IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`RARITAN AMERICAS, INC. D/B/A RARITAN COMPUTER, INC.,
`Petitioner
`
`v.
`
`
`
`SERVER TECHNOLOGY, INC.,
`Patent Owner
`
`
`
`Case IPR2015-01597
`
`U.S. Patent No. 7,043,543
`Title: Vertical-Mount Electrical Power Distribution Plugstrip
`Filed: August 15, 2001
`Issued: May 9, 2006
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,043,543
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................. 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-in-Interest [37 C.F.R. § 42.8(b)(1)] ..................................... 4
`
`Related Matters [37 C.F.R. § 42.8(b)(2)] .............................................. 4
`
`Lead/Back-up Counsel [37 C.F.R. § 42.8(b)(3)] .................................. 5
`
`Service Information [37 C.F.R. § 42.8(b)(4)] ....................................... 5
`
`III. GROUNDS FOR STANDING [37 C.F.R. § 42.104(a)] ................................. 5
`IV. BACKGROUND ON THE ‘543 PATENT ..................................................... 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`The Claims and Specification ............................................................... 5
`
`The Ongoing ‘543 Reexamination Appeal ........................................... 7
`
`The Prosecution History of the ‘543 Patent .......................................... 8
`
`The Child ‘771 Patent............................................................................ 9
`
`Priority Date ........................................................................................ 10
`
`V.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT OF THE
`PRECISE RELIEF REQUESTED ................................................................ 11
`
`A.
`
`B.
`
`C.
`
`Claims For Which Inter Partes Review Is Requested And
`Precise Relief Requested [37 C.F.R. §§ 42.104(b) and (b)(1)] ........... 11
`
`The Specific Prior Art And Statutory Grounds On Which The
`Challenge Is Based [37 C.F.R. § 42.104(b)(2)] .................................. 11
`
`How The Challenged Claims Are to Be Construed [37 C.F.R.
`§ 42.104(b)(3)] .................................................................................... 12
`
`1.
`
`2.
`
`3.
`
`“Electrical power distribution plugstrip” .................................. 13
`
`“Current related information display” ...................................... 15
`
`“Intelligent power section/module” .......................................... 17
`
`i
`
`

`
`
`
`D.
`
`Identification and Relevance of the Supporting Prior Art
`Evidence [37 C.F.R. § 42.104(b)(5)] .................................................. 18
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`The MasterSwitch Vertical Mount (“MSVM”) Literature
`(Exs. 1013-1015) ....................................................................... 18
`
`U.S. Patent No. 6,741,442 to McNally (Ex. 1017) ................... 19
`
`U.S. Patent No. 5,949,974 to Ewing (Ex. 1012) ....................... 20
`
`The Baytech RPC-7 Literature (Exs. 1018-1020) .................... 21
`
`U.S. Patent No. 5,650,771 to Lee (Ex. 1022) ........................... 22
`
`U.S. Patent No. 6,476,729 to Liu (Ex. 1023) ............................ 22
`
`U.S. Patent No. 5,595,494 to Wiebe (Ex. 1024) ....................... 22
`
`Other Evidence of the State of the Art ...................................... 23
`
`E.
`
`How The Construed Claims Are Unpatentable and Where Each
`Element of the Claims Are Found in the Prior Art [37 C.F.R.
`§§ 42.104(b)(4) and (b)(5)] ................................................................. 23
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Ground 1: The MSVM Literature renders obvious claims
`1-14. .......................................................................................... 24
`
`Ground 2: The MSVM Literature in view of Lee renders
`obvious claims 15-23. ............................................................... 33
`
`Ground 3: McNally anticipates claims 1-14. ........................... 37
`
`Ground 4: McNally in view of Liu renders obvious
`claims 15-23. ............................................................................. 43
`
`Ground 5: Ewing ‘974 in view of Wiebe, further in view
`of Lee, renders obvious claims 1-23. ........................................ 46
`
`Ground 6: The BayTech RPC-7 Literature in view of
`Lee renders obvious claims 1-23. ............................................. 52
`
`F.
