Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: March 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00033
`Patent 8,902,760 B2
`_______________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(a)(1)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Entered: March 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00033
`Patent 8,902,760 B2
`_______________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(a)(1)
`
`
`
`
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`
`INTRODUCTION
`I.
`Hewlett Packard Enterprise Company (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 73, 106, 112,
`134, 142, 145, and 146 (“the challenged claims”) of U.S. Patent
`No. 8,902,760 B2 (Ex. 1004, “the ’760 patent”). Chrimar Systems, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”) to
`the Petition. Also, as authorized, Petitioner filed a Reply (Paper 9, “Reply”)
`to the Preliminary Response, and Patent Owner filed a Sur-reply (Paper 10,
`“Sur-reply”) to the Reply.
`An inter partes review “may not be instituted if, before the date on
`which the petition for such review is filed, the petitioner or real party in
`interest filed a civil action challenging the validity of a claim of the patent.”
`35 U.S.C. § 315(a)(1). The information presented shows that Petitioner filed
`a civil action challenging the validity of a claim of the ’760 patent before the
`date on which the Petition was filed. Therefore, the Petition is denied, and
`no trial is instituted.
`A.
`Related Proceedings
`The parties indicate that the ’760 patent is the subject of several cases
`in the United States District Court for the Eastern District of Michigan, the
`United States District Court for the Eastern District of Texas, and the United
`States District Court for the Northern District of California. Pet. 2–6;
`Paper 5, 1–2. The parties also indicate that the ’760 patent was the subject
`of Reexamination No. 90/013,802, and the subject of petitions for inter
`partes review in IPR2016-00574, IPR2016-01399, IPR2016-01759,
`IPR2017-00719, and IPR2018-01511. Pet. 2–3; Paper 5, 2.
`
`2
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`
`B.
`The ’760 Patent
`The ’760 patent relates to a system for managing, tracking, and
`identifying remotely located electronic equipment. Ex. 1004, 1:27–30.
`According to the ’760 patent, one of the difficulties in managing a
`computerized office environment is keeping track of a company’s electronic
`assets. Id. at 1:32–57. Previous systems for tracking electronic assets
`suffered from several deficiencies. Id. at 1:62–65. For example, previous
`systems could not determine the connection status or physical location of an
`asset and could only track assets that were powered-up. Id. at 1:65–2:2.
`To address these deficiencies, the ’760 patent describes a system for
`tracking an electronic asset. Id. at 2:3–6, 3:23–27. In one embodiment
`described in the ’760 patent, the system includes a central module and a
`remote module. Id. at 3:27–30. The remote module attaches to the
`electronic asset and transmits a low frequency signal. Id. A receiver in the
`central module monitors the signal transmitted by the remote module and
`determines if the status or location of the electronic asset changes. Id. at
`3:30–32, 3:34–40.
`C.
`Illustrative Claim
`Of the challenged claims, claims 73 and 146 are independent.
`
`Claim 73, as amended during reexamination, is reproduced below.
`73. A BaseT Ethernet system comprising:
`Ethernet cabling having at least first and second
`individual pairs of conductors used to carry BaseT Ethernet
`communication signals, the at least first and second individual
`pairs of conductors physically connect between a piece of
`BaseT Ethernet terminal equipment and a piece of central
`network equipment,
`
`3
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`
`Ex. 1022
`
`Ex. 1025
`
`Ex. 1026
`
`the piece of central network equipment is a BaseT
`Ethernet hub;
`the piece of central network equipment having at least
`one DC supply,
`the piece of BaseT Ethernet terminal equipment having at
`least one path to draw different magnitudes of current flow via
`the at least one DC supply through a loop formed over at least
`one of the conductors of the first pair of conductors and at least
`one of the conductors of the second pair of conductors,
`the piece of central network equipment to detect at least
`two different magnitudes of current flow through the loop.
`Ex. 1004, 21:37–52; Ex. 1035, 1:23–2:4.
`D.
`Evidence of Record
`Petitioner submits the following references and declaration (Pet. 13):
`Reference or Declaration
`Exhibit No.
