IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent
`Attorney's Docket No. 0081688-000001
`
`In re U.S. Patent No. 6,218,930
`
`Boris KATZENBERG et al.
`
`Reexamination Control No.: 90/012,401
`
`Filed: July 20, 2012
`
`For: APPARATUS AND METHOD FOR
`REMOTELY POWERING ACCESS
`EQUIPMENT OVER A 10/100
`SWITCHED ETHERNET NETWORK)
`
`) MAIL STOP:
`)
`) Ex parte REEXAMINATION
`)
`) Group Art Unit: 3992
`~ Examiner: KE, Peng
`) Confirmation No.: 7779
`~
`
`AMENDMENT AND REPLY
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 2231 3-1450
`
`Madam:
`
`In response to the Office Action dated December 21, 2012, the two month
`
`period for reply having been restarted on May 29, 2014, and further to the personal
`
`interview of June 26, 2014, please enter the following amendments to the claims and
`
`reconsider the rejections in light of the following remarks and accompanying
`
`Declaration of Dr. James Knox.
`
`Buchanan Ingersoll t&. Rooney Pc
`
`Attorneys&. Government Relations Professionals
`
`SONY EXHIBIT 1007
`
`Page 1 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 2
`
`Table of Contents
`
`AMENDMENTS TO THE CLAIMS
`
`I.
`
`Listing of claims: .............................................................................................. 4
`
`REMARKS
`
`II.
`
`Ill.
`
`IV.
`
`Claim Status .................................................................................................... 8
`
`Summary of Interview ...................................................................................... 8
`
`Background ................................................................................................... 16
`
`A.
`
`B.
`
`C.
`
`D.
`
`Prior proceedings involving the '930 Patent. ....................................... 16
`
`The '930 Patent. ................................................................................. 19
`
`Claim constructions ............................................................................. 20
`
`The Reexamination References ......................................................... 23
`
`V.
`
`Claim elements missing from all Reexamination References ........................ 25
`
`A.
`
`B.
`
`C.
`
`D.
`
`Missing elements 1 : No Reexamination Reference discloses the
`"data signaling pair" elements ............................................................. 26
`
`Missing elements 2: No Reexamination Reference discloses the
`claimed "low level current" elements ................................................... 32
`
`Missing element 3: No Reexamination Reference teaches "a data
`node adapted for data switching" ........................................................ 37
`
`Missing Element 4: No USB Reference teaches "remotely
`powering access equipment in a data network." ................................ 39
`
`VI.
`
`VII.
`
`VIII.
`
`Issue Set 1: Holmdahl does not anticipate the Challenged Claims ............... 42
`
`Issue Set 2: Wood does not anticipate the Challenged Claims .................... 48
`
`Issue Set 3: The Challenged Claims are not obvious over Amoni
`in view of Holmdahl. ..................................................................................... 54
`
`A.
`
`B.
`
`Comparison of Amoni with claim elements ......................................... 54
`
`The Challenged Claims are not obvious over Amoni in view of
`Holmdahl because any combination of Amoni and Holmdahl
`still does not include critical claimed elements .................................... 60
`
`Page 2 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 3
`
`IX.
`
`Issue Set 4: The Challenged Claims are not obvious over Williams
`in view of Holmdahl. ...................................................................................... 61
`
`A.
`
`B.
`
`C.
`
`Comparison of Williams to claim elements ......................................... 61
`
`The Challenged Claims are not obvious over Williams in view of
`Holmdahl because combination of Williams and Holmdahl still
`do not include critical claimed elements .............................................. 66
`
`The Challenged Claims are not obvious over Williams in view of
`Holmdahl because there is no reason or motivation to combine
`Holmdahl (a USB reference) with Williams (the telephony
`reference) ........................................................................................... 67
`
`X.
`
`Additional reasons why the Challenged Claims are not obvious
`in light of Issue Sets 3 and 4 ......................................................................... 68
`
`XI.
`
`Allowability of newly added claims ................................................................. 76
`
`A.
`
`B.
`
`There is support in the specification for the proposed new claims ...... 77
`
`The proposed claims do not broaden the scope of the original
`claims .................................................................................................. 77
`
`XII.
`
`Conclusion ..................................................................................................... 81
`
`!l.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Exhibits
`
`U.S Patent 6,218,930 ('"930 Patent")
`
`Declaration of James Knox ("Knox Decl.")
