Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper No. 69
`Filed: January 23, 2018
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC., RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION SYSTEMS, INC., and NETGEAR, INC.,
`Petitioner,1
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01389
`Patent 8,155,012 B2
`____________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`1 The Board joined the latter three Petitioner parties to the instant proceeding
`after they collectively filed a petition in Case IPR2017-00790 (terminated).
`
`
`
`
`571.272.7822
`
`
`
`
`Paper No. 69
`Filed: January 23, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC., RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION SYSTEMS, INC., and NETGEAR, INC.,
`Petitioner,1
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01389
`Patent 8,155,012 B2
`____________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`1 The Board joined the latter three Petitioner parties to the instant proceeding
`after they collectively filed a petition in Case IPR2017-00790 (terminated).
`
`
`
`
`
`IPR2016-01389
`Patent 8,155,012 B2
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`
`I. INTRODUCTION
`
`Juniper Networks, Inc. filed a Petition (Paper 1, “Pet.”) pursuant to 35
`
`U.S.C. §§ 311–19 to institute an inter partes review of claims 31, 35, 36, 40,
`
`43, 52, 55, 56, 59, 60, and 65 (the “challenged claims”) of U.S. Patent No.
`
`8,155,012 B2 (Ex. 1001 (the “’012 patent”)). Pet. 1. After ChriMar
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`Systems, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 10,
`
`“Prelim. Resp.”), we instituted an inter partes review of the challenged
`
`claims (Paper 12, “Institution Decision” or “Inst. Dec.”). We then joined the
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`other three Petitioner parties listed in the heading and refer to the four
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`Petitioner parties collectively as “Petitioner.” See note 1; Paper 28.
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`After the Institution Decision, Patent Owner filed a Response. Paper
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`29 (“PO Resp.”). Petitioner filed a Reply. Paper 36 (“Pet. Reply”). Patent
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`Owner filed a Motion to Exclude Evidence (Paper 48) and a Motion to
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`Strike Petitioner’s Reply (Paper 50). Petitioner filed a Motion to Exclude
`
`Evidence. Paper 49.
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`Petitioner relies on, inter alia, three Declarations by Ian Crayford.
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`Ex. 1002; Ex. 1046; Ex. 1048. Patent Owner relies on, inter alia, a
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`Declaration by Dr. Vijay K. Madisetti. Ex. 2038. The Board filed a
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`transcription of the Oral Hearing held on July 31, 2017. (Paper 66, “Tr.”).2
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`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
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`Decision issues pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`
`the reasons that follow, we determine that Petitioner has shown by a
`
`preponderance of the evidence that the challenged claims are unpatentable.
`
`
`2 Oral hearings in related Cases IPR2016-01391, IPR2016-01397, and
`IPR2016-01399 occurred on the same day, with similar issues presented and
`argued.
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`2
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`IPR2016-01389
`Patent 8,155,012 B2
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`A. Related Proceedings
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`Petitioner cites 56 civil actions based on the ’012 patent filed in the
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`Eastern District of Michigan, Eastern District of Texas, and Northern
`
`District of California.3 Pet. 1 (citing Ex. 1012 (“a list identifying each of
`
`these civil actions”)). Patent Owner identifies 20 civil actions as “related
`
`matters.” Paper 9, 2–3. The parties also identify a number of related
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`requests for inter partes review, including Case Nos. IPR2016-00569
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`(terminated/settled), IPR2016-00573 (terminated/settled), IPR2016-00574
`
`(terminated/settled), IPR2016-00983 (terminated/settled), IPR2016-01151
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`(terminated/settled), IPR2016-01391 (final written decision), IPR2016-
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`01397 (final written decision), IPR2016-01399 (pending), IPR2016-01425
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`(terminated/settled), and IPR2016-01426 (not instituted). See Pet. 1; Paper
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`9, 3.
