Trials@uspto.gov
`571-272-7822
`
`
`Paper 18
`Entered: May 24, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`SONY EXHIBIT 1003
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`Page 1 of 31
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`

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`Patent 6,218,930
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`Avaya Inc. filed a Petition (“Pet.”) to institute an inter partes review
`
`of claims 6 and 9 of Patent 6,218,930 (the “’930 patent”) pursuant to 35
`
`U.S.C. § 311 et seq. Patent Owner Network-1 Security Solutions, Inc. filed
`
`a preliminary response (“Prelim. Resp.”) to the Petition. We have
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`jurisdiction under 35 U.S.C. § 314. For the reasons that follow, the Board
`
`has determined to institute an inter partes review.
`
`
`
`I. BACKGROUND
`
`The standard for instituting an inter partes review is set forth in 35
`
`U.S.C. § 314(a):
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Petitioner challenges claims 6 and 9 of the ’930 patent as anticipated
`
`under 35 U.S.C. §§ 102(a) and (b), and as obvious under 35 U.S.C. § 103(a).
`
`Pet. 6-7. We grant the Petition as to claims 6 and 9 on certain grounds as
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`discussed below.
`
`
`
`A. The ’930 Patent (Ex. 1001)
`
`The ’930 patent, entitled “Apparatus and Method for Remotely
`
`Powering Access Equipment Over a 10/100 Switched Ethernet Network,”
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`issued on April 17, 2001 based on Application 09/520,350, filed March 7,
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`2000, which claims priority to Provisional Application 60/123,688, filed
`
`Mar. 10, 1999.
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`The ’930 patent relates to “the powering of 10/100 Ethernet
`
`compatible equipment,” specifically “automatically determining if remote
`
`equipment is capable of remote power feed and if it is determined that the
`
`remote equipment is able to accept power remotely then to provide power in
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`a reliable non-intrusive way.” Col. 1, ll. 13-19. The patent describes how it
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`was generally known in the prior art to power telecommunications
`
`equipment, such as telephones, remotely, but doing so had not “migrated to
`
`data communications equipment” due to various problems, such as the high
`
`power levels required by data communications equipment. Col. 1, ll. 22-32.
`
`The patent describes a need in the art to power data communications
`
`equipment remotely and to “reliably determin[e] if a remote piece of
`
`equipment is capable of accepting remote power.” Col. 1, ll. 42-44.
`
`Figure 3 of the patent is reproduced below:
`
`Figure 3 depicts a remote telephone 62 capable of receiving and transmitting
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`both voice and data. Col. 3, ll. 60-66. Telephone 62 is connected to access
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`node 64 at the customer’s premises, and access node 64 is connected to one
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`of the ports of Ethernet switch 68 via wiring 66 comprising “a Category 5
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`Ethernet 100BaseX cable of 4 sets of unshielded twisted pairs.” Id.
`
`Ethernet switch 68 comprises an automatic remote power detector 22
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`(shown in Fig. 1) and remote power supply 34 (shown in Fig. 2). Col. 4, ll.
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`1-4.
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`The preferred embodiment described in the ’930 patent operates as
`
`follows. A remote access device, such as the telephone shown in Figure 3, is
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`normally powered by “an ac transformer adapter plugged in to the local 110
`
`volt supply,” but may or may not be capable of being powered remotely.
`
`Col. 2, ll. 40-44. The system detects whether the access device is capable of
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`being powered remotely by “delivering a low level current (approx. 20 ma)”
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`over existing twisted pairs of an Ethernet cable used for data signaling and
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`“measuring a voltage drop in the return path.” Col. 2, l. 66-col. 3, l. 2; col.
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`3, ll. 44-48. If there is no voltage drop or a fixed voltage level is detected,
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`the device is not capable of accepting remote power. Col. 3, ll. 2-11. If a
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`varying or “sawtooth” voltage level occurs (caused by the access device
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`repeatedly beginning to start up but being “unable to sustain the start up”
`
`due to the low current level), the device is capable of accepting remote
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`power. Col. 3, ll. 12-22. The system then increases the power being
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`supplied remotely to the access device. Id. Once the access device is
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`operating under remote power, the system looks for removal of the access
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`device and decreases the power being supplied when the device is no longer
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`connected. Col. 3, ll. 49-58.