`
`Patent Owner’s Purported Secondary Considerations of
`Nonobviousness Cannot Overcome This Strong Case of
`Invalidity. ............................................................................................ 58
`
`ii
`
`

`
`VI. CONCLUSION .............................................................................................. 60
`
`CONCLUSION ............................................................................................ ..6O
`
`VI.
`
`
`
`iii
`
`iii
`
`

`
`
`
`LIST OF EXHIBITS
`
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`U.S. Patent No. 7,043,543 to Ewing
`
`U.S. Patent No. 7,702,771 to Ewing
`
`Right of Appeal Notice (37 CFR 1.953), Reexam of U.S.
`7,043,543, Control No. 95/001,485, October 24, 2013 (“‘543
`RAN”)
`
`Detailed Request for Inter Partes Reexamination of U.S.
`7,043,543, Control No. 95/001,485, November 12, 2010
`(“‘543 Patent Reexam Request”)
`
`Office Action, Reexam of U.S. 7,043,543, Control No.
`95/001,485, March, 29, 2012 (“‘543 Reexam Office Action”)
`
`‘543 Patent Prosecution Office Action dated June 9, 2005
`
`Intentionally left blank
`
`Intentionally left blank
`
`Intentionally left blank
`
`Intentionally left blank
`
`Intentionally left blank
`
`U.S. Patent No. 5,949,974 to Ewing
`
`MasterSwitch VM Power Distribution Unit User Guide,
`December 1999 (“MSVM User Guide”)
`
`MasterSwitch VM Power Distribution Unit Installation and
`Quick Start Manual, December 1999 (“MSVM Quick Start”)
`
`PowerNet SNMP Management Information Base (MIB)
`v3.1.0 Reference Guide, November, 1999 (“MSVM PowerNet
`Guide”)
`
`iv
`
`

`
`
`
`Exhibit No.
`
`Description
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`Declaration of Patrick Johnson, Reexam of U.S. 7,043,543,
`Control No. 95/001,485, May 16, 2011 (“Johnson Decl.”)
`
`U.S. Patent No. 6,741,442 to McNally
`
`Baytech Remote Power Control Unit Owner’s Manual,
`BayTech Manual Publication #U140E125-05, January 2000
`(“Baytech Manual”)
`
`Baytech Vertical-Mount Data Center Power Control Press
`Release, October 13, 1999 (“Baytech Press Release”)
`
`Download of Baytech RPC Series Webpage from
`web.archive.org, capturing webpage as of October 6, 2000
`(“Baytech Webpage”)
`
`Declaration of Alex North, Reexam of U.S. 7,043,543,
`Control No. 95/001,485, May 13, 2011 (“North Decl.”)
`
`U.S. Patent No. 5,650,771 to Lee
`
`U.S. Patent No. 6,476,729 to Liu
`
`U.S. Patent No. 5,595,494 to Wiebe
`
`U.S. Patent No. 4,853,619 to Paulsen
`
`Systems Enhancement Corporation PA-800 Manual, October
`1, 1996
`
`Systems Enhancement Corporation PA-800 Manual, October
`31, 1996
`
`APC Symmetra User’s Manual, rev. October, 1997
`
`APC PowerStruXure User’s Manual, November 2001
`
`Declaration of Dr. Mark Horenstein in Support of this Petition
`for Inter Partes Review of U.S. Patent No. 7,043,543
`(“Horenstein”)
`
`v
`
`

`
`
`
`Exhibit No.
`
`Description
`
`1031
`
`1032
`
`Declaration of Dr. Mark Horenstein, Reexam of U.S.
`7,043,543, Control No. 95/001,485, May 16, 2011
`
`Declaration of Douglas A. Bors, Reexam of U.S. 7,043,543,
`Control No. 95/001,485, May 16, 2011
`
`
`Note: Petitioner has labeled the exhibits listed here with consecutive page
`
`numbers in the format of “IPR page __.” In addition, for the convenience of the
`
`Board and the parties, Petitioner intentionally left blank Exs. 1007-1011 in order to
`
`keep the exhibit numbering consistent in this proceeding and previously filed Case
`
`IPR2015-01596.
