Paper 18
`Trials@uspto.gov
`Entered: August 10, 2016
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMX, LLC,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00573
`Patent 9,019,838 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: August 10, 2016
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMX, LLC,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00573
`Patent 9,019,838 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-00573
`Patent 9,019,838 B2
`
`
`I. INTRODUCTION
`AMX, LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 of U.S.
`Patent No. 9,019,838 B2 (Ex. 1005, “the ’838 patent”). Chrimar Systems,
`Inc. (“Patent Owner”) filed a Preliminary Response (Paper 16, “Prelim.
`Resp.”) to the Petition. An inter partes review may not be instituted “unless
`. . . there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a).
`For the reasons set forth below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing the unpatentability of claims 1, 2, 7, 26,
`29, 38, 40, 47, 55, and 69 of the ’838 patent. Accordingly, we institute an
`inter partes review as to claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 of the
`’838 patent on the grounds specified below.
`Related Proceedings
`A.
`The parties indicate that the ’838 patent is the subject of several
`district court cases. Pet. 1; Paper 5, 2–3; Ex. 1014.
`The ’838 Patent
`B.
`The ’838 patent relates to a system for managing, tracking, and
`identifying remotely located electronic equipment. Ex. 1005, col. 1, ll. 27–
`30. According to the ’838 patent, one of the difficulties in managing a
`computerized office environment is keeping track of a company’s electronic
`assets. Id. at col. 1, ll. 32–57. Previous systems for tracking electronic
`assets suffered from several deficiencies. Id. at col. 1, ll. 62–65. For
`example, previous systems could not determine the connection status or
`
`2
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`Patent 9,019,838 B2
`
`physical location of the asset and could only track those assets that were
`powered-up. Id. at col. 1, l. 65–col. 2, l. 2.
`To address these deficiencies, the ’838 patent describes a system for
`tracking an electronic asset using existing network wires. Id. at col. 2, ll. 3–
`6, col. 3, ll. 23–27. The system includes a central module and a remote
`module. Id. at col. 3, ll. 27–30. The remote module attaches to the
`electronic asset and transmits information to the central module by
`impressing a low frequency signal on the existing network wires. Id. A
`receiver in the central module monitors the information transmitted by the
`remote module. Id. at col. 3, ll. 30–32. The central module can determine if
`the location of the electronic asset changes, and a database can be updated
`accordingly. Id. at col. 3, ll. 37–40.
`Illustrative Claim
`C.
`Claim 1 is independent and is reproduced below.
`1. A central piece of network equipment comprising:
`at least one Ethernet connector comprising first and
`second pairs of contacts used to carry BaseT Ethernet
`communication signals; and
`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 and 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.
`Ex. 1005, col. 17, ll. 13–23.
`Evidence of Record
`D.
`Petitioner relies on the following references and declaration (Pet. 13):
`Reference or Declaration
`Exhibit No.
`Declaration of Rich Seifert (“Seifert Declaration”)
`Ex. 1009
`
`
`
`3
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`IPR2016-00573
`Patent 9,019,838 B2
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`
`Exhibit No.
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1037
`
`Reference or Declaration
`De Nicolo, U.S. Patent No. 6,115,468 (issued Sept. 5, 2000)
`(“De Nicolo ’468”)
`De Nicolo, U.S. Patent No. 6,134,666 (issued Oct. 17,
`2000) (“De Nicolo ’666”)
`Katzenberg et al., U.S. Patent No. 6,218,930 B1 (issued
`Apr. 17, 2001) (“Katzenberg”)
`Patent Owner relies on the Declaration of Dr. Vijay K. Madisetti (Ex.
`2015) to support some of the arguments in the Preliminary Response. We
`note that, for purposes of deciding whether to institute an inter partes review,
`any genuine issue of material fact created by Dr. Madisetti’s testimony will
`be viewed in the light most favorable to Petitioner. 37 C.F.R. § 42.108(c).
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 13):
`Claim(s)
`Basis
`1, 2, 7, 26, 29, 38,
`35 U.S.C. §§ 102(e),
`40, 47, 55, and 69
`103(a)
`1, 2, 7, 26, 29, 38,
`35 U.S.C. § 103(a)
`40, 47, 55, and 69
`
`Reference(s)
`Katzenberg
`
`De Nicolo ’468 and
`De Nicolo ’666
`
`II. ANALYSIS
`A. Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). On this record and for purposes of this
`decision, we determine that no claim terms require express construction.
`
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`Patent 9,019,838 B2
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`
`B.
`
`Asserted Grounds of Unpatentability
`Anticipation of Claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and
`1.
