Filed on Behalf of NETWORK-1 TECHNOLOGIES, INC.
`
`By: Charles F. Wieland III, Esq.
`
`Robert G. Mukai, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`Telephone (703) 836-6620
`Facsimile (703) 836-2021
`charles.wieland@bipc.com
`robert.mukai@bipc.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SONY CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.
`Patent Owner
`
`_______________
`
`Case CBM2015-00078
`Patent 6,218,930
`____________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`

`
`I.  
`
`II.  
`
`Case No. CBM2015-00078
`Patent Owner’s Preliminary Response
`
`
`Table of Contents
`
`Introduction. ..................................................................................................... 1 
`
`The Board should exercise its discretion and deny Sony’s Petition. .............. 4 
`
`A. 
`
`B. 
`
`This is Sony’s fourth Petition challenging the ‘930 Patent. .................. 5 
`
`Each factor the Board considers when evaluating second-try
`petitions demonstrates that the Board should deny this Petition. ......... 6 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`The Petition should be denied because it presents the
`same art that Sony presented in its previous petitions. ............... 9 
`
`The Petition should be denied because it presents the
`same arguments that Sony presented in its previous
`petitions. .................................................................................... 11 
`
`The Petition should be denied because Sony improperly
`attempts to bolster its challenges that were advanced
`unsuccessfully in its prior petitions. ......................................... 21 
`
`The Petition should be denied because Sony provides no
`justification for filing its fourth Petition. .................................. 24 
`
`III.   The Petition should be denied because the ‘930 Patent is not a
`Covered Business Method patent. ................................................................. 26 
`
`A. 
`
`B. 
`
`C. 
`
`The controlling legal standard for CBM eligibility. ........................... 26 
`
`Application to the ‘930 claims. ........................................................... 35 
`
`The Petition fails to satisfy its burden of demonstrating that the
`‘930 Patent is a CBM. ......................................................................... 41 
`
`D.  Had the ‘930 Patent fallen under the CBM definition, the claims
`of the ‘930 Patent would fall within the “technological
`invention” exception of 37 C.F.R. § 42.301. ...................................... 44 
`
`IV.   Sony is estopped from challenging the previously challenged claims. ......... 47 
`
`i
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`

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`Case No. CBM2015-00078
`Patent Owner’s Preliminary Response
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`Sony is estopped because the requirements of 35 U.S.C. section
`315(e)(1) are satisfied based on the Final Written Decision in
`Sony III. ............................................................................................... 47 
`
`A. 
`
`B. 
`
`Sony’s “recently discovered Hunter” argument fails. ......................... 51 
`
`1. 
`
`2. 
`
`Problem 1: Old references previously asserted by Sony
`in Sony I and Sony II are not “newly discovered prior
`art.” ............................................................................................ 52 
`
`Problem 2: Sony’s representations to the Board that
`Hunter was “only recently discovered based on
`amendments in the reexamination that occurred after the
`prior petitions were filed” are false. .......................................... 52 
`
`a. 
`
`b. 
`
`Sony was aware of Hunter and asserted it against
`the ‘930 Patent before Sony filed its Sony III
`Petition and long before the new claims issued. ............ 52 
`
`Sony’s assertions that Hunter could not have been
`discovered until the new claims issued are also
`implausible. ..................................................................... 56 
`
`C. 
`
`Sony’s “reasonably raised” argument fails. ........................................ 57 
`
`V.  
`
`Sony’s Petition fails on the merits. ................................................................ 62 
`
`VI.   Conclusion. .................................................................................................... 67 
`
`ii
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`

