019,838
`
`’838 Assignment
`Records
`
`USPTO Assignments on the Web for U.S.
`Patent No. 9,019,838
`
`’019 Patent
`
`U.S. Patent No. 9,049,019
`
`’019 Assignment
`Records
`
`USPTO Assignments on the Web for U.S.
`Patent No. 9,049,019
`
`Seifert Decl.
`
`Declaration of Richard Seifert
`
`Seifert CV
`
`Curriculum Vitae of Rich Seifert
`
`Seifert Materials
`
`List of Materials Reviewed by Rich Seifert
`
`’760 Actions
`
`List of Pending Civil Actions for
`U.S. Patent No. 8,902,760
`
`1013
`
`’107 Actions
`
`1014
`
`’838 Actions
`
`1015
`
`’019 Actions
`
`List of Pending Civil Actions for
`U.S. Patent No. 8,942,107
`
`List of Pending Civil Actions for
`U.S. Patent No. 9,019,838
`
`List of Pending Civil Actions for
`U.S. Patent No. 9,049,019
`
`1016
`
`’260 Patent
`
`U.S. Patent No. 5,406,260
`
`iv
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`Number
`
`Short Name
`
`Description
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`Murphy
`
`U.S. Patent No. 2,822,519
`
`Lee
`
`U.S. Patent No. 5,200,686
`
`De Nicolo ’468
`
`U.S. Patent No. 6,115,468
`
`De Nicolo ’666
`
`U.S. Patent No. 6,134,666
`
`Bloch
`
`Puvogel
`
`Bell
`
`U.S. Patent No. 4,173,714
`
`U.S. Patent No. 4,733,389
`
`U.S. Patent No. 244,426
`
`DP83840 Data
`Sheet
`
`National Semiconductor DP83840 Technical
`Data Sheet
`
`IEEE 802.3u-1995
`
`IEEE Standard 802.3u-1995
`
`IEEE 802.3-1993
`
`IEEE Standard 802.3-1993
`
`’279 Provisional
`
`U.S. Provisional Application No. 60/081,279
`
`Baxter Dist. Ct.
`Decl.
`
`Declaration of Les Baxter, dated December
`17, 2015
`
`Seifert Dist. Ct.
`Decl.
`
`Declaration of Rich Seifert, dated January
`21, 2016
`
`1030
`
`H4000 Manual
`
`Excerpt from “H4000 Ethernet Transceiver
`Technical Manual” (1982)
`
`1031
`
`Gigabit Ethernet
`
`Excerpt from Gigabit Ethernet, R. Seifert
`(1998)
`
`1032
`
`1033
`
`1034
`
`Comm. Engineering Excerpt from Communication Engineering,
`W. L. Everitt and G. E. Anner (1956)
`
`Baxter Dep.
`
`Transcript of Deposition of Leslie Baxter
`
`Patel
`
`U.S. Patent No. 5,883,894
`
`v
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`Number
`
`Short Name
`
`Description
`
`1035
`
`PCnet/FAST
`
`Am79C971 PCnet™-FAST Hardware User’s
`Manual
`
`Agilent Application
`Note
`
`An Overview of the Electrical Validation of
`10BASE-T, 100BASE-TX, and 1000BASE-
`T Devices, Application Note, Agilent
`Technologies
`
`Katzenberg
`
`U.S. Patent No. 6,218,930
`
`Katzenberg
`Provisional
`
`U.S. Provisional Patent Application No.
`60/123,688
`
`1036
`
`1037
`
`1038
`
`
`
`vi
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`I.
`
`Introduction
`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioner Aerohive
`
`Networks, Inc. (“Petitioner” or “Aerohive”) respectfully requests inter partes
`
`review (“IPR”) of claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 (“the challenged
`
`claims”) of U.S. Patent No. 9,019,838 (“the ’838 patent”), which is attached to this
`
`Petition as Exhibit 1005. USPTO assignment records indicate that the applicants of
`
`the ’838 patent assigned their rights to ChriMar Systems, Inc. (“Patent Owner”).
`
`(Ex. 1006.)