`
`Final Written Decision, IPR2013-00071 ("Final Decision")
`
`Decision to Institute, IPR2013-00071 ("Decision to Institute")
`
`Decision Denying Petition, IPR2013-00092 ("Decision Denying Petition")
`
`Network-1 Press Release
`
`Defendants' Invalidity Contentions- Cisco Litigation
`
`U.S. Patent 5,991 ,885 ("Chang")
`
`Transcript of Jury Trial- Cisco Litigation
`
`10
`
`e-mail re: Signal vs Idle Debate
`
`Page 3 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page4
`
`AMENDMENTS TO THE CLAIMS
`
`Please add new claims 10 through 23 as they appear below.
`
`Original patent claims 1 through 9 are not changed by this paper and have not
`
`been represented below in accordance with 37 CFR 1.530(d) through (j) and MPEP
`§ 2250. All changes are shown relative to the set of claims that appear in the issued
`patent.
`
`I.
`
`Listing of claims:
`
`1 0. (New) Method according to claim 6, wherein said data node is an
`
`Ethernet switch.
`
`11 . (New) Method according to claim 6, wherein said data signaling pair is a
`
`pair of wires used to transmit data within an Ethernet cable.
`
`12. (New) Method according to claim 6, wherein said low level current is a
`
`current used to determine whether the access device is capable of accepting remote
`
`power.
`
`13. (New) Method according to claim 6, wherein said low level current is
`
`insufficient to operate said access device, but sufficient to generate a voltage level
`
`on said data signaling pair that is used to determine whether said access device is
`
`capable of accepting remote power.
`
`14. (New) Method according to claim 6, wherein controlling power supplied by
`
`the secondary power source involves increasing the level of the low level current to a
`
`level sufficient to operate said access device.
`
`15. (New) Method according to claim 6, wherein said secondary power source
`
`is the same source of power as said main power source.
`
`Page 4 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 5
`
`16. (New) Method according to claim 6, wherein said secondary power
`
`source is the same physical device as the main power source.
`
`17. (New) Method according to claim 6, wherein said main power source
`
`provides a DC current flow.
`
`18. (New) Method according to claim 6, wherein there are at least two data
`
`signaling pairs connected between the data node and the access device.
`
`19. (New) Method according to claim 6, wherein sensing the voltage level on
`
`the data signaling pair includes at least two sensed measurements.
`
`20. (New) Method for remotely powering access equipment in an Ethernet
`
`data network, comprising,
`
`(a) providing
`
`(i) an Ethernet data node adapted for data switching,
`
`(ii) an access device adapted for data transmission,
`
`(iii) at least one data signaling pair connected between the data node
`
`and the access device and arranged to transmit data therebetween,
`
`(iv) a main power source connected to supply power to the data node,
`
`and
`
`(v) a secondary power source arranged to supply power from the data
`
`node via said data signaling pair to the access device,
`
`(b) delivering a low level current from said main power source to the access
`
`device over said data signaling pair,
`
`(c) sensing a voltage level on the data signaling pair in response to the low
`
`level current,
`
`(d) determining whether the access device is capable of accepting remote
`
`power based on the sensed voltage level, and
`
`Page 5 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 6
`
`(e) controlling power supplied by said secondary power source to said access
`device in response to a preselected condition of said voltage level.
`
`21. (New) Method for remotely powering access equipment in an Ethernet
`data network, comprising,
`(a) providing
`
`(i) a data node adapted for data switching,
`(ii) an access device adapted for data transmission,
`(iii) at least one data signaling pair connected between the data node
`and the access device and arranged to transmit data therebetween,
`
`(iv) a main power source connected to supply power to the data node,
`and
`(v) a secondary power source arranged to supply power from the data
`
`node via said data signaling pair to the access device,
`
`(b) delivering a current from said main power source to the access device
`over said data signaling pair, said current being insufficient, by itself. to
`operate said access device connected to the data signaling pair;
`(c) sensing a voltage level on the data signaling pair in response to the
`
`current, and
`(d) controlling power supplied by said secondary power source to said access
`device in response to a preselected condition of said voltage level.
