UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________________
`
`SONY CORPORATION OF AMERICA AND HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`______________________
`
`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-.80 & 42.100-.123
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________________
`
`SONY CORPORATION OF AMERICA AND HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`______________________
`
`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-.80 & 42.100-.123
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 3
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 6
`
`A.
`
`B.
`
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................. 6
`
`Related Matters under 37 C.F.R. § 42.8(b)(2) ...................................... 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Current Litigation ........................................................................ 6
`
`Prior Litigation ............................................................................ 7
`
`Current Inter Partes Review ....................................................... 7
`
`Ex Parte Reexamination ............................................................. 7
`
`Other Related Proceedings .......................................................... 8
`
`C.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ................... 8
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 9
`
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) .............................. 9
`
`B.
`
`Identification of Challenge and Relief Requested .............................. 10
`
`1.
`
`2.
`
`3.
`
`How the Challenged Claims Are to Be Construed under
`37 C.F.R. § 42.104(b)(3) ........................................................... 11
`
`How the Construed Claims are Unpatentable under 37
`C.F.R. § 42.104(b)(4) ................................................................ 14
`
`Supporting Evidence under 37 C.F.R. § 42.104(b)(5) .............. 14
`
`IV. SUMMARY OF THE ’930 PATENT AND TECHNOLOGY
`BACKGROUND ........................................................................................... 15
`
`A. Description of the Alleged Invention of the ’930 Patent .................... 15
`
`B.
`
`Technology Background Relevant to the ’930 Patent ........................ 17
`
`1.
`
`ISDN – Integrated Services Digital Network ........................... 17
`
`i
`
`
`
`Sony and HP’s Petition for Inter Partes
`Review of U.S. Patent No. 6,218,930
`Powering Ethernet Devices ....................................................... 18
`
`2.
`
`a.
`
`b.
`
`The Development of Ethernet......................................... 18
`
`Power Over Ethernet ...................................................... 19
`
`C.
`
`Summary of the Prosecution History of the ’930 Patent .................... 20
`
`V. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b) ................. 21
`
`A. Ground 1: Claims 6 and 9 are anticipated under 35 U.S.C. §
`102(b) over Matsuno (Ex. SH-1004) .................................................. 21
`
`1.
`
`2.
`
`3.
`
`Brief Overview of Matsuno ...................................................... 21
`
`Analysis of Matsuno’s Disclosure Against Claims 6 and
`9 ................................................................................................. 21
`
`Claim Chart Showing that Matsuno Discloses Each of the
`Elements of Claims 6 and 9 ...................................................... 26
`
`B.
`
`Ground 2: Claims 6 and 9 Are Obvious under § 103(a) over De
`Nicolo in view of Matsuno (Ex. SH-1004 & SH-1007) ..................... 31
`
`1.
`
`2.
`
`3.
`
`Brief Overview of Combination of De Nicolo and
`Matsuno ..................................................................................... 31
`
`Analysis of Combination of De Nicolo and Matsuno
`Against Claims 6 and 9 ............................................................. 32
`
`Claim Chart Showing that De Nicolo and Matsuno
`Disclose Each of the Elements of Claims 6 and 9 .................... 35
`
`4. Motivation to Combine ............................................................. 38
`
`5.
`
`Conclusion ................................................................................ 40
`
`VI. CONCLUSION .............................................................................................. 40
`
`
`
`ii
`
`
`
`
`
`Under 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Sony Corporation of
`
`Sony and HP’s Petition for Inter Partes
`Review of U.S. Patent No. 6,218,930
`
`America and Hewlett-Packard Co. (collectively “Petitioners”) respectfully request
`
`inter partes review (“IPR”) of claims 6 and 9 of U.S. Patent No. 6,218,930 (“the
`
`’930 Patent,” Exhibit (“Ex.”) SH-1001) based on identical grounds as the two
`
`pending and joined IPR proceedings, namely Case No. IPR2013-00071 (the Avaya
`
`IPR) and Case No. IPR2013-00385 (the Dell IPR joined to the Avaya IPR)
`
`(collectively “the joined IPRs”).
