Trials@uspto.gov
`571-272-7822
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`Paper 11
`Date: August 19, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLTSERVER INC.,
`Petitioner,
`v.
`CISCO TECHNOLOGY, INC.,
`Patent Owner.
`
`PGR2021-00055
`Patent 10,735,105 B2
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`

`

`PGR2021-00055
`Patent 10,735,105 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Petitioner VoltServer Inc. filed a Petition (Paper 1 (confidential
`redacted), Paper 2 (public unredacted), “Pet.”)1 requesting post-grant review
`of claims 1–5 and 7–35 of U.S. Patent No. 10,735,105 B2 (Ex. 1001, “the
`’105 patent”). Patent Owner Cisco Technology, Inc. filed a Preliminary
`Response (Paper 9, “Prelim. Resp.”). We may not institute a post-grant
`review unless “the information presented in the petition . . . , if such
`information is not rebutted, would demonstrate that it is more likely than not
`that at least 1 of the claims challenged in the petition is unpatentable.”
`35 U.S.C. § 324(a). For the reasons that follow, we do not institute a post-
`grant review in this proceeding.
`B. Related Matter
`Petitioner filed another petition challenging claims 1, 2, and 4–25 of
`the ’105 patent in PGR2021-00056. See Pet. 4. Petitioner filed a Notice
`Regarding Multiple Petitions (Paper 4) and Patent Owner filed an
`Opposition to Filing Multiple Petitions (Paper 10).
`C. The ’105 Patent
`The ’105 patent relates to safety and fault protection in a
`communications network that transmits power and data from a central
`network device to powered network devices over a cable as shown in Figure
`1 below. Ex. 1001, 1:8–10, 4:8–22, 4:31–44.
`
`
`1 Petitioner filed a motion to seal Exhibits 1035 and 1036 and portions of
`pages 2–3 of the Petition. Paper 5. We do not refer to any of the sealed
`material herein.
`
`2
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`PGR2021-00055
`Patent 10,735,105 B2
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`
`
`Figure 1 above shows central network device 10, which includes
`power supply unit 11 to transmit power to powered devices such as switches
`14 and access points 15 over cable 18. Ex. 1001, 4:8–22, 4:31–44, 4:66–5:2.
`Each network device 10, 14, 15 includes interface module 16 (connected to
`line card 13 at central network device 10) operable to deliver the combined
`power and data from central network device 10 or receive the combined
`power and data at powered devices 14, 15. Id. at 6:29–33.
`The system tests the network devices and cables to identify faults and
`safety issues. Ex. 1001, 8:16–18. In one embodiment, central network
`device 10 delivers high voltage power pulses, and testing is performed
`between the high voltage pulses. Id. at 8:21–24. The testing to identify
`faults is performed using control circuits at remote network device 14,
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`3
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`PGR2021-00055
`Patent 10,735,105 B2
`central network device 10, or both network devices. Id. at 12:30–33. The
`testing is performed in a low voltage mode. Ex. 1001, 12:22–30, 12:58–
`13:8, 13:24–30.
`
`D. Illustrative Claim
`Challenged claim 1 of the ’105 patent recites:
`1. A method comprising:
`receiving electrical power at an optical transceiver module
`at a remote network device on a cable delivering power on an
`electrical wire and data on an optical fiber from a central network
`device;
`operating the remote network device in a low voltage
`mode during fault sensing at the remote network device;
`transmitting on the cable, a data signal to the central
`network device, said data signal indicating an operating status
`based on said fault sensing; and
`receiving high voltage power from the central network
`device on the cable at the remote network device upon
`transmitting an indication of a safe operating status, wherein the
`remote network device is powered by the high voltage power;
`wherein the high voltage power comprises high voltage
`pulse power and wherein said fault sensing is performed between
`pulses.
