PTAB

IPR2018-01508

Cisco Systems Inc v. Chrimar Systems Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Adapting a Piece of Terminal Equipment
  • Brief Description: The ’012 patent relates to a method and system for adapting Ethernet data terminal equipment to utilize an impedance within a path on its network connection to convey distinguishing information. The technology involves coupling this path across selected contacts of an Ethernet connector, enabling functionality related to Power-over-Ethernet (PoE) and device identification.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hunter in view of Bulan - All Challenged Claims are obvious over Hunter in view of Bulan.

  • Prior Art Relied Upon: Hunter (WO 96/23377) and Bulan (Patent 5,089,927).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hunter taught a system for supplying DC "phantom power" over an Ethernet cable from a hub to a terminal equipment (TE), using a basic protective device against overcurrents. Bulan disclosed a superior, intelligent current control apparatus (CCA) specifically for such phantom-powered systems. Bulan's CCA could distinguish between overcurrents caused by operational faults (e.g., short circuits) and normal, transient current surges during a TE's power-up sequence. The combination meets the limitations of independent claims 1, 67, and 108 by modifying Hunter’s Ethernet TE to include phantom power circuitry and replacing Hunter’s simple protective device with Bulan’s advanced CCA. The distinct current patterns monitored by the CCA—such as a power-up inrush, a fault current, or a normal operating current—constitute "distinguishing information" that is inherently associated with the TE's impedance, as required by the claims.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references by making a simple substitution of Bulan's superior protective circuit for Hunter's rudimentary one. This would predictably yield a more robust and reliable phantom-powered Ethernet system, as Bulan's CCA was designed to improve upon circuits like Hunter's by intelligently managing different types of overcurrent conditions.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved replacing one known element with an improved version designed for the same purpose and environment, a straightforward task.

Ground 2: Obviousness over Bloch in view of IEEE 802.3 - All Challenged Claims are obvious over Bloch in view of IEEE 802.3.

  • Prior Art Relied Upon: Bloch (Patent 4,173,714) and the IEEE 802.3 Ethernet Standard (1993 and 1995 editions).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Bloch taught a "phantom circuit" for supplying power and conveying bi-directional status signals over the same conductors used for voice communication in a telephone system. Bloch's system used impedance modulation (switching a resistor in and out of the circuit) to generate current pulses that represent status information. The IEEE 802.3 standard described the ubiquitous Ethernet network protocol, including the physical layer specifications for 10Base-T equipment, twisted-pair wiring, and standard MDI connectors. A POSITA would have adapted a standard IEEE 802.3 data terminal equipment (DTE) by incorporating Bloch's phantom power and signaling circuitry. This combination directly meets the claim limitations, as Bloch's method of switching a resistor to create current pulses is a method of "associating distinguishing information... to impedance within the at least one path."
    • Motivation to Combine: A POSITA would be motivated to apply Bloch's efficient phantom power and out-of-band signaling techniques to the standard Ethernet context defined by IEEE 802.3. This combination provides the obvious benefits of eliminating the need for separate power supplies for Ethernet devices and conserving network bandwidth by transmitting status information without using the primary data channel. Bloch itself stated its invention was applicable to many different types of systems beyond telephones.
    • Expectation of Success: Applying Bloch's well-understood phantom circuit principles to the standardized and well-defined physical layer of an IEEE 802.3 network would have been a predictable and straightforward implementation for a POSITA.

4. Key Claim Construction Positions

  • "part of a detection protocol" (claims 5, 73, 114): Petitioner proposed this term means an intended use of the impedance for a scheme that detects the impedance or its change, and is not limited to a mutually agreed-upon communication method.
  • "impedance...arranged to distinguish the piece of terminal equipment" (claim 108): Petitioner proposed this term means an impedance connected to, or within, the path that is capable of distinguishing the piece of terminal equipment from another device.
  • "adapting" / "adapted" (claims 1, 67, 108): Citing a Federal Circuit holding, Petitioner proposed this means "modified." However, Petitioner also argued that a formal construction was unnecessary because the Board previously found no patentable distinction between modifying already-manufactured equipment and including the impedance during original manufacture.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) was improper. It emphasized that this was the first IPR filed by Cisco against the ’012 patent and that the specific challenged claims had not been subject to a prior IPR. Petitioner asserted that the petition represented an efficient use of Board resources because it asked the Board to apply the same prior art and reasoning from a prior Final Written Decision on other claims of the ’012 patent (IPR2016-01389) to the newly challenged, but highly similar, claims.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 5, 6, 10, 13, 16, 22, 25, 26, 29, 30, 67, 73, 80, 88, 106, 108, 114, 121, 129, and 147 of Patent 8,155,012 as unpatentable.