`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; AXIS
`COMMUNICATIONS INC.; and HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
`Case IPR: To Be Assigned
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1–42.80 & 42.100–42.123
`
`
`
`
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`Table of Contents
`INTRODUCTION .............................................................................................................. 1
`
`MANDATORY NOTICES ................................................................................................. 3
`
`A.
`
`B.
`
`C.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................................. 3
`
`Related Matters under 37 C.F.R. § 42.8(b)(2) ........................................................ 4
`
`Lead and Backup Counsel under 37 C.F.R. § 42.8(b)(3) ....................................... 5
`
`III.
`
`REQUIREMENTS FOR INTER PARTES REVIEW ......................................................... 6
`
`A.
`
`B.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................................... 6
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested ................................................................................................................ 7
`
`1.
`
`2.
`
`3.
`
`Construction of the Challenged Claims under
`37 C.F.R § 42.104(b)(3) .............................................................................. 8
`
`How the Construed Claims are Unpatentable under 37 C.F.R. §
`42.104(b)(4) ................................................................................................ 9
`
`Supporting Evidence under 37 C.F.R. § 42.104(b)(5) ................................ 9
`
`IV.
`
`SUMMARY OF THE ’930 PATENT AND TECHNOLOGY BACKGROUND ........... 10
`
`A.
`
`B.
`
`C.
`
`The Alleged Invention of the ’930 Patent ............................................................. 10
`
`Prosecution History of the ’930 Patent ................................................................. 13
`
`Technology Background Relevant to the ’930 Patent .......................................... 13
`
`V.
`
`CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 6, 8, AND 9........................................................... 15
`
`A.
`
`Ground 1: Woodmas in view of Smith and/or Television Production
`obviates claims 6, 8, and 9 of the ’930 Patent under § 103(a) .............................. 16
`
`1.
`
`2.
`
`3.
`
`Analysis of Woodmas ............................................................................... 16
`
`Analysis of Smith and Television Production ........................................... 17
`
`Motivation to Combine Woodmas with Smith and/or Television
`Production................................................................................................. 19
`
`B.
`
`Ground 2: Lehr in view of Woodmas obviates claims 6, 8, and 9 of the
`’930 Patent under § 103(a). ................................................................................... 29
`
`
`
`(ii)
`
`

`

`
`
`1.
`
`2.
`
`3.
`
`Analysis of Lehr ........................................................................................ 29
`
`Analysis of Woodmas ............................................................................... 31
`
`Motivation to Combine Lehr and Woodmas ............................................. 33
`
`C.
`
`Ground 3: Matsuno anticipates claims 6, 8, and 9 under § 102(b) ....................... 41
`
`1.
`
`2.
`
`Overview of Matsuno ............................................................................... 41
`
`Analysis of Matsuno ................................................................................. 42
`
`D.
`
`Ground 4: Lamb in view of Matsuno obviates claims 6, 8, and 9 under §
`103(a) .................................................................................................................... 51
`
`1.
`
`2.
`
`3.
`
`Analysis of Lamb ...................................................................................... 51
`
`Analysis of Matsuno ................................................................................. 53
`
`Motivation to Combine Lamb and Matsuno ............................................. 54
`
`VI.
`
`CONCLUSION ................................................................................................................. 60
`
`
`
`
`
`
`
`
`(iii)
`
`