`
`E. Evidence
`Petitioner relies on the following prior art:
`U.S. Patent No. 10,541,543 B2, filed Oct. 27, 2017, issued
`Jan. 21, 2020 (Ex. 1006, “Eaves ’543”);
`U.S. Patent App. Publ. No. 2016/0294568 A1, published
`Oct. 6, 2016 (Ex. 1009, “Chawgo”);
`U.S. Patent No. 8,638,008 B2, issued Jan. 28, 2014
`(Ex. 1011, “Baldwin”);
`U.S. Patent App. Publ. No. 2018/0313886 A1, filed
`Apr. 26, 2018, published Nov. 1, 2018 (Ex. 1013, “Mlyniec”);
`and
`
`4
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`PGR2021-00055
`Patent 10,735,105 B2
`U.S. Patent App. Publ. No. 2019/0280895 A1, filed July
`18, 2017, published Sept. 12, 2019 (Ex. 1015, “Mather”).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–5 and 7–35 of the ’105 patent are
`unpatentable on the following grounds:
`Claim(s)
`Challenged
`1–5, 7–31, 33–35 112(b)
`26, 28, 29, 34, 35 103
`30
`103
`33
`103
`32, 35
`103
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`Indefiniteness
`Eaves ’543, Chawgo
`Eaves ’543, Chawgo, Baldwin
`Eaves ’543, Chawgo, Mlyniec
`Eaves ’543, Chawgo, Mlyniec, Mather
`
`
`
`II. ANALYSIS
`A. Legal Standards
`1. Eligibility for Post-Grant Review
`The America Invents Act’s post-grant review provisions apply to
`patents that “contain[ ] or contained at any time . . . a claim to a claimed
`invention that has an effective filing date . . . that is on or after [March 16,
`2013].” Leahy-Smith America Invents Act (“AIA”) §§ 3(n)(1), 6(f)(2)(A)
`(2011). In addition, a “petition for a post-grant review may only be filed not
`later than the date that is 9 months after the date of the grant of the patent or
`of the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`see 37 C.F.R. § 42.202(a) (2020). Here, the ’105 patent issued on August 4,
`2020, from an application filed on May 4, 2018, and does not claim the
`benefit of any earlier filing date. Ex. 1001, codes (22), (45). Therefore, the
`’105 patent is eligible for post-grant review. Also, the Petition was filed
`within nine months of the ’105 patent’s August 4, 2020 issue date. Ex.
`
`5
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`PGR2021-00055
`Patent 10,735,105 B2
`1001, code (45). Patent Owner does not dispute that the ’105 patent is
`eligible for post-grant review.
`2. Indefiniteness
`“The specification [of a patent] shall conclude with one or more
`claims particularly pointing out and distinctly claiming the subject matter
`which the inventor or a joint inventor regards as the invention.” 35 U.S.C.
`§ 112(b). A patent “is invalid for indefiniteness if its claims, read in light of
`the specification delineating the patent, and the prosecution history, fail to
`inform, with reasonable certainty, those skilled in the art about the scope of
`the invention.” Nautilus, Inc. v. Biosig Insts., Inc., 572 U.S. 898, 901
`(2014); see USPTO Memorandum on the Approach to Indefiniteness Under
`35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021).
`3. Obviousness
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007) (quoting the similar previous language of 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) when in evidence, objective evidence of
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`PGR2021-00055
`Patent 10,735,105 B2
`obviousness or nonobviousness, i.e., secondary considerations.2 See
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. Petitioner asserts that
`a person of ordinary skill in the art at the time of invention “would have had
`a bachelor’s degree in electrical engineering or a similar field, and at least
`three years of experience in electronics and electrical design, including in
`the context of power and data delivery.” Pet. 7 (citing Ex. 1002 ¶¶ 12, 13).
`Patent Owner does not dispute Petitioner’s assertion. See generally Prelim.
`Resp.
`For purposes of this decision, we adopt Petitioner’s formulation
`because it is consistent with the ’105 patent and the asserted prior art.
`C. Claim Construction
`We apply the claim construction standard articulated in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), and its progeny. 37 C.F.R.
`§ 42.200(b) (2020). Under Phillips, claim terms are afforded “their ordinary
`and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and
`customary meaning of a claim term is the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
`invention.” Id. at 1313. “In determining the meaning of [a] disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`
`
`2 Patent Owner did not introduce evidence regarding objective evidence of
`nonobviousness.
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`PGR2021-00055
`Patent 10,735,105 B2
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006). “There are only two exceptions
`to this general rule: 1) when a patentee sets out a definition and acts as his
`own lexicographer, or 2) when the patentee disavows the full scope of a
`claim term either in the specification or during prosecution.” Thorner v.
`Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`Petitioner contends that the claim terms “high voltage” and “low
`voltage” should be construed as relative terms, where “low voltage” means a
`voltage that is lower than “high voltage.” Pet. 18, 21. Patent Owner does
`not dispute Petitioner’s proposed construction. Prelim. Resp. 18–19. Patent
`Owner further contends that “low voltage” and “high voltage” as claimed are
`not limited to any specific value or range. Id. The parties present additional
`arguments regarding the meaning of “low voltage” and “high voltage” in
`their analyses of the asserted indefiniteness ground. Pet. 21–28; Prelim.
`Resp. 19–24. We address these additional arguments below in our analysis
`of the asserted indefiniteness ground.
`We agree that “low voltage” and “high voltage” are relative terms,
`where “low voltage” is a voltage that is lower than the recited “high
`voltage.” For the reasons given in our analysis of the asserted indefiniteness
`ground below, we determine that the scope of “high voltage” as claimed is a
`relative term that encompasses a voltage greater than or equal to 250 volts,
`and that the scope of “low voltage” as claimed is a relative term that
`encompasses a voltage less than or equal to 60 volts.
`We conclude that no other claim terms require express construction.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are
`in controversy, and only to the extent necessary to resolve the controversy,’
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`PGR2021-00055
`Patent 10,735,105 B2
`. . . we need not construe [a particular claim limitation] where the
`construction is not ‘material to the . . . dispute.’”).
`D. Asserted Indefiniteness
`1. Claims 1–5, 7–31, and 33–35
`Petitioner contends that claims 1–5, 7–31, and 33–35 are indefinite
`because “low voltage” recited in independent claims 1 and 35, and several
`dependent claims, and “high voltage” recited in independent claims 1, 15,
`26, and 35, and several dependent claims, are words of degree, and that there
`is no objective boundary regarding how low or how high a voltage must be
`to qualify as “low voltage” or “high voltage.” Pet. 22 (citing Seattle Box
`Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
`1984)). Petitioner, relying on the doctrine of claim differentiation, contends
`that, because claim 6 recites “the low voltage mode operates at less than 60
`volts,” the claimed “low voltage” recited in claim 1 can be any voltage less
`than 60 volts or greater than or equal to 60 volts. Pet. 23–24; see also id. at
`18–19 (arguing that “low voltage” and “high voltage” “are not limited to any
`specific value or range” based on claim differentiation with respect to
`dependent claims 6, 12, and 32). Petitioner further contends that the
`specification of the ’105 patent discloses that low voltage can be both ≤ 60
`volts and > 60 volts. Id. at 24 (citing Ex. 1001, 8:38–41, 11:64–67, 12:25–
`26, 14:44, 14:51–52). Petitioner further contends that the specification
`describes an example of high voltage as > 60 volts, which overlaps with the
`example of low voltage as > 60 volts. Pet. 27 (citing Ex. 1001, 8:39–40,
`12:1–2). Petitioner further contends that certain standards cited in the
`specification describe low voltages as voltages of 600, 1000, or 1500 volts.
`Pet. 25 (citing Ex. 1001, 9:4–5; Ex. 1024, 2; Ex. 1019, 61, 65).
`
`9
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`PGR2021-00055
`Patent 10,735,105 B2
`Patent Owner contends that a claim is not indefinite if the
`specification provides examples or teachings that can be used to measure a
`degree without a numerical measurement. Prelim. Resp. 20 (citing Interval
`Licens. LLC v. AOL, Inc., 766 F.3d 1364, 1370–72 (Fed. Cir. 2014)). Patent
`Owner relies on the doctrine of claim differentiation in contending that “low
`voltage” and “high voltage” as claimed are not limited to any specific value
`or range. Id. at 21–22 (citing Pet. 18–19). Patent Owner contends that a
`person of ordinary skill in the art would have understood from the examples
`disclosed in the specification that the scope of “low voltage” encompasses a
`voltage that is less than or equal to 60 volts DC. Id. at 20–22 (citing
`Ex. 1001, 8:38–41, 11:64–67, 14:42–46, 14:50–52). Patent Owner further
`contends that the specification consistently gives examples of low voltage as
`less than 60 volts, and that the one example of low voltage as greater than 60
`volts is a minor typographical error that a person of ordinary skill in the art
`would have recognized. Id. at 22–23 n.1. Patent Owner further contends
`that the examples of low voltage as 600, 1000, or 1500 volts from various
`electrical standards mentioned in the specification are not quoted in the
`specification, and that a person of ordinary skill would have understood the
`scope of “low voltage” from the examples explicitly provided in the
`specification, rather than from examples not explicitly provided in the
`specification. Id. at 23 (citing Pet. 25–26). Patent Owner further contends
`that the specification provides examples of high voltage as greater than 60
`volts, greater than 500 volts, and greater than 1000 volts. Id. at 23–24
`(citing Ex. 1001, 14:44–45, 12:1–2).