`
`vi
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. Part 42, Petitioner Raritan
`
`Americas, Inc. d/b/a Raritan Computer, Inc. respectfully requests Inter Partes
`
`Review of original claims 1-23 of U.S. Patent No. 7,043,543 (Ex. 1001), owned by
`
`Server Technology, Inc. Petitioner requests this inter partes review following its
`
`Petition for Inter Partes Review of U.S. Patent No. 7,702,771 (Ex. 1002)—the
`
`child of the ‘543 patent with nearly identical claim language—filed July 15, 2015
`
`(Case IPR2015-01596).
`
`Like the ‘771 patent, the ‘543 patent relates to power distribution units or
`
`“PDUs.” PDUs can help provide a reliable power source to servers and computers
`
`in data centers. Although PDUs were well-known in the art long before the ‘543
`
`patent, the claims of the ‘543 patent are directed at the most basic and well-known
`
`features of PDUs in the art. For example, claim 1 recites an “electrical power
`
`distribution plugstrip” with (A) a “vertical strip enclosure,” (B) “power input,” (C)
`
`“outputs,” (D) “power control relays,” (E) “display” of current information, and
`
`(F) “current reporting system” connectable to a network.
`
`This claim is plainly anticipated and obvious in view of several pieces of
`
`prior art. For example, the MasterSwitch VM (“MSVM”) Literature, a collection
`
`of three publications describing a PDU product available before the ‘543 patent
`
`disclosure, renders obvious claim 1, because in combination it discloses each and
`
`1
`
`

`
`
`
`every element of claim 1. Similarly, U.S. Patent No. 6,741,442 to McNally
`
`anticipates claim 1. U.S. Patent No. 5,949,974 to Ewing, teaching the functional
`
`power management aspects of claim 1, also renders obvious claim 1, in
`
`combination with U.S. Patent No. 5,595,494 to Wiebe teaching the basic structural
`
`elements and U.S. Patent No. 5,650,771 to Lee disclosing the display element E.
`
`Claim 15, the only other independent claim, fares no better. Claim 15 is
`
`nearly identical to claim 1 except that the display limitation E of claim 15 further
`
`requires a “digital” current display that shows the level of current in a numerical
`
`form. Yet this minor variation in claim language was also known to those of skill
`
`in the art at the time of invention. A “digital” display of the amount of current is of
`
`course a well-known feature in the art of electrical power distribution devices.
`
`Electrical devices had digital displays for decades before the invention. Prior art
`
`such as Lee and U.S. Patent No. 6,476,729 to Liu also expressly teach use of
`
`digital displays in PDUs, for example, to better show the values of current on the
`
`PDU and help prevent current overloads that cause equipment faults. The
`
`dependent claims are no more than obvious variations of the independent claims.
`
`This is the precise evidence and reasoning that the Patent Office Examiner
`
`used to reject the claims of the ‘543 patent in an ongoing inter partes
`
`reexamination now on appeal before this Board (Reexam Control No. 95/001,485;
`
`PTAB Appeal No. 2015-004779, hereinafter “‘543 Reexamination”). Specifically,
`
`2
`
`

`
`
`
`the reexamination Examiner rejected on multiple grounds all of the original claims
`
`1-23 of the ‘543 patent, relying on the MSVM Literature, McNally, and Ewing
`
`‘974 as primary references, and Wiebe, Lee, and Liu as secondary references.
`
`Petitioner also provides an additional ground of invalidity based on the
`
`Baytech RPC-7 Literature, another collection of three publications about a product
`
`available before the ‘543 patent disclosure. As in the prior ‘543 Reexamination,
`
`Patent Owner will likely argue against invalidity by urging that the claims require a
`
`“one piece” or “fully integrated” configuration with all the claim elements inside
`
`the enclosure. This narrow claim construction is unsupported by the claims and
`
`contrary to the broadest reasonable interpretation, as the Examiner found in the
`
`prior reexamination. Nonetheless, Petitioner includes this ground to show that
`
`even this argument fails to distinguish the claims from the RPC-7 Literature, which
`
`undisputedly discloses—in the Patent Owner’s parlance—a “one-piece” and “fully
`
`integrated” plugstrip.
