Paper 15
`Entered: July 29, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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
`COMPANY
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00386
`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
`
`
`Entered: July 29, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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
`COMPANY
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00386
`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
`
`
`
`Case IPR2013-00386
`Patent 6,218,930
`
`
`Sony Corporation of America, Axis Communications AB, Axis
`Communications Inc., and Hewlett-Packard Company (collectively,
`“Petitioners”) filed a Petition (Paper 1) (“Pet.”) to institute an inter partes
`review of claims 6, 8, and 9 of Patent 6,218,930 (the “’930 patent”) pursuant
`to 35 U.S.C. § 311 et seq. and a motion for joinder with Case
`IPR2013-00071 (Paper 5) (“Mot.”). Patent Owner Network-1 Security
`Solutions, Inc. (“Network-1”) has not yet filed a preliminary response to the
`Petition. We have jurisdiction under 35 U.S.C. § 314. For the reasons that
`follow, the Board has determined not to institute an inter partes review.1
`
`
`I. BACKGROUND
`A. Related Matters
`Case IPR2013-00071
`On December 5, 2012, Avaya Inc. (“Avaya”) filed a petition to
`institute an inter partes review of claims 6 and 9 of the ’930 patent, asserting
`five grounds of unpatentability. IPR2013-00071, Paper 1. On May 24,
`2013, the Board granted the petition and instituted an inter partes review of
`the ’930 patent on the following grounds:
`Claims 6 and 9 under 35 U.S.C. § 102(b) as anticipated
`by Japanese Unexamined Patent Application Publication No.
`H10-13576 (“Matsuno”); and
`Claims 6 and 9 under 35 U.S.C. § 103(a) as unpatentable
`over Patent 6,115,468 (“De Nicolo”) in view of Matsuno.
`IPR2013-00071, Paper 18 at 29. Avaya’s request for rehearing as to a
`portion of the Board’s decision was denied. IPR2013-00071, Paper 32.
`
`
`1 In a decision entered concurrently, Petitioners’ motion for joinder with
`Case IPR2013-00071 is denied.
`
`
`
`2
`
`
`
`Case IPR2013-00386
`Patent 6,218,930
`
`The Board entered subsequently a Revised Scheduling Order setting various
`due dates for the trial. IPR2013-00071, Paper 39.
`
`
`Case IPR2013-00092
`On December 19, 2012, Sony Corporation of America, Axis
`Communications AB, and Axis Communications Inc. filed a petition to
`institute an inter partes review of claims 6, 8, and 9 of the ’930 patent,
`asserting the following grounds of unpatentability:
`Claims 6, 8, and 9 under 35 U.S.C. §§ 102(a) and (e) as
`anticipated by Patent 5,991,885 (“Chang”);
`Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as
`unpatentable over Patent 5,994,998 (“Fisher”) in view of
`Chang;
`Claims 6, 8, and 9 under 35 U.S.C. § 102(b) as
`anticipated by Patent 5,345,592 (“Woodmas”); and
`Claims 6, 8, and 9 under 35 U.S.C. § 102(b) as
`anticipated by Japanese Unexamined Patent Application
`Publication No. 6-189535 (“Satou”).
`IPR2013-00092, Paper 8. On May 24, 2013, the Board denied the petition,
`concluding that the petitioners had not demonstrated a reasonable likelihood
`that at least one of the challenged claims is unpatentable based on the
`asserted grounds. IPR2013-00092, Paper 21. The petitioners’ request for
`rehearing as to a portion of the Board’s decision was denied.
`IPR2013-00092, Paper 24.
`
`
`B. The ’930 Patent (Ex. 1001)
`The ’930 patent, entitled “Apparatus and Method for Remotely
`Powering Access Equipment Over a 10/100 Switched Ethernet Network,”
`
`
`
`3
`
`
`
`Case IPR2013-00386
`Patent 6,218,930
`
`issued on April 17, 2001 based on Application 09/520,350, filed March 7,
`2000, which claims priority to Provisional Application 60/123,688, filed
`Mar. 10, 1999.
