Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 1 of 10 PageID #: 13766
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Civil Action No. 6:15-cv-163 -JDL
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`CHRIMAR SYSTEMS, INC., et al,
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`v.
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`ALCATEL-LUCENT USA, INC., et al. §
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is Defendant ALE USA Inc.’s (“ALE”) Motion for construction of the
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`terms “adapted” and “physically connect.” (Doc. No. 298.) Plaintiffs Chrimar Systems, Inc. and
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`Chrimar Holding Company, LLC (“Chrimar”) filed a response. (Doc. No. 309.)
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`BACKGROUND
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`The Court previously held that the preambles of claims 31 and 67 of U.S. Patent No.
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`8,115,012 (“the ’012 Patent”) to be limiting, which contain the terms “adapted” and “adapting,”
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`respectively. (6:13-cv-00880 (Doc. No. 99, at 17).) At the parties’ request, the Court entered that
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`finding in the instant action. (Doc. No. 117.) This Court was never asked to construe the term
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`“physically connect,” which is found in 8,902,760 (“the ’760 Patent”). Defendants now contend
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`that there is a dispute regarding the scope of these claim terms that must be resolved by the
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`Court.
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`A. The Patents
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`The ’012 Patent is titled “System and Method for Adapting a Piece of Terminal
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`Equipment,” and relates to tracking of devices that are connected to a wired network. See
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`generally ’012 Patent. More specifically, the ’012 Patent describes permanently identifying an
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`“asset,” such as a computer, “by attaching an external or internal device to the asset and
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 2 of 10 PageID #: 13767
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`communicating with that device using existing network wiring or cabling.” ’012 Patent at 1:67–
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`2:2. The ’012 Patent refers to that device as the “remote module.” Id. at 3:22–26. The asset can
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`then be managed, tracked, or identified by using the remote module to communicate a unique
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`identification number, port ID, or wall jack location to the network monitoring equipment, or
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`“central module.” Id. at 6:7–13, 8:66–9:4. The ’012 Patent further discloses that “asset
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`identification” may be done in a way “that does not use existing network bandwidth.” Id. at
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`3:10–12. These concepts are reflected in the patents’ asserted claims, and independent claim 31
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`is set forth below for reference:
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`31. An adapted piece of Ethernet data terminal equipment comprising:
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`an Ethernet connector comprising a plurality of contacts;
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`and
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`at least one path coupled across selected contacts, the selected contacts
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`comprising at least one of the plurality of contacts of the Ethernet
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`connector and at least another one of the plurality of contacts of the
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`Ethernet connector,
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`wherein distinguishing information about the piece of Ethernet data
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`terminal equipment is associated to impedance within the at least
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`one path.
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`’012 Patent at 18:62–19:5 (Claim 31).
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`The ’760 Patent is related, and claim 1 recites:
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`1. A BaseT Ethernet system comprising:
`a piece of central BaseT Ethernet equipment;
`a piece of BaseT Ethernet terminal equipment;
`data signaling pairs of conductors comprising first and
`second pairs used to carry BaseT Ethernet communication
`signals between the piece of central BaseT Ethernet
`equipment and the piece of BaseT Ethernet terminal
`equipment, the first and second pairs physically connect
`between the piece of BaseT Ethernet terminal equipment
`and the piece of central Base T Ethernet equipment,
`the piece of central BaseT Ethernet 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 from the at least one DC
`supply through a loop formed over at least one of the
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 3 of 10 PageID #: 13768
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`conductors of the first pair and at least one of the conductors
`of the second pair, the piece of central BaseT
`Ethernet equipment to detect at least two different magnitudes
`of the current flow through the loop and to control
`the application of at least one electrical condition to
`at least two of the conductors.
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`(’760 Patent at 17:15–36 (Claim 1).)
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`APPLICABLE LAW
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`The Federal Circuit has held: “When the parties raise an actual dispute regarding the
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`proper scope of [the] claims, the court . . . must resolve that dispute.” O2 Micro Int’l Ltd. v.
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`Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008). The court must resolve
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`the dispute because “the scope of the asserted claims is a question of law,” and the court cannot
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`leave “the jury free to consider the[] [parties’] arguments” on a disputed question of law. Id. at
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`1361–62.
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`The Court applies the familiar principles of claim construction to resolve this dispute.
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`Those begin: “the words of a claim ‘are generally given their ordinary and customary meaning.’”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). “[T]he context in which a term is
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`used in the asserted claim can be highly instructive.” Id. Other claims, asserted and unasserted,
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`can provide additional instruction because “terms are normally used consistently throughout the
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`patent.” Id. at 1314. “[C]laims ‘must be read in view of the specification, of which they are a
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`part.’” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 4 of 10 PageID #: 13769
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
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`example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
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`claim ‘is rarely, if ever, correct.’” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362
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`F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough
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`the specification may aid the court in interpreting the meaning of disputed language in the
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`claims, particular embodiments and examples appearing in the specification will not generally be
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`read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
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`1988); see also Phillips, 415 F.3d at 1323.