`
`Thus, as shown in detail below, there is a reasonable likelihood that
`
`Petitioners will prevail with respect to each of the challenged claims, and Petitioner
`
`requests Inter Partes Review of claims 1-23 of the ‘543 patent. The required fee
`
`under 37 C.F.R. §§ 42.15(a) and 42.103 in the amount of $26,800 is being paid
`
`through the Patent Review Processing System. Please assess any fee deficiency or
`
`credit to Deposit Account No. 10-0460.
`
`3
`
`

`
`
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest [37 C.F.R. § 42.8(b)(1)]
`Raritan Americas, Inc. d/b/a Raritan Computer, Inc. is the Petitioner.
`
`Raritan, Inc. is a real party-in-interest. In addition, Petitioner notes that Raritan,
`
`Inc. has an agreement with Legrand North America for Legrand to acquire Raritan
`
`in the future. However, neither Legrand, nor any other party, has controlled,
`
`directed, funded, or participated in the preparation of the present petition.
`
`B. Related Matters [37 C.F.R. § 42.8(b)(2)]
`As mentioned above, Petitioner requested Inter Partes Review of the closely
`
`related ‘771 patent on July 15, 2015 (Case IPR2015-01596). There is also an inter
`
`partes reexamination involving the ‘543 patent pending on appeal before this
`
`Board (Reexam Control No. 95/001,485; PTAB Appeal No. 2015-004779).
`
`Patent Owner asserted the ‘543 patent and the ‘771 patent against Petitioner
`
`in the District of Nevada, Case No. 15-cv-00330-MMD-WGC on June 22, 2015.
`
`Patent Owner also has ongoing litigation involving the ‘543 and ‘771 patent
`
`against American Power Conversion Corp. in Nevada, Case No. 06-00698-LRH-
`
`VRP, which is now pending before the Federal Circuit Court of Appeals, Case No.
`
`15-1605. Patent Owner also asserted the ‘543 and ‘771 patents against American
`
`Power Conversion Corp. and Schneider Electric IT Corp. in a new case in Nevada,
`
`Case No. 15-cv-00329-MMD-WGC, filed on June 22, 2015.
`
`4
`
`

`
`
`
`C. Lead/Back-up Counsel [37 C.F.R. § 42.8(b)(3)]
`Petitioner is filing a power of attorney designating as lead counsel Reginald
`
`J. Hill (Reg. No. 39,225), rhill@jenner.com, and back-up counsel Michael G.
`
`Babbitt (Reg. No. 59,288), mbabbitt@jenner.com, both of Jenner & Block, 353 N.
`
`Clark St., Chicago, Illinois 60654, Phone: (312) 222-9350, Fax: (312) 527-0484.
`
`D.
`
`Service Information [37 C.F.R. § 42.8(b)(4)]
`
`Petitioner consents to electronic service by e-mail at the addresses of lead
`
`and back-up counsel. Documents may be delivered by hand to the address of lead
`
`and back-up counsel above.
`
`III. GROUNDS FOR STANDING [37 C.F.R. § 42.104(a)]
`Petitioner certifies that the ‘543 patent is available for Inter Partes Review,
`
`and Petitioner is not barred or estopped from requesting Inter Partes Review
`
`challenging the claims on the grounds identified herein.
`
`IV. BACKGROUND ON THE ‘543 PATENT
`A. The Claims and Specification
`Independent claim 1 of the ‘543 patent recites an
`
`“electrical power distribution device” including: (A) a
`
`vertical strip enclosure (see, e.g., Ex. 1001, ‘543 Patent, col.
`
`3:4-9; Fig. 1:102); (B) power input (id. at col. 3:9-15; Fig.
`
`1:108); (C) outlets (id. at col. 3:11-30; Fig. 1:111-126); (D)
`
`5
`
`

`
`
`
`power control relays (id. at col. 8:16-31; Figs. 4A-4B: 401-404, 421-424); (E)
`
`display of current information (id. at col. 3:6-15; Fig. 1:104); and (F) current
`
`reporting system connectable to a network (id. at col. 3:22-30, 3:62-4:2; Fig.