`Patent Owner’s contention that the claimed “low voltage” is not
`limited to any specific value or range is inconsistent with Patent Owner’s
`contention that the specification’s disclosure of low voltage as greater than
`
`10
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`PGR2021-00055
`Patent 10,735,105 B2
`60 volts is a minor typographical error that a person of ordinary skill would
`have recognized, and is also inconsistent with Patent Owner’s contention
`that a person of ordinary skill in the art would have understood the scope of
`“low voltage” as claimed from the examples explicitly provided in the
`specification, all of which are less than or equal to 60 volts DC. See Prelim.
`Resp. 20–23. We agree with Patent Owner’s contention that the disclosure
`of low voltage as greater than 60 volts is a minor typographical error
`because reading the specification in that manner is consistent with all other
`examples of low voltage in the specification as less than or equal to 60 volts,
`and it is also consistent with the Examiner’s quote from the specification of
`low voltage as less than or equal to 60 volts.3 Ex. 1001, 8:38–41, 11:64–67,
`14:42–46, 14:50–52; Ex. 1004, 45. Similarly, Patent Owner’s contention
`that a person of ordinary skill would not look to the examples of low
`voltages that are much greater than 60 volts as disclosed in the various
`standards cited in the specification is consistent with Patent Owner’s
`contention that the specification gives explicit examples of low voltage, all
`of which are less than or equal to 60 volts, and with the Examiner’s quote
`from the specification of low voltage as less than or equal to 60 volts. Id.
`On this record, we determine that the specification and prosecution
`history would have informed a skilled artisan, with reasonable certainty, that
`“low voltage” as claimed is a relative term that means a voltage less than or
`equal to 60 volts. See Nautilus, 572 U.S. at 910. Thus, “low voltage” as
`
`
`3 By contrast, Petitioner’s position that a person of ordinary skill in the art
`would read the specification to mean that “low voltage” includes “all
`possible voltages (e.g., from ‘≤60VDC’ to ‘>60 VDC’)”—despite the use of
`another relative term, “high voltage”—is illogical, as Patent Owner points
`out. See Pet. 23–24 (emphasis omitted); Prelim. Resp. 22–23 n.1.
`
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`Patent 10,735,105 B2
`claimed, when read in light of the specification and the prosecution history,
`provides an objective boundary for those skilled in the art as a voltage less
`than or equal to 60 volts. Interval Licens., 766 F.3d at 1371 (“The claims,
`when read in light of the specification and the prosecution history, must
`provide objective boundaries for those of skill in the art.”).
`With respect to “high voltage,” the prosecution history confirms what
`Applicant intended—and what the Examiner understood—to be the recited
`“high voltage.” During prosecution, the Examiner mentioned that the claim
`term “high” is a relative term, and subsequently allowed claims that recite
`this relative term. Ex. 1004, 605 (The “phrase ‘high’ is a relative term.”),
`15–16. The Examiner also rejected claims 6 and 33 under 35 U.S.C.
`§ 112(a) as failing to comply with the written description requirement,
`because
`claim 6 recites the limitation “the high voltage pulse power
`comprises high voltage pulses of greater than 60 volts”, and
`claim 33 recites the limitation “wherein the high voltage power
`comprises the pulses at a voltage greater than 60 volts”.
`However, according to the original disclosure, “The source 80
`operates as both a low voltage source for startup (e.g., 56VDC or
`other low voltage (≤60VDC)) and a high voltage source (e.g.,
`250–550VDC) for pulsing with switch Q1 operating as a
`modulator.” That is, the original disclosure clearly indicates that
`the high voltage is 250 voltage or higher. The original disclosure
`does not clearly and positively disclose that the high voltage
`pulses is at a voltage greater than 60 volts.