`
`
`C. The Prior Art
`Petitioners rely on the following prior art:
`1. Patent 5,345,592, issued Sept. 6, 1994 (“Woodmas”)
`(Ex. 1011);
`2. Patent 6,473,608, issued Oct. 29, 2002, claims priority
`to Provisional Application 60/115,628, filed on Jan. 12, 1999
`(“Lehr”) (Ex. 1014);
`3. Japanese Unexamined Patent Application Publication
`No. H10-13576, published Jan. 16, 1998 (“Matsuno”) (Ex.
`1016);2
`4. Patent 6,449,348, issued Sept. 10, 2002, filed May 29,
`1997 (“Lamb”) (Ex. 1017);
`5. Patent 5,982,456, issued Nov. 9, 1999, filed Mar. 25,
`1997 (“Smith”) (Ex. 1012); and
`6. Ron Whittaker, TELEVISION PRODUCTION, pp. 232-56
`(1993) (“TELEVISION PRODUCTION”) (Ex. 1013).
`
`
`D. The Asserted Grounds
`Petitioners challenge claims 6, 8, and 9 of the ’930 patent on the
`following grounds:
`Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over
`Woodmas in view of Smith and/or TELEVISION PRODUCTION;
`
`
`2 We refer to “Matsuno” as the English translation (Ex. 1016) of the original
`reference (Ex. 1015). Petitioners provided an affidavit attesting to the
`accuracy of the translation. See Ex. 1021; 37 C.F.R. § 42.63(b).
`
`
`
`4
`
`
`
`Case IPR2013-00386
`Patent 6,218,930
`
`
`Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Lehr
`in view of Woodmas;
`Claims 6, 8, and 9 under 35 U.S.C. § 102(b) as anticipated by
`Matsuno; and
`Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over
`Lamb in view of Matsuno.
`
`
`II. ANALYSIS
`Network-1 argues in its opposition to Petitioners’ motion for joinder
`that the Petition should be denied as time-barred under 35 U.S.C. § 315(b)
`because Petitioners were served with a complaint alleging infringement of
`the ’930 patent more than one year before filing the Petition in the instant
`proceeding. IPR2013-00071, Paper 33 at 2. As explained in the Board’s
`decision denying Petitioners’ motion for joinder, which is being entered
`concurrently, the exception in the second sentence of Section 315(b) applies
`and the Petition is not time-barred. See 37 C.F.R. § 42.122(b).
`In any event, however, we do not institute an inter partes review
`based on the Petition. In determining whether to institute an inter partes
`review, 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); see 35 U.S.C.
`§ 314(a). Upon consideration of Petitioners’ motion for joinder and the
`oppositions filed by Network-1 and Avaya, the Board in a separate decision
`denies the motion for joinder. See Mot.; IPR2013-00071, Papers 33, 35. As
`explained in that decision, the Petition introduces (1) a new challenged
`claim, (2) three new grounds of unpatentability, (3) one new ground of
`unpatentability as to the new challenged claim, and (4) five new prior art
`
`
`
`5
`
`
`
`Case IPR2013-00386
`Patent 6,218,930
`
`references beyond those at issue in Case IPR2013-00071. Petitioners have
`not demonstrated that their need for a cost-effective alternative to district
`court litigation outweighs the impact of joinder, including the burden and
`prejudice to the existing parties in light of the new challenged claim,
`additional grounds of unpatentability and prior art, and other substantive
`issues. Petitioners also fail to establish that joinder would promote efficient
`resolution of the unpatentability issues without substantially affecting the
`schedule for Case IPR2013-00071.
`Therefore, 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.
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’930 patent.
`
`
`
`6
`
`
`
`Case IPR2013-00386
`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
`
`Robert J. Walters
`Charles J. Hawkins
`McDERMOTT WILL & EMERY LLP
`500 North Capitol Street, N.W.
`Washington, DC 20001
`rwalters@mwe.com
`chawkins@mwe.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
`
`
`
`
`7
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