PTAB

IPR2016-00983

Dell Inc v. Chrimar Systems Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Ethernet Data Terminal Equipment
  • Brief Description: The ’012 patent discloses Ethernet data terminal equipment that includes an Ethernet connector with a plurality of contacts. The invention centers on creating at least one electrical path across selected contacts, where distinguishing information about the equipment is associated with the impedance within that path.

3. Grounds for Unpatentability

Ground 1: Obviousness over De Nicolo Combination - Claims 31, 35, 36, 40, 43, 52, 56, 59, 60, and 65 are obvious over De Nicolo '468 and De Nicolo '666.

  • Prior Art Relied Upon: De Nicolo ’468 (Patent 6,115,468) and De Nicolo ’666 (Patent 6,134,666).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that De Nicolo ’468 discloses a power-over-Ethernet system, teaching the core structural elements of an "adapted piece of Ethernet data terminal equipment" with an "Ethernet connector" and a "path coupled across selected contacts" (e.g., via transformer windings). De Nicolo ’666, in turn, teaches a power supervision circuit that uses a resistor of a specific value (Rset) to identify the power requirements of a connected module. Petitioner asserted that this use of a specific impedance to convey information directly teaches the limitation of associating "distinguishing information" with an "impedance within the at least one path."
    • Motivation to Combine: A POSITA would combine the references because both relate to powering remote devices over network wiring. It would have been a common-sense improvement to incorporate De Nicolo ’666’s more sophisticated technique for determining a device's power requirements into the Ethernet-based power delivery system of De Nicolo ’468. The motivation is strengthened because both patents share the same inventor.
    • Expectation of Success: A POSITA would have a high expectation of success as the combination involves integrating a known power detection technique (from ’666) into a standard Ethernet power system (from ’468), which is a routine design choice.

Ground 2: Obviousness over de Nijs and Chaudhry - Claims 31, 35, 36, 40, 43, 56, 59, 60, and 65 are obvious over de Nijs in view of Chaudhry.

  • Prior Art Relied Upon: de Nijs (Patent 5,568,525) and Chaudhry (Patent 5,790,363).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that de Nijs discloses a system that identifies different types of network workstations (e.g., Ethernet, Token Ring) by measuring their characteristic impedance, thus teaching every element of independent claim 31. Specifically, de Nijs teaches detecting "distinguishing information" (the network protocol type) based on "impedance" in a "path" across an "Ethernet connector." Chaudhry discloses a well-known overvoltage/overcurrent protection circuit for 10BASE-T Ethernet systems, which teaches the resistor element required by dependent claim 40.
    • Motivation to Combine: A POSITA would combine these references to add a necessary and known safety feature to the system in de Nijs. It would have been obvious to apply Chaudhry’s overvoltage/overcurrent protection circuit to the Ethernet workstation in de Nijs to protect it from known electrical dangers like transient overvoltages, which Chaudhry was specifically designed to address.
    • Expectation of Success: Success was expected because adding a standardized protection circuit to a network device is a well-understood and predictable engineering task.

Ground 3: Obviousness over the IEEE 802.3 Standard - Claims 31, 35, 36, 40, 43, 56, 59, 60, and 65 are obvious over the IEEE 802.3 Standard references.

  • Prior Art Relied Upon: IEEE 802.3-1993, IEEE 802.3l-1992, and IEEE 802.3r-1996 (collectively, "the IEEE 802.3 Standard").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the IEEE 802.3 Standard, which defines the fundamental characteristics of Ethernet equipment, inherently discloses all limitations of the challenged claims. The standard specifies different impedance requirements for different types of Ethernet equipment (e.g., a 78 Ω resistor for 10BASE5 systems and a 100 Ω impedance for 10BASE-T systems). The presence or absence of these specific impedances, measured across defined contacts of a standard Ethernet connector, distinguishes standards-compliant equipment and different types of equipment from one another. This directly maps to using impedance to convey distinguishing information.
    • Motivation to Combine: The three IEEE documents constitute a single, cohesive standard. A POSITA would consult them together, as they are intended to define a single technology, with supplemental standards being incorporated into the main document over time.
    • Expectation of Success: As these references form the official standard for Ethernet design, a POSITA would have a complete expectation that implementing these requirements would result in a functional and interoperable Ethernet device.

4. Key Claim Construction Positions

  • "wherein distinguishing information... is associated to impedance...": Petitioner argued this clause is a non-limiting statement of intended use for an otherwise old and well-known product structure (an Ethernet device with a path across its connector contacts). As such, Petitioner contended it should be given no patentable weight because an apparatus claim must distinguish over the prior art in terms of structure, not function or intended use.
  • "BaseT": Petitioner proposed construing "BaseT" as "10BASE-T," arguing that the patent specification and its incorporated references only use the term in the context of the specific 10BASE-T standard, and "BaseT" itself is not a term of art.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention was that the ’012 patent is not entitled to the April 10, 1998 priority date of its provisional application (’279 provisional). Petitioner argued the provisional application fails to provide written description support for key claim limitations, particularly the association of "distinguishing information" with "impedance." Therefore, Petitioner asserted the earliest possible priority date is the PCT filing date of April 8, 1999, which renders all cited prior art references timely.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 31, 35, 36, 40, 43, 52, 56, 59, 60, and 65 of the ’012 patent as unpatentable.