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

_______________
_______________
_______________
_______________
Trials@uspto.gov 	Paper 11
571-272-7822 	Entered: January 31, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
CISCO SYSTEMS, INC.,
Petitioner,
v.
CHRIMAR SYSTEMS, INC.,
Patent Owner.
Case IPR2018-01511
Patent 8,902,760 B2
Before KARL D. EASTHOM, GREGG I. ANDERSON, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.
WEINSCHENK, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 315(a)(1)

IPR2018-01511
Patent 8,902,760 B2
I. 	INTRODUCTION
Cisco Systems, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting an inter partes review of claims 73, 106, 112, 134, 142, 145, and
146 (“challenged claims”) of U.S. Patent No. 8,902,760 B2 (Ex. 1004, “the
’760 patent”). Chrimar Systems, Inc. (“Patent Owner”) filed a Preliminary
Response (Paper 7, “Prelim. Resp.”) to the Petition. Also, as authorized,
Petitioner filed a Reply (Paper 8, “Reply”) to the Preliminary Response, and
Patent Owner filed a Sur-reply (Paper 9, “Sur-reply”) to the Reply.
An inter partes review “may not be instituted if, before the date on
which the petition for such review is filed, the petitioner or real party in
interest filed a civil action challenging the validity of a claim of the patent.”
35 U.S.C. § 315(a)(1). The information presented shows that Petitioner filed
a civil action challenging the validity of a claim of the ’760 patent before the
date on which the Petition was filed. Therefore, the Petition is denied, and
no trial is instituted.
A. 	Related Proceedings
The parties indicate that the ’760 patent is the subject of several cases
in the United States District Court for the Eastern District of Michigan, the
United States District Court for the Eastern District of Texas, and the United
States District Court for the Northern District of California. Pet. 1–5;
Paper 5, 1–2. The parties also indicate that the ’760 patent was the subject
of Reexamination No. 90/013,802, and the subject of petitions for inter
partes review in IPR2016-00574, IPR2016-01399, IPR2016-01759, and
IPR2017-00719. Pet. 2–3; Paper 5, 2.
2

IPR2018-01511
Patent 8,902,760 B2
B. 	The ’760 Patent
The ’760 patent relates to a system for managing, tracking, and
identifying remotely located electronic equipment. Ex. 1004, 1:27–30.
According to the ’760 patent, one of the difficulties in managing a
computerized office environment is keeping track of a company’s electronic
assets. Id. at 1:32–57. Previous systems for tracking electronic assets
suffered from several deficiencies. Id. at 1:62–65. For example, previous
systems could not determine the connection status or physical location of an
asset and could only track assets that were powered-up. Id. at 1:65–2:2.
To address these deficiencies, the ’760 patent describes a system for
tracking an electronic asset. Id. at 2:3–6, 3:23–27. In one embodiment
described in the ’760 patent, the system includes a central module and a
remote module. Id. at 3:27–30. The remote module attaches to the
electronic asset and transmits a low frequency signal. Id. A receiver in the
central module monitors the signal transmitted by the remote module and
determines if the status or location of the electronic asset changes. Id. at
3:30–32, 3:34–40.
C. 	Illustrative Claim
Of the challenged claims, claims 73 and 146 are independent.
Claim 73, as amended during reexamination, is reproduced below.
73. A BaseT Ethernet system comprising:
Ethernet cabling having at least first and second
individual pairs of conductors used to carry BaseT Ethernet
communication signals, the at least first and second individual
pairs of conductors physically connect between a piece of
BaseT Ethernet terminal equipment and a piece of central
network equipment,
3

IPR2018-01511
Patent 8,902,760 B2
the piece of central network equipment is a BaseT
Ethernet hub;
the piece of central network equipment having at least
one DC supply,
the piece of BaseT Ethernet terminal equipment having at
least one path to draw different magnitudes of current flow via
the at least one DC supply through a loop formed over at least
one of the conductors of the first pair of conductors and at least
one of the conductors of the second pair of conductors,
the piece of central network equipment to detect at least
two different magnitudes of current flow through the loop.
Ex. 1004, 21:37–52; Ex. 1035, 1:23–2:4.
D. 	Evidence of Record
Petitioner submits the following references and declaration (Pet. 11):
Reference or Declaration 	Exhibit No.
Declaration of George Zimmerman (“Zimmerman
Declaration”)
Ex. 1001
The Institute of Electrical and Electronics Engineers, Inc.,
IEEE Standard 802.3u-1995 (1995) (“IEEE 802.3-1995”)
Ex. 1021
The Institute of Electrical and Electronics Engineers, Inc.,
IEEE Standard 802.3-1993 (1993) (“IEEE 802.3-1993”)
Ex. 1022
Bloch et al., U.S. Patent No. 4,173,714 (issued Nov. 6,
1979) (“Bloch”)
Ex. 1025
Nelson, U.S. Patent No. 4,823,070 (issued Apr. 18, 1989)
(“Nelson”)
Ex. 1026
Bulan et al., U.S. Patent No. 5,089,927 (issued Feb. 18,
1992) (“Bulan”)
Ex. 1027
Hunter et al., PCT Publication No. WO 96/23377
(published Aug. 1, 1996) (“Hunter”)
Ex. 1033
Peguiron, Swiss Patent No. CH 643 095 A5 (issued May
15, 1984) (“Peguiron”)
Ex. 1034
E. 	Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds (Pet. 11):
4

