Case 1:22-cv-01321-UNA Document 1 Filed 10/06/22 Page 1 of 13 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTTRICT OF DELAWARE
`
`NETWORK-1 TEHNOLGIES, INC., a
`Delaware corporation,
`
` Plaintiff,
`
`vs.
`
`Ubiquity Inc., a Delaware corporation,
`
` Defendant.
`
`
`
`
`
`CASE NO. _______________
`
`
`JURY TRIAL DEMANDED
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`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Network-1 Technologies, Inc. (“Network-1”) sues Defendant Ubiquity Inc.
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`
`
`
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`
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`(“Ubiquiti”) and, on information and belief, alleges as follows:
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`INTRODUCTION
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`  
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`1.
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`Plaintiff Network-1 owns the invention described and claimed in United States
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`Patent No. 6,218,930 entitled “Apparatus and method for remotely powering access equipment
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`over a 10/100 switched ethernet network” (the “‘930 Patent”).
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`2.
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`Defendant, without Plaintiff’s permission,
`
`(a)
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`used Plaintiff’s patented technology in connection with products that it made,
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`used, sold, and offered to sell which distributed or used power transferred through
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`Ethernet cables (“Power over Ethernet” or “PoE”), including Power Sourcing
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`Equipment (“PSEs”) and Powered Devices (“PDs”) that are compliant with the
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`IEEE 802.3af and 802.3at standards, and
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`(b)
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`contributed to or induced others, including Defendant’s customers who purchase
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`PoE products from Defendant, to infringe the method claims of the ‘930 Patent.
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`Plaintiff Network-1 seeks damages for patent infringements of the method claims of the ‘930
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`Patent.
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`THE PARTIES
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`
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`3.
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`Plaintiff Network-1 Technologies, Inc. is a Delaware corporation, with its
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`principal place of business in New Canaan, Connecticut.
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`4.
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`Upon information and belief, Ubiquity Inc. is a Delaware corporation, with its
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`principal place of business in New York, New York.
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`JURISDITION AND VENUE
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`
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`5.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, 35 U.S.C. §§ 271 and 281, et seq.
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`6.
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`The Court has original jurisdiction over this patent infringement action under 28
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`U.S.C. §§ 1331 and 1338(a).
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`7.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and 1400(b)
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`because Defendant is incorporated under the laws of the State of Delaware, Defendant does
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`business in Delaware, Defendant is responsible for acts of infringement in Delaware, and
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`Defendant delivered or caused to be delivered products that infringed in Delaware.
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`THE ‘930 PATENT
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`  
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`8.
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`The United States Patent and Trademark Office issued the ‘930 Patent on April
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`17, 2001. A copy of the ‘930 Patent is attached as Exhibit 1.
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`9.
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`Through assignment, Plaintiff Network-1 is the owner of all right, title, and
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`interest in the ‘930 Patent, including all rights for damages for past infringements.
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`10.
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`The validity of the ‘930 Patent has been confirmed in multiple proceedings in
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`multiple forums.
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`2
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`11. Five parties accused of infringing the ‘930 Patent (all of them have since licensed
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`the ‘930 Patent) filed five Inter Partes Reviews and one Covered Business Method Review
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`challenging the validity of the ‘930 Patent. The Patent Trial and Appeal Board issued a final
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`written decision, holding that none of the challenged claims of the ‘930 Patent were
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`unpatentable. The Federal Circuit affirmed the PTAB’s final written decision holding that none
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`of the challenged claims of the ‘930 Patent were unpatentable. Avaya Inc. v. Network-1 Techs.,
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`Inc., 612 F. App’x 613, 614 (Fed. Cir. 2015).
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`12.
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`13.
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`The ‘930 Patent was also reexamined twice before the Patent Office.
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`In the first reexamination, the Patent Office issued a reexamination certification
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`confirming the patentability of all challenged claims and adding fourteen new claims. Exhibit 2.
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`14.
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`In the second reexamination, the Patent Office issued a reexamination certificate
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`confirming the patentability of all challenged claims. Exhibit 3.
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`15.