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`
`
`B. The Challenged Claims
`
`Claims 6 and 9 of the ’930 patent recite:
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`6. Method for remotely powering access equipment in a
`data network, comprising,
`
`providing a data node adapted for data switching, an
`access device adapted for data transmission, at least one data
`signaling pair connected between the data node and the access
`device and arranged to transmit data therebetween, a main
`power source connected to supply power to the data node, and a
`secondary power source arranged to supply power from the data
`node via said data signaling pair to the access device,
`
`delivering a low level current from said main power
`source to the access device over said data signaling pair,
`
`sensing a voltage level on the data signaling pair in
`response to the low level current, and
`
`controlling power supplied by said secondary power
`source to said access device in response to a preselected
`condition of said voltage level.
`
`9. Method according to claim 6, including the step of
`continuing to sense voltage level and to decrease power from
`the secondary power source if voltage level drops on the data
`signaling pair, indicating removal of the access device.
`
`
`
`C. The Prior Art
`
`Petitioner relies on the following prior art:
`
`1. Japanese Unexamined Patent Application Publication
`No. H10-13576, published Jan. 16, 1998 (“Matsuno”) (Ex.
`1004);1
`
`2. Patent 6,115,468, filed Mar. 26, 1998, issued Sept. 5,
`2000 (“De Nicolo”) (Ex. 1007);
`
`3. Patent 5,754,644, issued May 19, 1998
`(“Akhteruzzaman”) (Ex. 1005); and
`
`
`1 We refer to “Matsuno” as the English translation (Ex. 1004) of the original
`reference (Ex. 1002). Petitioner provided an affidavit attesting to the
`accuracy of the translation. See Ex. 1003; 37 C.F.R. § 42.63(b).
`
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`4. Patent 5,991,885, filed June 11, 1997, issued Nov. 23,
`1999 (“Chang”) (Ex. 1006).
`
`
`
`D. The Asserted Grounds
`
`Petitioner challenges claims 6 and 9 of the ’930 patent on the
`
`following grounds:
`
`Claims 6 and 9 under 35 U.S.C. § 102(b) as being anticipated by
`
`Matsuno;
`
`Claims 6 and 9 under 35 U.S.C. § 103(a) as being unpatentable over
`
`De Nicolo in view of Matsuno;
`
`Claims 6 and 9 under 35 U.S.C. § 102(a) as being anticipated by
`
`Akhteruzzaman;
`
`Claims 6 and 9 under 35 U.S.C. § 103(a) as being unpatentable over
`
`De Nicolo in view of Akhteruzzaman; and
`
`Claims 6 and 9 under 35 U.S.C. § 103(a) as being unpatentable over
`
`Chang in view of De Nicolo.
`
`
`
`E. Claim Interpretation
`
`Consistent with the statute and legislative history of the America
`
`Invents Act (AIA), the Board will interpret claims using “the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[they] appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).
`
`There is a “heavy presumption” that a claim term carries its ordinary
`
`and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`
`1359, 1366 (Fed. Cir. 2002). However, a “claim term will not receive its
`
`ordinary meaning if the patentee acted as his own lexicographer and clearly
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`set forth a definition of the disputed claim term in either the specification or
`
`prosecution history.” Id. “Although an inventor is indeed free to define the
`
`specific terms used to describe his or her invention, this must be done with
`
`reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). Also, we must be careful not to read a
`
`particular embodiment appearing in the written description into the claim if
`
`the claim language is broader than the embodiment. See In re Van Geuns,
`
`988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`
`the claims from the specification.”).
`
`We note that the ’930 patent previously was involved in a number of
`
`patent infringement actions, including Network-1 Security Solutions, Inc. v.
`
`D-Link Corporation, et al., E.D. Tex. Case No. 6:05-cv-00291-LED (the “D-
`
`Link litigation”), and Network-1 Security Solutions, Inc. v. Cisco Systems,
`
`Inc., et al., E.D. Tex. Case No. 6:08-cv-00030-LED (the “Cisco litigation”).