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`Case No. CBM2015-00078
`Patent Owner’s Preliminary Response
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`
`Exhibit List
`
`
`Prior PTAB filings (Sony I, Sony II, and Sony III)
`
`Sony I: Decision on Inter Partes Review—Sony v. Network-1,
`IPR2013-00092 Paper 21 (May 24, 2013)
`
`
`Sony I: Decision Denying Request For Rehearing—Sony v.
`Network-1, IPR2013-00092 Paper 24 (July 2, 2013)
`
`
`Sony II: Petition for Inter Partes Review—Sony v. Network 1,
`IPR2013-00386 (June 24, 2013)
`
`
`Sony II: Decision on Inter Partes Review—Sony v. Network-1,
`IPR2013-00386 Paper 15 (July 29, 2013)
`
`
`Sony III: Petition for Inter Partes Review—Sony v. Network-1,
`IPR2013-000495 (August 6, 2013)
`
`
`Sony III: Motion for Joinder—Sony v. Network-1, IPR2013-
`000495 Paper 7 (August 6, 2013)
`
`
`Sony III: Exhibit N1-2027 (identifying Hunter as prior art)
`(excerpts)
`
`
`Sony III: Decision on Inter Partes Review—Avaya v. Network-
`1, IPR2013-0071 Paper 103 (May 22, 2014)
`
`
`
`
`Litigation Documents
`
`Infringement Contentions—Network-1 v. Alcatel-Lucent et al,
`Case No. 6:11-cv-492-LED (March 26, 2015)
`
`Invalidity Contentions—Network-1 v. Alcatel-Lucent et al,
`Case No. 6:11-cv-492-LED (December 19, 2012) (excerpts)
`
`
`i
`
`
`Exhibit 2001
`
`Exhibit 2002
`
`Exhibit 2003
`
`Exhibit 2004
`
`Exhibit 2005
`
`Exhibit 2006
`
`
`Exhibit 2007
`
`
`Exhibit 2008
`
`Exhibit 2009
`
`Exhibit 2010
`
`
`

`
`Exhibit 2011
`
`
`Exhibit 2012
`
`Exhibit 2013
`
`
`
`Case No. CBM2015-00078
`Patent Owner’s Preliminary Response
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`
`Copy of Hunter provided to Network-1 (December 19, 2012)
`
`
`
`Other
`
`American Heritage Dictionary (5th ed. 2011) (“raise”)
`
`Merriam –Webster’s Collegiate Dictionary (11th ed. 2009)
`(“raise”)
`
`
`ii
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`

`
`I.
`
`Introduction.
`
`Case No. CBM2015-00078
`Patent Owner’s Preliminary Response
`
`
`Sony’s Petition should be rejected for the following four reasons.
`
`Reason 1: This is an improper serial petition that presents the same prior art
`
`and the same arguments that Sony presented in its three prior petitions challenging
`
`the ‘930 Patent. The Board set forth (in a series of seven Informative Opinions)
`
`four factors that should be considered when evaluating whether to deny a second
`
`petition challenging the same patent. Here, each factor weighs heavily in favor of
`
`denying Sony’s fourth petition.
`
`Reason 2: The ‘930 Patent is not CBM-eligible because none of its claims
`
`are directed at a financial product or service or financial activity.
`
`The ‘930 Patent claims a method in which a data node (e.g., Ethernet switch)
`
`determines whether a device connected to the end of a cable (e.g., VoIP telephone)
`
`is capable of accepting “remote power”—power over the data transmission wires
`
`using a “low level current.” ‘930, 1:41-43; claim 6; Title (“Apparatus and method
`
`for remotely powering access equipment over a 10/100 switched Ethernet
`
`Network”). The claims and specification of the ‘930 Patent claim and describe the
`
`electronic components of a detection circuit; they do not make a single reference to
`
`any financial product or service or financial activity. Sony does not (and cannot)
`
`identify any patent that has ever been found CBM-eligible that does not mention a
`
`financial product or service or financial activity. That the invention claimed in the
`
`1
`
`