`

`
`
`List of Exhibits
`
`
`Ex. 1003
`
`Exhibit
`No.
`Ex. 1001 U.S. Patent No. 6,218,930, titled “Apparatus and Method for Remotely
`Powering Access Equipment Over a 10/100 Switched Ethernet
`Network” (“the ’930 Patent”).
`Ex. 1002 Preliminary Response, Avaya Inc. v. Network Sec. Solutions, Inc.,
`IPR2013-00071, Paper 16 (Mar. 12, 2013).
`“Remote Terminal Line Power for IEEE 802.9 Integrated Services
`Terminal Equipment,” IEEE 802.9f Draft Standard (IEEE 802.9f
`Editor, 1997).
`“Magic Packet Technology,” AMD Publication # 20213 (Nov. 1995).
`Ex. 1004
`Ex. 1005 Declaration of Geoffrey O. Thompson (June 24, 2013).
`Ex. 1006 Order—Staying Concurrent Ex Parte Reexamination—37 C.F.R.
`§ 42.122(a), Sony Corp. of Am. et al. v. Network Sec. Solutions, Inc.,
`IPR2013-00092, Paper 10 (PTAB Dec. 26, 2012).
`Ex. 1007 Office Action in Ex Parte Reexamination, 90/012,401 (Dec. 21, 2012).
`Ex. 1008 Petitioner Sony Corporation of America’s Power of Attorney.
`Ex. 1009 Petitioners Axis Communications AB and Axis Communications
`Inc.’s Power of Attorney.
`Ex. 1010 Petitioner Hewlett-Packard Company’s Power of Attorney.
`Ex. 1011 U.S. Patent No. 5,345,592 (issued Sept. 6, 1994) (“Woodmas”).
`Ex. 1012 U.S. Patent No. 5,982,456 (issued Nov. 9, 1999) (“Smith”).
`Ex. 1013 Ron Whittaker, Television Production (Lansing Hays et al. eds., 1993)
`(“Television Production”).
`Ex. 1014 U.S. Patent No. 6,473,608 (issued October 29, 2002) (“Lehr”).
`Ex. 1015
`Japanese Unexamined Patent Application No. H10-13576 (published
`Jan. 16, 1998) (“Matsuno”).
`Ex. 1016 Verified English translation of Matsuno.
`Ex. 1017 U.S. Patent No. 6,449,348 (issued Sept. 10, 2002) (“Lamb”).
`Ex. 1018 U.S. Provisional Patent App. No. 60/115,628 (filed Jan. 12, 1999)
`(“Lehr Provisional”).
`Ex. 1019 Decision: Institution of Inter Partes Review, Avaya Inc. v. Network
`Sec. Solutions, Inc., IPR2013-00071, Paper 18 (PTAB May 24, 2013).
`Ex. 1020 Decision: Institution of Inter Partes Review, Sony Corp. of Am. v.
`
`
`
`(iv)
`
`

`

`
`
`Network Sec. Solutions, Inc., IPR2013-00092, Paper 21 (PTAB May
`24, 2013).
`Ex. 1021 Certification of English translation of Matsuno.
`Ex. 1022 Notice of Allowability, No. 09/520,350 (Sept. 8, 2000).
`Ex. 1023 U.S. Patent No. 447,918 (issued Mar. 10, 1891) (“Strowger”).
`Ex. 1024 U.S. Patent No. 4,733,389 (issued Mar. 22, 1988) (“Puvogel”).
`
`
`
`
`(v)
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Under 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Sony Corporation of
`
`America (“Sony”); Axis Communications AB and Axis Communications, Inc.
`
`(“Axis”); and Hewlett-Packard Company (“HP”) (collectively “Petitioners”)
`
`respectfully request inter partes review of claims 6, 8, and 9 of U.S. Patent No.
`
`6,218,930 (“the ’930 Patent”) (attached as Ex. 1001).
`
`Network-1 has characterized the ’930 Patent as a solution for detecting
`
`whether a device connected to a data network can receive remote power before
`
`sending remote power that might otherwise damage the connected device. Ex.
`
`1002 at 5, 22, 23. But neither the concept of remote powering nor the method
`
`claimed in the ’930 Patent for determining whether to power a particular access
`
`device is novel or nonobvious.
`
`Indeed, remote powering dates back to Alexander Graham Bell’s 1877
`
`telephone networks that transmitted power to telephones from a central station.
`
`While more complex data formats and network equipment have evolved over the
`
`last century, the basic concept of providing data and power over a data connection
`
`has not changed. Indeed, the ’930 Patent acknowledges that prior art
`
`telecommunications equipment, such as telephones and network repeaters,
`
`provided power and data over the same wires. Ex. 1001 at 1:22–24.
`
`
`
`1
`
`