`
`This petition is filed with a motion for joinder with IPR2016-00573 (“the
`
`’573 review”), in which AMX, LLC filed a petition on March 3, 2016 requesting
`
`cancellation of the challenged claims of the ’838 patent. The Board instituted trial
`
`in the ’573 review on August 10, 2016 on one ground: the challenged claims are
`
`obvious in light of United States Patents Number 6,115,468 (“De Nicolo ’468,”
`
`Ex. 1019) and 6,134,666 (“De Nicolo ’666,” Ex. 1020) (collectively, “the
`
`De Nicolo
`
`references”). Here, Aerohive proposes
`
`the same ground of
`
`unpatentability as instituted in the ’573 review and relies on the same analysis and
`
`evidence.1
`
`
`1 AMX, LLC’s petition for the ’573 review included an additional ground based
`
`on § 103 in light of another reference. The Board declined to institute on that
`
`
`
`1
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`II. Compliance with Requirements for Inter Partes Review
`
`A. Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`
`1.
`
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real party-in-interest is Aerohive Networks, Inc.
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ’838 patent is also the subject of 42 civil actions filed in the Eastern
`
`District of Michigan, Eastern District of Texas, and Northern District of California.
`
`Attached as Exhibit 1014 is a list identifying each of these civil actions. These
`
`cases may affect, or be affected by, decisions in this proceeding.
`
`3.
`
`Designation of Lead and Back-up Counsel and Service
`Information (37 C.F.R. §§ 42.8(b)(3)-(4))
`
`Lead Counsel
`Matthew A. Argenti (Reg. No. 61,836)
`margenti@wsgr.com
`Postal and Hand-Delivery Address:
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: 650-354-4154
`Fax: 650-493-6811
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Back-up Counsel
`Michael T. Rosato (Reg. No. 52,182)
`mrosato@wsgr.com
`Postal and Hand-Delivery Address:
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Telephone: 206-883-2529
`Fax: 206-883-2699
`
`Petition. Please address all correspondence to lead and back-up counsel. Petitioner
`
`also consents to electronic service by email.
`
`
`ground. Aerohive has omitted that ground from this petition.
`
`2
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`B.
`
`Fee for Inter Partes Review (37 C.F.R. § 42.103)
`
`The undersigned authorizes the PTO to charge the fee set forth in 37 C.F.R.
`
`§ 42.15(a) for this Petition to Deposit Account No. 23-2415. Review of 10 claims
`
`is requested. The undersigned authorizes payment for additional fees that may be
`
`due with this Petition to be charged to the above-referenced Deposit Account.
`
`C. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that it has standing to request and is not barred from
`
`requesting an IPR of the ’838 patent pursuant to 35 U.S.C. § 315. Neither
`
`Petitioner nor any privy of Petitioner has filed any civil actions challenging the
`
`validity of any claim of the ’838 patent or previously requested IPR of the ’838
`
`patent. See 35 U.S.C. § 315(a)(1); 37 C.F.R. § 42.101(a). The time limit of 35
`
`U.S.C. § 315(b) (“1 year after . . . the petitioner is served with a complaint alleging
`
`infringement of the patent”) and 37 C.F.R. § 42.101(b) (same) does not apply here
`
`because Aerohive has moved for joinder, pursuant to 37 C.F.R. § 42.22 and as filed
`
`with this petition, to the ’573 review within one month of the ’573 review’s
`
`institution on August 10, 2016. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
`
`Neither Petitioner nor any privy of Petitioner is estopped from requesting
`
`cancellation of the challenged claims on the grounds identified in this petition. See
`
`35 U.S.C. § 315(e)(1); 37 U.S.C. § 42.101(c).
`
`3
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`III. Relevant Background on the ’838 Patent
`
`A. Level of Ordinary Skill
`
`A person of ordinary skill in the art at the time of the alleged invention
`
`would have had at least a B.S. degree in electrical engineering or computer
`
`science, or the equivalent, and at least three years of experience in the design of
`
`network communication products. Specifically, such a person would be familiar
`
`with, inter alia, data communications protocols, data communications standards
`
`(and standards under development at the time), and the behavior and use of
`
`common data communications products available on the market. (Ex. 1009, Seifert
`
`Decl., at ¶¶ 36-37.)