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`The ‘930 Patent has been extensively licensed. To date, twenty-eight companies
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`that made, used, and sold PoE products that comply with the IEEE 802.3af and 802.3at standards
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`have licensed the ‘930 Patent. Licensees of the ‘930 Patent include Cisco Systems, Inc., Alcatel-
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`Lucent USA, Sony Corporation, Shoretel Inc., Microsemi Corporation, Motorola Solutions, Inc.,
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`NEC Corporation, Samsung Electronics Co., Ltd., and other companies that made or sold PoE
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`networking products. Network-1 licensed its ‘930 Patent both in the context of litigation and
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`outside of litigation.
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`16.
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`To date, licensees have paid Network-1 more than $187,000,000 to license the
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`‘930 Patent. 1
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`                                                            
`1  See https://ir.network-1.com/press-releases/detail/208/ (“Network-1’s Remote Power Patent
`generated licensing revenue in excess of $187,000,000.”)
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`3
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`17.
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`Although not required under any RAND or FRAND obligation, Network-1 has
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`been, and continues to be, willing to license its ‘930 Patent on reasonable and non-discriminatory
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`terms.
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`18.
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`The claims of the ‘930 Patent are directed to patent-eligible subject matter.
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`Generally speaking, the ‘930 Patent claims an electronic detection circuit that (a) determines
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`whether a remote access device connected to an Ethernet data cable (e.g., a VoIP telephone) is
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`capable of accepting power over the Ethernet cable (“remote power”), and (b) delivers operating
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`power to remote devices that can accept remote power.
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`19.
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`The ‘930 Patent addresses the problem of detecting whether a device attached to
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`an Ethernet data cable can accept remote power before delivering remote power that might
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`otherwise damage equipment that is not designed to receive remote power.
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`20. Determining whether a remote device in an Ethernet environment can accept
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`remote power is a central aspect of the invention claimed in the ‘930 Patent because the devices
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`that connect to Ethernet cables include both devices that can accept remote power (such as a
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`VoIP phone) and devices that cannot (such as a computer).
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`21.
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`As set forth in the claims of the ‘930 Patent, the claimed invention makes these
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`determinations using a “low level current”—a current delivered from the “data node” (e.g., an
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`Ethernet switch or hub) to the access device (e.g., a VoIP phone) over the “data signaling pair”
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`that is insufficient to operate the access device. The delivered “low level current” generates a
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`voltage level on the return path that identifies the electronic characteristics of the attached remote
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`access device. The resulting voltage level can be sensed by the internal circuitry of the data
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`node. If the sensing based on the “low level current” reveals that the access device can accept
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`remote power, then the detection circuit controls the power by providing remote operating power
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`over the data signaling pairs (the Ethernet cable) to the access device (the VoIP phone).
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`22.
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`The Federal Circuit described the ‘930 Patent as follows:
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`The ‘930 patent is titled “Apparatus and Method for Remotely Powering Access
`Equipment over a 10/100 Switched Ethernet Network.” It discloses an apparatus
`and methods for allowing electronic devices to automatically determine if remote
`equipment is capable of accepting remote power over Ethernet. See ‘930 patent
`col. 1 ll. 13-17. According to the patented method, a “low level current” is
`delivered over a data signaling pair to an access device (also called remote
`equipment or remote access equipment). Id. at col. 2 ll. 8-10. After the low level
`current is sent, a network switch senses the resulting “voltage level” on the data
`signaling pair. Id. at col. 1 l. 65-col. 2 l. 14. If the device can accept remote
`power, the sensed voltage level will match a “preselected condition” of the
`voltage, such as a particular “varying voltage” level. Id. at col. 2 ll. 10-14, col. 3
`ll. 2-17. Upon detecting the preselected condition, the network switch will
`increase the current from the low level to a higher level sufficient to allow the
`“remote equipment [to] become[] active.” Id. at col. 3 ll. 17-22. If the
`preselected condition of the voltage is not detected, the network switch will
`determine that the device cannot accept remote power and will not transmit a
`higher current. Id. at col. 3 ll. 3-11.