`

`
`
`As data communication networks evolved, remote powering continued to be
`
`integrated into new communication technology with new types of access devices.
`
`Likewise, remote powering adapted in response to the different types of access
`
`devices that could be connected to these networks.
`
`The Patent Owner has argued that the “central aspect” of the alleged
`
`invention is its use of a “current”—rather than a data signal—to determine (1)
`
`whether a device is attached and (2) whether to send that device remote power.
`
`Ex. 1002 at 5–6, 8–9. Aside from the fact that it is simpler to send a current than a
`
`data signal to determine the power characteristics of an access device, the use of
`
`such currents long predates the ’930 Patent, both in the telecommunications field
`
`and in more modern data network applications.
`
`For example, Woodmas, described below, describes methods of remotely
`
`powering camera stations in a television production network based on the camera
`
`stations’ response to a low level current of 15mA. Matsuno, also described below,
`
`provides another example of remotely powering access devices in an Integrated
`
`Services Digital Network (“ISDN”) using a low current that is incapable of
`
`operating the access device. Matsuno describes in detail how power can be
`
`provided to ISDN terminals (“access devices”) from a switching station (“data
`
`node”), and how the supply of such power can be controlled in response to sensed
`
`voltage or current levels as set forth in the challenged claims of the ’930 Patent.
`
`
`
`2
`
`

`

`
`
`Other references, including Lamb and Lehr, show that it was well known to
`
`remotely power access devices over a local area network (“LAN”) and a wide area
`
`network (“WAN”), including specifically equipment in an Ethernet network.
`
`Likewise, others had already developed methods for selectively powering access
`
`devices over an Integrated Service LAN (“ISLAN”). Ex. 1003 at 1–2. Indeed, this
`
`technology was not only developed, but commercialized long before the claimed
`
`priority date of the ’930 Patent. Ex. 1004; Ex. 1005 ¶¶ 35–37. Controlling the
`
`supplied power in an Ethernet network requires nothing more than the application
`
`of well-known principles that can readily be found in the prior art, including in any
`
`of the references presented herein.
`
`None of the references discussed in this Petition were considered by the
`
`United States Patent & Trademark Office (“USPTO”) before issuing the ’930
`
`Patent. Indeed, not a single reference from the vast fields of ISDN or Ethernet was
`
`cited against the claims contained in the ’930 Patent. Had the references discussed
`
`herein been considered, the claims of the ’930 Patent would not have issued.
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Sony Corporation of America is a real party-in-interest. Sony Electronics
`
`Inc. is a wholly owned subsidiary of Sony Corporation of America. Sony
`
`Corporation of America is an indirect, wholly owned subsidiary of Sony
`
`
`
`3
`
`

`

`
`
`Corporation. Axis Communications AB and Axis Communications, Inc. are real
`
`parties-in-interest. Axis AB is the parent corporation of Axis Communications
`
`AB. Axis Communications AB is the parent corporation of Axis Communications,
`
`Inc. Hewlett-Packard Company is a real party-in-interest.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`The following matters may affect or be affected by a decision in this matter:
`
`Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al., E.D.
`
`Tex., No. 6:11-cv-00492-LED, is a patent infringement lawsuit involving the ’930
`
`Patent that was brought by the patent owner, Network-1 Security Solutions, Inc.
`
`The suit has been stayed pending the outcome of the post-grant proceedings
`
`involving the ’930 Patent noted below.
`
`Avaya Inc. v. Network-1 Security Solutions, Inc., No. IPR2013-00071, is an
`
`inter partes review of the ’930 Patent. It was instituted on May 24, 2013.
`
`Sony Corporation of America v. Network-1 Security Solutions, Inc., No.
`
`IPR2013-00092, is a petition for an inter partes review of the ’930 Patent that was
`
`filed by Sony Corporation of America, Axis Communications AB, and Axis
`
`Communications Inc. on December 19, 2012. A request for rehearing of a portion
`
`of the Board’s Decision not to institute an inter partes review is pending.
`
`An ex parte reexamination proceeding of the ’930 Patent, No. 90/012,401,
`
`was granted on September 5, 2012. An Office Action rejecting claims 6, 8, and 9
`
`
`
`4
`
`