`Ex. 1004, 45.4 In order to overcome this rejection, Applicant amended
`claims 6 and 33 to recite that the high voltage comprises at least 250 volts.
`
`
`4 Notably, in the same Office Action, the Examiner rejected other claims as
`indefinite under 35 U.S.C. § 112(b), but raised no issue with respect to the
`use of the terms “low voltage” and “high voltage.” Ex. 1004, 49. To the
`contrary, in the quoted excerpt above, the Examiner specifically referenced
`
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`PGR2021-00055
`Patent 10,735,105 B2
`Ex. 1004, 31, 32, 34, 39. Here, Applicant acquiesced to the Examiner’s
`view that the written description only provides support for a high voltage of
`250 volts or higher. See TorPharm, Inc. v. Ranbaxy Pharms., Inc., 336 F.3d
`1322, 1330 (Fed. Cir. 2006) (“[I]n ascertaining the scope of an issued patent,
`the public is entitled to equate an inventor’s acquiescence to the examiner’s
`narrow view of patentable subject matter with abandonment of the rest.”).
`Neither Petitioner nor Patent Owner provides any basis for ignoring the
`Examiner’s findings and Applicant’s subsequent abandonment of “high
`voltage” greater than 60 and less than 250 volts.
`The Examiner’s finding that “high” is a relative term, and Applicant’s
`acquiescence by amendment to the Examiner’s finding that “high voltage is
`250 voltage or higher,” would have informed a skilled artisan, with
`reasonable certainty, that “high voltage” as claimed is a relative term that
`means a voltage greater than or equal to 250 volts. Thus, “high voltage” as
`claimed, “when read in light of the specification and the prosecution history,
`[provides] objective boundaries for those of skill in the art.” Interval
`Licens., 766 F.3d at 1371; see Seattle Box, 731 F.2d at 826.
`We are not persuaded by the parties’ contentions that “high voltage”
`and “low voltage” as recited in claim 1 are not limited to any specific value
`or range because of claim differentiation with claim 6. See Pet. 23–24;
`Prelim. Resp. 21–22. The doctrine of claim differentiation merely creates “a
`rebuttable presumption that may be overcome by a contrary construction
`dictated by the written description or prosecution history.” Howmedica
`Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1323 (Fed. Cir. 2016).
`
`
`the specification’s disclosure of a “low voltage” of “≤60VDC” and “high
`voltage” of “250 volts or higher.” Ex. 1004, 45.
`
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`Here, the contrary construction dictated by the prosecution history
`overcomes the rebuttable presumption for the reasons discussed above.
`Further, claim 6 recites that “the low voltage mode operates at less than 60
`volts and the high voltage pulse power comprises high voltage pulses of at
`least 250 volts,” which is narrower than our reading, based on the intrinsic
`record, of “low voltage” as a voltage less than or equal to 60 volts and “high
`voltage” as a voltage greater than or equal to 250 volts. Claims 12 and 32
`similarly include other limitations that narrow the claims with respect to
`parent claims 1 and 26.
`On the record before us, we determine the Petition and supporting
`evidence do not demonstrate that it is more likely than not that “low voltage”
`or “high voltage” as claimed renders claims 1–5, 7–31, and 33–35 indefinite.
`2. Claim 15
`Petitioner contends that claim 15 is indefinite because it recites “said
`testing,” but the earlier portion of the claim recites two separate and distinct
`“testing” steps. Pet. 28. According to Petitioner, a person of ordinary skill
`in the art would not have been informed with reasonable certainty about the
`scope of claim 15 due to the lack of clarity as to whether “said testing” refers
`to the first “testing” step, the second “testing” step, or both. Id. at 28–29.
`Patent Owner contends that “said testing” refers to either testing step.
`Prelim. Resp. 24–25. Patent Owner further contends that Petitioner has not
`explained how “said testing” is indefinite if it refers to both testing steps. Id.
`We agree with Patent Owner, that a person of ordinary skill would have
`understood that “said testing” refers to either or both testing steps. Petitioner
`acknowledges that “said testing” can refer to “possibly both” testing steps,
`Pet. 28–29, and we see no reason why referring to either or both of two
`possibilities makes the scope of the claim unclear.