`
`For the exact same reasons previously considered by the Board, on the exact
`
`same schedule, Petitioners respectfully seek to join the joined IPRs:
`
`• In this petition, Petitioners assert the arguments copied verbatim from
`
`Dell’s petition (IPR2013-00385), which in turn had copied the
`
`arguments verbatim from Avaya’s petition (IPR2013-00071).
`
`• In this petition, therefore, Petitioners assert, word-for-word, only the
`
`arguments that the Board has already instituted in IPR2013-00385 and
`
`IPR2013-00071. Thus, this petition does not add or alter any
`
`arguments that have already been considered by the Board, and this
`
`petition does this petition seek to expand the grounds of invalidity that
`
`the Board has already found support institution of IPR proceedings.
`
`• In this petition, the Petitioners seek to follow the same schedule that
`
`the Board has instituted for the joined IPRs.
`
`1
`
`
`
`
`
`Because this petition is filed within 30 days of the institution of IPR2013-
`
`00385, and because this petition is accompanied by a motion for joinder to the
`
`joined IPRs (which includes IPR2013-00385), this petition is timely and proper
`
`under 35 U.S.C. § 315(c).
`
`For the Board’s convenience, and because the substance of this petition is
`
`based upon Dell’s petition for IPR2013-00385 (which in turn was based upon
`
`Avaya’s petition for IPR2013-00071), we note that the following sections are
`
`copied verbatim from Dell’s petition for IPR2013-00385 (albeit, necessarily (1)
`
`updating “Petitioner” to “Petitioners,” and (2) updating the exhibit-reference prefix
`
`to “SH” from Dell’s prefix “DE,” although the exhibits themselves are identical):
`
`Unchanged Subparts from IPR2013-00385
`II. B. 1. Current Litigation
`II. B. 2. Prior Litigation
`II. B. 4. Ex Parte Reexamination
`III. B. 1. How the Challenged Claims Are to Be Construed
`III. B. 2. How the Construed Claims are Unpatentable
`III. B. 3. Supporting Evidence
`IV.
`Summary of the ’930 Patent and Technology Background (including all
`subsections IV.A, IV.B.1, IV.B.2.a-b, and IV.C)
`Ground 1: Claims 6 and 9 are anticipated under 35 U.S.C. § 102(b) over
`Matsuno (including all subsections V.A.1-3)
`Ground 2: Claims 6 and 9 Are Obvious under § 103(a) over De
`Nicolo in view of Matsuno (including all subsections V.B.1-5)
`Conclusion
`
`V. A.
`
`V. B.
`
`IV.
`
`
`
`2
`
`
`
`
`
`The following sections differ from Dell’s petition in the following ways:
`
`Changed Subparts from IPR2013-00385
`I.
`Introduction
`
`II. A.
`
`Real Party-In-Interest
`
`II. C.
`
`Lead and Back-up Counsel
`
`II. B. 3. Current Inter Partes Review
`
`II. B. 5. Other Related Proceedings
`
`III. A. Grounds for Standing
`
`III. B.
`
`Identification of Challenge and
`Relief Requested
`
`V. C.
`
`Ground 3: Chang in view of
`Matsuno
`
`
`I.
`
`INTRODUCTION
`
`Changes
`Removed discussion of Chang
`reference as Petitioners do not
`assert any invalidity ground that
`relies on Chang.
`Updated to reflect Real Parties-in-
`Interest for Sony and HP.
`Updated to identify Petitioners’
`counsel.
`Added IPR2013-00385 as currently
`undergoing IPR review, as joined
`with IPR2013-00071.
`New section summarizing other
`petitions for IPR of the ’930 patent
`Updated fee payment means to
`clarify that fee payment will
`accompany this petition.
`Removed discussion of Chang
`reference as Petitioners do not
`assert any invalidity ground that
`relies on Chang.
`Deleted, as this invalidity ground
`was not instituted in either
`IPR2013-00071 or IPR2013-00385.
