Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 24
`Entered: July 2, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS
`AB; and AXIS COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00092
`Patent 6,218,930
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioners’ Request for Rehearing
`37 C.F.R. § 42.71
`
`
`571-272-7822
`
`
`
`Paper 24
`Entered: July 2, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS
`AB; and AXIS COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00092
`Patent 6,218,930
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioners’ Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`Case IPR2013-00092
`Patent 6,218,930
`
`
`Introduction
`
`Petitioners filed a request for rehearing (Paper 22, “Rehearing
`
`Request”) of the Board’s decision (Paper 21, “Decision”) not to institute an
`
`inter partes review of claims 6, 8, and 9 of Patent 6,218,930 (the “’930
`
`patent”). Petitioners contend that the Board erred in not instituting on the
`
`ground that claims 6, 8, and 9 are anticipated by Woodmas (Ex. 1005) under
`
`35 U.S.C. § 102(b). Petitioners do not challenge the Board’s decision as to
`
`any of the other grounds of unpatentability asserted in the Petition. For the
`
`reasons stated below, Petitioners’ request is denied.
`
`
`
`Analysis
`
`In determining whether to institute an inter partes review of a patent,
`
`the Board may “deny some or all grounds for unpatentability for some or all
`
`of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a
`
`decision on petition, the Board will review the decision for an abuse of
`
`discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the
`
`burden of showing an abuse of discretion, and “[t]he request must
`
`specifically identify all matters the party believes the Board misapprehended
`
`or overlooked.” 37 C.F.R. § 42.71(d).
`
`We determined in the Decision that Petitioners had not established a
`
`reasonable likelihood of prevailing on their assertion that claims 6, 8, and 9
`
`are anticipated by Woodmas under 35 U.S.C. § 102(b). Dec. 21-24.
`
`Specifically, independent claim 6 recites providing a “data node adapted for
`
`data switching.” We interpreted “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
`
`
`
`2
`
`
`
`Case IPR2013-00092
`Patent 6,218,930
`
`between devices, and concluded that Petitioners had not shown that control
`
`station 14 in Woodmas is a “data node adapted for data switching” under
`
`that interpretation. Id. at 11-12, 22-24.
`
`Petitioners argue that the Board misapprehended or overlooked the
`
`fact that control station 14 includes a particular component, namely a
`
`“production switcher,” that makes control station 14 a “data node adapted
`
`for data switching” as recited in claim 6. Rehearing Req. 4-10. Petitioners
`
`contend that the “production switcher” in Woodmas is able to send and
`
`receive “multiplexed” signals to and from various devices at camera station
`
`16 and “temporarily form connections for signals to and from” those
`
`devices. Id. at 4-8. Petitioners submit new Exhibit 1023, Patent 5,325,202,
`
`as allegedly indicative of what a person of ordinary skill in the art would
`
`have understood the term “production switcher” in Woodmas to mean at the
`
`time. Id. at 5 n.3.1
`
`We could not have misapprehended or overlooked something not
`
`explained adequately in the initial Petition. The arguments Petitioners now
`
`make with respect to the “production switcher” in Woodmas were not
`
`included in the Petition. The entirety of Petitioners’ argument in the Petition
`
`with respect to the “data node adapted for data switching” limitation of
`
`claim 6 is as follows:
`
`
`1 Petitioners also argue that Woodmas discloses other limitations of claim 6
`(in addition to the “data node adapted for data switching”) and dispute
`various arguments made by Patent Owner in its preliminary response.
`Rehearing Req. 3, 9-12. None of these issues was addressed in the Decision,
`as the Board concluded that Petitioners had not made a threshold showing as
`to the “data node adapted for data switching” in independent claim 6. See
`Dec. 24 n.3. Thus, the new arguments are not entitled to consideration.
`
`
`
`3
`
`
`
`Case IPR2013-00092
`Patent 6,218,930
`
`
`Woodmas discloses providing a data node adapted for
`data switching (e.g., control station 14).
`
`Woodmas, 2:54-61 (“Apparatus 10 broadly includes
`control station module 26 and camera station module 28
`interconnected by conventional 75-Ohm coaxial cable 30.
`Control station module 26 is also coupled with control station
`14 for bi-directional signal transfer therewith, and camera
`station module 28 is coupled with components 18-24 of camera
`station module 16 also for bidirectional signal transfer
`therewith.”).
`
`See also id. at 2:41–53; 2:54-61; 2:62–3:11.
`
`Pet. 27-28 (emphases in original). Thus, Petitioners’ argument amounts to
`
`an identification of control station 14 as the claimed “data node adapted for
`
`data switching” and a citation to 38 lines of Woodmas. As explained in the
`
`Decision, Petitioners included no analysis as to how control station 14
`
`allegedly is adapted for data switching. Dec. 23-24. Petitioners do not
`
`mention specifically the “production switcher,” explain how it works, or
`
`identify it as the part of control station 14 allegedly responsible for data
`
`switching. It cannot be said that the Board misapprehended or overlooked
`
`an argument regarding the “production switcher” that was never made.
`
`Similarly, we could not have misapprehended or overlooked evidence
`
`that was not part of the record at the time of the Decision. Petitioners have
`
`not shown good cause for considering Exhibit 1023, submitted for the first
`
`time with Petitioners’ rehearing request, at this stage of the proceeding. See
`
`Rehearing Req. 5 n.3 (citing Ex. 1023 for the alleged meaning of
`
`“production switcher”); Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48768 (Aug. 14, 2012) (in deciding a request for rehearing,
`
`“[e]vidence not already of record at the time of the decision will not be
`
`admitted absent a showing of good cause”).
`
`
`
`4
`
`
`
`Case IPR2013-00092
`Patent 6,218,930
`
`
`Petitioners do not point to anything specific in the Petition that would
`
`have provided notice to Patent Owner or the Board that Petitioners were
`
`arguing control station 14 to be a “data node adapted for data switching”
`
`because of the presence and operation of a “production switcher.” The mere
`
`citation to 38 lines in Woodmas, without explanation, does not equate to an
`
`argument that control station 14 is a “data node adapted for data switching”
`
`because it has a “production switcher” that operates in a particular way. A
`
`request for rehearing is not an opportunity to supplement an initial petition
`
`and make arguments a petitioner did not make before. See 37 C.F.R. §
`
`42.104(b)(4) (a petition must identify “[h]ow the construed claim is
`
`unpatentable under the statutory grounds identified” and “where each
`
`element of the claim is found in the prior art patents or printed publications
`
`relied upon”).
`
`Petitioners have not carried their burden of demonstrating that the
`
`Board’s Decision misapprehended or overlooked any matters argued in the
`
`Petition. As such, Petitioners have not shown an abuse of discretion in the
`
`decision not to institute an inter partes review based on Woodmas.
`
`In consideration of the foregoing, it is hereby ORDERED that
`
`Petitioners’ request for rehearing is denied.
`
`
`
`5
`
`
`
`Case IPR2013-00092
`Patent 6,218,930
`
`PETITIONERS:
`
`Lionel M. Lavenue
`C. Gregory Gramenopoulos
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`lionel.lavenue@finnegan.com
`gramenoc@finnegan.com
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`BUCHANAN, INGERSOLL & ROONEY P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
`
`
`6
`
`
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