`
`1:100; col. 8:43-46; Fig. 6:600), as seen in the claim chart below:
`
`1. An electrical power distribution plugstrip connectable to one or
`more electrical loads in a vertical electrical equipment rack, the
`electrical power distribution plugstrip comprising in combination:
`A. a vertical strip enclosure having a thickness and a length longer
`than a width of the enclosure;
`B. a power input penetrating said vertical strip enclosure;
`C. a plurality of power outputs disposed along a face of said length
`of the strip enclosure, each among the plurality of power outputs
`being connectable to a corresponding one of said one or more
`electrical loads;
`D. a plurality of power control relays disposed in said vertical strip
`enclosure, each among said plurality of power control relays being
`connected to said power input and in independent power controlling
`communication with one or more corresponding power outputs
`among said plurality of power outputs;
`E. a current-related information display disposed on said vertical
`strip enclosure in current-related information-determining
`communication with at least one among said power input and said
`plurality of power outputs; and
`F. a current-related information reporting system associated with
`said vertical strip enclosure and being (i) in current-related
`information-determining communication with at least one among said
`power input and said plurality of power outputs, and (ii) connectable
`in current-related information transfer communication with a
`separate communications network distal from the electrical power
`distribution plugstrip.
`
`
`With respect to patentability, independent claim 15 is the same as claim 1,
`
`except that limitation E of claim 15 further requires a “digital current information
`
`6
`
`

`
`
`
`display” that shows the level of current in a numerical form (see id. at col. 3:13-
`
`15), rather than simply a “current-related information display” as in claim 1.
`
`The specification of the ‘543 patent describes that an alleged benefit of this
`
`PDU is that the display (104) can help a technician watch “how much current
`
`change is observed when each network appliance is plugged in and turned on”
`
`during installation or troubleshooting in the data center. (Id. at col. 3:16-20.) In
`
`particular, as was well known in the prior art and discussed herein, this display can
`
`be used to prevent faults caused by “unusually high or low currents.” (Id. at col.
`
`3:20-21.) The specification also refers to such high currents as “over-currents.”
`
`(Id. at col. 8:32-42, 9:11-13.)
`
`The dependent claims recite additional features of PDUs such as “intelligent
`
`power section/module” (claims 2, 4, 9-14, 16, 18-23), “external power manager
`
`application” (claims 3, 5 , 17, 19), and “current sensing device” (claims 6-8). The
`
`limitation of dependent claim 2 is identical to the limitation of dependent claim 16,
`
`the only difference being the claim upon which dependence is based. Claims 3 and
`
`17, claims 4 and 18, claims 5 and 19, claims 9 and 20, claims 10 and 21, claims 11
`
`and 22, and claims 12 and 23, each share the same relationship, respectively.
`
`The Ongoing ‘543 Reexamination Appeal
`B.
`The ‘543 patent is the subject of a pending inter partes reexamination now
`
`on appeal before this Board (Control No. 95/001,485; PTAB Appeal No. 2015-
`
`7
`
`

`
`
`
`004779). American Power Conversion Corp. requested this reexamination in
`
`2010. The appeal is fully briefed and docketed, and the parties await a decision.
`
`All original claims 1-23 of the ‘543 patent stand rejected as invalid in
`
`reexamination after a Right of Appeal Notice. (Ex. 1003, ‘543 Patent Right of
`
`Appeal at IPR page 2; see also Ex. 1004, ‘543 Patent Reexam Request.)
`
`For example, the Examiner found strong obviousness based on the MSVM
`
`Literature, a combination of related documents describing the prior art
`
`MasterSwitch Vertical Mount PDU product. The Examiner found that the MSVM
`
`Literature discloses all of the elements of claim 1 (Ex. 1003 at Ground #1).