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`During the Oral Hearing, Patent Owner informed the panel that a
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`reexamination examiner finally rejected claims in the ’012 patent. See Paper
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`67, Ex. 2058 (Examiner’s Answer).4 Patent Owner also informed the panel
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`during the Oral Hearing that another reexamination examiner considered
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`claims of U.S. Patent No. 8,902,760, which are at issue in Case IPR2016-
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`01399. See IPR2016-01399, Paper 69 (ordering briefing to address the
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`claims amended during the reexamination proceeding).
`
`
`3 Patent Owner also cites a number of district court cases involving related
`claim construction issues. See Prelim. Resp. 16–18 & nn.19–22.
`4 The reexamination Examiner sustained a final rejection for obviousness of
`claims 1–3, 5, 6, 10, 11, 13, 16, 18, 19, 22, 24–33, 35, 36, 40–41, 43, 46, 48,
`49, 52, 54–73, 76, 80–88, 91, 93–96, 98–104, and 106 over prior art not
`involved in the instant case. See Ex. 2058, 3.
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`3
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`IPR2016-01389
`Patent 8,155,012 B2
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` B. The ’012 Patent (Ex. 1001)
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`The ’012 patent describes systems for monitoring assets connected to
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`a communication system. Ex. 1001, Abstract. One aspect of the system
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`“generat[es] and monitor[s] data over a pre-existing wiring or cables that
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`connect pieces of networked computer equipment [assets] to a network.”
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`Ex. 1001, 3:19–22. To monitor the assets, central module 15 and remote
`
`module 16 identify electronic computer equipment attached to computer
`
`network 17. Id. at 4:44–47. For example, “central module 15 monitors
`
`remote module circuitry 16 that may be permanently attached to remotely
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`located electronic workstations such as personal computers 3A through 3D.”
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`Id. at 4:53–56.
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`Figure 3 of the ’012 patent follows:
`
`Ex. 1001, Fig. 3. Figure 3 portrays isolation power supply 8 in central
`
`module 15, which supplies direct current (DC) to current loops 2a–2d,
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`personal computers (PCs) 3a–3d, and remote module 16a. See id. at
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`5:33–35, Figs. 3, 4.
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`4
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`IPR2016-01389
`Patent 8,155,012 B2
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`Patent Owner argued during the Oral Hearing that the ’012 patent
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`supports the last clause of challenged claim 31 (“wherein distinguishing
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`information about the piece of Ethernet data terminal equipment is
`
`associated to impedance within the at least one path”), because it supports
`
`monitoring assets simply by monitoring a resistor attached to the asset. See
`
`Ex. 1001, Fig. 8, 8:22–31; Tr. 98:6–103:22.
`
`
`
`Figure 8 of the ’012 patent follows:
`
`
`
`
`
`Figure 8 shows resistor 112 connected on a bus between the central
`
`module (not depicted) at connector 101 and a PC (not depicted) connected at
`
`connector 116. See Ex. 1001, 8:22–31, Fig. 4 (showing remote module 16a
`
`connected to PC 3a on one side and connected to central module 15a on
`
`another side via connectors and a bus). Although the Specification describes
`
`resistor circuitry 112 as part of a central module (Ex. 1001, 3:65–67), clearly
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`5
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`IPR2016-01389
`Patent 8,155,012 B2
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`that cannot be correct because Figure 8 describes “16a” (at top), shows
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`“RECEIVE (FROM CENTRAL MODULE) (at left),” and the location of
`
`the circuitry that includes resistor 112 hangs off a bus between connectors
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`101 and 116, similar to the configuration of Figure 4, showing “REMOTE
`
`MODULE” 16a on a bus between connectors 101 and 116. See infra
`
`Section II.A.1 (reproducing Figure 4 of the ’102 patent); Ex. 1001, 8:22–25
`
`(describing “sourced power from central module 15a” through resistor 112
`
`in reference to Figure 8 (emphasis added)). Therefore, central module 15
`
`(Ex. 1001, Fig. 3) or 15a (id. at Fig. 4) monitors a personal computer (PC)
`
`asset connected to remote module 16a having resistor 112 attached to a bus
`
`connecting the PC and the central module. See Ex. 1001, Fig. 3, Fig. 4, Fig.