`
`In the Cisco litigation, the district court issued an order interpreting certain
`
`terms of claim 6. See Memorandum Opinion and Order, Ex. 2006. The
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`parties reference the district court’s Order and Patent Owner’s earlier claim
`
`interpretation positions in their papers. See, e.g., Pet. 8-9; Prelim. Resp. 24.
`
`For purposes of this decision, we construe certain claim limitations as
`
`follows:
`
`
`
`1. “Low Level Current” (Claim 6)
`
`Claim 6 recites “delivering a low level current from said main power
`
`source to the access device over said data signaling pair.” Petitioner does
`
`not propose a definition for “low level current.” Patent Owner argues that
`
`“low level current” is a term of degree and means “a current at a level that is
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`sufficiently low that it will not (a) operate the access device, or (b) damage
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`an access device that is not designed to accept power through the data
`
`signaling pair.” Prelim. Resp. 24. The district court in the Cisco litigation
`
`interpreted the term to mean “a current sufficient to cause the access device
`
`to start up, but not sufficient to sustain the start up.” Ex. 2006 at 16.
`
`We agree with Patent Owner that “low level current” in the context of
`
`claim 6 is a term of degree. Such terms require a standard for measuring the
`
`degree; otherwise the scope of what is claimed cannot be determined. See
`
`Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 908 (Fed. Cir.
`
`2010) (“[‘Substantially flattened surface’] is clearly a comparative term.
`
`Comparison requires a reference point. Therefore, to flatten something, one
`
`must flatten it with respect to either itself or some other object.”); Young v.
`
`Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (finding that a figure of
`
`the asserted patent “provides a standard for measuring the meaning of the
`
`term ‘near’”); Exxon Res. & Eng’g Co. v. United States, 265 F.3d 1371,
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`1381 (Fed. Cir. 2001) (terms of degree require determining “‘whether the
`
`patent’s specification provides some standard for measuring that degree’”)
`
`(citation omitted). For example, a person may be “small” relative to the size
`
`of a skyscraper, but may not be “small” when compared to another
`
`individual of similar height.
`
`We look to the Specification of the ’930 patent for the proper standard
`
`for measuring the “low level current” in claim 6. The Specification
`
`describes methods for “automatically determining if remote equipment is
`
`capable of remote power feed and if it is determined that the remote
`
`equipment is able to accept power remotely then to provide power.” Ex.
`
`1001, col. 1, ll. 14-19. It is therefore an object of the invention to provide
`
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`power to a remote device once it is determined that the device is capable of
`
`being powered remotely. The Specification explains how this is
`
`accomplished as follows:
`
`Automatic detection of remote equipment being
`connected to the network is accomplished by delivering a low
`level current (approx. 20 ma) to the network interface and
`measuring a voltage drop in the return path. There are three
`states which can be determined: no voltage drop, a fixed level
`voltage drop or a varying level voltage drop. . . .
`
`If a varying voltage level is detected, this identifies the
`presence of dc-dc switching supply in the remote equipment.
`The varying level is created by the remote power supply
`beginning to start up but the low current level is unable to
`sustain the start up. This cycle continues to be repeated
`creating a “sawtooth” voltage level in the return path. When
`this cycle is confirmed, switch S1 is closed which increases the
`power output to the remote equipment. When the power to the
`remote equipment reaches the proper level the remote power
`supply turns on and the remote equipment becomes active. . . .
`
`. . .
`
`Once the remote equipment is operating and confirmed
`as a known remote power enabled device, the logic circuit
`shown in FIG. 1 begins to look for removal of the remote
`equipment or an overload fault condition. . . .
`
`Id., col. 2, l. 66-col. 3, l. 52 (emphasis added). The Specification gives an
`
`example of a low level current (approximately 20 mA) and explains how, if
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`a remote access device is determined to be capable of receiving remote
`
`power, the power being supplied remotely to the device is increased and the
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`device “becomes active.” In other words, the device does not operate based
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`on just the low level current used for detection, but does operate when the
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`power is increased by a certain amount. The Specification therefore
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`indicates that the “low level current” is sufficiently low that, by itself, it will
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`not operate the access device.