`
`Similarly, the Examiner found claim 1 anticipated by U.S. Patent No. 6,741,442 to
`
`McNally (Ground #6), and claim 1 obvious in view of U.S. Patent No 5,949,974 to
`
`Ewing, U.S. Patent No. 5,595,494 to Wiebe, and U.S. Patent No. 5,650,771 to Lee
`
`(Ground #8/13). The Examiner also applied the grounds of rejection for claim 1 to
`
`claim 15 with prior art that discloses a digital current display, such as Lee or U.S.
`
`Patent No. 6,476,729 to Liu. (Grounds #2/9, #7, #8/13.)
`
`C. The Prosecution History of the ‘543 Patent
`Patent Owner filed the ‘543 patent application on August 15, 2001. During
`
`the prosecution of the ‘543 patent, several key invalidating prior art references
`
`were not before the Patent Office, including the MSVM Literature (Exs. 1013-16),
`
`McNally (Ex. 1017), and the Baytech RPC-7 Literature (Exs. 1019-20).
`
`8
`
`

`
`
`
`Nonetheless, the Examiner rejected the claims of the ‘543 patent reciting a current
`
`“display” as obvious, explaining:
`
`Therefore, it would have been obvious to one having
`ordinary skill in the art at the time of invention was made
`to enhance the functionality of the power strip of
`Schreiber by adding Liu's user display such that the
`electrical parameters are displayed. It would have been
`obvious because it is difficult for ordinary users to
`measure the electrical parameters such as kilowatt-hour,
`power factor, watt, etc. of the electric appliances or the
`power source, Thus, it is desirable to provide an
`improved power source device with a display unit which
`is capable of indicting various electrical parameters of
`both the electric appliance electrically connected to the
`power source device and the power source as taught by
`Liu.
`
`(See, e.g., Ex. 1006, ‘543 Prosecution Office Action dated June 9, 2005 at IP page
`
`6-7, 12.) Patent Owner overcame these rejections of the claims directed at a
`
`current display by adding the “current reporting system” connectable to a network
`
`limitation, element F in issued independent claims 1 and 15, which as described
`
`below is clearly taught by the prior art not disclosed during prosecution, such as
`
`the MSVM Literature, McNally, and the Baytech RPC-7 Literature, among others.
`
`The ‘543 patent issued on May, 9, 2006.
`
`D. The Child ‘771 Patent
`As a continuation of the ‘543 patent, the disclosure of the ‘771 patent is
`
`identical to the ‘543 patent. In addition, the 23 claims of the ‘771 patent are
`
`substantially the same as the 23 claims of the ‘543 patent, with a few limitations
`
`9
`
`

`
`
`
`removed from the ‘771 patent independent claims, making these claims of the ‘771
`
`patent broader than the corresponding claims of the ‘543 patent. For example,
`
`unlike claims 1 and 15 of the ‘543 patent, claims 1 and 15 of the ‘771 patent do not
`
`recite a “plugstrip” or “vertical” enclosure.
`
`Priority Date
`
`E.
`The ‘543 patent cannot claim priority to an application before its August 15,
`
`2001 filing date. Both independent claims 1 and 15 in the ‘543 patent recite a
`
`“vertical strip enclosure” for a power distribution device as well as the physical
`
`configuration of several components within the enclosure, such as the input
`
`“penetrating” the enclosure, outputs “disposed along” the enclosure, relays
`
`“disposed in” the enclosure, display “disposed on” the enclosure, and current
`
`reporting system “associated with” the enclosure. This enclosure and
`
`configuration of components was first disclosed in the ‘543 patent, in particular, in
`
`connection with the enclosure shown in Figure 1. Thus, since at least these claim
`
`features of the ‘543 patent were not properly described in the priority chain prior to
`
`August 15, 2001, Patent Owner cannot claim priority to an application before this
`
`date. See Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869-870
`
`(Fed. Cir. 2010) (holding that to claim earlier priority “the parent application must
`
`actually or inherently disclose the elements of the later-filed claims”).
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`10
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`V.
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`IDENTIFICATION OF CHALLENGE AND STATEMENT OF THE
`PRECISE RELIEF REQUESTED
`A. Claims For Which Inter Partes Review Is Requested And Precise
`Relief Requested [37 C.F.R. §§ 42.104(b) and (b)(1)]
`Petitioner requests Inter Partes Review of claims 1-23 of the ‘543 patent and
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`that these claims be found unpatentable as obvious and/or anticipated.