`
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`PGR2021-00055
`Patent 10,735,105 B2
`On the record before us, we determine the Petition and supporting
`evidence do not demonstrate that it is more likely than not that “said testing”
`as claimed renders claim 15 indefinite.
`3. Claims 21 and 34
`In addition to the arguments discussed above, Petitioner also
`presents arguments contending that claim 21, which depends from
`claim 15, and claim 34, which depends from claim 26, are indefinite.
`Pet. 29–31. However, Petitioner has not shown that it is more likely
`than not that: (1) claims 1–5, 7–31, and 33–35 are unpatentable under
`§ 112 for the reasons discussed above, and (2) claims 26, 28–30, and
`32–35 are unpatentable under § 103 for the reasons discussed below.
`Even assuming Petitioner has shown that claims 21 and 34 are
`indefinite, institution of review remains discretionary. See SAS Inst.
`Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic Inc. v. Avid
`Tech. Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the
`PTO is permitted, but never compelled, to institute [a] proceeding.”).
`At best, Petitioner meets the more likely than not standard for
`institution based on, at most, two dependent claims (out of 34
`challenged claims) based on a single ground (of the five grounds
`asserted).
`On this record and based on the particular facts of this proceeding,
`even assuming that Petitioner demonstrates that dependent claims 21 and 34
`are indefinite, instituting a trial with respect to all 34 claims based on
`evidence and arguments directed to these two dependent claims “would not
`be an efficient use of the Board’s time and resources.” See Deeper, UAB v.
`Vexilar, Inc., IPR2018-01310, Paper 7 at 42–43 (PTAB Jan. 24, 2019)
`
`15
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`PGR2021-00055
`Patent 10,735,105 B2
`(informative); Chevron Oronite Co. LLC v. Infineum USA L.P.,
`IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative).
`E. Asserted Obviousness over Eaves ’543 and Chawgo
`Petitioner contends that claims 26, 28, 29, 34, and 35 are unpatentable
`over the combination of Eaves ’543 and Chawgo5 under 35 U.S.C. § 103,
`citing the declaration testimony of David A. Durfee, Ph.D., as support.
`Pet. 31–84 (citing Ex. 1002).
`1. Eaves ’543 (Ex. 1006)
`Eaves ’543 discloses a digital power multiport battery charging
`system that has multiple charging ports emanating from a central digital
`power transmitter to charge a plurality of battery packs. Ex. 1006, codes
`(54), (57). An example of the charging system is shown in Figure 1, which
`is reproduced below.
`
`
`5 Petitioner acknowledges that Chawgo and Mlyniec “were previously
`presented to the Office” during prosecution of the ’105 patent” and
`Eaves ’543 is “substantially the same as [another reference that] was
`previously presented to the Office” during prosecution. Pet. 110–111.
`
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`PGR2021-00055
`Patent 10,735,105 B2
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`Figure 1 above shows digital power transmitter 1 providing multiple
`digital power outputs to a plurality of digital power receivers 2, 2’, 2’’, 2’’’.
`Ex. 1006, 8:4–7. Receivers 2 convert the digital power back to analog DC
`power for charging battery packs 3 internal to motor vehicles 4. Id. at 8:7–9.
`Petitioner argues that Eaves ’543 incorporates U.S. Patent
`No. 8,781,637 B2 (Ex. 1007, “Eaves ’637”) by reference. See Pet. 15;
`Ex. 1006, 1:16, 13:66–14:2. Eaves ’637 discloses a safe power distribution
`system that can detect an unsafe fault condition, where an individual or
`object has come in contact with the power conductors, when transferring
`energy from a source to a load. Ex. 1007, code (57). When a fault condition
`is detected, the fault is isolated from both the fault and the load. Id. at code
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`PGR2021-00055
`Patent 10,735,105 B2
`(57). Figure 1 shows an embodiment of the safe power distribution system
`and is reproduced below.