`

`
`
`on both anticipation and obviousness grounds issued on December 21, 2012. Ex.
`
`1007. While the claims presently stand rejected, the reexamination proceeding was
`
`stayed pursuant to an order issued in Case IPR2013-0092. See Ex. 1006.
`
`In addition to the above-noted active matters, Petitioners are aware of three
`
`prior litigations involving the ’930 Patent, each of which is now terminated and
`
`none of which reached a final judgment on the issue of validity based on prior art.
`
`Those litigations include: (i) PowerDsine, Inc. v. Network-1 Security Solutions,
`
`Inc., No. 1:2004-cv-02502 (S.D.N.Y. filed Mar. 31, 2004); (ii) Network-1 Security
`
`Solutions, Inc v. D-Link Corporation et al., No. 6:2005-cv-00291 (E.D. Tex. filed
`
`Aug. 10, 2005); and (iii) Network-1 Security Solutions, Inc v. Cisco Systems, Inc.,
`
`et al., No. 6:08-cv-00030 (E.D. Tex. filed Feb. 7, 2008).
`
`C. Lead and Backup Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel and the
`
`accompanying service information:
`
`Lead Counsel for Petitioners Sony and
`Axis
`Lionel M. Lavenue (Reg. No. 46,859)
`lionel.lavenue@finnegan.com
`Postal and Hand-Delivery Address
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571.203.2700
`Fax: 202.408.4400
`
`Backup Counsel for Petitioners Sony
`and Axis
`C. Gregory Gramenopoulos (Reg. No.
`36,532)
`gramenoc@finnegan.com
`Postal and Hand-Delivery Address
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`901 New York Avenue, NW
`Washington, D.C. 20001-4413
`Telephone: 202.408.4263
`Fax: 202.408.4400
`
`
`
`5
`
`

`

`
`
`
`
`Lead Counsel for Petitioner HP
`Robert J. Walters (Reg. No. 40,862)
`rwalters@mwe.com
`Postal and Hand-Delivery Address
`McDermott Will & Emery LLP
`500 North Capitol Street, N.W.
`Washington, D.C. 20001
`Telephone: 202.756.8138
`Fax: 202.756.8087
`
`Backup Counsel for Petitioner HP
`Charles J. Hawkins (Reg. No. 62,831)
`chawkins@mwe.com
`Postal and Hand-Delivery Address
`McDermott Will & Emery LLP
`500 North Capitol Street, N.W.
`Washington, D.C. 20001
`Telephone: 202.756.8019
`Fax: 202.756.8087
`
`Powers of attorney accompany this Petition. See Exs. 1008, 1009, 1010.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioners hereby certify that the ’930 Patent is available for inter partes
`
`review and that the Petitioners are not barred or estopped from requesting inter
`
`partes review challenging the claims of the ’930 Patent on the grounds identified in
`
`this Petition. This Petition is being filed concurrently with a Motion for Joinder
`
`with IPR2013-00071 and within one month of the institution of IPR2013-00071, in
`
`accordance with 37 C.F.R. § 42.122(b).
`
`Concurrently, Petitioners are filing Powers of Attorney and an Exhibit List
`
`pursuant to § 42.10(b) and § 42.63(e), respectively. Fees are submitted herewith.
`
`If any additional fees are due at any time through the course of the inter partes
`
`review, the undersigned authorizes the Office to charge such fees to Deposit
`
`Account No. 06-0916.
`
`
`
`6
`
`