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`B.
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`The Specific Prior Art And Statutory Grounds On Which The
`Challenge Is Based [37 C.F.R. § 42.104(b)(2)]
`Ground 1: The MSVM Literature (Exs. 1013-1015) renders obvious claims
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`1-14 of the ‘543 patent under § 103(a).
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`Ground 2: The MSVM Literature in view of Lee (Ex. 1022) renders
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`obvious claims 15-23 of the ‘543 patent under § 103(a).
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`Ground 3: McNally (Ex. 1017) anticipates claims 1-14 of the ‘543 patent
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`under § 102.
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`Ground 4: McNally in view of Liu (Ex. 1023) renders obvious claims 15-
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`23 of the ‘543 patent under § 103(a).
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`Ground 5: Ewing ‘974 (Ex. 1012) in view of Wiebe (Ex. 1024), further in
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`view of Lee, renders obvious claims 1-23 of the ‘543 patent under § 103(a).
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`Ground 6: The BayTech RPC-7 Literature (Exs. 1018-1020) in view of Lee
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`renders obvious claims 1-23 of the ‘543 patent under § 103(a).
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`C. How The Challenged Claims Are to Be Construed [37 C.F.R.
`§ 42.104(b)(3)]
`As this Board knows well, in Inter Partes Review, a claim term “shall be
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`given its broadest reasonable construction in light of the specification of the
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`patent.” In re Cuozzo Speed Tech., LLC, 778 F.3d 1271, 1279 (Fed. Cir. 2015)
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`(quoting with approval 37 C.F.R. § 42.100(b)). For the purposes of this Inter
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`Partes Review, Petitioner sets forth its understanding of the following claim terms
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`which reflect potential disputes between the parties relevant to invalidity in this
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`proceeding: (1) “electrical power distribution plugstrip,” (2) “current-related
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`information display,” and (3) “intelligent power section/module.” Petitioner
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`submits that the other claim limitations can be given their plain and ordinary
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`meanings for purposes of this proceeding. Petitioner reserves the right to propose
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`additional constructions or supplement its arguments in response to arguments by
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`Patent Owner.1
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`1 In addition, because claim construction standards differ between the Patent
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`Office and district court proceedings, Petitioner expressly reserves the right to
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`argue for different constructions and/or to construe other claim terms in any
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`subsequent or parallel proceeding.
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`“Electrical power distribution plugstrip”
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`1.
`Independent claims 1 and 15 of the ‘771 patent each recite an “electrical
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`power distribution plugstrip” in the preamble. Claims 1 and 15 further recite “a
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`vertical strip enclosure.” Patent Owner has taken the position in litigation that
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`these terms require a “one-piece” or “fully integrated” plugstrip that physically
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`includes inside it each element recited in the claim, including the “current reporting
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`system.” See, e.g., STI v. APC, No. 06-698, at *16-18 (D. Nev. Sept. 29, 2014)
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`(Dkt. 635). Patent Owner does so in an attempt to distinguish the claims from
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`prior art that could include a “current reporting system” in a separate physical
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`enclosure connected to, and associated with, a plugstrip, rather than inside the
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`plugstrip. Yet the claims of the ‘543 patent are not so limited.
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`The plain language of the claims does not include a “one-piece” or “fully
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`integrated” limitation, and the claims should not be construed to include these
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`limitations now. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
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`(en banc) (“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent
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`define the invention . . . .”). Moreover, the claims expressly indicate the
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`relationship between certain elements and the plugstrip, including that certain
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`specific elements must be “penetrating,” “disposed in” or “disposed on” a vertical
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`plugstrip, and, specifically, the current reporting system of element F need only be
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`“associated with” the plugstrip. And claims 3 and 17, which depend from
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`independent claims 1 and 15 and claim an “external power manager application,”
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`definitively show that the invention encompasses a device that may have both
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`internal and external components, not necessarily all in the same plugstrip.