`
`While the ’930 Patent specification attempts to describe a particular way of
`
`determining when a piece of 10/100 Ethernet equipment is capable of receiving
`
`power and data over an Ethernet network connection, the alleged invention, as
`
`3
`
`
`
`
`
`actually claimed, is more akin to the well-known operation of remotely providing
`
`so-called “phantom power” over transmission lines.
`
`Phantom power, however, has been used in telephone systems ever since
`
`their nascency. Alexander Graham Bell’s telephone network of 1877 transmitted
`
`both power and data (telegraph signals or the sound of voice) over the same wires:
`
`My invention has for its object, first, the transmission
`
`simultaneously of . . . musical notes or telegraphic
`
`signals along a single wire in either or in both directions,
`
`and with a single battery for the whole circuit . . . .
`
`(U.S. Patent No. 186,787 to Bell.) Bell’s system provided DC power from a central
`
`source and an AC signal for communicating data — (the voice or other sound
`
`signal) to a piece of equipment (the telephone). The result was a communications
`
`system that did not require a “local” power source for the telephone. Known as
`
`“line-powered telephone service,” or more colloquially as “plain old telephone
`
`service” or “POTS,” it has been used ever since.
`
`And while more complex data formats and network equipment have evolved
`
`over the last 135 years, the basic invention of providing data and power over a wire
`
`has not changed. The ’930 Patent itself admits that prior art telecommunications
`
`equipment, such as telephones and network repeaters, were providing power and
`
`data over the same wires. See Ex. SH-1001, col. 1:22-24.
`
`4
`
`
`
`
`
`So what exactly is alleged to be new in the ’930 Patent? According to its
`
`Background section, the ’930 Patent states that the prior art was missing the ability
`
`to remotely power devices on a “data network,” as opposed to a telecommunication
`
`network. Aside from being a glaringly obvious extension of what was already
`
`being done in the telecommunications field, this assertion is incorrect as remotely
`
`powering data network devices was already known.
`
`The prior art “Matsuno” reference, described below in Section V.A, provides
`
`a clear example of a method for remotely powering networked devices on an
`
`Integrated Services Digital Network (“ISDN”). Each of these references describe
`
`in detail how power could be provided to ISDN equipment (“access device”) 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.
`
`Additional prior art (including the “De Nicolo” reference discussed below)
`
`shows that it was known to remotely power access devices, including specifically
`
`Ethernet equipment in an Ethernet network. 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 both the Matsuno
`
`reference discussed herein.
`
`Unfortunately, none of the above references were considered by the United
`
`5
`
`
`
`
`
`States Patent & Trademark Office (“USPTO”) in granting the ’930 Patent. Indeed,
`
`not a single reference from the vast fields of telephony, ISDN, or the Ethernet were
`
`cited against the claims contained in the for the ’930 Patent. Had the above
`
`references been considered, the claims of the ’930 Patent would not have issued.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Sony Corporation of America is a real party-in-interest for this Petition.
`
`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 Corporation. Hewlett-Packard is a real party-in-interest.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`Current Litigation
`1.
`In the pending lawsuit styled Network-1 Security Solutions, Inc. v. Alcatel-
`
`Lucent USA Inc., et al., Case No. 6:11 cv492 (E.D. Tex. filed Sept. 15, 2011),
`
`Network-1 Security Solutions, Inc. (“Patent Owner”) sued twenty-six (26) different
`
`companies, including the Petitioners, for allegedly infringing the ’930 Patent by
`
`selling devices that are compliant with the IEEE 802.3af and 802.3at Power over
`
`Ethernet (PoE) standards (PoE standards define a protocol by which Ethernet
`
`equipment may be remotely powered). See Ex. SH-1010, page 4, fn. 1. The subject
`
`of this Petition is limited to claims 6 and 9, the same two claims asserted by the
`
`Patent Owner against Petitioner in the current litigation.
`
`6
`
`
`
`
`
`Prior Litigation
`
`2.
`Petitioners are aware of the following three prior litigations involving the
`
`’930 Patent, none of which reached a final judgment on the issue of validity based
`
`on prior art: (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-30-LED (E.D.Tex., filed Feb. 7, 2008) (Judge Davis) (“the
`
`Cisco Litigation”). In the Cisco Litigation, the District Court granted summary
`
`judgment of invalidity of claim 1 under 35 U.S.C. § 112, second paragraph.