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`We disagree with Patent Owner’s proposed interpretation to the extent
`
`it requires the “low level current” to be sufficiently low to not damage an
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`access device not designed to accept remote power. See Prelim. Resp. 23-
`
`24. Patent Owner’s only support for this aspect of its interpretation is the
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`description in the Specification of determining whether remote equipment is
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`capable of accepting remote power in a “non-intrusive manner,” which
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`according to Patent Owner means a manner that will not damage the
`
`equipment. Ex. 1001, col. 1, ll. 54-56; see Prelim. Resp. 23-24. The
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`Specification, however, does not use the word “damage” and does not
`
`clearly tie the low level current to any measurement standard based on
`
`damage. Thus, we do not include any standard based on damage in our
`
`interpretation of “low level current.”
`
`Applying the broadest reasonable interpretation of the claim in light of
`
`the Specification, we interpret “low level current” to mean a current (e.g.,
`
`approximately 2 mA) that is sufficiently low that, by itself, it will not
`
`operate the access device.
`
`
`
`2. “Data Node Adapted for Data Switching” (Claim 6)
`
`Petitioner and Patent Owner do not propose a definition for “data
`
`node adapted for data switching.” However, in Case IPR2013-00092
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`(another proceeding involving the ’930 patent), Patent Owner argues that
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`“data node” means either an “Ethernet switch or hub” or a “data switch or
`
`hub,” and argues that “data switching” means “the ability to switch data
`
`from one device connected to the data node to another device connected to
`
`the data node, which requires the ability to transfer data among the
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`associated data ports in the node.” IPR2013-00092, Paper 19 at 47-48. As
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`support, Patent Owner cites the following technical dictionary definition of
`
`“switching”:
`
`A communications method that uses temporary rather than
`permanent connections to establish a link or to route
`information between two parties. In the dial-up telephone
`network, for example, a caller’s line goes to a switching center,
`where the actual connection is made to the called party. In
`computer networks, message switching and packet switching
`allow any two parties to exchange information. In both
`instances, messages are routed (switched) through intermediary
`stations that together serve to connect the sender and the
`receiver.
`
`IPR2013-00092, Ex. 2010, Microsoft Computer Dictionary at 505 (5th ed.
`
`2002). The district court in the Cisco litigation interpreted “data node” to
`
`mean a “data switch or hub.” Ex. 2006 at 6.
`
`The dictionary definition cited by Patent Owner is indicative of the
`
`ordinary meaning of “data switching” to a person of ordinary skill in the art
`
`and is consistent with the Specification, which describes a well-known
`
`“switched Ethernet network” comprising an “Ethernet 8 port switch card.”
`
`See Ex. 1001, col. 2, ll. 44-46; col. 3, ll. 28-31. The definition is also
`
`consistent with the Declaration of Dr. George A. Zimmerman submitted by
`
`Petitioner, where Dr. Zimmerman states:
`
`Largely as a result of increased network congestion
`caused by repeating signals onto all of the network wiring
`segments, in 1989 Ethernet incorporated the concept of
`switching, which had been generally well known and used
`notably in PSTNs. Under this approach, transmitted packets
`would only be sent out onto the wiring segments of their
`specific destinations.
`
`Ex. 1011¶ 21 (emphasis added); see also Pet. 15. We also interpret the
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`phrase “adapted for” as “configured for” given how the phrase is used in the
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`claims and in the Specification, which describes the actual transmission of
`
`data over a switched network. Id., col. 2, ll. 48-51; see Aspex Eyewear, Inc.
`
`v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (“In
`
`common parlance, the phrase ‘adapted to’ is frequently used to mean ‘made
`
`to,’ ‘designed to,’ or ‘configured to,’ but it can also be used in a broader
`
`sense to mean ‘capable of’ or ‘suitable for.’”).
`
`Applying the broadest reasonable interpretation of the claim in light of
`
`the Specification, we interpret “data node adapted for data switching” to
`
`mean a data switch or hub configured to communicate data using temporary
`
`rather than permanent connections with other devices or to route data
`
`between devices.