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`Further, Patent Owner’s argument is inconsistent with the specification and
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`intrinsic evidence. The specification refers to a PDU that is “preferably,” but not
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`necessarily, fully integrated. (Ex. 1001 at col. 10:17-18.) This permissive
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`disclosure does not limit the claims. See, e.g., Electro Med. Sys., S.A. v. Cooper
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`Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“[E]mbodiments appearing in
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`a specification will not be read into the claims when the claim language is
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`broader.”). The specification also describes a preferred embodiment that is not
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`fully integrated and has the “network interface components in another chassis” (id.
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`at col. 3:66-4:2), which cannot be excluded from the scope of the claim. See
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`Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1369 (Fed. Cir. 2003)
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`(“[C]onstruing a claim to exclude a preferred embodiment ‘is rarely, if ever,
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`correct.’”). In addition, Patent Owner’s interpretation runs counter to the general
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`rule that preamble terms do not limit the claims. See, e.g., Aspex Eyewear, Inc. v.
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`Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed. Cir. 2012) (“This court has
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`recognized that as a general rule preamble language is not treated as limiting.”).
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`The Patent Office Examiner rejected a similar claim construction argument
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`from Patent Owner in the ‘543 Reexamination. The Examiner recognized that
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`Patent Owner’s narrow construction requiring an “integrated” or “one-piece”
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`device does not “compl[y] with the claim language itself.” (Ex. 1005, ‘543
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`Reexam Office Action dated Mar. 29, 2012 at IPR pages 63-34.) As the Examiner
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`appreciated, the claimed current reporting system is “not necessarily integrated into
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`the vertical plugstrip enclosure” and the claims “require nothing more than that the
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`current reporting system be associated with the vertical plugstrip enclosure.” (Id.)
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`Thus, Petitioner submits that no construction is needed for the term
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`“electrical power distribution device” beyond the plain and ordinary meaning of
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`the term, which is not limited to a “one-piece” or “fully integrated” plugstrip or
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`device.
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`“Current related information display”
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`2.
`The term “current related information display” appears in independent claim
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`1. Patent Owner has argued in litigation that this term is limited to a “device that
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`produces a visual representation of textual, alphanumerical and/or graphical data.”
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`See, e.g., STI v. APC, No. 06-698, at *20 (D. Nev. Apr. 19, 2010) (Dkt. 163).
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`Patent Owner does so to distinguish claim 1 from prior art including LED displays
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`that light up to convey information about current, rather than digital or numerical
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`displays showing a number value of amperage. Again, the plain language of the
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`claim is not so narrow.
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`Claim 1 uses the term “display” without qualification. The claim does not
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`recite a “digital” or “numerical” display. Notably, claim 1 uses the term “display,”
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`whereas claim 15 expressly uses the term “digital” display. The claim should not
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`be construed in a way to render this express claim language meaningless, as
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`proposed by Patent Owner. See, e.g., AllVoice Computing PLC v. Nuance
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`Commc’ns, Inc., 504 F.3d 1236, 1247 (Fed. Cir. 2007) (“[C]laim differentiation
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`takes on relevance in the context of a claim construction that would render
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`additional, or different, language in another independent claim superfluous.”);
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`Phillips, 415 F.3d at 1314 (“Differences among claims can also be a useful guide
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`in understanding the meaning of particular claim terms.”).
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`The Patent Office Examiner rejected this same claim construction argument
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`from Patent Owner in the ‘543 Reexamination. The Examiner found Patent
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`Owner’s narrow interpretation of the “display” limitation of claim 1 “not
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`persuasive.” (Ex. 1005, ‘543 Reexam Office Action dated Mar. 29, 2012 at IPR
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`page 67.) As the Examiner pointed out, digital or alphanumeric information is
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`simply not recited in claim 1. (Id.) The Examiner also emphasized that claim 1
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`must be given its broadest reasonable interpretation, encompassing an LED. (Id.)
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`Thus, Petitioner submits that the broadest reasonable interpretation of
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`“current related information display” may encompass any display that provides a
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`visual indicator of information related to current, including a single LED.
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`“Intelligent power section/module”
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`3.
`The term “in