`
`Current Inter Partes Review
`3.
`The ’930 Patent is presently the subject of two instituted inter partes
`
`reviews: (1) Avaya Inc. v. Network-1 Security Solutions Inc. (Case No. IPR2013-
`
`00071) and (2) Dell Inc. v. Network-1 Security Solutions Inc. (Case No. IPR2013-
`
`00385). The Board joined these two proceedings together on July 29, 2013.
`
`Petitioner seeks joinder with IPR2013-00385, for the reasons expressed in the
`
`concurrently filed Motion for Joinder under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22
`
`and 42.122(b).
`
`Ex Parte Reexamination
`4.
`The ’930 Patent is also presently the subject of an ex parte reexamination,
`
`the request for which was granted on September 5, 2012 and was accorded Control
`
`7
`
`
`
`
`
`No. 90/012,401. The ex parte reexamination has been stayed by the Board pending
`
`outcome of IPR2013-00071 (See Paper No. 9, IPR2013-00071).
`
`5. Other Related Proceedings
`Sony (with Axis Communications AB and Axis Communications Inc.) filed
`
`a petition for inter partes review on December 19, 2012, that the Board denied to
`
`institute on May 24, 2013. (Case IPR2013-00092). Sony and HP (with Axis
`
`Communications AB and Axis Communications Inc.) filed another petition for
`
`inter partes review on June 24, 2013, and requested to be joined to the Avaya
`
`IPR. (Case IPR2013-00386). The Board denied that request for joinder and
`
`denied to institute the petition on July 29, 2013. (Paper Nos. 15, 16, IPR2013-
`
`00386).
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel for Petitioner Sony
`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
`
`
`
`
`
`
`Back-up Counsel for Petitioner Sony
`Erika Arner (Reg. No. 57,540)
`erika.arner@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
`
`8
`
`
`
`
`
`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
`
`Service of any documents via hand-delivery may be made at the postal
`
`Back-up 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
`
`mailing addresses of the respective lead or back-up counsel designated above.
`
`Petitioners consent to electronic service by e-mail at the above listed e-mail
`
`addresses of Lead and Back-Up Counsel.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that (1) the ’930 Patent is available for inter partes
`
`review; and (2) Petitioner is not barred or estopped from requesting inter partes
`
`review of claims 6 or 9 of the ’930 Patent on the grounds identified in this Petition.
`
`In particular, as this Petition is accompanied by a Motion for Joinder under 37
`
`C.F.R. §§ 42.22 and 42.122(b), the one year time limitation prescribed by 35
`
`U.S.C. § 315 (b) does not apply. See 35 U.S.C. § 315 (b) (“The time limitation set
`
`forth in the preceding sentence shall not apply to a request for joinder under
`
`subsection (c).”); see also Paper No. 15, IPR2013-00109 (“the one-year time bar
`
`does not apply to a request for joinder.”).
`
`9
`
`
`
`
`
`Concurrently, Petitioner is also filing a Power of Attorney and 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.
`
`Identification of Challenge and Relief Requested
`
`B.
`Petitioner is requesting cancellation of claims 6 and 9 of the ’930 Patent in
`
`view of the following prior art references:
`
`Patent/Pub.No.
`
`Priority Dated
`
`June 20, 1996
`
`Date of Issuance or
`Publication
`January 16, 1998
`
`Exhibit
`
`SH-1004
`
`JP H10-13576
`(“Matsuno”)
`6,115,468
`(“De Nicolo”)
`
`March 26, 1998
`
`September 5, 2000
`
`SH-1007
`
`Matsuno is prior art to the ’930 Patent under 35 U.S.C. § 102(b), and De
`
`Nicolo is prior art to the ’930 Patent at least under 35 U.S.C. § 102(e). None of the
`
`references relied upon were cited during original prosecution of the ’930 Patent,
`
`and none are presently before the Office in the ex parte reexamination. Two
`
`additional references, attached as Exhibits SH-1012 and SH-1013, are offered only
`
`for what one of ordinary skill in the art would have known at the time of the
`
`invention of the ’930 Patent. Petitioner asserts the following specific grounds of
`
`rejection under 35 U.S.C. §§ 102 and 103:
`
`10
`
`
`
`
`
`Ground
`No.