`
`8, 8:22–31 (describing “sourced power from central module 15a” in
`
`reference to Figure 8). Even if resistor 112 does not constitute part of a
`
`remote module, Figure 8 shows it external to a PC, external to a central
`
`module, and attached on a bus (just like remote module 16a of Figure 4).
`
`During the Oral Hearing, Patent Owner pointed to language in the
`
`’012 patent Specification at column 8, lines 27–31 (Tr. 99:18–22) as
`
`supporting the “wherein distinguishing” phrase in claim 31. See claim 31
`
`below (reciting “wherein distinguishing information about the piece of
`
`Ethernet data terminal equipment is associated to impedance within the at
`
`least one path”). See Tr. 98:6–103:22 (citing Ex. 1008, Fig. 8, 8:27–31).
`
`Patent Owner generally explained that a central module determines the value
`
`of resistor 112 (see Figure 8) to determine information about terminal
`
`equipment. See id. at 99:12–13 (“[I]t has to be able to work with a . . .
`
`central module.”); see also Ex. 1001, 8:5–23 (central module 15a monitors
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`current through both PC 3a and remote module 16a) (discussed further
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`6
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`Patent 8,155,012 B2
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`below, Section II.A.2).
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`The ’102 patent states the “remote module circuitry 16 [e.g., including
`
`an impedance or a resistor] . . . may be permanently attached” (Ex. 1001,
`
`4:54 (emphasis added)) or generally “attached” (id. at 3:22–24) to a
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`monitored PC. See Tr. 98:6–100:2; Fig. 4 (showing mere electrical
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`connections between module 16a and PC 3a). In other words, remote
`
`module 16a (as a simple resistor or with more circuitry) may or may not be
`
`permanently attached to a PC or other asset (terminal equipment) to be
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`monitored. See Ex. 1001, 3:22–24, 4:54; see also Tr. 101:19–20 (Patent
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`Owner arguing “I didn’t intend to say that you have to have one piece” for
`
`the asset or terminal equipment); Tr. 103:10–22 (contending an adapted
`
`piece of terminal equipment includes an asset such as a PC with an attached
`
`module (resistor)).5
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`In operation, the resistance or impedance (or change thereof) of
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`resistor, such as resistor 112, associated with an asset, such as a PC, may be
`
`determined by a DC voltage and current impressed on Ethernet bus lines, in
`
`order to identify whether or not the PC is still connected to the bus, or to
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`identify other information about the asset, including specific circuitry of the
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`PC asset. See Ex. 1001, 3:25–37, 4:48–67, 6:33–41, 8:27–31.
`
`
`5 Patent Owner initially argued during the Oral Hearing that the claimed
`invention does not require a remote module (Tr. 99:6–10), but then
`explained its invention in terms of resistor 112 (which can be part of remote
`module at least with respect to Figures 4 and 8). See Ex. 1001, 8:27–31,
`Figs. 4, 8. Patent Owner argued the resistor must be “a bolt-on” or
`“permanently fixed to the equipment”––i.e., “the piece of terminal
`equipment.” See id. at 100:10–101:9. Later, Patent Owner stated “I didn’t
`intend to say that you have one piece” for the terminal equipment. See Tr.
`101:19–20.
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`7
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`In addition to describing the return path from resistor 112 as being
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`associated with remote module and/or PC as described above, the ’012
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`patent refers to “a current loop through one of the personal computers 3A
`
`through 3D which is advantageously employed in accordance with the
`
`approach described herein” (id. at 5:29–32), and also states “[t]he return path
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`for current from PC 3A is the pair of receive data lines” (id. at 7:34–35).
`
`These generic descriptions imply an identifying resistor or impedance
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`alternatively may be located inside one of the PCs (because the current loop
`
`includes that impedance/resistance).
`
`The column 8 passage cited by Patent Owner during the Oral Hearing
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`states “it is within the scope of the invention to receive the encoded data by
`
`monitoring various signals, such as the voltage amplitude of the data line
`
`relative to ground, the voltage across resistor 112, and the current through
`
`resistor 112.” Ex. 1001, 8:27–31 (emphasis added); Tr. 99:18–22 (citing Ex.