`
`B. Description of the Alleged Invention of the ’838 Patent
`
`The claims of the ’838 patent are directed to a central piece of network
`
`equipment comprising an Ethernet connector with first and second pairs of
`
`contacts, and functional limitations that the central piece of network equipment
`
`detect different magnitudes of DC current flow via at least one of the contacts of
`
`the first and second pair and control application of an electrical condition to a
`
`contact of the first and second pairs of contacts in response to a magnitude of DC
`
`current flow. (See Ex. 1005, ’838 patent, at 17:13-23.) The ’838 patent claims to
`
`incorporate by reference U.S. Patent 5,406,260 (also assigned to the Patent
`
`Owner), which discloses a current loop including a portion passing through a pair
`
`4
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`of contacts. (Ex. 1016, ’260 patent, at 3:37-52, Fig. 2.) The ’838 patent states that
`
`the ’260 patent already disclosed:
`
`a means of 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 effective theft detection/deterrent
`
`system.
`
`
`(Id. at 2:19-25.)
`
`The ’838 patent then states the desire to “provide a further means in which a
`
`networked device may also be identified by a unique identification number using
`
`the existing network wiring or cabling as a means of communicating this
`
`information back to a central location.” (Ex. 1005, ’838 patent, at 2:26-30.) The
`
`’838 patent discloses a modulation scheme for this purpose:
`
`[A] communication system is provided for generating and monitoring
`
`data over a pre-existing wiring or cables [sic] that connect pieces of
`
`networked computer equipment to a network. The system includes a
`
`communication device or remote module attached to the electronic
`
`equipment that transmits information to a central module by
`
`impressing a low frequency signal on the wires of the cable. A
`
`receiver in the central module monitors the low frequency data to
`
`determine the transmitted information from the electronic equipment.
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
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`The communication device may also be powered by a low current
`
`power signal from the central module. The power signal to the
`
`communication device may also be fluctuated to provide useful
`
`information, such as status information, to the communication device.
`
`
`(Id. at 3:24-37.)
`
`C.
`
`Priority Claims in the ’838 Patent
`
`The ’838 patent issued from Application No. 13/615,734 (“the ’734
`
`application), which was filed on September 14, 2012. The ’734 application is a
`
`continuation of Application No. 12/239,001 filed Sep. 26, 2008, now U.S. Pat.
`
`No. 8,155,012 issued Apr. 10, 2012, which is a continuation of Application
`
`No. 10/668,708 filed Sep. 23, 2003, now U.S. Pat. No. 7,457,250 issued Nov. 25,
`
`2008, which is a continuation of Application No. 09/370,430 filed Aug. 9, 1999,
`
`now U.S. Pat. No. 6,650,622 issued Nov. 18, 2003, which is a continuation-in-part
`
`under 35 U.S.C. §§ 111 and 120 of International Application PCT/US99/07846,
`
`filed Apr. 8, 1999. On its face, the ’838 patent also purports to claim the benefit of
`
`Provisional Patent Application No. 60/081,279, filed Apr. 10, 1998.
`
`D.
`
`Priority Date of the ’838 Patent
`
`A priority date analysis is limited to the four corners of the priority
`
`document. To provide sufficient disclosure for a later-filed application, the priority
`
`document must “actually or inherently disclose the claim element.” PowerOasis,
`
`Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). “Obviousness
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
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`simply is not enough; the subject matter must be disclosed to establish possession.”
`
`Id. (emphasis added). That standard is not met here.
`
`The challenged claims are not entitled to a priority date or date of invention
`
`before April 8, 1999, which is the filing date of priority PCT Application No.
`
`PCT/US99/07846. In co-pending litigation, Patent Owner contends that the claims
`
`are entitled to an earlier priority date or date of invention based on (i) U.S.
`
`Provisional Application No. 60/081,279
`
`(“the
`
`’279 provisional”);
`
`(ii)
`
`uncorroborated testimony of named inventors Marshall Cummings and John
`
`Austermann; and (iii) letters from third-party Clyde Boenke to Marshall
`
`Cummings (“the Boenke letters”). None of these establishes an earlier priority date
`
`or invention date.
`
`1.
`
`The challenged claims are not entitled to the April 10, 1998
`filing date of the ’279 provisional.
`
`The ’279 provisional does not support the claim requirement that the central
`
`piece of network equipment “control application of at least one condition . . . in
`
`response to at least one of the magnitudes of the DC current flow.” It fails to
`
`disclose how that equipment can control application of an electrical condition in
`
`response to one magnitude.