`
`22. (New) Apparatus for remotely powering access equipment in a data
`network, comprising:
`(a) a data node adapted for data switching,
`(b) an access device adapted for data transmission,
`
`(c) at least one data signaling pair connected between the data node and the
`access device and arranged to transmit data therebetween,
`(d) a main power source connected to supply power to the data node and
`deliver a low level current from said main power source to the access device
`
`Page 6 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 7
`
`over said at least one data signaling pair resulting in a voltage level on the
`data signaling pair that can be sensed in response to the low level current,
`
`(e) a secondary power source arranged to supply power from the data node
`via said data signaling pair to the access device. wherein the power supplied
`by said secondary power source to the access device is controlled in
`response to a preselected condition of the sensed voltage level.
`
`23. (New) Method for remotely powering access equipment in an Ethernet
`data network. comprising:
`(a) providing an access device adapted for data transmission:
`
`(b) connecting said access device to at least one data signaling pair
`connected between the access device and a data node adapted for data
`switching. wherein said at least one data signaling pair is arranged to transmit
`
`data therebetween:
`
`(c) receiving at said access device a low level current from a main power
`source over said data signaling pair. wherein said main power source is
`connected to supply power to the data node: and wherein a voltage level is
`generated on the data signaling pair in response to the low level current;
`
`(d) producing a voltage level on the data signaling pair in response to the low
`level current, wherein said voltage level can be sensed:
`(e) receiving at said access device controlled power supplied by a secondary
`power source arranged to supply power from the data node via said data
`
`signaling pair to the access device. in response to a preselected condition of
`said voltage level:
`
`Page 7 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 8
`
`REMARKS
`
`The Patent Owner (Network-1) wishes to thank Examiners Peng Ke, Fred
`
`Ferris, and SP E Alex Kosowski for the courtesies they extended during the in-person
`
`interview of June 26, 2014, to the undersigned- Charles Wieland- Sean Luner,
`
`Corey Horowitz, and Dr. James Knox.
`
`In view of the foregoing amendments, the following remarks, and the
`
`accompanying Declaration of Dr. Knox (Exhibit 2), Patent Owner respectfully
`
`requests reconsideration and withdrawal of the rejections set forth in the Office
`
`Action of December 12, 2012.
`
`II.
`
`Claim Status
`
`Original claims 6, 8, and 9 ("Challenged Claims") are under re-examination
`
`and have been rejected.
`
`None of the original patent claims have been presently amended.
`
`New dependent claims 1 0 through 19 have been added by the above.
`
`New independent claims 20 through 23 have been added by the above.
`
`Claims 6, 8, 9 and 10 through 23 are currently pending for re-examination.
`
`Ill.
`
`Summary of Interview
`
`The following outlines the comments made during the interview conducted on
`
`June 26, 2014. Details of that conversation appear in the comments that follow.
`
`Mr. Wieland began the meeting with introductions, including summarizing Dr.
`
`Knox's credentials as an expert in network communications (who is submitting his
`
`Declaration concurrently with this Amendment as Exhibit 2).
`
`Mr. Luner then presented an overview of the points to be made during the
`
`interview. As explained in detail during the interview and as reflected in the
`
`following detailed discussion and the Declaration of Dr. Knox, none of the references
`
`addressed in the Office Action teach the following recitations of independent claim 6:
`
`(1)
`
`delivering a current or power "on the data signaling pair;"
`
`Page 8 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 9
`
`(2)
`
`(3)
`
`(4)
`
`the claimed "low level current;"
`
`"a data node adapted for data switching;" and
`
`"remotely powering access equipment in a data network."
`
`Mr. Luner summarized the history of the '930 Patent, including the prior
`
`litigations and Inter Partes Reviews, and distributed the following documents:
`
`• Final Written Decision, IPR2013-00071 (Exh. 3);
`
`•
`
`Initial Decision to Institute, IPR2013-00071 (Exh. 4); and
`
`• Decision Denying Petition, IPR2013-00091 (Exh. 5).
`
`Mr. Wieland noted that the actions in this reexamination proceeding are to be
`
`consistent with the Board's orders in IPR2013-00071 and that the Patent Owner
`
`would direct the panel to the relevant portions of the orders during the interview.
`
`Dr. Knox explained the problem addressed by, and the technology underlying,
`
`the "930 Patent using the following demonstrative:
`
`Mr. Luner then identified the references at issue using this demonstrative:
`
`Page 9 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 10
`
`Mr. Luner explained that the references fall into two categories- five USB
`
`references and one telephony reference. The four references identified with an "*" in
`the demonstrative are the references at issue in the present Office Action.