`
`
`
`3. “Data Signaling Pair” (Claim 6)
`
`Petitioner and Patent Owner do not specifically define “data signaling
`
`pair.” Patent Owner, however, argued in the D-Link litigation that the term
`
`means “a pair of wires used to transmit data between the data node and the
`
`access device,” and in the Cisco litigation that the term means “a pair of
`
`wires used to transmit data.” Ex. 1008 at 1, 9; Ex. 1009 at 17, 41. The latter
`
`interpretation is the broadest reasonable interpretation consistent with the
`
`surrounding language of claim 6, which requires “at least one data signaling
`
`pair connected between the data node and the access device and arranged to
`
`transmit data therebetween,” and the Specification. See Ex. 1001, Abstract
`
`(“delivering the phantom power to the remote equipment over the same wire
`
`pairs that deliver the data signals”); col. 1, ll. 51-59 (“delivering the power
`
`to remote equipment over the same wire pairs that deliver the data signals”);
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`col. 3, ll. 60-66 (“Category 5 Ethernet 100BaseX cable of 4 sets of
`
`unshielded twisted pairs”). Thus, giving the term its broadest reasonable
`
`interpretation in light of the Specification, we interpret “data signaling pair”
`
`to mean a pair of wires used to transmit data.
`
`
`
`4. “Main Power Source” and “Secondary Power Source” (Claim 6)
`
`Petitioner argues that Patent Owner took the position in litigations
`
`where the ’930 patent has been asserted that the “main power source” and
`
`“secondary power source” in claim 6 need not be physically separate
`
`devices, and therefore the terms should be interpreted the same in this
`
`proceeding when given their broadest reasonable interpretation. Pet. 9-10
`
`(citing Exs. 1008-10). Patent Owner does not challenge Petitioner’s
`
`proposed interpretation in its preliminary response. The district court in the
`
`Cisco litigation interpreted the terms such that the main power source and
`
`secondary power source must be “physically separate.” Ex. 2006 at 8-14.
`
`We conclude that Petitioner’s proposed interpretation is broad but
`
`reasonable in light of the surrounding language of the claim and the
`
`Specification. Claim 6 does not specify a relationship between the “main
`
`power source” and “secondary power source” (e.g., one providing power to
`
`the other), but instead only describes how they are arranged. The “main
`
`power source” is “connected to supply power to the data node” and the
`
`“secondary power source” is “arranged to supply power from the data node
`
`via said data signaling pair to the access device.” Figure 1 of the
`
`Specification also depicts a single “power source 16.” See Ex. 1001, col. 2,
`
`ll. 52-57; Fig. 1. Applying the broadest reasonable interpretation of the
`
`claim in light of the Specification, we do not interpret claim 6 as requiring
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`the “main power source” and “secondary power source” to be physically
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`separate devices.
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`
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`5. Other Terms
`
`All other terms in claims 6 and 9 are given their ordinary and
`
`customary meaning and need not be further construed at this time.
`
`
`
`II. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability and
`
`Patent Owner’s arguments in its preliminary response to determine whether
`
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`
`
`
`A. Whether the Petition Should be Denied for Failure to Propose a
`Specific Interpretation for “Low Level Current”
`
`As an initial matter, Patent Owner argues in its preliminary response
`
`that the Petition should be denied because it does not comply with 37 C.F.R.
`
`§ 42.104(b), which requires a petition to state “[h]ow the challenged claim is
`
`to be construed” and “[h]ow the construed claim is unpatentable.” Prelim.
`
`Resp. 1-2, 11-19. According to Patent Owner, Petitioner was required to
`
`provide an interpretation for the term “low level current,” rather than merely
`
`stating that the term should be given its ordinary and customary meaning,
`
`because “low level current” is a term of degree and has no ordinary meaning
`
`absent a standard for measuring that degree. Id. at 11-19.
`
`We agree with Patent Owner that Petitioner should have provided an
`
`interpretation for “low level current” given its importance to the claims
`
`being challenged and the fact that it is a term of degree. We do not
`
`conclude, however, that the failure to do so is itself sufficient reason to deny
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`the Petition because the error is harmless. Patent Owner, for instance, does
`
`not contend that it is unable to respond to Petitioner’s grounds of
`
`unpatentability because of the deficiency. Indeed, Patent Owner argues at
`
`length in its preliminary response regarding Patent Owner’s own
`
`interpretation of “low level current” and why the asserted prior art references
`
`do not disclose the limitation under Patent Owner’s interpretation. See
`
`Prelim. Resp. 20-25, 28-29, 32-34, 36-41, 47-49. Thus, we are not
`
`persuaded that the Petition should be denied for failure to provide a specific
`
`definition of “low level current.”