`
`In the ’279 provisional, the only equipment that could correspond to the
`
`claimed “central piece of network equipment” is identification receiver 15, which
`
`is shown in Figure 2, provided below. (Ex. 1009, Seifert Decl., at ¶ 117.)
`
`7
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
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`
`
`(Ex. 1027, ’279 provisional, at FIG. 2 (annotation added).) Receiver 15 provides an
`
`encoded power signal to transmitter 16. (Ex. 1009, Seifert Decl., at ¶ 118 (citing
`
`Ex. 1027, ’279 provisional, at 4:8-11, 5:9-21).) Transmitter 16 then sends an
`
`identification number to receiver 15 as a Manchester-encoded signal. (Id. at ¶ 119
`
`(citing Ex. 1027, ’279 provisional, at 5:22-6:7).) In receiver 15, signal receiver 6
`
`receives the Manchester-encoded signal, Manchester decoder 5 decodes it, and
`
`firmware kernel 4 may then pass the decoded information to external device 19 or
`
`provide a blocking signal to blocking circuit 20. (Id. at ¶ 121 (citing Ex. 1027, ’279
`
`provisional, at 6:11-16).) The important point is that every signal that receiver 15
`
`receives is Manchester-encoded and passes through Manchester decoder 5. (Id. at ¶
`
`8
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`122 (citing Ex. 1027, ’279 provisional, at FIG. 2, 6:3-7, 6:11-13).)
`
`This is significant because a single magnitude of a Manchester-encoded
`
`signal provides no meaningful information. (Id. at ¶¶ 120, 122.) By definition, a
`
`Manchester-encoded signal has different magnitudes, as shown below. (Id. at ¶
`
`120.)
`
`
`
`(Ex. 1031, Gigabit Ethernet, at 226 (Fig. 12-3 in-part).) Manchester encoding uses
`
`transitions between a high level and low level of current (or voltage) to represent
`
`data, so there are always two magnitudes representing a single bit of data. (Ex.
`
`1009, Seifert Decl., at ¶ 120.) Thus, when signal receiver 6 receives a Manchester-
`
`encoded signal, Manchester decoder 5 must evaluate the signal’s transitions, each
`
`transition being composed of multiple magnitudes, in order to identify any useable
`
`information. (Id. at ¶ 122.) Without this information, firmware kernel 4 does not
`
`perform any controlling function. (Id. (citing Ex. 1027, ’279 provisional, at 6:13-
`
`14).) Therefore, without evaluating multiple magnitudes of the Manchester-
`
`encoded signal, receiver 15 does not control anything. (Id. (Because Manchester is
`
`the only encoding scheme that the ’279 provisional discloses, the provisional
`
`application fails to disclose that the central equipment controls application of an
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 9,019,838
`
`electrical condition in response to one magnitude. (Id. at ¶ 120.)
`
`To fill this gap, Patent Owner might try to rely on (1) the provisional
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`application’s attempt to incorporate by reference U.S. Patent No, 5,406,260 (Ex.
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`1027, ’279 provisional, at 2:5-11); and (2) a single paragraph describing the ’260
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`patent (id. (Neither provides written description support. As a matter of law, the
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`incorporation by reference is insufficient because the ’279 provisional neither
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`“identifies with ‘detailed particularity’ the specific materials in the patent[]
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`asserted to be incorporated by reference” nor “‘clearly indicates’ where the
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`material is found in the incorporated patent[], as required to incorporate material
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`by reference.” IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00664, Paper 8
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`at 15 (P.T.A.B. Sept. 30, 2014) (quoting Cook Biotech Inc. v. Acell, Inc., 460 F.3d
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`1365, 1376 (Fed. Cir. 2006)). The ’279 provisional’s single-paragraph description
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`of the ’260 patent is also insufficient because it is silent about the claim
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`requirement that the central equipment control an application of an electrical
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`condition in response to at least one magnitude of DC current flow. (Ex. 1009,
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`Seifert Decl., at ¶¶ 123-24.)
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`2.
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`Inventor testimony alone cannot establish an earlier
`invention date as a matter of law.
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`Inventor testimony cannot establish an earlier invention date. See In re NTP,
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`Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). Nor can inventor testimony be used “to
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`authenticate a document offered to corroborate the inventor’s testimony.”
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`Microsoft Corp. v. SurfCast, Inc., IPR2013-00292, Paper 93 at 16 (P.T.A.B. Oct.