`Dr. Knox then described the USB References and Williams using this
`demonstrative:
`
`Page 10 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 11
`
`Mr. Luner then identified the claim elements missing from all references at issue in
`
`the Office Action, highlighted in red in the following demonstrative:
`
`Page 11 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 12
`
`Vnit~d St~t~t' Pat~~H
`~JZ1:~'>l~:'t-~ 3~.
`
`Mr. Luner noted that the Requestor acknowledged that Williams did not
`
`disclose steps (b), (c), and (d) of claim 6 as well as the step of claim 9:
`
`Page 12 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 13
`
`Dr. Knox then addressed four elements missing from the references.
`
`First, Dr. Knox explained how no reference disclosed the claimed "data
`
`signaling pair" limitations using this demonstrative:
`
`Mr. Luner identified the Board's construction of "data signaling pair" as "a pair of
`
`wires used to transmit data." Dr. Knox then explained that claim 6 of the '930 Patent
`
`requires delivering current (the "low level current" and operating power) on the "data
`
`signaling pair" and showed the circuitry required to impose such "phantom power" on
`
`the data signaling pair (depicted on the lower left of this demonstrative). Dr. Knox
`
`contrasted these "data signaling pair" claim elements with the USB References
`
`(illustrated on the right side of the demonstrative) that exclusively disclose delivering
`
`power and data on separate dedicated pairs of wires.
`
`Second, Dr. Knox explained how none of the references disclosed the
`
`claimed "low level current" using the following demonstrative:
`
`Page 13 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 14
`
`Mr. Luner identified the Board's construction of "low level current" as "a current (e.g.,
`
`approximately 20 rnA) that is sufficiently low that, by itself, it will not operate the
`
`access device." Dr. Knox explained how no reexamination reference disclosed such
`
`a current. Dr. Knox explained how the 100 rnA current in the USB References is
`
`sufficient to operate the access devices disclosed in the USB References and is
`
`therefore not the claimed "low level current." He also explained why the inefficient
`
`current noted in Williams (in the portion of Williams addressing the problems with the
`
`prior art) was also not the claimed "low level current" because Williams specifically
`
`stated that such current was sufficient to operate the disclosed access device.
`Third, Dr. Knox explained how no reference taught the claimed "data node
`
`adapted for data switching" using the following demonstrative:
`
`Page 14 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 15
`
`:.;p~rra;,;n)
`GOfUX>l-:t;v;:ty
`
`Dr. Knox explained (using the left side of the demonstrative) how data switching
`
`required the ability to transfer data between and among devices. Using the right side
`
`of the demonstrative, Dr. Knox explained how USB hubs are not adapted for data
`
`switching because they establish permanent connections between the hub and
`
`access device.
`Fourth, Dr. Knox briefly noted how the references do not teach a "[m]ethod for
`
`remotely powering access equipment in a data network," using the following
`
`demonstrative:
`
`Page 15 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 16
`
`,------·*······"
`
`:
`
`1; < .
`
`.. .,._...:·;~·-... .;-:
`{:-~~~~>!j::~f~f~ :
`,:._',:1,-.·~-·.:_·:_;·_\ ~-....
`. .. - ...... .
`•' '
`: ~~~i·.-.-.-.-.~----~~-( ·:·"-~
`:! 1 : ·~.L_~------------~-~-__j ~~-~~ .. J:·,;,;"_o_-,c: ..
`
`Finally, Mr. Wieland previewed some potential new claims.
`
`IV.
`
`Background
`
`A.
`
`Prior proceedings involving the '930 Patent.
`
`The '930 Patent has been involved in four district court litigations and five
`
`Inter Partes Reviews. The following summarizes these proceedings.
`
`1.
`
`The prior litigations involving the '930 Patent.
`
`There have been four litigations involving the '930 Patent:
`
`[1] PowerDsign v. Network-1 Security Solutions, Inc., Case No. 1 :04-cv-2502
`
`(S.D.N.Y. filed March 31, 2004);
`[2] Network-1 Security Solutions, Inc. v. D-Unk Corporation, et. a/., Case No.