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`Although, “less significant than the intrinsic record in determining the legally operative
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`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
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`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
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`treatises may help the Court understand the underlying technology and the manner in which one
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`skilled in the art might use claim terms, but such sources may also provide overly broad
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`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid the Court in determining the particular meaning of a term in the
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`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
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`term are not useful.” Id.
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`In patent construction, “subsidiary fact finding is sometimes necessary” and the court
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`“may have to make ‘credibility judgments’ about witnesses.” Teva v. Sandoz, 135 S.Ct. 831, 838
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`(2015). In some cases, “the district court will need to look beyond the patent’s intrinsic evidence
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`and to consult extrinsic evidence in order to understand, for example, the background science or
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 5 of 10 PageID #: 13770
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`the meaning of a term in the relevant art during the relevant time period.” Id. at 841. “If a
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`district court resolves a dispute between experts and makes a factual finding that, in general, a
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`certain term of art had a particular meaning to a person of ordinary skill in the art at the time of
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`the invention, the district court must then conduct a legal analysis: whether a skilled artisan
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`would ascribe that same meaning to that term in the context of the specific patent claim under
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`review.” Id. (emphasis in original). When the court makes subsidiary factual findings about the
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`extrinsic evidence in consideration of the “evidentiary underpinnings” of claim construction,
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`those findings are reviewed for clear error on appeal. Id.
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`ANALYSIS
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`1. “adapted”
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`ALE argues that the construction of the term “adapted” is disputed and must be resolved.
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`(Doc. No. 298, at 2.) Specifically, ALE argues that Chrimar alleges “adapted” should have its
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`plain and ordinary meaning of “designed, configured, or made” in accordance with the claim,
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`which ALE argues reads out the meaning of term “adapted.” Id. at 2–3. ALE contends that
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`instead the Court should adopt its construction of “adapted” to mean “modification of preexisting
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`equipment,” because it captures the problem confronted by the inventors taking existing
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`networks and adapting them to make equipment distinguishable. Id. at 5.
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`Chrimar agrees that the term “adapted” should be construed, but disagrees with ALE’s
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`proposed construction. (Doc. No. 309, at 1–2.) Chrimar maintains that Defendants continue to
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`try and read in to the claim a requirement that “adapted” means modifying or retrofitting an
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`existing piece of equipment. Id. at 2. Specifically, Chrimar argues that “ALE’s proposed
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`construction seeks to limit the claim to one particular embodiment (i.e., where the remote
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`module is external to and attached to a network asset) while completely ignoring that the
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 6 of 10 PageID #: 13771
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`specification explicitly describes integrating the circuitry of the remote module into the
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`motherboard or NIC of the Ethernet equipment.” Id. at 4. Chrimar argues that its construction is
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`a well-known understood meaning of “adapted” in patent claims consistent with its proposed
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`construction and disputes that its construction reads out the term “adapted” because only devices
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`that “have the circuitry for implementing PoE are adapted Ethernet data terminal equipment
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`meeting the limitations of claim 31 of the ’012 Patent.” Id. at 5.
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`As stated above, the Court previously found the preamble of the ’012 Patent to be
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`limiting, which recites: “[a]n adapted piece of Ethernet data terminal equipment comprising…”
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`’012 Patent at 18:62–63. The Court further found the preamble to have its plain and ordinary
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`meaning, and construed the term “Ethernet data terminal equipment” to mean “device at which
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`data transmission can originate or terminate and that is capable of Ethernet communication,”
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`which the Court has entered as the construction in the instant action. (6:13-cv-880, (Doc. No. 99,
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`at 13); 6:15-cv-163, (Doc. No. 117).)
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`As to the term “adapted” as recited in the preamble of claim 31, the specification
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`provides little guidance as to the meaning, and only states generally that “[t]his invention is
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`particularly adapted to be used with an existing Ethernet communications link or equivalents
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`thereof,” and that “[t]he communication system 15 and 16 described herein is particularly
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`adapted to be easily implemented in conjunction with an existing computer network 17 while
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`realizing minimal inter-ference to the computer network.” ’012 Patent at 3:35–37; 4:56–60.
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`Nothing in the specification specifically discusses the “adapted piece of Ethernet data terminal
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`equipment” recited in the preamble of claim 31 of the ’012 Patent.
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` ALE provides no support for its narrowed interpretation of “adapted” to mean
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`“modification of preexisting equipment.” Indeed, there is nothing in the ’012 Patent that requires
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 7 of 10 PageID #: 13772
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`the “modification” of any device, or specifically, the claimed “Ethernet data terminal
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`equipment.” Instead, as discussed above, the specification generally uses the term “adapted” to
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`describe the invention as being particularly adapted for use with a known structure or network.
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`But nothing about these disclosures warrants a construction that contradicts the term’s plain and
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`ordinary meaning or requires modification of the claimed device. Chrimar cites to the following
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`portion of the specification to argue that in fact modification is specifically not required: “[i]t is
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`also envisioned that the electronics of the network identification circuitry can be placed on a
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`motherboard within the computer or as part of the circuitry on the NIC card.” ’012 Patent, at
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`11:16–19. The Court agrees with Chrimar that based upon the disclosures discussed herein, a
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`construction of “adapted” that requires “modification of preexisting equipment” would be
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`inconsistent with the disclosures in the specification and too narrow in this case. Moreover,
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`Chrimar cites to deposition testimony from Defendants’ expert, Ian Crayford, where he agrees
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`that a PC manufactured with remote module functionality included can be “adapted” as recited in
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`claim 31 of the ’012 Patent, even though it was originally manufactured that way. (Doc. No. 309-
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`3, at 118:7–119:8.)