`

`
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Pursuant to Rules 42.22(a)(1) and 42.104 (b)(1)–(2), Petitioners challenge
`
`claims 6, 8, and 9 of the ’930 Patent and request that these claims be found
`
`unpatentable in view of the following prior art references:
`
`Priority Date
`April 2, 1992
`
`Issue or Publication Date Exhibit
`September 6, 1994
`1011
`
`Prior Art Reference
`US 5,345,592
`(“Woodmas”)
`US 5,982,456
`(“Smith”)
`Ron Whittaker, Television
`Production (1993)
`(“Television Production”)
`US 6,473,608
`(“Lehr”)
`JP H10-13576
`(“Matsuno”)
`US 6,449,348
`(“Lamb”)
`
`The ’930 Patent claims priority to U.S. Provisional Application No.
`
`March 25, 1997 November 9, 1999
`
`n/a
`
`1993
`
`January 12, 1999 October 29, 2002
`
`June 20, 1996
`
`January 16, 1998
`
`May 29, 1997
`
`September 10, 2002
`
`1012
`
`1013
`
`1014
`
`1015,
`1016
`1017
`
`60/123,688, filed on March 10, 1999. Even if the challenged claims are assumed
`
`to be entitled to a March 10, 1999 priority date (which Petitioners do not concede),
`
`each of the identified references in this Petition is prior art to the claims.
`
`Woodmas is prior art to the ’930 Patent under 35 U.S.C. § 102(b). Smith is
`
`prior art to the ’930 Patent under 35 U.S.C. § 102(a),(e). Television Production is
`
`prior art to the ’930 Patent under 35 U.S.C. § 102(b). Lehr is prior art to the ’930
`
`Patent under 35 U.S.C. § 102(a),(e), and its disclosure is supported by its
`
`
`
`7
`
`

`

`
`
`provisional application, U.S. Application No. 60/115,628 (attached as Ex. 1018).
`
`Lamb is prior art to the ’930 Patent under 35 U.S.C. § 102(a),(e). Matsuno is prior
`
`art to the ’930 Patent under 35 U.S.C. § 102(b).
`
`Petitioners assert the following specific grounds of rejection:
`
`Ground
`No.
`1
`
`2
`
`3
`4
`
`
`
`Proposed Statutory Rejections for the ’930 Patent Claims
`
`Claim
`Nos.
`6, 8, 9 Obvious under 35 U.S.C. § 103(a) by Woodmas (Ex. 1011) in
`view of Smith (Ex. 1012) and/or Television Production (Ex.
`1013).
`6, 8, 9 Obvious under 35 U.S.C. § 103(a) by Lehr (Ex. 1014) in view of
`Woodmas.
`6, 8, 9 Anticipated under 35 U.S.C. § 102(b) over Matsuno (Ex. 1016).
`6, 8, 9 Obvious under 35 U.S.C. § 103(a) over Lamb (Ex. 1017) in
`view of Matsuno.
`
`1.
`
`Construction of the Challenged Claims under
`37 C.F.R § 42.104(b)(3)
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 42
`
`C.F.R. § 42.100(b). Petitioners submit, for the purposes of this inter partes review
`
`only, that the claim terms are presumed to have their broadest reasonable ordinary
`
`and customary meanings that the terms would have to a person of ordinary skill in
`
`the art at the time of alleged invention (“PHOSITA”) in light of the specification of
`
`the ’930 Patent.
`
`The Board has already construed certain claim terms of the ’930 Patent.
`
`Petitioners respectfully request that the Board adopt the constructions applied in
`
`
`
`8
`
`