`
`6:05 cv 291 (E. D. Tex. filed August 10, 2005);
`
`Page 16 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 17
`
`[3] Network-1 Security Solutions, Inc. v. Cisco Systems, Inc., et. a/, Case No.
`
`6:08 cv 030 (E.D Tex. filed February 7, 2008); and
`
`[4] Network-1 Security Solutions, Inc. v. Alcatei-Lucent USA Inc., et. a/, Case
`
`No. 6:11 cv 492 (E. D. Tex. filed September 15, 2011) (currently pending).
`
`The first three litigations (the PowerDsign Litigation, D-Unk Litigation, and Cisco
`
`Litigation) resulted in numerous licenses to the '930 Patent. The fourth litigation (the
`
`Alcatel Litigation), which is currently pending, was stayed pending the outcome of
`
`the Inter Partes Reviews described below. As of the date of this filing, no party
`
`moved to lift the stay in the Alcatel Litigation.
`
`2.
`The Inter Partes Reviews involving the '930 Patent.
`After this Reexamination was filed, four defendants in the Alcatel Litigation
`
`filed five IPRs against the '930 Patent:
`
`IPR2013-00071: This Petition challenged claims 6 and 9 of the '930 Patent
`
`based on the following references:
`
`• Matsuno (English translation of JP H1 0-13576);
`
`• Akhteruzzaman (U.S. Patent 5,754,644);
`
`• Chang (U.S. Patent 5,991 ,885); and
`
`• De Nicolo (U.S. Patent 6, 115,468).
`
`The Board initiated this IPR based on Matsuno and De Nicolo. The Board affirmed
`
`each challenged claim of the '930 Patent in a Final Written Decision. Exh. 3.
`
`IPR2013-00092: This Petition challenged claims 6, 8, and 9 of the '930
`
`Patent based on the following references:
`
`• Chang (U.S. Patent 5,991 ,885);
`
`• Woodmas (U.S. Patent 5,345,592);
`
`• Satou (English translation of JP H6-189535); and
`
`• Fisher (U.S. Patent 5,994,998).
`
`The Board denied this Petition at the threshold on the merits:
`
`Page 17 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 18
`
`"Petitioners have not demonstrated a reasonable likelihood that at least
`one of the challenged claims is unpatentable based on the asserted
`grounds. We therefore do not institute an inter partes review on any of the
`asserted grounds as to any of the challenged claims."
`
`Exh. 5 (Decision Denying Petition on Inter Partes Review) at 28.
`
`IPR2013-00385: This Petition, which was joined with IPR2013-00071,
`
`challenged claims 6 and 9 of the '930 Patent based on the following references:
`
`• Matsuno (English translation of JP H1 0-13576);
`
`• Chang (U.S. Patent 5,991 ,885); and
`
`• De Nicolo (U.S. Patent 6, 115,468).
`
`The Board affirmed each challenged claim in a Final Written Decision. Exh. 3.
`
`IPR2013-00386: This Petition challenged claims 6, 8, and 9 of the '930
`
`Patent based on the following references:
`
`• Woodmas (U.S. Patent 5,345,592);
`
`• Smith (U.S. Patent 5,982,456);
`
`• Whittaker (Ron Whittaker, Television Production (1993));
`
`• Lehr (U.S. Patent 6,473,608);
`
`• Matsuno (English translation of JP H1 0-13576); and
`
`• Lamb (U.S. Patent 6,449,348).
`
`The Board, exercising its discretion, declined to institute this Inter Partes Review:
`
`"based on the record before us and exercising our discretion under 35 U.S. C. §
`314(a) and 37 C.F.R. § 42.108(b), we decline to institute an inter partes review in the
`
`instant proceeding." IPR2013-000386, Paper 15, at 6.
`
`IPR2013-00495: This Petition, which was also joined with IPR2013-00071,
`
`challenged claims 6 and 9 of the '930 Patent based on the following references:
`
`• Matsuno (English translation of JP H1 0-13576);
`
`• Chang (U.S. Patent 5,991 ,885); and
`
`• De Nicolo (U.S. Patent 6, 115,468).
`
`Page 18 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 19
`
`The Board affirmed each challenged claim in a Final Written Decision. Exh. 3.