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`14, 2014).
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`3.
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`The Boenke letters do not establish an invention date.
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`The Boenke letters do not establish that the named inventors disclosed the
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`subject matter of the letters to others before the critical date. See Microsoft,
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`IPR2013-00292, Paper 93 at 15 (emphasis added). To the contrary, Boenke’s
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`letters show that Boenke, not the named inventors, conceived the subject matter
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`disclosed in those letters. The Boenke letters also cannot establish an earlier date of
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`invention because they do not disclose every limitation of any challenged claim.
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`See Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, Paper 16 at 8 (P.T.A.B.
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`Aug. 4, 2014).
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`Therefore, as a matter of law, Patent Owner cannot meet its burden of
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`showing a priority date or date of invention prior to April 8, 1999.
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`IV. State of the Art
`
`The challenged claims recite well-known structural elements: “central piece
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`of network equipment” and “Ethernet connector.” (Ex. 1009, Seifert Decl., at
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`¶ 21.) These are well-known elements of Ethernet communication systems in the
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`prior art. (Id.)
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`For example, the following illustration comes from a 1996 hardware user’s
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`manual of the AMD PCnet-FAST board.
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`(Ex. 1035, PCnet-FAST, at 3-1.) This figure depicts a network hub connected to
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`several pieces of data terminal equipment (“DTE”). (Ex. 1009, Seifert Decl., at
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`¶ 22.) Each DTE with the installed PCnet-FAST board can connect to the network
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`hub over an Ethernet network using the on-board RJ-45 jack for either 10BASE-T
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`or 100BASE-TX operation. (Id.) In this illustration, the network hub constitutes a
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`central piece of network equipment. (Id.)
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`An Ethernet connector comprising a plurality of contacts was also known in
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`the prior art. (Id. at ¶ 23.) In fact, Ethernet connectors comprising a plurality of
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`contacts existed long prior to the 10BASE-T system. (Id.) For example, the
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`Ethernet Version 1 specification, published on September 30, 1980 teaches two
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`different Ethernet connectors, each comprising a plurality of connectors. (Id.)
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`Patent Owner’s expert also concedes that an Ethernet connector comprising
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`a plurality of contacts was well-known:
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`Q: Okay. So this figure is known, an Ethernet connector
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`comprising a plurality of contacts is known, correct?
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`A: Yes.
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`(Ex. 1033, Baxter Dep., at 113.)
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`V. Claim Construction
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`A claim in IPR is given the broadest reasonable interpretation in light of the
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`specification to a person having ordinary skill in the art. Under this standard,
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`“claim terms are given their ordinary and customary meaning as would be
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`understood by one of ordinary skill in the art in the context of the entire patent
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`disclosure.” Nuvasive v. Warsaw Orthopedic, Inc., IPR2013-00206, Paper No. 17
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`at 6 (P.T.A.B. Sept. 23, 2013). This meaning applies unless the inventor, as his
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`own lexicographer, has set forth a special meaning for a term in the specification.
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`Id. Under this standard, the following term of the ’838 patent should be construed
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`as proposed below.
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`A.
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`“BaseT”
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`The challenged claims recite “BaseT Ethernet communication signals.”
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`“BaseT” should be construed as “10BASE-T.” The ’838 patent consistently uses
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`the term “BaseT” only as part of the larger phrase “10BASE-T.” (Ex. 1005, ’838
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`patent, at 12:19-28.) Similarly, the ’279 provisional and the ’260 patent, both of
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`which the ’838 patent claims to incorporate by reference, only use the term “Base-
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`T” in the phrase “10Base-T.” (Ex. 1027, ’279 provisional, at 3:9-11, Abstract;
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`Ex. 1016, ’260 patent, at Abstract, 3:35, 5:53, 7:13, 8:50.)
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`VI.
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`Identification of Challenge (37 C.F.R. § 42.104(b)) and Reasonable
`Likelihood that the Challenged Claims Are Unpatentable
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`Petitioner requests institution of an IPR and cancellation of the challenged
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`claims of the ’838 patent based on the following ground: Under 35 U.S.C.
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`§ 103(a), the challenged claims are invalid based on U.S. Patent No. 6,115,468
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`(“De Nicolo ’468”) (Ex. 1019) and U.S. Patent No. 6,134,666 (“De Nicolo ’666”)
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`(Ex. 1020) (collectively, “the De Nicolo references”).