`
`1008, Fig. 8, 8:27–31). Other than resistor 112, this passage does not
`
`necessarily require any of the other circuitry of Figure 8. See id.; see also
`
`Tr. 103:19–22 (describing the resistor as “a key part of this”). Such a
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`resistor may constitute part of the recited “terminal equipment” of claim 31.
`
`See Tr. 100:4–9 (Patent Owner arguing as follows: “[T]here’s a resistance .
`
`. . within the scope of the invention . . . monitoring various signals such as
`
`the voltage amplitude and data line relative to the ground voltage across
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`[the] resistor and current through the resistor. Those are all pieces in the
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`terminal equipment.” (emphasis added)).
`
`The column 8 passage also does not necessarily describe the current
`
`providing operating power to the PC (or other terminal equipment), nor does
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`it specify the location, relative to any of the disclosed modules (e.g., 15a,
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`8
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`IPR2016-01389
`Patent 8,155,012 B2
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`16a) or PCs 3a–3d, of the monitored impedance/resistor that may be used for
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`“monitoring various signals.” See Ex. 1001, 8:27–31. In other words, the
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`passage also refers to “the invention” without limiting the passage to a single
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`embodiment (such as Figures 7 and 8). See id.
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`The disclosed invention may involve using DC voltage and current on
`
`the same data lines that include Ethernet signals. See Ex. 1001, 3:25–37
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`(power may be supplied via the central module); PO Resp. 9. The parties
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`refer to a dual use of Ethernet lines that carry both data and sufficient DC
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`operating power as power over Ethernet (“PoE”) or “Ethernet phantom
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`power.” See PO Resp. 8 (asserting “Power over Ethernet (‘PoE’) did not
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`exist in 1997. Rather, Ethernet terminal devices needed their own power
`
`supplies.”); Pet. Reply 7 (asserting Patent Owner “did not enable Ethernet
`
`phantom power to function with [known Ethernet circuitry such as] BSTs
`
`[(Bob Smith Terminations)] and CMCs [(Common Mode Chokes)]”).
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`With further respect to supplied power (i.e., voltage and current), the
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`Specification describes “isolation power supply 8 (see FIG. 3)” which
`
`provides “direct current . . . to each of current loops 2A through 2D.” Ex.
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`1001, 5:33–35. This DC power from the central module provides “a low
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`current preferably on the order of magnitude of about 1 mA.” Id. at 5:36–
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`37. Regarding voltage, the Specification generally describes “providing
`
`other voltage levels such as 3V dc and 20 V dc.” Id. 5:42–43. These
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`disclosures relate generally to the “present embodiment” of providing
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`“current for the immediate power needs of the remote module,” but “it is
`
`also within the scope of the invention to supply current to charge a battery,
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`capacitor bank, or other energy storage device that powers the remote
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`module.” Id. at 5:42–48. In addition, “powering the remote module from
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`9
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`IPR2016-01389
`Patent 8,155,012 B2
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`some other source such as a primary battery, rechargeable battery or
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`capacitor bank that receives energy from a source other than the central
`
`module is within the scope of the invention.” Id. at 5:48–52. Each remote
`
`module may associate with multiple external devices, including PCs. See id.
`
`at 5:33–52, 6:62–66 (describing “connect[ing] multiple external devices” or
`
`a “single [PC] device” to each module 15a).
`
`Patent Owner initially asserted during the Oral Hearing that the
`
`challenged claims “absolutely do not” require PoE. See Tr. 86:10–12 (Q.
`
`“So your claims do not require power over Ethernet?” A. “They absolutely
`
`do not.”). Patent Owner explained that the claims “do require some level of
`
`DC power.” Tr. 91:15–15, 93:12–94:16 (Patent Owner confirming its
`
`claims require sending some amount of DC power to an impedance (e.g., a
`
`resistor) to determine its impedance (resistance)). Patent Owner clarified
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`“[i]t’s the difference between power sufficient to power the actual device
`
`[PoE] versus power sufficient to inquire whether or not this particular piece
`
`of equipment can---is a piece of equipment that is part of our claims.” Id. at
`
`91:20–92:2. On the other hand, Patent Owner also argues its invention
`
`enables PoE––i.e., it enables the network to provide “operating power”––
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`after the Ethernet terminal device conveys distinguishing information
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`(obtained by providing low DC power) about “how much [operating] power
`
`it can accept.” See PO Resp. 9. Patent Owner, however, does not identify
`
`any specific portions of the ’012 patent indicating that its invention enables
`
`PoE.