`Ex. 1001
`Declaration of George Zimmerman (“Zimmerman
`Declaration”)
`The Institute of Electrical and Electronics Engineers, Inc.,
`IEEE Standard 802.3u-1995 (1995) (“IEEE 802.3-1995”)
`The Institute of Electrical and Electronics Engineers, Inc.,
`IEEE Standard 802.3-1993 (1993) (“IEEE 802.3-1993”)
`Bloch et al., U.S. Patent No. 4,173,714 (issued Nov. 6,
`1979) (“Bloch”)
`Nelson, U.S. Patent No. 4,823,070 (issued Apr. 18, 1989)
`(“Nelson”)
`Bulan et al., U.S. Patent No. 5,089,927 (issued Feb. 18,
`1992) (“Bulan”)
`Hunter et al., PCT Publication No. WO 96/23377
`(published Aug. 1, 1996) (“Hunter”)
`Peguiron, Swiss Patent No. CH 643 095 A5 (issued May
`15, 1984) (“Peguiron”)
`
`Ex. 1021
`
`Ex. 1027
`
`Ex. 1033
`
`Ex. 1034
`
`4
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`
`References
`Hunter and Bulan
`
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 13):
`Claim(s)
`Basis
`73, 106, 112, 134,
`35 U.S.C. § 103
`142, and 145
`146
`146
`
`Hunter, Bulan, and Nelson
`Bloch, IEEE 802.3-1993, IEEE
`802.3-1995, and Peguiron
`II. ANALYSIS
`An inter partes review “may not be instituted if, before the date on
`which the petition for such review is filed, the petitioner or real party in
`interest filed a civil action challenging the validity of a claim of the patent.”
`35 U.S.C. § 315(a)(1). Petitioner previously filed a civil action challenging
`the validity of a claim of the ’760 patent. Pet. 8; Prelim. Resp. 1; Ex. 2001
`¶¶ 1, 76–81. Petitioner argues, though, that § 315(a)(1) does not bar
`institution of an inter partes review because Petitioner voluntarily dismissed
`its previous civil action without prejudice. Pet. 9 (citing Emerson Elec. Co.
`v. SIPCO, LLC, Case IPR2015-01579, slip op. at 2−3 (PTAB Jan. 14, 2016)
`(Paper 7)).1
`
`
`1 In Emerson, a panel of the Board held in a non-precedential decision that
`the § 315(a)(1) bar does not apply when a petitioner dismissed its previous
`civil action without prejudice because “[f]ederal courts treat a civil action
`that is dismissed without prejudice as ‘something that de jure never
`existed.’” Emerson, Case IPR2015-01579, slip op. at 2−3 (Paper 7).
`Subsequently, in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d
`1321, 1328 n.3 (Fed. Cir. 2018) (en banc), the Federal Circuit held that the
`§ 315(b) time bar applies even when a previous civil action was dismissed
`voluntarily without prejudice. This Decision addresses the § 315(a)(1) bar
`in light of the Federal Circuit’s discussion of the § 315(b) time bar.
`5
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`
`Section 315(a)(1), titled “Inter Partes Review Barred by Civil
`Action,” bars institution of an inter partes review when a petitioner filed a
`civil action challenging the validity of a claim of a patent before the date on
`which that petitioner filed a petition requesting an inter partes review of that
`patent. 35 U.S.C. § 315(a)(1). Section 315(a)(1) does not include an
`exception for a civil action that was dismissed without prejudice. Id.; see
`Click-to-Call, 899 F.3d at 1330. And Congress demonstrated that it knew
`how to provide an exception to a statutory bar by including an exception to
`the § 315(b) time bar for a joinder request. 35 U.S.C. § 315(b); see Click-to-
`Call, 899 F.3d at 1331. Thus, Congress could have included an exception to
`the § 315(a)(1) bar for a civil action that was dismissed without prejudice,
`but did not. 35 U.S.C. § 315(a)(1); see Click-to-Call, 899 F.3d at 1331.