`69 by Katzenberg
`Petitioner argues that claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 are
`anticipated by Katzenberg. Pet. 13. We have reviewed the parties’
`assertions and supporting evidence. For the reasons discussed below,
`Petitioner does not demonstrate a reasonable likelihood of prevailing in
`showing that claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 are anticipated by
`Katzenberg.
`Petitioner argues that Katzenberg is prior art to the ’838 patent under
`35 U.S.C. § 102(e). Pet. 14. Petitioner acknowledges, though, that
`Katzenberg is not prior art under § 102(e), if the ’838 patent is entitled to the
`benefit of the filing date of U.S. Provisional Application No. 60/081,279
`(Ex. 1027, “the ’279 provisional”).1 Pet. 6–9, 14. As a result, Petitioner
`argues that the ’838 patent is not entitled to the benefit of the filing date of
`the ’279 provisional because it does not provide sufficient written
`description of claim 1 of the ’838 patent. Id. at 6–9.
`Petitioner focuses on the limitation in claim 1 of the ’838 patent that
`requires a central piece of network equipment for controlling application of
`at least one electrical condition “in response to at least one of the magnitudes
`of the DC current flow.” Id. at 6. Petitioner specifically argues that the only
`example provided in the ’279 provisional describes a transmitter that sends
`an identification number to a central piece of network equipment using
`
`
`1 Petitioner does not dispute that the ’838 patent is entitled to the benefit of
`the filing date of International Application No. PCT/US99/07846, which was
`filed on April 8, 1999. Pet. 14.
`
`5
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`Patent 9,019,838 B2
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`Manchester encoding. Pet. 7–8 (citing Ex. 1027, 6:3–7, 6:11–16).
`According to Petitioner, Manchester encoding requires that the central piece
`of network equipment evaluate two different magnitudes of DC current flow.
`Pet. 8–9 (citing Ex. 1009 ¶¶ 120, 122). Petitioner argues that, as a result, the
`’279 provisional only describes a central piece of network equipment that
`controls application of an electrical condition in response to two magnitudes
`of DC current flow, not in response to one magnitude of DC current flow.
`Pet. 8–9.
`Petitioner’s argument is not persuasive. A specification may provide
`sufficient written description of a claim, even though that claim is broader
`than the specific examples disclosed. See Martek Biosciences Corp. v.
`Nutrinova, Inc., 579 F.3d 1363, 1371 (Fed. Cir. 2009) (“[A] patent claim is
`not necessarily invalid for lack of written description just because it is
`broader than the specific examples disclosed.”); Cordis Corp. v. Medtronic
`AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (“A specification may,
`within the meaning of 35 U.S.C. § 112 para. 1, contain a written description
`of a broadly claimed invention without describing all species that [the] claim
`encompasses.” (citation omitted)). Here, the ’279 provisional describes an
`invention that is broader than just the specific example that uses Manchester
`encoding. In particular, the ’279 provisional states that the system described
`therein can use any “unique preprogrammed pattern” to communicate
`information, not just Manchester encoding. Ex. 1027, 3:3–9, Abstract.2
`In addition, the specific example that uses Manchester encoding
`describes the invention recited in claim 1. Claim 1 of the ’838 patent recites
`
`2 In this Decision, we cite to the original page numbers in the ’279
`provisional, not the exhibit page numbers added by Petitioner.
`
`6
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`IPR2016-00573
`Patent 9,019,838 B2
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`“to control application of at least one electrical condition . . . in response to
`at least one of the magnitudes of the DC current flow.” Ex. 1005, col. 17, ll.
`19–23 (emphasis added). The phrase “at least one” indicates that claim 1
`includes two magnitudes, and is not limited to just one magnitude. As
`discussed above, Petitioner acknowledges that the example in the ’279
`provisional that uses Manchester encoding controls application of an
`electrical condition in response to two magnitudes of DC current flow. Pet.
`8–9. Thus, we are persuaded, on this record, that the broad description of
`using any unique preprogrammed pattern, together with the specific example
`of using Manchester encoding, is sufficient to show that the patentee was in
`possession of the subject matter recited in the above limitation of claim 1 of
`the ’838 patent.
`Further, Patent Owner identifies evidence indicating that the ’279
`provisional provides sufficient written description of all the limitations of
`claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69. Prelim. Resp. 15–23. We are
`persuaded, on this record, that the challenged claims of the ’838 patent are
`entitled to the benefit of the filing date of the ’279 provisional. Because the
`filing date of the ’279 provisional predates the earliest possible filing date of
`Katzenberg, Petitioner has not shown sufficiently that Katzenberg is prior art
`to the ’838 patent under 35 U.S.C. § 102(e). For at least the foregoing
`reasons, Petitioner does not demonstrate a reasonable likelihood of
`prevailing in showing that claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 are
`anticipated by Katzenberg.