`
`While the art asserted against the '930 Patent in these Inter Partes Reviews is
`
`much closer to the claims of the '930 Patent than the art at issue in this
`
`reexamination, all challenged claims of the '930 Patent were found valid over the art
`
`asserted in these Inter Partes Reviews.
`
`B.
`
`The '930 Patent.
`
`As explained in the Declaration of Dr. Knox, (Knox Decl. ~~14-20), the '930
`Patent teaches and claims a method in which an Ethernet data node (e.g., switch)
`
`performs what is known in the art as Non-Destructive Testing of a connected access
`
`device (e.g., VoiP telephone or wireless access point). This testing determines
`
`whether the connected access device is capable of accepting power over the
`
`Ethernet data transmission signaling pair or pairs, what is referred to as "remote
`
`power." '930 Patent 1 :41-43; Title ("Apparatus and method for remotely powering
`
`access equipment over a 10/100 switched Ethernet Network."). If this testing reveals
`
`that the access device is Power over Ethernet (Po E)-enabled, then the data node
`
`provides phantom operating power over these same signaling pairs. Further, the
`
`data node may continue to monitor the power requirements of the access device and
`
`remove delivery of the phantom power if the access device is removed.
`
`The '930 Patent addresses the problem of detecting whether a device
`
`attached to Ethernet cables can accept remote operating power before sending
`
`remote power that might otherwise damage connected equipment:
`
`"The invention more particularly relates to apparatus and 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 in a reliable non-intrusive way."
`
`'930 Patent 1 :14-19.
`
`The '930 Patent describes and claims a system that can (a) detect whether a
`
`device is attached to the Ethernet cable and, in addition, (b) if a device is connected,
`
`determine whether the device can accept remote power:
`
`Page 19 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 20
`
`"automatic detection of remote equipment being connected to the network;
`determining whether the remote equipment is capable of accepting remote
`power in a non-intrusive manner."
`
`'930 Patent 1 :53-56. This is a central aspect of the invention of the '930 Patent
`
`because devices that can be connected to an Ethernet cable include both devices
`
`that can accept power and devices that cannot. Knox Decl. ~17.
`
`As set forth in claim 6 of the '930 Patent, the claimed invention makes these
`
`determinations by:
`
`60
`
`65
`
`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.
`
`'930 Patent 4:60-67 (claim 6). If the sensing reveals that the access device can
`
`accept remote power, then the data node controls the power by providing operating
`
`power over the data signaling pairs.
`
`Importantly, the claims of the '930 Patent require that the detection "low level
`
`current" and operating power be delivered, sensed, and controlled "over said data
`
`signaling pair" -that is the wire pair within the Ethernet cable used to transmit data
`
`as opposed to a "spare pair" not used to transmit data. '930 Patent claim 6.
`
`C.
`
`Claim constructions.
`
`Based on the Board's direction in IPR2013-00071, the constructions to be
`
`used in this reexamination proceeding are the constructions adopted by the Board in
`
`IPR2013-00071:
`
`FURTHER ORDERED that the stay ofReexmnination Control
`
`No. 90.012,401 is lifted SO tb$t <illY n<:cess~lt)' ~Ktionthat is <:onsi$.t~11t \-vitl'l
`
`the 13oan:f$b1'4e:m i11 Case IPR2(lL'H!007l GMl be t~d-;:<:n1
`
`Exh. 3 (Final Decision) at 33. The constructions adopted by the Board in IRP2013-
`
`00071 for the following three terms are:
`
`Page 20 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 21
`
`"data signaling pair"
`
`"a pair of wires used to transmit data"
`
`"data node adapted
`for data switching"
`
`"a data switch or hub configured to communicate data
`using temporary rather than permanent connections with
`other devices or to route data between devices"
`
`"low level current"
`
`"a current (e.g., approximately 20 rnA) that is sufficiently
`low that, by itself, it will not operate the access device"
`
`Ex h. 3 (Final Decision) at 10.
`
`"data signaling pair"
`1.
`The Board adopted the following construction of "data signaling pair:" "a pair
`
`of wires used to transmit data." Exh. 3 (Final Decision) at 10. As Dr. Knox
`
`explained, the "data signaling pair" -wires used to transmit data -can be contrasted
`
`with other wire pairs that can also be located within a cable, but are not used to
`
`transmit data. Knox Decl. ~~24-25. For example, an Ethernet cable can include
`
`both the claimed "data signaling pair" and a "spare pair"- a wire pair within the
`
`Ethernet cable that is not used to transmit data. See, e.g., Exh. 4 (Decision to
`
`Instituting) at 27 (distinguishing an asserted reference (Chang) because the wires in
`
`the Ethernet cable used to transmit the purported "low level current" are "not used to
`
`transmit data").