`
`Network-1 Techs. v. Hewlett-Packard Co., 976 F.3d 1301, 1305 (Fed. Cir. 2020).
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`22.
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`The claims of the ‘930 Patent fall into patent-eligible categories authorized by
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`Section 101. Moreover, the claims of the ‘930 Patent are not directed to any patent-ineligible
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`exception.
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`INDUSTRY KNOWLEDGE THAT THE ‘930 PATENT COVERS THE
`802.33af AND 802.3at POWER OVER ETHERNET STANDARDS
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`23. When the IEEE 803.af Power over Ethernet standard was developed, the ‘930
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`Patent was identified as a patent that covers the IEEE 802.3af standard.
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`24.
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`The IEEE (Institute of Electrical and Electronics Engineers) is a standard-based
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`organization comprising representatives of the major players in the networking industry. The
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`IEEE created an 802.3af task force committee to develop an industry standard for providing
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`Power over Ethernet.
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`5
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`25.
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`By the summer of 2001, the IEEE 802.3af task force had already selected a
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`detection method for the new Power over Ethernet standard. That detection method is identical
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`to the one found in the final 802.3af standard used in Defendant’s Power over Ethernet products.
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`At that time, some members of the 802.3af task force became aware of the ‘930 Patent and
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`realized that its claims covered the detection method that the 802.3af task force was adopting as
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`part of the Power over Ethernet standard. As a result, the Chairman of the IEEE 802.3af task
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`force committee placed the ‘930 Patent on the agenda for the July 2001 802.3af task force
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`meeting of the committee in the form of a “Call for Patents”:
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`
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`Agenda, July 2001 Plenary Meeting of the 802.3af DTE Power via MDI Task Force.
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`26.
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`As explained on the IEEE’s website, a Chairman of an IEEE standard committee
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`would include a “Call for Patents” on an agenda and call out a patent (e.g., the ‘930 Patent)
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`because those involved in developing the standard believed that the patent was essential for
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`practicing the proposed standard.
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`6
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`27.
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`The ‘930 Patent was the only patent that was ever identified by the 802.3af task
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`force in a “Call for Patents” and placed on an agenda for a task force meeting.
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`28.
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`This Agenda identifying the ‘930 Patent as an essential patent for practicing the
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`802.3af standard was publicly available to any person or company who was interested in or
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`concerned about whether the 802.3af Power over Ethernet standard infringed any patent.
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`29. After the ‘930 Patent was called out, the members of the 802.3af committee took
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`information about the ‘930 Patent back to their respective networking companies for further
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`investigation. Over the following six weeks, key networking manufacturers expressed concerns
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`that the ‘930 Patent “has become a major show stopper” to practicing the proposed 802.3af
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`standard. The Chairman of the 802.3af committee wrote in an email that “key players” in the
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`network industry were “very worried about the Merlot2 patent, specifically the detection scheme
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`which is pretty much what we do in 802.3af.”
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`30.
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`The Chairman of the 802.3af committee emailed his supervisor at the IEEE and
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`declared the ‘930 Patent a “Red Alert!!!” to the proposed 802.3af standard. As a result, the
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`Chairman of the 802.3af committee and his supervisor attempted to get a letter of assurance from
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`Merlot, the owner of the ‘930 Patent at the time. In a letter of assurance, Merlot would agree to
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`license the ‘930 Patent on reasonable terms to networking companies that manufactured products
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`that would comply with the proposed 802.3af standard. Representatives of networking
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`companies on the 803.3af standard committee believed that “[i]f IEEE can get an assurance letter
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`from Merlot, everybody is happy” because the owner of the ‘930 Patent would be willing to
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`license the patent to the industry.
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`                                                            
`2 At this time, the ‘930 Patent was owned by Merlot (before it was assigned to Network-1) and
`was referred to as the “Merlot patent.” 