`
`In summary, according to Patent Owner, its disclosed system initially
`
`provides some (low) DC power to identify terminal equipment (via an
`
`impedance/resistance), but not necessarily sufficient power to provide
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`10
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`IPR2016-01389
`Patent 8,155,012 B2
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`operating power to the terminal equipment. See Tr. 92:4–93:6 (Patent
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`Owner explaining their patents disclose “a very, very low DC current and
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`voltage applied . . . . so low that there’s no possibility that the terminal
`
`equipment could actually run off that voltage, or in that - - at that power”);
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`PO Resp. 9 (initially providing low power). Nevertheless, after providing
`
`low power for identification purposes, as noted above, Patent Owner argues
`
`its disclosed invention can deliver PoE (i.e., it enables “operating power” for
`
`terminal devices). See PO Resp. 9. As also noted above, Patent Owner does
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`not provide a citation to the ’012 patent showing it enables PoE.
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`C. Illustrative Challenged Claims
`
`Of the challenged claims, claim 31 is the only independent claim.
`
`Claims 35, 36, 40, 43, 52, 55, 56, 59, 60 and 65 depend directly or indirectly
`
`from claim 31. Claims 31 and 36 follow:
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`31. An adapted piece of Ethernet data terminal equipment
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`comprising:
`an Ethernet connector comprising a plurality of contacts;
`
`and
`
`at least one path coupled across selected contacts, the
`selected contacts comprising at least one of the plurality of
`contacts of the Ethernet connector and at least another one of the
`plurality of contacts of the Ethernet connector,
`wherein distinguishing information about the piece of
`Ethernet data terminal equipment is associated to impedance
`within the at least one path.
`
`Ex. 1001, 18:62–19:5.
`
`36. The piece of Ethernet data terminal equipment
`according to claim 31 wherein the piece of Ethernet data terminal
`equipment is a piece of BaseT Ethernet data terminal equipment.
`
`Id. at 19:23–26.
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`11
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`D. Trial Grounds of Unpatentability
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`We instituted trial for obviousness under 35 U.S.C. § 103(a) as
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`follows:
`
`References
`Hunter (Ex. 1003)6 and
`Bulan (Ex. 1004)7
`Bloch (Ex. 1005)8, Huizinga
`(Ex. 1009)9, and IEEE
`802.3 (Exs. 1006–08)10
`
`Claims Challenged
`31, 35, 36, 40, 43, 52, 55, 56, 59,
`60 and 65
`31, 35, 36, 40, 43, 52, 55, 56, 59,
`60 and 65
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`Inst. Dec. 35; Pet. 6–59.
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, the Board construes claims by applying the
`
`broadest reasonable interpretation in light of the specification. 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016)
`
`(affirming the Patent Office’s authority to issue regulations governing inter
`
`partes review under 35 U.S.C. § 316(a)(4)). Under this standard, absent any
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`special definitions, claim terms or phrases carry their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`6 WO 96/23377, Richard K. Hunter et al., published August 1, 1996.
`7 US 5,089,927, Sergiu Bulan et al., issued February 18, 1992.
`8 US 4,173,714, Alan Bloch et al., issued November 6, 1979.
`9 US 4,046,972, Donald D. Huizinga et al., issued September 6, 1977.
`10 IEEE Standard 802.3-1993 (“IEEE-93,” Ex. 1006) and IEEE Standard
`802.3-1995, Parts 1 and 2 (“IEEE-95,” Ex. 1007 (Part 1) and Ex. 1008 (Part
`2)), collectively “IEEE 802.3.”