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`Figure 1 above shows a power distribution system that transfers
`energy from source 1 to load 3. Ex. 1007, code (57). Periodically, source
`controller 5 opens disconnect switch S1, and load controller 9 opens
`disconnect switch S2. Id. After the S1 and S2 disconnect switches are
`opened, if capacitor 4 discharges at a rate higher or lower than
`predetermined values, then a fault condition is registered, and the S1 and S2
`switches will not be closed again. Id.
`2. Claims 26, 28, 29, and 34
`Petitioner contends that claims 26, 28, 29, and 34 are unpatentable
`over the combination of Eaves ’543 and Chawgo. Pet. 54–56. Claim 26
`recites an apparatus comprising “a power module for testing a power circuit
`during an off time between high voltage pulses.” Petitioner contends this
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`PGR2021-00055
`Patent 10,735,105 B2
`limitation is taught by Eaves ’637, in disclosing that a load controller
`provides a voltage value to a source controller between high voltage pulses,
`and that the source controller uses the voltage value to calculate a line
`resistance then determine whether to register an in-line fault based on the
`calculated line resistance. Id.
`Patent Owner contends that claim 26 requires that the claimed
`“testing,” or fault detection, be performed at the claimed “apparatus” (with
`an “electrical interface” and “power module”) that receives the pulse power.
`Prelim. Resp. 40. Patent Owner contends that sensing a voltage value alone
`is not fault detection. Id. at 40–41. Patent Owner contends that the fault
`detection taught by Eaves ’637 is performed by the source controller,
`because the source controller, after receiving the voltage value from the load
`controller, calculates line resistance using the received voltage value,
`compares the line resistance to a predetermined maximum, and registers a
`fault when the line resistance is greater than the predetermined maximum
`value. Id. at 42.
`Petitioner has not persuasively explained how sensing a voltage value
`alone teaches detecting a fault. We agree with Patent Owner that Eaves ’637
`discloses that the source controller, not the load controller, detects a fault
`using the voltage value along with other values and calculations. See
`Prelim. Resp. 40–42. Claim 26 recites that “testing a power circuit” is
`performed at the “apparatus” that “receiv[es] . . . high voltage pulse power,”
`in contrast to Eaves ’637’s fault detection, which occurs at the source
`controller. See Ex. 1007, 7:30–42 (“[S]ource controller 5 can request the
`load voltage reading from the load controller 9 to calculate the voltage
`difference between the source side and the load side. . . . If a fault is
`registered, the source controller 5 immediately opens S1 and proceeds to
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`Patent 10,735,105 B2
`step (j).”), 3:48–65 (“[T]he source controller will obtain the load terminal
`voltage through the communication link.”). Petitioner has not persuasively
`shown that the combination of Eaves ’543 and Chawgo teaches a “power
`module for testing a power circuit” at the apparatus that receives high
`voltage pulse power as claimed.
`On the record before us, we determine the Petition and supporting
`evidence do not demonstrate that it is more likely than not that the teachings
`of Eaves ’543 and Chawgo render obvious claim 26, or claims 28, 29, and
`34, which depend from claim 26.
`3. Claim 35
`Petitioner contends that claim 35 is unpatentable over the combination
`of Eaves ’543 and Chawgo. Pet. 71–72. Claim 35 recites “receiving low
`voltage power at an interface module at a remote network device on a cable
`delivering power and optical data from a central network device.”
`Petitioner, relying on testimony of Dr. Durfee, contends that this limitation
`is taught by Eaves ’543’s disclosure of receiver 2, as shown in Figure 1, that
`receives low voltage power during an initialization process that precedes the
`first transfer period. Id. According to Petitioner, after the initialization
`period, switch S1 is closed, causing a rapid increase in voltage across a
`capacitor during the transfer period as disclosed by Eaves ’637. Id. (citing
`Ex. 1002 ¶ 272). According to Petitioner, the rapid increase in voltage at the
`capacitor during the transfer period shows that the receiver of Eaves ’543
`was receiving low voltage power during the earlier initialization period. Id.
`at 72.
`Patent Owner contends that Eaves ’637 does not disclose delivering
`power to the load during the initialization period. Prelim. Resp. 46.
`According to Patent Owner, Eaves ’637 presumes that the load has another
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`Patent 10,735,105 B2
`source of power, because the load performs a communication check and
`other test algorithms before energy transfer begins. Id. Patent Owner
`contends that the other source of power is the internal battery pack disclosed
`by