`

`
`
`IPR2013-00071 and IPR2013-00092. See Ex. 1019 at 6–14; Ex. 1020 at 6–14.
`
`Petitioners respectfully request that the Board adopt the following claim
`
`constructions for the Inter Partes Review resulting from this Petition:
`
`“Low level current”—a current (e.g., approximately 20 mA) that is
`
`sufficiently low that, by itself, it will not operate the access device.
`
`“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.
`
`“Data signaling pair”—a pair of wires used to transmit data.
`
`“Main power source” and “secondary power source” —do not need to be
`
`physically separate devices.
`
`All other terms in claims 6, 8, and 9 are given their ordinary and customary
`
`meaning and need not be further construed for purposes of this Petition.
`
`2. How the Construed Claims are Unpatentable under 37
`C.F.R. § 42.104(b)(4)
`
`An explanation of how construed claims 6, 8, and 9 of the ’930 Patent are
`
`invalid under the statutory grounds identified above, including the identification of
`
`where each element of the claim is found in the prior art patents or printed
`
`publications, is provided in Section V below.
`
`Supporting Evidence under 37 C.F.R. § 42.104(b)(5)
`
`3.
`The exhibit numbers of the supporting evidence relied upon and the
`
`
`
`9
`
`

`

`
`
`relevance of the evidence to the challenges raised, including identifying specific
`
`portions of the evidence that support the challenge, are provided herein. An
`
`Exhibit List identifying the exhibits is included. Pursuant to 37 C.F.R. § 42.63(b),
`
`an Affidavit attesting to the fact that Ex. 1016 (“Matsuno”) is an accurate and
`
`complete translation of Ex. 1005 is included as Ex. 1021. In further support of the
`
`proposed grounds of rejection, this Petition is accompanied by a declaration by
`
`technical expert Mr. Geoffrey O. Thompson, attached as Ex. 1005, explaining (1)
`
`how a PHOSITA would read the teachings and claims of the ’930 Patent, and (2)
`
`what would be understood by a PHOSITA based on the relied-upon prior art; and
`
`(3) the ordinary knowledge possessed by a PHOSITA.
`
`IV. SUMMARY OF THE ’930 PATENT AND TECHNOLOGY
`BACKGROUND
`A. The Alleged Invention of the ’930 Patent
`The ’930 Patent, titled “Apparatus and Method for Remotely Powering
`
`Access Equipment Over a 10/100 Switched Ethernet Network,” issued on April 17,
`
`2001 based on Application No. 09/520,350, filed March 7, 2000, which claims
`
`priority to Provisional Application No. 60/123,688, filed March 10, 1999.
`
`The ’930 Patent relates to “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.” Ex. 1001 at 1:14–19. The ’930 Patent describes how it was generally
`
`
`
`10
`
`

`

`
`
`known in the prior art to power communications equipment, such as telephones,
`
`remotely, but incorrectly asserts that doing so had “not migrated to data
`
`communications equipment” due to various purported problems, such as the high
`
`power levels required by data communications equipment. Id. at 1:22–32; Ex.
`
`1005 at ¶¶ 30–37. The patent asserts a need in the art to power communications
`
`equipment remotely and to “reliably determin[e] if a remote piece of equipment is
`
`capable of accepting remote power.” Ex. 1001 at 1:41–43.
`
`
`Figure 3 (reproduced above) depicts a remote telephone 62 capable of
`
`receiving and transmitting both voice and data. Id. at 3:60–66. Telephone 62 is
`
`connected to access node 64 at the customer’s premises, and access node 64 is
`
`connected to one of the ports of Ethernet switch 68 via wiring 66. Id. Ethernet
`
`switch 68 comprises an automatic remote power detector 22 (shown in Fig. 1) and
`
`remote power supply 34 (shown in Fig. 2). Id. at 4:1–4.
`11
`
`
`
`