`Obviousness of Claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and
`2.
`69 Over Katzenberg
`Petitioner argues that claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69
`would have been obvious over Katzenberg. Pet. 13. For the reasons
`
`7
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`IPR2016-00573
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`
`discussed above, Petitioner has not shown sufficiently that Katzenberg is
`prior art to the ’838 patent under 35 U.S.C. § 102(e). See supra Section
`II.B.1. Therefore, Petitioner does not demonstrate a reasonable likelihood of
`prevailing in showing that claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69
`would have been obvious over Katzenberg.
`Obviousness of Claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and
`3.
`69 Over De Nicolo ’468 and De Nicolo ’666
`Petitioner argues that claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69
`would have been obvious over De Nicolo ’468 and De Nicolo ’666. Pet. 13.
`We have reviewed the parties’ assertions and supporting evidence. For the
`reasons discussed below, Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69
`would have been obvious over De Nicolo ’468 and De Nicolo ’666.
`
`Claim 1 recites “at least one Ethernet connector comprising first and
`second pairs of contacts used to carry BaseT Ethernet communication
`signals.” Ex. 1005, col. 17, ll. 14–16. Petitioner identifies evidence
`indicating that De Nicolo ’468 teaches an Ethernet link that comprises two
`twisted pair conductors. Pet. 40–41 (citing Ex. 1019, col. 3, ll. 25–32).
`Petitioner also identifies evidence indicating that a person of ordinary skill in
`the art would have known that the Ethernet link taught by De Nicolo ’468
`could have been used to carry BaseT Ethernet communication signals. Pet.
`41 (citing Ex. 1009 ¶ 91).
`Claim 1 recites “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 and 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
`
`8
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`IPR2016-00573
`Patent 9,019,838 B2
`
`current flow.” Ex. 1005, col. 17, ll. 17–23. Petitioner identifies evidence
`indicating that De Nicolo ’666 teaches a power supervisor that detects
`different magnitudes of DC current flow in order to determine the maximum
`power requirement of an electronic device. Pet. 42–43 (citing Ex 1009
`¶¶ 93, 94; Ex. 1020, col. 3, l. 40–col. 4, l. 9). Petitioner also identifies
`evidence indicating that the power supervisor in De Nicolo ’666 decides
`whether to supply power to the device based on whether there is sufficient
`power available to satisfy the device’s maximum power requirement. Pet.
`44–46 (citing Ex 1009 ¶¶ 97–99; Ex. 1020, col. 3, l. 63–col. 4, l. 4).
`Petitioner argues that it would have been obvious to combine the cited
`teachings of De Nicolo ’468 and De Nicolo ’666. Pet. 36–39. Specifically,
`Petitioner points out that De Nicolo ’468 and De Nicolo ’666 both relate to
`techniques for powering devices. Id. at 36–37 (citing Ex. 1009 ¶ 44).
`Petitioner argues that a person of ordinary skill in the art would have
`recognized that the devices being powered in De Nicolo ’468 have power
`requirements, and that it would have been desirable to use the teachings in
`De Nicolo ’666 to ensure that the devices in De Nicolo ’468 receive their
`power requirements. Pet. 37–38 (citing Ex. 1009 ¶ 45). Petitioner also
`argues that combining the cited teachings of De Nicolo ’468 and De Nicolo
`’666 would have been within the capability of a person of ordinary skill in
`the art, and that the combination would maintain the preexisting purpose and
`functionality of the circuits in De Nicolo ’468 and De Nicolo ’666. Pet. 38–
`39 (citing Ex. 1009 ¶ 47).
`Patent Owner argues that Petitioner’s reason for combining the cited
`teachings of De Nicolo ’468 and De Nicolo ’666 is not relevant “because
`providing maximum power was not the problem facing the inventors of the
`
`9
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`Patent 9,019,838 B2
`
`’838 Patent.” Prelim. Resp. 36. According to Patent Owner, the relevant
`question is whether a person of ordinary skill in the art facing the problem
`discussed in the ’838 patent (i.e., controlling costs associated with a
`company’s electronic assets) would have looked to and combined the cited
`teachings of De Nicolo ’468 and De Nicolo ’666. Id. at 38–39. Patent
`Owner’s argument is not persuasive. “[T]he problem motivating the
`patentee may be only one of many addressed by the patent’s subject matter.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, “[u]nder the
`correct analysis, any need or problem known in the field of endeavor at the
`time of invention and addressed by the patent can provide a reason for
`combining the elements in the manner claimed.” Id.