`1
`2
`
`
`
`Claim
`No(s).
`6, 9
`6, 9
`
`Proposed Statutory Rejections for the Claims of
`the ’930 Patent
`Are anticipated under § 102(b) by Matsuno
`Are obvious under § 103(a) over De Nicolo in view of
`Matsuno
`
`
`1. How the Challenged Claims Are to Be Construed 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). Petitioner submits, for the purposes of this inter partes review
`
`only, that the claim terms are presumed to take on their broadest reasonable
`
`ordinary and customary meaning that the term would have to a person of ordinary
`
`skill in the art (“PHOSITA”) in light of the specification of the ’930 Patent.1
`
`
`
`In that regard, the Patent Owner already has set forth a broad meaning for
`
`the italicized limitations of claim 6 below based upon its proposed claim
`
`1 Petitioner notes that in IPR2013-00071, the Board determined that the broadest
`
`reasonable construction of “low level current” was “a current (e.g., approximately
`
`[20] mA) that is sufficiently low that, by itself, it will not operate the access
`
`device.” (See Paper No. 18, IPR2013-00071, at 10; Paper No. 21, IPR2013-00071
`
`(errata)). The Board found that Avaya met its burden to demonstrate that at least
`
`the Matsuno reference discloses delivering such a “low level current.” (Paper No.
`
`18, IPR2013-00071, at 17).
`
`11
`
`
`
`
`
`constructions in previous litigations (See Ex. SH-1008 & SH-1009), as well as in
`
`its infringement contentions against Petitioner’s products. See Ex. SH-1010,
`
`Appendix A.
`
`Independent method claim 6 of the ’930 Patent recites:
`
`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
`
`12
`
`
`
`
`
`controlling power supplied by said secondary
`
`power source to said access device in response to a
`
`preselected condition of said voltage level.
`
`Regarding the recited “main power source” and “secondary power source”
`
`claim limitations, the Patent Owner asserts that the “main power source” may
`
`include “a combination of power supplies, arranged in series or parallel, that
`
`provides DC power to components of the data nodes,” as well as “an AC power
`
`source provided via a power cord that is adapted to connect a standard AC outlet to
`
`the power sourcing equipment (data nodes).” Ex. SH-1010, App. A, pp. 23-24.
`
`With respect to the “secondary power source,” the Patent Owner has
`
`repeatedly taken the broad position that the “secondary power source” (i) “is the
`
`same source of power as the main power source,” (ii) “may be derived from the
`
`main power source, or separate,” and (iii) “need not be physically separate from
`
`the main power source.” See Ex. SH-1010, Appendix A, pages 30-32; Ex. SH-
`
`1008, page 2; Ex. SH-1009, page 25. Thus, accepting the Patent Owner’s position,
`
`the broadest reasonable interpretation of the “secondary power source,” for the
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`purposes of inter partes review, must include that the secondary power source can
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`13
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`be the same as the “main power source.”2
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`2. How the Construed Claims are Unpatentable under 37
`C.F.R. § 42.104(b)(4)
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`An explanation of how construed claims 6 and 9 of the ’930 Patent are
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`unpatentable under the statutory grounds identified above, including the
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`identification of where each element of the claim is found in the prior art patents or
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`printed publications, is provided in Section V below.
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`Supporting Evidence under 37 C.F.R. § 42.104(b)(5)
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`3.
`The exhibit numbers of the supporting evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support the challenge, are
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`provided herein. An Exhibit List identifying the exhibits is also attached. Pursuant
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`to 37 C.F.R. § 42.63(b), an Affidavit attesting to the fact that Exhibit SH-1004 is
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`an accurate and complete translation of Exhibit SH-1002 is included as Exhibit
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`2 The Petitioners take these positions based on the “broadest reasonable
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`interpretation” standard that is to be applied in connection with inter partes review,
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`but do not endorse such an interpretation as part of the related district court
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`litigation. The USPTO’s approach to claim interpretation is different for at least the
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`reason that the applicant is able to amend the patent claims to be more specific. In
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`re Yamamoto, 740 F.2d 1569, 1571-72 (Fed. Cir. 1984).