`
`"data node adapted for data switching"
`2.
`The Board adopted the following construction of "data node adapted for data
`
`switching:" "a data switch or hub configured to communicate using temporary rather
`
`than permanent connections with other devices or to route data between devices."
`
`Ex h. 3 (Final Decision) at 10.
`
`As Dr. Knox explained, the phrase "data node" is well known in the art, with a
`
`broad range of meanings. Knox Decl. ~27. Generally, the phrase "data node"
`
`includes a device or connection (active or passive) through which data is passed. A
`
`"data node adapted for data switching" is a specific subset of "data nodes" that
`
`control not just the flow of data but also the route over which that data flows. Knox
`
`Decl. ~28 "Data node[s] adapted for data switching" transmit data between and
`
`Page 21 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 22
`
`among the various ports of the data node. Knox Decl. 1f29. An
`
`example is the 8-port Ethernet switch in Figure 3 of the '930
`
`Patent which has the ability to transfer data from any port to at
`
`least one peer port.
`
`In IPR2013-00092, the Board clarified that "adapted for
`
`data switching" does not simply refer to bi-directional
`
`communication between devices but requires transferring data
`
`among devices. The Petitioner in IPR2013-00092 argued that
`
`the "Woodmas" reference disclosed the claimed "data node
`
`adapted for data switching." The Board rejected this argument
`
`because the bi-directional exchange of data between devices,
`
`without the ability to switch data between and among devices,
`
`does not disclose a "data node adapted for data switching:"
`
`8-Port
`Ethemet
`switches
`
`"Patent Owner argues that Wood mas does not disclose providing a 'data
`node adapted for data switching' as recited in claim 6 because control
`station 14 (the claimed 'data node' identified by Petitioners) has 'no ability
`to transfer data between and among undisclosed devices connected to it
`but instead simply delivers signals and power to a camera station 16 via
`the coaxial cable.' ... Patent Owner's argument is persuasive."
`
`Exh. 5 (Decision Denying Petition) at 22-23. Examples of "data nodes adapted for
`
`data switching" are IEEE 802.3af-compliant switches.
`
`3.
`"low level current"
`The Board adopted the following construction of "low level current:" "a current
`
`(e.g., approximately 20 rnA) that is sufficiently low that, by itself, it will not operate the
`
`access device." Exh. 3 (Final Decision) at 10.
`
`The Board determined that the phrase "low level current" is a relative term of
`
`degree, and as a result, should be interpreted to accomplish the purpose of the
`
`invention disclosed and claimed in the '930 Patent:
`
`\V~~ agn:~e ',vith Patent ChH1er that "lnv,' k\-d current" in the context of
`
`dai.:n1 6 is a tenn of degree. Such tenns reqmre a standard fo:r rneasuring the
`
`degree; othenvise the scope of what is daim.:.d ;;::annot he determined .
`
`. ">ee
`
`Page 22 of 82
`
`

`

`Amendment and Reply
`Ex Parte Reexamination No. 90/012,401
`Page 23
`
`Exh. 4 (Decision to Institute) at 8. The problem addressed by the '930 Patent is that
`
`non-compatible devices can be connected to the end of the cable. To address this
`
`problem, the '930 Patent discloses a system to detect- using the claimed "low level
`
`current" -whether there is a remote device attached to the cable, and, if a remote
`
`device is attached, whether that device can receive remote operating power before
`
`delivering such power. Accordingly, the Board concluded that, in the context of the
`
`'930 Patent, to accomplish the inventors' purpose, the phrase "low level current"
`
`should be construed such that the current is at a level that is not, by itself, sufficient
`
`to operate the access device:
`
`"applying the broadest reasonable interpretation, we interpret 'low level
`current' in claim 6 to mean a current (e.g., approximately 20 rnA) that is
`sufficiently low that, by itself, it will not operate the access device."
`
`Exh. 3 (Final Decision) at 10. The Board's analysis of its construction of "low level
`
`current" is presented in detail in its Decision