`
`Patent Owner argues that Petitioner’s reason for combining the cited
`teachings of De Nicolo ’468 and De Nicolo ’666 “does not make sense.”
`Prelim. Resp. 36–37. According to Patent Owner, because the power supply
`in De Nicolo ’468 is connected to all the devices, the power supervisor in
`De Nicolo ’666 would not be able to turn the power supply on or off for a
`single device in De Nicolo ’468, without doing so for all the other devices.
`Id. (citing Ex. 2015 ¶¶ 47, 50). Patent Owner’s argument is not persuasive.
`On this record, the evidence indicates that the power supervisor in
`De Nicolo ’666 can turn a power supply on or off for a single device, even
`when additional devices are drawing power from the same power supply.
`Ex. 1020, col. 1, l. 60–col. 2, l. 1, col. 2, ll. 29–48. Thus, at this stage of the
`proceeding, we are persuaded that combining the functionality of the power
`supervisor in De Nicolo ’666 with the power supply in De Nicolo ’468
`would provide the benefit of ensuring that all the devices in De Nicolo ’468
`receive a signal that satisfies their power requirements.
`
`10
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`
`Patent Owner argues that Petitioner does not explain specifically how
`
`a person of ordinary skill in the art would have combined the power
`supervisor and electronic module in De Nicolo ’666 with the system in
`De Nicolo ’468. Prelim. Resp. 39–41. According to Patent Owner, the
`combination proposed by Petitioner “would require significant
`experimentation and a number of design decisions that are not described in
`the Petition or disclosed in the references.” Id. at 42–43 (citing Ex. 2015
`¶¶ 46, 54–56). Patent Owner’s argument is not persuasive because it focuses
`on whether the circuitry in De Nicolo ’666 could have been physically
`incorporated into the circuitry in De Nicolo ’468. Prelim. Resp. 43. The
`relevant inquiry for obviousness is “not whether the references could be
`physically combined but whether the claimed inventions are rendered
`obvious by the teaching of the prior art as a whole.” In re Etter, 756 F.2d
`852, 859–60 (Fed. Cir. 1985).
`
`Patent Owner lastly argues that “Petitioner does not contend that a
`person of ordinary skill would have had a reasonable expectation that
`combining the De Nicolo references would result in the apparatus claimed
`by the ’838 Patent.” Prelim. Resp. 44–45. Patent Owner’s argument is not
`persuasive. Petitioner identifies evidence indicating that the proposed
`combination would have been “well within the skilled artisan’s knowledge
`and capabilities.” Pet. 38 (citing Ex. 1009 ¶ 47). On this record, Petitioner
`has shown sufficiently that a person of ordinary skill in the art would have
`had a reason to combine the cited teachings of De Nicolo ’468 and
`De Nicolo ’666, and would have had a reasonable expectation of success in
`combining those teachings.
`
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`
`For the foregoing reasons, Petitioner demonstrates a reasonable
`
`likelihood of prevailing in showing that claim 1 would have been obvious
`over De Nicolo ’468 and De Nicolo ’666. Claims 2, 7, 26, 29, 38, 40, 47,
`55, and 69 depend, directly or indirectly, from claim 1. Petitioner identifies
`evidence indicating that the combination of De Nicolo ’468 and
`De Nicolo ’666 teaches the limitations in claims 2, 7, 26, 29, 38, 40, 47, 55,
`and 69. Pet. 46–53. Therefore, on this record, Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 2, 7, 26, 29, 38,
`40, 47, 55, and 69 would have been obvious over De Nicolo ’468 and
`De Nicolo ’666.
`
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing in
`showing the unpatentability of claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69
`of the ’838 patent. At this stage in the proceeding, we have not made a final
`determination with respect to the patentability of any of the challenged
`claims.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69
`of the ’838 patent on the following grounds:
`Claims 1, 2, 7, 26, 29, 38, 40, 47, 55, and 69 as unpatentable under
`
`35 U.S.C. § 103(a) as obvious over De Nicolo ’468 and De Nicolo ’666;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter
`partes review of the ʼ838 patent is hereby instituted commencing on the
`
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`IPR2016-00573
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`
`entry date of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`identified, and no other grounds are authorized.
`
`
`
`13
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`IPR2016-00573
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`
`PETITIONER:
`Brent A. Hawkins
`Amol A. Parikh
`MCDERMOTT, WILL & EMERY LLP
`bhawkins@mwe.com
`amparikh@mwe.com
`
`PATENT OWNER:
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`justin.cohen@tklaw.com
`
`Richard W. Hoffman
`REISING ETHINGTON PC
`hoffmann@reising.com
`
`14
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