IPR2018-01511
Patent 8,902,760 B2
Claim(s) 	Basis 	References
73, 106, 112, 134,
142, and 145
35 U.S.C. § 103 	Hunter and Bulan
146 	35 U.S.C. § 103 	Hunter, Bulan, and Nelson
146 	35 U.S.C. § 103 	Bloch, IEEE 802.3-1993, IEEE
802.3-1995, and Peguiron
II. 	ANALYSIS
An inter partes review “may not be instituted if, before the date on
which the petition for such review is filed, the petitioner or real party in
interest filed a civil action challenging the validity of a claim of the patent.”
35 U.S.C. § 315(a)(1). Petitioner previously filed a civil action challenging
the validity of a claim of the ’760 patent. Pet. 7; Prelim. Resp. 1; Ex. 2001
¶¶ 3, 4, 76–81. Petitioner argues, though, that § 315(a)(1) does not bar
institution of an inter partes review because Petitioner voluntarily dismissed
its previous civil action without prejudice. Pet. 7 (citing Emerson Elec. Co.
v. SIPCO, LLC, Case IPR2015-01579, slip op. at 2−3 (PTAB Jan. 14, 2016)
(Paper 7)).1
Section 315(a)(1), titled “Inter Partes Review Barred by Civil
Action,” bars institution of an inter partes review when a petitioner filed a
civil action challenging the validity of a claim of a patent before the date on
1 In Emerson, a panel of the Board held in a non-precedential decision that
the § 315(a)(1) bar does not apply when a petitioner dismissed its previous
civil action without prejudice because “[f]ederal courts treat a civil action
that is dismissed without prejudice as ‘something that de jure never
existed.’” Emerson, Case IPR2015-01579, slip op. at 2−3 (Paper 7).
Subsequently, in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d
1321, 1328 n.3 (Fed. Cir. 2018) (en banc), the Federal Circuit held that the
§ 315(b) time bar applies even when a previous civil action was dismissed
voluntarily without prejudice. This Decision addresses the § 315(a)(1) bar
in light of the Federal Circuit’s discussion of the § 315(b) time bar.
5

IPR2018-01511
Patent 8,902,760 B2
which that petitioner filed a petition requesting an inter partes review of that
patent. 35 U.S.C. § 315(a)(1). Section 315(a)(1) does not include an
exception for a civil action that was dismissed without prejudice. Id.; see
Click-to-Call, 899 F.3d at 1330. And Congress demonstrated that it knew
how to provide an exception to a statutory bar by including an exception to
the § 315(b) time bar for a joinder request. 35 U.S.C. § 315(b); see Click-to-
Call, 899 F.3d at 1331. Thus, Congress could have included an exception to
the § 315(a)(1) bar for a civil action that was dismissed without prejudice,
but did not. 35 U.S.C. § 315(a)(1); see Click-to-Call, 899 F.3d at 1331.
Further, the ordinary meanings of the terms “file” and “civil action”
show that the phrase “filed a civil action” in § 315(a)(1) applies to a civil
action that was dismissed without prejudice. Black’s Law Dictionary
defines “file” as “[t]o commence a lawsuit,” and defines “civil action” as
“[a]n action brought to enforce, redress, or protect a private or civil right; a
noncriminal litigation.” BLACK ’S LAW D ICTIONARY (10th ed. 2014). These
definitions indicate that the § 315(a)(1) bar is implicated once a party
commences a noncriminal litigation, irrespective of subsequent events. Id.;
see Click-to-Call, 899 F.3d at 1330.
Petitioner argues that the term “civil action” in § 315(a)(1) requires
substantive litigation, i.e., “the pendency of a litigation where the petitioner
actually had a bite at the apple.” Reply 4–6. Petitioner’s argument is not
persuasive. Petitioner addresses the term “civil action” apart from the
complete phrase “filed a civil action” in § 315(a)(1). As discussed, the
ordinary meaning of the phrase “filed a civil action” only requires that a
party commenced a noncriminal litigation, not that the party engaged in any
substantive litigation. BLACK ’S LAW D ICTIONARY (10th ed. 2014).
6