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`7
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`31. But Merlot did not initially provide a letter of assurance. As a result, the IEEE
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`802.3af task force was motivated to look for an acceptable alternative detection method that
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`would not infringe the ‘930 Patent. But despite spending significant time and effort evaluating
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`other options, the committee was not able to come up with an acceptable alternative that could be
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`used for high data speed applications. As a result, although the IEEE 802.af task force had not
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`yet obtained a letter of assurance, the IEEE voted on and formally adopted the 802.2af standard
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`covered by the ‘930 Patent.
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`32. Although not required, after the 802.3af standard was formally adopted, Merlot
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`did provide a Letter of Assurance to the IEEE. This Letter of Assurance identified the ‘930
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`Patent as essential for any networking company who wanted to manufacture an 802.3af standard
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`product. Any person or company who was interested in or concerned about whether the 802.3af
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`standard infringed any patent could find the ‘930 Patent Letter of Assurance using a simple
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`Google search:
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`33.
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`The IEEE maintains a spreadsheet of patents that are essential for practicing any
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`802.3 standard (802.3af is one of these 802.3 standards). The spreadsheet identifies the ‘930
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`Patent as essential to practicing the 802.3af standard and includes a link to the Letter of
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`Assurance for the ‘930 Patent:
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`
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`8
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`
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`Any person or company who was interest in or concerned about whether the 802.3af standard
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`infringed any patent could find the IEEE’s spreadsheet using a simple Google search.
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`34. At least since 2015, a simple Google search would demonstrate that the ‘930
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`Patent is the most important patent covering products that comply with the 802.3af standard. For
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`many years, extensive publicly available information has demonstrated that the ‘930 Patent is a
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`“hugely important” PoE patent in this standardized field. For example, a Google search using
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`the words “patent PoE 802.3af” returned the following three articles among the first seven search
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`results:
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` “Network-1’s ‘930 patent (6,218,930) teaches an essential component of industry
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`standard Power over Ethernet, or PoE. As described in the IEEE 802.3af and 802.3at
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`standards, PoE enables delivery of power over existing local area network (LAN)
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`cabling, eliminating the need for running separate and expensive power cables.”
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`https://www.network-1.com/portfolios/power-over-ethernet
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` “Network-1, The Little-Known Company With A Hugely Important Power-Over-
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`Ethernet Patent.” https://www.businessinsider.com/network-1-the-little-known-
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`company-with-a-hugely-important-power-over-ethernet-patent-2011-1
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` “Transition has agreed to license Network-1’s Remote Power Patent for Power over
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`Ethernet products through 2020, and to pay quarterly royalties.”
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`https://www.cablinginstall.com/connectivity/rj45-utp-
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`9
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`shielded/article/16478698/transition-networks-agrees-to-licensing-royalty-payments-in-
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`poe-patent-suit-settlement
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`35. Any person or company who was interested in or concerned about whether the
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`802.3af and 802.3at standards infringed any patent would have come across these and similar
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`articles identifying the ‘930 Patent using a simple Google search.
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`COUNT I – INFRINGMENT OF THE ‘930 PATENT
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`36.
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`Plaintiff incorporates by reference each of the allegations in paragraphs 1 - 35
`
`above.
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`37. On or about April 17, 2001, the ‘930 Patent, disclosing and claiming an
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`“Apparatus and method for remotely powering access equipment over A 10/100 switched
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`ethernet network,” was duly and legally issued by the United States Patent and Trademark
`
`Office.
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`38.
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`Plaintiff Network-1 is the owner of the ‘930 Patent with full rights to pursue
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`recovery of royalties or damages for infringement of such patent, including full rights to recover
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`past damages.
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`39. A reexamination certificate confirming all challenged claims of the ‘930 Patent
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`and adding fourteen new claims was issued on October 14, 2014. A second reexamination
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`certificate confirming the patentability of all challenged claims of the ‘930 Patent was issued on
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`November 9, 2015.
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`40.
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`The ‘930 Patent is valid.
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`41. Defendant infringed, contributed to the infringement, and induced others to
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`infringe the ‘930 Patent by manufacturing, using, selling, offering for sale, or by using methods
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`claimed in the ‘930 Patent or by contributing to or inducing others to make, use, sell, or offer to
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`10
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`sell, the claimed invention or use the claimed methods without a license or permission from
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`Plaintiff. Defendant made, used, sold, or offered to sell Power over Ethernet products, including
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`certain products that comply with the IEEE 802.3af and 802.3at standards. These products were
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`used to infringe the method claims of the ‘930 Patent.
