Cisco Systems, Inc. v. Chrimar Systems, Inc.

1. Case Identification

• Patent #: 8,155,012
• Filed: August 3, 2018
• Petitioner(s): Cisco Systems Inc.
• Patent Owner(s): ChriMar Systems, Inc.
• Challenged Claims: 1, 5, 6, 10, 13, 16, 22, 25, 26, 29, 30, 67, 73, 80, 88, 106, 108, 114, 121, 129, and 147

2. Patent Overview

• Title: System and Method for Adapting a Piece of Terminal Equipment
• Brief Description: The ’012 patent discloses methods for adapting Ethernet terminal equipment by creating a path across selected contacts of an Ethernet connector. This path includes an impedance used to associate distinguishing information with the equipment, a technique related to phantom powering and Power-over-Ethernet (PoE).

3. Grounds for Unpatentability

Ground 1: Obviousness over Hunter and Bulan - All Challenged Claims are obvious over Hunter in view of Bulan under 35 U.S.C. §103.

• 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 discloses a system for supplying DC "phantom power" over an Ethernet cable from a hub to a terminal equipment (TE), using the same twisted-pair conductors that carry data. Hunter’s system used a simple protective device (e.g., a thermistor) to guard against overcurrents. Bulan discloses a more sophisticated protective device, a current control apparatus (CCA), specifically designed to improve phantom-powered network systems like Hunter's. The combination of Hunter and Bulan, therefore, teaches an Ethernet TE (Hunter) adapted with a path (the phantom power circuit) where distinguishing information (startup vs. fault conditions) is associated with impedance (the TE's current draw as managed by Bulan’s CCA). The CCA monitors current to distinguish between a normal startup inrush and an operational fault, associating different impedance characteristics with each state.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to replace Hunter's simple protective device with Bulan's superior CCA. Bulan explicitly criticizes the shortcomings of "typical current limiting circuits" like Hunter's, which cannot distinguish between a short circuit and a normal power-up current surge. A POSITA would have recognized Bulan's CCA as a known solution to a known problem in a system like Hunter's, making it a simple substitution of one known element for another to yield predictable and improved results.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Bulan was designed for the exact purpose of improving phantom-powered systems like Hunter's. The replacement would be a straightforward, one-for-one substitution of a protective circuit within the system's hub, a known technique for improving a similar device.

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

• Prior Art Relied Upon: Bloch (Patent 4,173,714) and IEEE 802.3 (the 1993 and 1995 editions).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Bloch teaches a phantom circuit for supplying power and bi-directional data signaling over the same conductors in a telephone system. Bloch's system sends status information by modulating impedance (switching a resistor in and out of the circuit) to create different current pulses. IEEE 802.3 provides the standard for Ethernet networks, including the use of Data Terminal Equipment (DTEs), standard connectors, and 10Base-T wiring. Applying Bloch's phantom power and impedance modulation technique to a standard Ethernet system (IEEE 802.3) results in an Ethernet DTE adapted with a path that uses impedance to convey distinguishing information (the status data encoded in the current pulses).
  • Motivation to Combine: A POSITA would have been motivated to apply Bloch's phantom power technology to the ubiquitous Ethernet context defined by IEEE 802.3. The combination achieves the known benefits of eliminating the need for local power supplies and conserving network bandwidth by sending status signals outside the primary communication channel. Bloch itself states its invention can find application in "many different control unit/terminal applications," clearly suggesting its use beyond the preferred telephone system embodiment.
  • Expectation of Success: Success would be expected, as this involves applying a known technique (Bloch's phantom power and signaling) to a standard, well-defined system (IEEE 802.3 Ethernet) to achieve a predictable advantage. The Board had previously found sufficient motivation for this combination in a prior inter partes review (IPR) involving the ’012 patent.

4. Key Claim Construction Positions

• "part of a detection protocol" (claims 5, 73, 114): Petitioner argued this term means an intended use of the impedance as part of a scheme for detecting the impedance or a change in it. This construction does not require a mutually agreed-upon communication method, which is consistent with the patent's disclosure of simply monitoring DC current flow.
• "impedance...arranged to distinguish the piece of terminal equipment" (claim 108): Petitioner proposed this means "impedance connected to, or within, the at least one path capable of distinguishing the piece of terminal equipment." This aligns with a prior Board determination that any resistor or impedance connected to an Ethernet device gives it the capability of being distinguished.
• "adapting" / "adapted" (claims 1, 67, 108): Petitioner adopted the Federal Circuit's prior construction of "modified." However, Petitioner argued that construction is unnecessary because the Board previously held that there is no patentable distinction between modifying existing equipment and including the feature during original manufacture.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and §325(d) is unwarranted. This is the first and only petition Cisco has filed challenging these specific claims of the ’012 patent.
• Petitioner contended that the IPR would be an efficient use of Board resources because it asks the Board to apply the same prior art and largely the same arguments from a prior Final Written Decision (FWD) in IPR2016-01389 (the "Juniper IPR"), where different claims of the ’012 patent were found invalid over the same art.
• The petition also noted that all claims of the ’012 patent stood rejected in a parallel ex parte reexamination, and instituting this IPR would allow for a consistent and comprehensive analysis of the prior art.

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.