IPR2018-01511
Patent 8,902,760 B2
Petitioner argues that the legislative history indicates that “the clear
purpose of [§ 315(a)(1)] is coordination of IPR with litigation, and more
specifically to prevent a challenger from getting two bites at the invalidity
apple, one in a district court ‘civil action’ and a second before the Board.”
Reply 5–6. Petitioner, therefore, contends that the legislative history shows
that § 315(a)(1) requires a petitioner to substantively litigate a civil action.
Id. at 6. Petitioner’s argument is not persuasive. The portion of the
legislative history cited by Petitioner states that
[t]he 2009 Minority Report also recommended that the bill
restrict serial administrative challenges to patents and require
coordination of these proceedings with litigation. . . . The
present bill does coordinate inter partes and post-grant review
with litigation, barring use of these proceedings if the
challenger seeks a declaratory judgment that a patent is invalid,
and setting a time limit for seeking inter partes review if the
petitioner or related parties is sued for infringement of the
patent.
157 Cong. Rec. S1041 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl)
(emphasis added). Thus, the comments relied on by Petitioner indicate that
§ 315(a)(1) only requires a petitioner to “seek[]” a declaratory judgment, not
to substantively litigate the civil action.2 Id.
Petitioner argues that § 315(a)(1) uses the term “filed,” and that “it is
well-settled that the voluntary dismissal of a complaint without prejudice
nullifies the act of filing.” Reply 6. Petitioner’s argument is not persuasive.
“A voluntary dismissal without prejudice only leaves the dismissed action
without legal effect for some purposes; for many other purposes, the
2 Also, the Supreme Court has cautioned against relying on the comments of
one Member of Congress. Garcia v. United States, 469 U.S. 70, 76 (1984).
7

IPR2018-01511
Patent 8,902,760 B2
dismissed action continues to have legal effect.” Click-to-Call, 899 F.3d at
1335. Because the background legal principle relied on by Petitioner is
“anything but equivocal,” it does not “transform[] the ordinary meaning of
the phrase [‘filed a civil action’] into something else.” Id.
Petitioner argues that the purpose of a dismissal without prejudice “is
to preserve, rather than eliminate, the ability of the plaintiff to sue the
defendant again on the same claim.” Reply 6–7. Petitioner contends that
“although Click-To-Call found that this anti-preclusion principle had no
application to § 315(b), which is essentially a statute of limitations, it is
certainly applicable to § 315(a)(1), which is a preclusion statute.” Id. at 7.
Petitioner’s argument is not persuasive. Petitioner does not explain
specifically why its characterization of § 315(a)(1) as “a preclusion statute”
warrants a departure from the ordinary meaning of the statutory language
discussed above. See id. at 6–7. Further, this Decision does not hold that
§ 315(a)(1) bars Petitioner from filing another civil action challenging the
validity of a claim of the ’760 patent.
For these reasons, § 315(a)(1) bars institution of an inter partes
review even though Petitioner voluntarily dismissed its earlier civil action
challenging the validity of a claim of the ’760 patent without prejudice.
III. 	CONCLUSION
The information presented shows that Petitioner filed a civil action
challenging the validity of a claim of the ’760 patent before the date on
which Petitioner filed the Petition. Therefore, the Petition is denied under
§ 315(a)(1).
8

IPR2018-01511
Patent 8,902,760 B2
IV. 	ORDER
In consideration of the foregoing, it is hereby
ORDERED that the Petition is denied, and no trial is instituted.
9

IPR2018-01511
Patent 8,902,760 B2
PETITIONER:
James E. Marina
Robert Kang
Eugene Goryunov
KIRKLAND & ELLIS LLP
james.marina@kirkland.com
robert.kang@kirkland.com
eugene.goryunov@kirkland.com
PATENT OWNER:
Frank A. Angileri
Thomas A. Lewry
Marc Lorelli
Christopher C. Smith
BROOKS KUSHMAN P.C.
fangileri@brookskushman.com
tlewry@brookskushman.com
mlorelli@brookskushman.com
csmith@brookskushman.com
10