`Further, the ordinary meanings of the terms “file” and “civil action”
`show that the phrase “filed a civil action” in § 315(a)(1) applies to a civil
`action that was dismissed without prejudice. Black’s Law Dictionary
`defines “file” as “[t]o commence a lawsuit,” and defines “civil action” as
`“[a]n action brought to enforce, redress, or protect a private or civil right; a
`noncriminal litigation.” BLACK’S LAW DICTIONARY (10th ed. 2014). These
`definitions indicate that the § 315(a)(1) bar is implicated once a party
`commences a noncriminal litigation, irrespective of subsequent events. Id.;
`see Click-to-Call, 899 F.3d at 1330.
`Petitioner argues that § 315(a)(1) does not bar institution of an inter
`partes review because Petitioner voluntarily dismissed its previous civil
`action without prejudice “before any substantive activity occurred.” Reply
`1–3. Petitioner’s argument is not persuasive. As discussed, the ordinary
`meaning of the phrase “filed a civil action” only requires that a party
`
`6
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`commenced a noncriminal litigation, not that the party engaged in any
`substantive litigation. BLACK’S LAW DICTIONARY (10th ed. 2014).
`Petitioner argues that “federal courts deem a civil action dismissed
`without prejudice as ‘something that de jure never existed’” in order to
`“preserve[] a plaintiff’s ability to later sue the same defendant on the same
`claim.” Reply 3. Petitioner’s argument is not persuasive. “A voluntary
`dismissal without prejudice only leaves the dismissed action without legal
`effect for some purposes; for many other purposes, the dismissed action
`continues to have legal effect.” Click-to-Call, 899 F.3d at 1335. Because
`the background legal principle relied on by Petitioner is “anything but
`equivocal,” it does not “transform[] the ordinary meaning of the phrase
`[‘filed a civil action’] into something else.” Id. Further, this Decision does
`not hold that § 315(a)(1) bars Petitioner from filing another civil action
`challenging the validity of a claim of the ’760 patent.
`Petitioner argues that Click-to-Call addresses the meaning of the
`phrase “served with a complaint” in § 315(b), not the phrase “filed a civil
`action” in § 315(a)(1). Pet. 9–10; Reply 4–6. Petitioner’s argument is not
`persuasive. Click-to-Call explained that “[t]he ‘ordinary, contemporary,
`common meaning[s]’ of the operative terms ‘served’ and ‘complaint’
`support the understanding that it is wholly irrelevant to the § 315(b) inquiry
`whether the civil action in which the complaint was filed is later voluntarily
`dismissed without prejudice.” Click-to-Call, 899 F.3d at 1330. Similarly, as
`discussed, the ordinary meaning of the phrase “filed a civil action” indicates
`that the § 315(a)(1) bar is implicated once a party commenced a noncriminal
`litigation, irrespective of subsequent events.
`
`7
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`
`For these reasons, § 315(a)(1) bars institution of an inter partes
`review even though Petitioner voluntarily dismissed its earlier civil action
`challenging the validity of a claim of the ’760 patent without prejudice.
`III. CONCLUSION
`The information presented shows that Petitioner filed a civil action
`challenging the validity of a claim of the ’760 patent before the date on
`which Petitioner filed the Petition. Therefore, the Petition is denied under
`§ 315(a)(1).
`
`IV. ORDER
`
`It is hereby
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`8
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`PETITIONER:
`
`Hersh H. Mehta
`Brent A. Hawkins
`Maria E. Doukas
`MORGAN, LEWIS & BOCKIUS LLP
`hersh.mehta@morganlewis.com
`brent.hawkins@morganlewis.com
`maria.doukas@morganlewis.com
`
`
`PATENT OWNER:
`
`Frank A. Angileri
`Thomas A. Lewry
`Marc Lorelli
`Christopher C. Smith
`BROOKS KUSHMAN P.C.
`fangileri@brookskushman.com
`tlewry@brookskushman.com
`mlorelli@brookskushman.com
`csmith@brookskushman.com
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