`

`
`
`Claim 6, reproduced below, is the only independent claim in this Petition:
`
`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.
`
`
`The embodiment described in the ’930 Patent operates as follows: A remote
`
`access device, such as the telephone shown in Fig. 3, is normally powered by “an
`
`ac transformer adapter plugged into the local 110 volt supply,” but may or may not
`
`be capable of being powered remotely. Id. at 2:40–44. The system detects if the
`
`access device is capable of being powered remotely by “delivering a low level
`
`current (approx. 20 ma)” over twisted pairs of an Ethernet cable used for data
`
`signaling and “measuring a voltage drop in the return path.” Id. at 2:66–3:2, 3:44–
`
`48. If there is no voltage drop or a fixed voltage level is detected, the device is not
`
`capable of accepting remote power. Id. at 3:2–11. If a varying or “sawtooth”
`
`voltage level occurs (caused by the access device repeatedly beginning to start up
`12
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`
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`but being “unable to sustain the start up” due to the low current level), the device is
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`capable of accepting remote power. Id. at 3:12–22. The system then increases the
`
`power supplied remotely to the access device. Id. Once the access device is
`
`operating under remote power, the system looks for removal of that device and
`
`decreases the power being supplied when the device disconnects. Id. at 3:49–58.
`
`Prosecution History of the ’930 Patent
`
`B.
`As indicated above, the ’930 Patent is based on U.S. Application No.
`
`09/520,350 (“the application”). The application was allowed in the first action by
`
`the Examiner. Only six prior art references were made of record, including only
`
`one patent (U.S. Patent No. 5,144,544) cited by the Applicants. The Examiner’s
`
`statement of reasons for allowance, which accompanied the Notice of Allowability
`
`of September 11, 2000, concludes that the prior art considered did not disclose “all
`
`subject matter[]” of independent claim 1. Ex. 1023 at 2. The Examiner did not
`
`identify any specific feature of the claims that was not found in the prior art and
`
`failed to consider any of the prior art presented in this Petition.
`
`C. Technology Background Relevant to the ’930 Patent
`Prior to 1999 and the claimed priority of the ’930 Patent, remotely powering
`
`access equipment in a data network was well known. Ex. 1005 at ¶¶ 30–37. The
`
`’930 Patent itself acknowledges that remote power was generally incorporated in
`
`related technology fields, including telephony and network repeaters. See Ex.
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`
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`13
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`
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`1001 at 1:22–24. Indeed, the application of remote-powering technologies to data
`
`networks and communication systems was developed long before the ’930 Patent.
`
`The ’930 Patent explains that the application of remote-powering techniques
`
`to data communications equipment “[o]bviously has many advantages” and “is
`
`being pushed by the convergence of voice and data technologies.” See id. at 1:24–
`
`25; 1:33–35. As evidenced by Woodmas, which was filed seven years before ’930
`
`Patent’s earliest claimed priority date, remote-powering technology was already
`
`used in media production systems to transmit data in the form of video, audio, and
`
`control signals over a pair of conductors that also deliver power to the remote
`
`device. See Ex. 1011 at Abstract. Woodmas discloses methods for remotely
`
`powering camera modules for on-location productions, undermining the ’930
`
`Patent’s argument that applying such technology to other types of networks was
`
`prohibited by “high power level” requirements of the “[d]ata communication
`
`equipment,” such as the access devices in Woodmas. Id.; Ex. 1001 at 1:27–29.
`
`As data communications technology developed to incorporate telephones
`
`into the same network as other types of access devices, the industry recognized that
`
`“users have come to expect [telephone] service under all conditions including loss
`
`of power,” and that optional remote powering should be developed for at least
`
`these types of access devices. Ex. 1003 at 1; Ex. 1005 ¶¶ 37. The logical
`
`progression of data network technology also included application of remote
`
`
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`
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`powering principles to other types of access devices, including digital video
`
`conferencing equipment, portable computers, network printers, security systems,
`
`and networking devices such as routers, bridges, and switches. See Ex. 1018 at 3.
`
`As a variety of access devices could be connected to a given network,
`
`methods for determining how to power these access devices were implemented.
`
`For example, Woodmas provides a low level current of 15mA to the access device
`
`(e.g., a camera station module), and in response, a subsystem of the camera station
`
`module generates a power status signal. Infra, Part V.A. Power is then supplied to
`
`the access device based upon the power status signal. Id. Thus, the use of a low
`
`level current to determine whether and how to power an access device long
`
`predates the ’930 Patent.
`
`V. CLAIM-BY-CLAIM EXPLANATION1 OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 6, 8, AND 9
`
`As explained below, each cited prior art reference discloses remote-
`
`powering technologies that anticipate and render obvious the ’930 Patent claims.
`
`Therefore, claims 6, 8, and 9 of the ’930 Patent should be found unpatentable over
`
`the prior art.
`
`
`1 The citations in the charts include underlining to indicate portions that are
`
`particularly relevant to the claim element.
`
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`A. Ground 1: Woodmas in view of Smith and/or Television Production
`obviates claims 6, 8, and 9 of the ’930 Patent under § 103(a)
`Analysis of Woodmas
`1.
`Woodmas discloses a method for powering access equipment (e.g., camera
`
`station 16, camera station module 28, or devices 18–24) in a data network that
`
`includes an access device (e.g., camera station 16, camera station module 28, or
`
`devices 18–24), a data signaling pair (e.g., coaxial cable or two wire pair), a main
`
`power source (e.g., conventional AC power source, power supply 38, or power
`
`delivery unit 34), and a secondary power source (e.g., conventional AC power
`
`source, power supply 38, or power delivery unit 34).
`
`
`According to Woodmas, a cable 30 with a conductor pair connects control
`
`station module 26 with camera station module 28. Ex. 1011 at 5:3–6; 2:3–5; Fig.
`
`1; Ex. 1005 ¶ 44. When the power delivery unit 34 of control station module 26 is
`
`initially energized, a low level current of 15 mA is delivered over cable 30 to
`
`camera station module 28. Ex. 1011 at 3:50–52; 6:43–47. Ex. 1005 ¶ 46–47, 49.
`
`
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`16
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`