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`42. An exemplary claim chart with respect to Claim 6 of the ‘930 Patent is attached as
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`Exhibit 4. The chart applies the constructions of the ‘930 Patent claims approved by the Federal
`
`Circuit. Network-1 Techs. v. Hewlett-Packard Co., 976 F.3d 1301, 1304 (Fed. Cir. 2020).
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`43. Defendant had knowledge of, or was willfully blind to, the claims of the ‘930
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`Patent and the infringements alleged in this Complaint.
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`44.
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`Defendant knowingly induced others, including their customers who purchased
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`Defendant’s Power over Ethernet products, to practice the methods claimed in the ‘930 Patent
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`and possessed a specific intent to encourage infringement of the ‘930 Patent. For example,
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`Defendant’s Power over Ethernet products, when connected and operated as intended and
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`instructed and suggested by Defendant’s associated manuals, literature, advertising, or other
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`placards and data, infringe the ‘930 Patent. In addition, Defendant knew (or was willfully blind
`
`to knowing) that Defendant’s Power over Ethernet products used to infringe the ‘930 Patent (a)
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`constituted material parts or components of the inventions claimed in the ‘930 Patent, (b) were
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`especially made or adapted for use in a manner that infringes the ‘930 Patent, and (c) did not
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`have substantial use that did not infringe the ‘930 Patent.
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`45.
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`Plaintiff has been damaged by Defendant’s infringement of the ‘930 Patent. The
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`marking requirement of 35 U.S.C. § 287(a) does not apply because Plaintiff is only asserting
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`method claims.
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`WILLFULNESS ALLEGATIONS
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`11
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`46.
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`47.
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`Upon information and belief, Defendant’s acts of infringement have been willful.
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`Defendant’s acts of infringement were committed with knowledge of Plaintiff’s
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`rights in the ‘930 Patent, and in willful and wanton disregard of Plaintiff’s rights, or were
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`committed with willful blindness to Plaintiff’s rights, rendering this an exceptional case under 35
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`U.S.C. § 285.
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`48.
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`Despite this knowledge or willful blindness and despite an objective likelihood
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`that its actions constituted infringement of the ‘930 Patent, Defendant infringed the ‘930 Patent.
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`This objectively-defined risk was known or was so obvious that it should have been known to
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`Defendant. Defendant disregarded this objectively high likelihood that its actions constituted
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`infringement of the ‘930 Patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff Network-1 prays for judgment as follows:
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`A.
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` Compensatory damages awarding Plaintiff damages caused by Defendant’s
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`infringement of the ‘930 Patent;
`
`B.
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`Enhancement of Plaintiff’s damages against Defendant by reason of the nature of
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`Defendant’s infringement pursuant to 35 U.S.C. § 284;
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`C.
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`D.
`
`E.
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`For costs of suit and attorney’s fees;
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`For pre and post-judgment interest; and
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`For such other relief as justice requires.
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`JURY DEMAND
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`Plaintiff Network-1 demands trial by jury of all issues.
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`Case 1:22-cv-01321-UNA Document 1 Filed 10/06/22 Page 13 of 13 PageID #: 13
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`Dated: October 6, 2022
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`Of Counsel:
`
`Gregory Dovel
`Richard Lyon
`DOVEL & LUNER, LLP
`201 Santa Monica Blvd., Suite 600
`Santa Monica, CA 90401
`Tel: 310-656-7066
`Email: greg@dovel.com
`Email: rick@dovel.com
`
`
`
`
`Respectfully submitted,
`
`FARNAN LLP
`
`
`/s/ Michael J. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 N. Market St., 12th Floor
`Wilmington, DE 19801
`Tel: (302) 777-0300
`Fax: (302) 777-0301
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`Attorneys for Plaintiff
`
`
`
`13
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