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`12
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`Patent 8,155,012 B2
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`1. “distinguishing information about the piece of Ethernet data terminal
`equipment is associated to impedance within the at least one path”
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`The parties do not dispute the preliminary claim construction as set
`
`forth in the Institution Decision, wherein we determined the claim 31 phrase
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`“distinguishing information about the piece of Ethernet data terminal
`
`equipment is associated to impedance within the at least one path” means
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`“distinguishing information about the piece of Ethernet data terminal
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`equipment, including information that differentiates it from another device,
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`wherein the information is capable of being associated to impedance within
`
`the at least one path.” See Inst. Dec. 10; PO Resp. 14.11
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`In interpreting the construction, during the Oral Hearing, Patent
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`Owner agreed that distinguishing information includes information showing
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`the resistance of a resistor (or impedance), as discussed above. See Tr.
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`94:1–96:10; Section I.B; Ex. 1001, 8:27–31 (“monitoring various signals,
`
`such as . . . the voltage across resistor 112, and the current through resistor
`
`112”). In addition, the ’012 patent shows that monitoring current includes
`
`monitoring whether a device becomes unattached (i.e., removed) from the
`
`network. See Ex. 1001, 6:39–40 (“[I]f the potential thief later disconnects
`
`protected equipment from the network, this action is also detected and an
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`alarm can be generated.”); PO Resp. 8 (arguing the claimed device
`
`“enhances network security because the device can convey information
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`about itself to a network” (emphasis added)). In other words, in claim 31,
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`“distinguishing information about the piece of Ethernet data terminal
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`equipment is associated to impedance within the at least one path” includes
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`the capability to convey a change in impedance as “distinguishing
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`11 Petitioner does not address the construction in its Reply.
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`13
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`[impedance] information about” the device––i.e., conveying that the device
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`(and/or its attached module) has been disconnected from the bus or network.
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`Given that claim 31 recites a wherein clause and recites a device (not
`
`a method), any resistor (or other impedance) connected to, or within, an
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`Ethernet device has the capability of distinguishing that device from another
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`device, because neither party contends all Ethernet devices have the same
`
`input resistance. An artisan of ordinary skill would expect different devices,
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`which draw different amounts of current and/or voltage, to have different
`
`input impedances. See, e.g., Ex. 1004, 1:53–55 (noting even a “typical TE”
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`(terminal equipment) draws “between about 40 to 60 milliamperes of
`
`current” at “the required voltage or voltages”—i.e., even like TE devices
`
`have varying input impedances of V/I); Ex. 1003, 50:1–5 (providing varying
`
`power depending on equipment; PO Resp. 9 (arguing the disclosed invention
`
`can determine “how much power to accept” for a given “Ethernet terminal
`
`device,” thereby implying different devices necessarily draw different power
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`levels with different input impedances).
`
`The analogous case of In re Schreiber, 128 F.3d 1473, 1475–77 (Fed.
`
`Cir. 1997) sheds light on the claim construction at issue here. As
`
`background, in Schreiber, the court determined that the prior art Harz
`
`reference’s funnel for “dispensing oil from an oil can,” id. at 1475,
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`anticipated a claim to a funnel for dispensing popcorn, even though Harz
`
`failed to disclose its funnel could dispense popcorn:
`
`Schreiber argues . . . that Harz does not disclose that such a[n oil
`funnel] structure can be used to dispense popcorn from an open-
`ended popcorn container.
`Although Schreiber is correct that Harz does not address
`the use of the disclosed structure to dispense popcorn, the
`absence of a disclosure relating to function does not defeat the
`
`14
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`IPR2016-01389
`Patent 8,155,012 B2
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`Board’s finding of anticipation. It is well settled that the
`recitation of a new intended use for an old product does not make
`a claim to that old product patentable. . . . Accordingly,
`Schreiber's contention that his structure will be used to dispense
`popcorn does not have patentable weight if the structure is
`already known, regardless of whether it has ever been used in
`any way in connection with popcorn.