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`A. The challenged claims are invalid based on the De Nicolo
`references.
`
`1.
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`De Nicolo References
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`Neither of the De Nicolo references was substantively addressed during the
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`prosecution of the application that issued as the ’838 patent.
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`De Nicolo ’468 and De Nicolo ’666 are prior art under 35 U.S.C. § 102(e)
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`because their filing dates (March 26, 1998 and March 12, 1998, respectively),
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`predate the earliest possible priority date of the ’838 patent’s claims (April 8,
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`1999).2
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`2
`The De Nicolo references also predate the filing date of the provisional
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`application to which the ’838 patent on its face claims priority.
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`2.
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`Reasons to Combine the De Nicolo References
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`A person of ordinary skill in the art would have combined De Nicolo ’468
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`and De Nicolo ’666. (Ex. 1009, Seifert Decl., at ¶ 43.) Both references disclose
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`techniques for powering a controlled device. (Id. at ¶ 44.) In De Nicolo ’468, for
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`example, a power supply 144 provides power via two twisted pairs 128a, 128b to a
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`power processor 149, which, in turn, provides power to a portion of an Ethernet
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`device 98. (Id. (citing Ex. 1019, De Nicolo ’468, at FIG. 3).) Similarly, in
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`De Nicolo ’666, a power supervisor 14 provides power via a query conductor 28 to
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`a power circuit soft start 44, which, in turn, provides power to power consuming
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`circuitry. (Id. (citing Ex. 1020, De Nicolo ’666, at FIG. 1).) De Nicolo ’666
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`discloses that “multiple query conductors could also be used, if more convenient.”
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`(Id. (quoting Ex. 1020, De Nicolo ’666, at 5:34-38).)
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`In addition, De Nicolo ’468’s disclosure would have motivated a skilled
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`artisan to incorporate De Nicolo ’666’s teachings with those of De Nicolo ’468.
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`(Id. at ¶ 45.) For example, like De Nicolo ’666, De Nicolo ’468 discloses “[a]
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`system for supplying DC power to a remote device.” (Id. (quoting Ex. 1019,
`
`De Nicolo ’468, at claim 6).) De Nicolo ’468 shows a system with multiple devices
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`(associated with loads 98, 100, and 102) in Figure 3. (Id.) De Nicolo ’468 also
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`provides that such a system can have one remote device. (Id. (citing Ex. 1019,
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`De Nicolo ’468, at claims 6, 12, 16).) A skilled artisan would have understood that
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`the remote device has a maximum power requirement and that it would have been
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`desirable to provide that remote device with a power signal that satisfies the
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`device’s power requirement. (Id.) With that understanding, a skilled artisan would
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`have incorporated De Nicolo ‘666’s technique of determining the remote device’s
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`maximum power requirement by way of a resistor (or other component) into
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`De Nicolo ’468’s system. (Id.)
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`In other words, it would have been obvious to one of skill in the art to use
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`De Nicolo ’666’s principle of operation together with De Nicolo ’468’s Ethernet-
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`based system. (Id. at ¶ 46.) Moreover, because both references name Maurilio
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`Tazio De Nicolo as their sole inventor, a skilled artisan reviewing one of the
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`De Nicolo references would have reviewed other references naming De Nicolo as
`
`an inventor to gain a better understanding of the disclosed teachings. (Id.)
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`Finally, a person of ordinary skill in the art would have understood how to
`
`combine De Nicolo ‘468’s teaching with De Nicolo ‘666’s teachings. (Id. at ¶ 47.)
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`For example, De Nicolo ’468’s system in Figure 3 could include a single remote
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`device (e.g., a device that includes load 98) as described, for example, in claim 16
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`of De Nicolo ’468. (Id. (citing Ex. 1019, De Nicolo ’468, at claim 16).) In this
`
`system, the skilled artisan could have included De Nicolo ’666’s power supervisor
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`14 (see Figure 1) into De Nicolo ’468’s power supply module 144 (see Figure 3)
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`and included De Nicolo ’666’s electronic module 26 (see Figure 1) into
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`De Nicolo ’468’s power processor 149. (Id.) This is a routine, common sense
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`design choice that is well within the skilled artisan’s kn