`
`
`
`B. Grounds Based on Matsuno (Ex. 1004)
`
`Petitioner contends that claims 6 and 9 are anticipated by Matsuno
`
`under 35 U.S.C. § 102(b). Pet. 17-26. We conclude that Petitioner has
`
`established a reasonable likelihood of prevailing on its assertion that claims
`
`6 and 9 are anticipated for the reasons explained below.
`
`Matsuno discloses a “power supply circuit that switches power supply
`
`voltage and supplies the desired power while ensuring safety.” Matsuno,
`
`Abstract. Figure 1 of Matsuno, reproduced below, depicts a network
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`terminal device 2 in communication with power supply circuit 1 over digital
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`subscriber line 12 in an Integrated Services Digital Network (ISDN):
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`Network terminal device 2 is typically powered locally by AC power supply
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`11. Id. ¶¶ 4, 8. When local power is available, power supply circuit 1 in the
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`ISDN “switching station” provides over digital subscriber line 12 a current
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`generated from “low voltage V2,” which may be -48 V. Id. ¶¶ 7, 18-20.
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`When local power stops, loop detection part 4 of power supply circuit 1
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`detects the change and the voltage is switched to “high-voltage V1,” which
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`may be -120 V, “thereby allowing the desired power to be supplied from the
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`station.” Id.
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`Patent Owner argues that Matsuno does not disclose delivering a “low
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`level current.” Prelim. Resp. 36-41. Specifically, Patent Owner contends
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`that the current generated from low voltage V2 (-48 V) in Matsuno is
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`sufficient to operate “access devices (e.g., telephones) connected to the
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`disclosed ISDN telephone network.” Id. at 35-40. As support for its
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`argument, Patent Owner cites another patent, Patent 6,301,358 (“Chen”)
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`(Ex. 2005), stating that “[c]onventional analog telephone line-interface
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`circuits . . . require a 48VDC power supply for operation.” Prelim. Resp. 35,
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`39-40 (citing Ex. 2005, col. 1, ll. 11-14).
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`As explained above, we interpret “low level current” to mean a
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`current (e.g., approximately 2 mA) that is sufficiently low that, by itself, it
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`will not operate the access device. Patent Owner does not point to any
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`disclosure in Matsuno itself indicating that the current generated from low
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`voltage V2 (-48 V) is sufficient, by itself, to operate network terminal device
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`2. Indeed, the opposite appears to be the case. Low voltage V2 (-48 V) is
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`applied when the device is operating under local power, but high voltage V1
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`(-120 V) is applied if the local power fails. See Matsuno ¶¶ 7-8, 18-22
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`(describing the “low voltage power supply” and “high voltage power
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`supply”). If low voltage V2 (-48 V) was sufficient, by itself, for the device
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`to operate, presumably there would be no need to switch to high voltage V1
`(-120 V) when local power is unavailable.2 Patent Owner has not argued
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`otherwise except to say that “conventional” telephones require a 48 V power
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`supply. See Prelim. Resp. 35, 39-40. Whether the current in Matsuno would
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`be sufficient for “conventional” devices in other contexts is not the issue.
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`The issue is whether the specific current in Matsuno is sufficient, by itself,
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`to operate the specific access device in Matsuno such that it would be more
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`than a “low level current” as recited in claim 6. Seeing no indication that it
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`is, we conclude that Petitioner has made a threshold showing that Matsuno
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`discloses delivering a “low level current.”
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`2 Patent Owner acknowledges that the current generated from low voltage V2
`(-48 V) in Matsuno “may not be able to fully power all connected ISDN
`equipment. Matsuno teaches that if the local power to the device (11) stops,
`the voltage on the telephone line (12) increases to -120 volts to assure that
`certain ISDN equipment can also be fully powered and communications
`during power outages will not be restricted.” Prelim. Resp. 35-36.