`
`Id. at 1477 (citations omitted) (emphasis added); see also Tr. 93:12–94:10
`
`(Patent Owner agreeing that a resistor connected across Ethernet contacts
`
`satisfies the “wherein” clause; i.e., agreeing the Ethernet device “has the
`
`ability to receive voltage and return current, and that information that’s
`
`coming back is the resistance in the Ethernet device”).
`
`Under the logic and holding of Schreiber, the “wherein” clause of
`
`claim 31 specifies an intended use of an existing product––an intent to use
`
`the value of a resistor or other impedance as Ethernet device associating
`
`information. The ’012 patent makes this clear, because, as discussed above,
`
`central module 15 (Fig. 3) or 15a (Fig. 4) associates device information by
`
`using voltage and current (to determine impedance), and claim 31 does not
`
`include a central module. See supra Section I.B. In other words, the
`
`disclosed invention, as a system, indicates an intended use of terminal
`
`equipment with a module or other circuitry, such as central module 15, but
`
`claim 31, drawn to Ethernet terminal equipment, does not claim such a
`
`system and corresponds to a disclosed PC and/or remote module 16 or 16a
`
`for support. See id.; Ex. 1001, Figs. 3, 7, 8.
`
`Patent Owner’s argument that “the improved Ethernet terminal device
`
`. . . can use its impedance to convey information” (PO Resp. 8 (emphasis
`
`added)) agrees with the logic and holding of Schreiber, because disclosed
`
`(but unclaimed) system components, including central module 15a, can use
`
`15
`
`
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`IPR2016-01389
`Patent 8,155,012 B2
`
`impedance or resistance information coupled across the path to convey
`
`information about remote module 16a and PC 3a. See Ex. 1001, Fig. 4;
`
`supra Section I.B.
`
`Figure 4 of the ’012 patent showing an embodiment of the disclosed
`
`system follows:
`
`
`
`Figure 4 discloses remote module 16a and PC 3a electrically
`
`connected together. As noted above, Patent Owner argued during the Oral
`
`Hearing that the remote module may me be “a bolt-on” module or one
`
`“permanently fixed to the equipment”––the “piece of terminal equipment.”
`
`See supra note 5; Tr. 100:10–101:22, 103:10–22 (arguing an adapted piece
`
`of terminal equipment includes a module (resistor)). But as discussed above,
`
`the Specification and challenged claims neither require nor preclude
`
`permanent attachment and do not specify the location of “impedance within
`
`the at least one path.” See Tr. 101:19–20 (Patent Owner partially clarifying
`
`as follows: “I didn’t intend to say that you have to have one piece” for the
`
`claimed terminal equipment). As also discussed above in connection with
`
`Figure 8, an impedance inside or outside remote module 16a on the bus (i.e.,
`
`path) may include circuitry or a single circuit device, including a single
`
`resistor, such as resistor 112. Supra Section I.B; Ex. 1001, 8:27–31
`
`16
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`IPR2016-01389
`Patent 8,155,012 B2
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`(generally describing, without specifying a location for the impedance or
`
`contacts, monitoring “various signals, such as the voltage amplitude of the
`
`data line relative to ground, the voltage across resistor 112, and the current
`
`through resistor 112” (emphasis added)).
`
`Accordingly, based on the current record and the foregoing
`
`discussion, we maintain the construction set forth in the Institution Decision
`
`as quoted above. See Inst. Dec. 10.
`
`2. “detection protocol”
`
`Claim 35 depends from claim 31 and recites “wherein the impedance
`
`within the at least one path is part of a detection protocol.” Patent Owner
`
`contends “[a] protocol, as defined in the computer networking field, is ‘a
`
`mutually agreed upon method of communication.’” PO Resp. 13 (citing Ex.
`
`2038 ¶ 104; Ex. 2047, 1). Patent Owner does not cite to intrinsic evidence in
`
`the ’012 patent Specification to support its construction, and its cited
`
`extrinsic evidence relates to a communication protocol, not a detection
`
`protocol. See Ex. 2047, 1.
`
`As Petitioner contends, neither claim 35 nor the Specification requires
`
`“a mutually agreed upon method of communication.” Pet. Reply 25.