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`14
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`
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`SH-1003. In further support of the proposed grounds of rejection, this Petition is
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`accompanied by a declaration by technical expert Dr. George A. Zimmerman,
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`attached as Exhibit SH-1011, explaining who would be a PHOSITA, how a
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`PHOSITA would read the teachings and claims of the ’930 Patent, and what would
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`be conveyed to a PHOSITA by the relied-upon prior art. Finally, as mentioned
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`above, the patent references included as Exhibits SH-1012 and SH-1013 are
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`offered only for what one of ordinary skill in the art would have known at the time
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`of the invention of the ’930 Patent.
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`’930 PATENT AND TECHNOLOGY
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`IV. SUMMARY OF THE
`BACKGROUND
`A. Description of the Alleged Invention of the ’930 Patent
`The ’930 Patent describes powering of 10/100 Ethernet compatible
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`equipment, although the claims are simply directed to powering a generic “access
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`device adapted for data transmission.” See Ex. SH-1001, Claim 6.
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`The ’930 Patent states there are two objects of the invention. The first stated
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`object is to “provide methods and apparatus for reliably determining if a remote
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`piece of equipment is capable of accepting remote power.” Id. at Col. 1:41-43.
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`Independent claim 6, however, is devoid of any such determining operation.
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`The second and only other stated object of the invention is to “provide
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`methods and apparatus for delivering remote power to remote equipment over
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`10/100 switched Ethernet segments and maintain compliance with IEEE 802.3
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`15
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`
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`standards.” Again, however, the claims themselves fail to mention Ethernet
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`segments or compliance with IEEE 802.3 standards.
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`The “Background” of the ’930 Patent acknowledges “[a] variety of
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`telecommunications equipment [was] remotely powered” at the time the
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`application that led to the ’930 Patent was filed. Id. at col. 1:22-23. For example,
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`the specification references “Telephones and Network Repeater devices” as
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`examples of “remotely powered equipment.” Id. at col. 1:23-24. The ’930 Patent
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`further suggests —incorrectly— that such techniques “ha[d] not migrated to data
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`communications equipment” (Id. at col. 1:25-27), yet concludes that “[t]he desire
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`to add remotely powered devices to a data network is being pushed by the
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`convergence of voice and data technologies.” Id. at col. 1:33-35.
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`The ’930 Patent describes the detection of remote equipment for deciding
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`when to supply operational power by “delivering a low level current (approx. 20
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`ma) to the network interface and measuring a voltage drop in the return path.” Id.
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`at col. 2:66 – col. 3:2. If a “varying voltage level” is measured, this signifies that
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`the remote access equipment is capable of accepting remote power. Id. at col. 3:12-
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`16. By contrast, “no voltage drop” or a “fixed voltage drop” indicates that the
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`remote equipment is not capable of accepting remote power. Id. at col. 3:2-11.
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`Upon detecting a varying voltage level, “switch S1 is closed which increases the
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`power output to the remote equipment.” Id. at col. 3:17-19. Once the remote access
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`16
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`
`
`
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`equipment is active, it may be monitored to detect when it is disconnected, in
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`which event power may be withdrawn. Id. at col. 3:49-55.
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`Technology Background Relevant to the ’930 Patent
`
`B.
`The concept of providing power to remote network equipment was well
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`known as acknowledged in the ’930 Patent, with ISDN and Ethernet networks
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`representing two such examples. It is ISDN and Ethernet data networking prior art
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`that form the grounds of this Petition in support of the invalidity of claims 6 and 9
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`of the ’930 Patent. Each is further discussed below.
`
`ISDN – Integrated Services Digital Network
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`1.