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`Patent Owner also argues that the current generated from low voltage
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`V2 (-48 V) in Matsuno is sufficient to “damage” devices that are not
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`designed to accept remote power. Id. at 38. This argument is not persuasive
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`because, as explained above, we do not interpret “low level current” as
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`imposing any measurement standard based on damage to the access device.
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`With respect to the remaining elements of claims 6 and 9, which are
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`not disputed by Patent Owner, Petitioner has made a threshold showing that
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`they are disclosed by Matsuno as well. For example, Petitioner contends
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`that the ISDN switching station in Matsuno (of which power supply circuit 1
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`is a part) is a “data node adapted for data switching,” and network terminal
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`device 2 is an “access device” as recited in claim 6. Pet. 18-19 (citing Ex.
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`1011 ¶¶ 30-31). Petitioner also argues that Matsuno controls the power
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`supplied to network terminal device 2 by increasing the voltage to V1 (-120
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`V) when local power is removed. Id. at 19-21 (citing Ex. 1011 ¶¶ 30-40).
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`We are persuaded by the analysis set forth in the Petition and
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`accompanying declaration that there is a reasonable likelihood that Petitioner
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`will prevail on its assertion that claims 6 and 9 are anticipated by Matsuno
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`under 35 U.S.C. § 102(b).
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`C. Grounds Based on De Nicolo (Ex. 1007)
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`De Nicolo in View of Matsuno
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`Petitioner contends that claims 6 and 9 are unpatentable over De
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`Nicolo in view of Matsuno. We conclude that Petitioner has established a
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`reasonable likelihood of prevailing on its assertion that claims 6 and 9 are
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`unpatentable for the reasons explained below.
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`Petitioner relies on De Nicolo as teaching the “providing” step of
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`claim 6, including the claimed structures of a data node, access device, data
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`signaling pair, and power sources. Pet. 36-42. Petitioner relies on Matsuno
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`as teaching the remaining “delivering,” “sensing,” and “controlling” steps of
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`claim 6, as well as the “continuing to sense” step of claim 9. Id. at 36-43.
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`Petitioner contends that a person of ordinary skill in the art would have had
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`reason to incorporate the process of Matsuno into the Ethernet system of De
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`Nicolo to perform the claimed method, citing the analysis of Dr.
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`Zimmerman. Id. at 43-45 (citing Ex. 1011 ¶¶ 69-71). Specifically,
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`Petitioner cites power saving and safety improvement as alleged reasons
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`why a skilled artisan would combine the teachings of the references. Id.
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`As to De Nicolo in particular, the reference discloses a system for
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`providing “electrical power to devices such as Ethernet telephones and
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`related equipment over a 4-wire Ethernet connection.” De Nicolo, col. 2, ll.
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`30-34. Figure 3 of De Nicolo, reproduced below, depicts data ports
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`80/82/84 communicating data to and from load devices 98/100/102 over
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`Ethernet twisted pair lines:
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`Petitioner identifies any one of the “multiple data ports (Port 1-3) and
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`associated circuitry” as the claimed “data node,” any one of the “load
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`devices such as Ethernet telephones or other Ethernet devices” as the
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`claimed “access device,” and twisted pair conductors 128a or b of Ethernet
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`link 128 as the claimed “data signaling pair.” Pet. 38-42.
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`Patent Owner makes three arguments. First, Patent Owner argues that
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`De Nicolo does not disclose, and teaches away from, a system that “detects
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`whether the device connected to the cable can accept power and that
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`differentiates between devices that can accept remote power and devices that
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`cannot.” Prelim. Resp. 26-27. This language, however, does not appear in
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`the claims or our interpretation of the claim language. For instance, claim 6
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`recites sensing a voltage level and controlling power to an access device in
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`response to a preselected condition of the voltage level. It does not include
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`any step of “differentiat[ing] between devices that can accept remote power
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`and devices that cannot” as Patent Owner suggests. See id. Patent Owner’s
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`argument therefore is not commensurate with the scope of the claims and is
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`not persuasive.
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`Second, Patent Owner contends that Cisco Technology, Inc.
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`(“Cisco”), the assignee of De Nicolo, relied on De Nicolo during the Cisco
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`litigation but subsequently settled for a certain amount. Prelim. Resp. 27-28.
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`According to Patent