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`It is for these reasons that the Court finds that the term “adapted” cannot mean
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`“modification of preexisting equipment.” Instead, for the reasons discussed herein, the Court
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`finds that the term “adapted” should be construed consistently with its plain and ordinary
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`meaning to mean “designed, configured, or made” in accordance with the elements of claim 31.
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`2. “physically connect”
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`ALE also contends that the term “physically connect” is disputed and should be
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`construed to have its plain and ordinary meaning—i.e. to “physically connect.” (Doc. No. 298, at
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`6.) ALE cites to Chrimar’s expert report to contend that Dr. Madisetti takes the position that this
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 8 of 10 PageID #: 13773
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`term “physically connect” means “each device is configured to be connected.” Id. ALE contends
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`that this position literally reads the “physically connect” limitation out of the claim. Id. at 7.
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`Chrimar contends that there is no claim construction dispute over the term “physically
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`connect” and that ALE misconstrues Chrimar’s infringement contentions. (Doc. No. 309, at 6.)
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`Chrimar argues that “claim 1 recites ‘physically connect’ and not ‘physically connected,’ which
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`is the construction ALE seeks.” Id. at 7. Chrimar argues that “physically connect” describes the
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`function “performed by the first and second conductors,”—“to connect the central BaseT
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`Ethernet equipment and the piece of BaseT Ethernet terminal equipment so that the equipment
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`may be used cooperatively.” Id. Chrimar cites to the doctrine of claim differentiation to point out
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`that dependent claim 71 actually requires that the “first and second pairs are physically
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`connected.” Id.
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`Here again, while ALE contends there is a dispute regarding the plain and ordinary
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`meaning of the term “physically connect,” ALE does not explain its proposed construction, or
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`why the ’760 Patent requires such a construction, and instead argues why Chrimar’s expert’s
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`infringement reading cannot be correct. While ALE contends its position is that the term have its
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`plain and ordinary meaning—actually “physically connect”—in reality, as set forth by the
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`briefing, ALE is reading the claim to “require a piece of central equipment ‘physically
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`connect[ed]’ to a piece of terminal equipment.” (Doc. No. 298, at 6.) But the plain language of
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`claim 1 of the ’760 Patent does not recite “physically connected;” instead, it states “…the first
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`and second pairs physically connect between the piece of BaseT Ethernet terminal equipment
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`and the piece of central Base T Ethernet equipment…” ’760 Patent at 17:23–25.
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`Moreover, claim 71, which depends from claim 1, recites “[t]he BaseT Ethernet system
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`of claim 1 wherein the first and second pairs are physically connected between the piece of
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 9 of 10 PageID #: 13774
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`BaseT Ethernet terminal equipment and the piece of central BaseT Ethernet equipment.” ’760
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`Patent at 21:28–31 (emphasis added). Where the dependent claim recites the further limitation
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`that “the first and second pairs are physically connected between the piece of BaseT Ethernet
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`terminal equipment and the piece of central BaseT Ethernet equipment,” the doctrine of claim
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`differentiation dictates that the independent claim which recites “the first and second pairs
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`physically connect between the piece of BaseT Ethernet terminal equipment and the piece of
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`central Base T Ethernet equipment,” does not require that the first and second pairs are actually
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`physically connected. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that
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`adds a particular limitation gives rise to a presumption that the limitation in question is not
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`present in the independent claim.”); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1367
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`(Fed. Cir. 2012) (citing 35 U.S.C. § 112 ¶ 4) (“It is axiomatic that a dependent claim cannot be
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`broader than the claim from which it depends . . . A dependent claim narrows the claim from
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`which it depends.”); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1334 (Fed. Cir. 2010)
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`(“A person of ordinary skill would presume that a structure recited in a dependent claim will
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`perform a function required of that structure in an independent claim.”).
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`ALE’s reading of a structural requirement that the pairs are physically connected is
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`unsupported by the plain language of the claim, as well as the doctrine of claim differentiation.
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`Therefore, the Court rejects any such interpretation of “physically connect” in the context of
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`claim 1 of the ’760 Patent. Rather, in the context of claim 1 of the ’760 Patent, a system is
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`claimed to include first and second pairs of conductors configured to physically connect between
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`the piece of BaseT Ethernet terminal equipment and the piece of central Base T Ethernet
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`equipment. Having resolved the parties’ dispute, the Court finds no further construction of the
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`term “physically connect” is necessary.
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`Case 6:15-cv-00163-JDL Document 318 Filed 09/27/16 Page 10 of 10 PageID #: 13775
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`CONCLUSION
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`As set forth herein, the Court has resolved the parties’ dispute regarding the terms
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`“adapted” and “physically connect.”
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` So ORDERED and SIGNED this 26th day of September, 2016.
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