`Contrary to the suggestion in the ’930 Patent that the 10/100 Ethernet
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`standard was the first switch-based data communication network to remotely
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`power devices, that distinction belongs to the earlier-developed ISDN standard, not
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`to Ethernet.
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`ISDN is a set of communication standards for the simultaneous digital
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`transmission of voice and digital data over a traditional public switched telephone
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`network. See Ex. SH-1011, ¶ 17. ISDN was defined in 1988 by the Telephone and
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`Telegraph Consultative Committee in the “Red Book.” See id. Specifically, an
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`ISDN “is a circuit-switched network that includes a packet data channel and
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`provides access to packet-switched networks that transmit digital voice and data
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`over media, including traditional telephone copper wires.” See id. at ¶ 18. Prior to
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`17
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`ISDN, telephone systems were used largely for only voice transmission. With the
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`advent of ISDN, however, speech and data were allowed to be integrated on the
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`same lines, thereby providing data-related features to remote terminals in a way
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`that was not available in the classic telephone system.
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`The ’930 Patent suggests that, as of its claimed priority date, there was still a
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`“desire to add remotely powered devices to a data network . . . .” Ex. SH-1001, col.
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`1:33-35. However, any such desire would have been satisfied by those previously-
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`developed systems that were already providing power and data to remote terminals
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`in an ISDN environment. And while the ’930 Patent acknowledges that a variety of
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`telecommunication systems are already providing remote powering, it attempts to
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`distinguish them by suggesting that those systems have not been used for data
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`communications, nor could they be due to the particulars of data communications.
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`See id. at col. 1:22-32. ISDN-based network developers, including Matsuno would
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`certainly disagree. Indeed, Matsuno forms the basis for several grounds of
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`rejection.
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`2.
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`Powering Ethernet Devices
`a. The Development of Ethernet
`Ethernet was originally developed between 1973 and 1974 at XEROX
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`PARC labs as a multipoint communications method. See Ex. SH-1011, ¶ 19.
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`Initially, Ethernet networks were designed to “convey signals across the network
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`18
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`
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`by repeating the signals from one twisted pair wiring segment onto all other
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`twisted pair segments to which a device was connected.” Id. at ¶ 20. However, by
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`the late 1980s, Ethernet networks had grown to the point where the traffic repeated
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`from many nodes was congesting the network. In order to alleviate the growing
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`congestion, Ethernet borrowed the concept of ‘switching’ from its close relative,
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`the telephony field, which for decades had been using this technique, notably with
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`Public Switched Telephone Networks. The Ethernet version, which was introduced
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`in 1989, transmitted packets out only onto the wiring segments of their specific
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`destinations. See id. at ¶ 21. By the mid-1990s, the use of hubs in Ethernet was
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`being phased out, while switches of all scales became common. The basic
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`operation of Ethernet switching remains the same today. See id. at ¶ 22.
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`b. Power Over Ethernet
`Prior to the priority date of the ’930 Patent, there were already several
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`proprietary approaches for providing power over Ethernet cabling. See id. at ¶ 23.
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`One of those early proprietary approaches was developed and disclosed by Cisco
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`Technology, Inc. (“Cisco”). See id. Specifically, Cisco’s prior art De Nicolo patent
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`discloses a network configuration for remotely providing power and data to
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`Ethernet devices over the same wires. The De Nicolo patent forms the basis for
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`several grounds of rejection.
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`19
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`Summary of the Prosecution History of the ’930 Patent
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`C.
`The ’930 Patent issued from U.S. Patent Application No. 09/520,350, filed
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`on March 7, 2000, and which claims priority to provisional application No.
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`60/123,688, filed on March 10, 1999.3 On May 15, 2000, Applicants submitted an
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`information disclosure statement citing but a single reference, namely U.S. Patent
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`No. 5,144,544.
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`Without a single rejection or objection of any pending claim, a Notice of
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`Allowance issued on September 11, 2000 (“NOA”). In the NOA, the Examiner
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`stated that “no prior art reference utilizes the an [sic] apparatus for remotely
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`powering access equipment in a data network” with all of the limitations of claim
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`1.” The Examiner’s search uncovered only 5 references, none
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