`
`Petitioner argues as follows:
`
`Under BRI, neither “detect” nor “protocol” requires the concept
`that two devices agree to a method of communication. Crayford-
`2, ¶90. Instead, a POSITA understood that “detection” simply
`requires a discovery of something, and a “protocol” as rules. Id.
`In other words, a detection protocol is merely rules for making a
`discovery. Id.; Ex. 2039, 27:9–34:2.
`
`Pet. Reply 25 (citing Ex. 1046 (Crayford-2)).
`
`Claim 35 and the Specification support Petitioner’s contentions.
`
`Claim 35, an apparatus claim, does not recite any other component that
`
`17
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`IPR2016-01389
`Patent 8,155,012 B2
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`could provide the necessary mechanism for an agreed upon communication.
`
`As discussed above, the disclosed detection involves central module 15 or
`
`15a. Supra Sections I.B, II.A.1; Ex. 1001, 6:33–37 (“central module 15
`
`detects the absence of the proper identification code from the laptop”).
`
`Further regarding detection with a central module (which the challenged
`
`claims do not require), the Specification describes one embodiment that
`
`includes monitoring by the central module, but no actual two-way
`
`communication between two modules:
`
`[C]urrent sourced onto a transmit line from signal modulator 7
`and isolation power supply 8 [in central module 15a of Figures 4
`and 5] through remote module 16a to the isolation transformer of
`PC 3A which returns on the other transmit line is monitored by
`test voltage monitor 84 to verify that both remote module 16a
`and PC 3A are connected to central module 15a.
`
`Ex. 1001, 8:5–23 (emphasis added). In other words, central module 15a
`
`monitors the existence of connections with the claimed terminal equipment
`
`(both remote module 16a and PC 3A in this embodiment) simply by
`
`detecting interruptions in the DC current flow between central module 15a
`
`and that network equipment. Id. Thus, even with a central module (which
`
`claim 35 does not include), the detection protocol described in at least this
`
`embodiment of the ’012 patent does not require a mutually agreed upon
`
`method of communication.
`
`In any event, even if the central module includes an agreed upon
`
`detection protocol, dependent claim 35 and independent claim 31, each
`
`drawn to “Ethernet data terminal equipment,” do not require a central
`
`module (such as disclosed central module 15 or 15a). See supra Sections
`
`I.B., II.A.1; Ex. 1001, 8:5–56, Fig. 4. Therefore, the limitation recited in
`
`apparatus claim 35 constitutes an intended use of the recited impedance as
`
`18
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`IPR2016-01389
`Patent 8,155,012 B2
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`being part of a detection protocol, because apparatus claim 35 does not
`
`require another component, such as remote central module 15 or 15a, which
`
`the ’012 patent discloses as part of any detection scheme.
`
`Patent Owner does not argue that “Ethernet data terminal equipment”
`
`encompasses central module such as central module 15a (or even a remote
`
`module such as remote module 16a), and appears to argue to the opposite.
`
`See PO Resp. 40 (“such a device is at the end of an Ethernet network” and
`
`does not include an “intermediate device”). Under Schreiber, and in line
`
`with the discussion in the preceding section, the claimed device at most only
`
`needs to be capable of being part of a detection protocol. See Schreiber, 128
`
`F.3d at 1477.
`
`During the Oral Hearing, after the panel noted claim 35 recites “the
`
`piece of Ethernet data terminal equipment,” i.e., “just a device” (Tr. 95:14,
`
`20), Patent Owner succinctly agreed with the Schreiber principles outlined
`
`above:
`
`Well, if you just had the device and it wasn’t connected to the
`rest of the world, okay, and you read our claims on it, if the
`device, standing by itself, has the ability to respond to a detection
`request -- if it were connected – that’s what our claims are
`covering.
`
`Tr. 95:21–96:3 (emphasis added).12
`
`Accordingly, based on the respective positions of the parties and the
`
`foregoing discussion, “wherein the impedance within the at least one path
`
`
`12 In similar fashion, Patent Owner’s expert in a related district court case
`also agreed with these underlying principles, stating “[i]n the context of
`these claims, ‘detection protocol’ means that the e
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