`
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`An oscillator 88 within power reception unit 76 of camera station 28
`
`generates a power status signal in response to the low level current. Ex. 1011 at
`
`6:16–26; Ex. 1005 ¶ 47. The frequency of the power status signal represents the
`
`voltage delivered from power delivery unit 34 to camera station module 28. Ex.
`
`1011 at 6:20–26; Ex. 1005 ¶ 47. The power status signal is sent back to the power
`
`delivery unit 34 via cable 30 and is used to control power supplied to camera
`
`station module 28 through cable 30. Ex. 1011 at 6:32–40; 7:39–56, 8:7–17; Ex.
`
`1005 ¶ 47. The power status signal is “representative” of the low level voltage and
`
`current. Ex. 1011 at 6:36–40, 7:44–50. Using Woodmas’s detection technique,
`
`“both the presence and functionality of power delivery unit 76 are checked before
`
`full power is imposed on cable 30.” Id. at 7:50–52; Ex. 1005 ¶ 47–49.
`
`Analysis of Smith and Television Production
`2.
`Smith teaches a “digital video production switcher” like the production
`
`switcher in control station 14 of Woodmas. Ex. 1012, Abstract; Ex. 1010 at 2:44–
`
`50. Digital video production switcher 10 (below) is configured to receive “video
`
`input signals from various external devices 14 (e.g., network feeds, satellite feeds,
`
`cameras, receivers and recorders).” Ex. 1012 at 3:45–49. The digital video
`
`production switcher 10 also includes an integrated network interface unit 28, which
`
`provides connectivity to “a local area network or a wide area network” for, e.g.,
`
`sending and receiving production related data. Id. at 4:42–51.
`
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`
`
`Television Production also teaches a “production switcher,” similar to
`
`Woodmas’s production switcher. Ex. 1013 at 232. Like the production switcher in
`
`Smith, Television Production’s production switcher may be computer-based and
`
`may handle a wide variety of input signals, such as multiple cameras, recording
`
`devices, and satellite signals