`
`‘930 Patent could be used in almost all industries does not make it CBM-eligible.
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`Case No. CBM2015-00078
`Patent Owner’s Preliminary Response
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`Reason 3: Sony is estopped from challenging the previously challenged
`
`claims because Sony was a “petitioner in an inter partes review,” which “result[ed]
`
`in a final written decision,” and Sony “raised or reasonably could have raised
`
`during that inter partes review” each ground that Sony asserts in its current CBM
`
`Petition. 35 U.S.C. § 315(e)(1). Moreover, Sony’s two arguments attempting to
`
`avoid this statutory bar both fail.
`
`First, Sony tries to avoid the statutory bar by representing to the Board that:
`
`Grounds based on Hunter could not reasonably have been raised
`because it was only recently discovered based on amendments in the
`reexamination that occurred after the prior petitions were filed.
`
`Pet. 24.1 This representation is false. Sony was aware of Hunter—and in fact
`
`asserted Hunter against the ‘930 Patent—well before it filed its earlier petitions
`
`and years before the amendments in the ‘930 reexamination.
`
`Second, Sony argues that it could not have reasonably asserted the grounds
`
`that it currently asserts in the prior petition because had it raised such grounds, it
`
`was likely that “the petition would have been denied.” Pet. 26. As demonstrated
`
`below, the “reasonably could have raised” estoppel IPR standard considers whether
`
`the art reasonably should have been known and the ground was a proper IPR
`
`1
`Emphasis added throughout this Response, unless otherwise noted.
`
`2
`
`

`
`ground such that the ground “could have [been] raised” in the prior petition, not
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`Case No. CBM2015-00078
`Patent Owner’s Preliminary Response
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`whether the ground in “the petition would have been denied.” Pet. 26.
`
`Reason 4: Sony’s Petition fails on the merits. In its fourth Petition, Sony
`
`makes the same arguments, using the same art, and even quoting the same passages
`
`from the same art, that Sony made in its three previously rejected petitions. The
`
`same elements that the Board already found missing in the asserted art are still
`
`missing in that same art. And the only reference that was not previously addressed
`
`by the Board—Hunter—does not fill in the missing gaps. Moreover, new evidence
`
`presented by Sony with its current Petition further demonstrates that the ‘930
`
`claims are valid over the previously-asserted art.
`
`
`
`Section II of this Response demonstrates that the Board should exercise its
`
`discretion and deny the petition as an improper serial petition.
`
`Section III demonstrates that Sony’s CBM Petition should be denied because
`
`the electronic detection circuit claimed in the ‘930 Patent is not CBM-eligible.
`
`Section IV demonstrates that Sony is estopped from challenging the
`
`previously challenged claims.
`
`Section V briefly demonstrates that the same elements that the Board
`
`previously found missing in the asserted art are still missing in that same art, and
`
`the only new reference—Hunter—does not fill in the missing elements.
`
`3
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`

`
`
`II. The Board should exercise its discretion and deny Sony’s Petition.
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`Case No. CBM2015-00078
`Patent Owner’s Preliminary Response
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`The Board has recognized that serial challenges to the same patent harass a
`
`patent owner and frustrate the intent of the AIA:
`
`Allowing similar, serial challenges to the same patent, by the same
`petitioner, risks harassment of patent owners and frustration of
`Congress’s intent in enacting the Leahy-Smith America Invents Act.
`… “[the AIA is] not to be used as tools for harassment … through
`repeated … administrative attacks on the validity of a patent. Doing
`so would frustrate the purpose of the section as providing quick and
`cost effective alternatives to litigation.”
`Butamax Advanced v. Gevo, IPR 2014-00581 Paper 8 at 12-13 (Oct. 14, 2014)
`
`(quoting H.R. Rep. No. 112-98, pt.1, at 48 (2011)); ZTE Corp. v. Contentguard
`
`Holdings, Inc., IPR2013-00454 Paper 12 at 6, 7 (Sept. 25, 2013) (Informative
`
`Opinion) (“it would be unjust and inequitable to subject the Patent Owner to a new
`
`challenge by a Petitioner who unsuccessfully had attempted to institute inter partes
`
`review on the claims in a previous petition” recognizing “the burden and inequity
`
`on the Patent Owner if it is forced to defend the same claims twice from attack by
`
`the same Petitioner”).
`
`4
`
`

`
`A. This is Sony’s fourth Petition challenging the ‘930 Patent.2
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`Case No. CBM2015-00078
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`First petition (Sony I): In December 2012, Sony filed an IPR petition
`
`asserting that Woodmas anticipates claims 6, 8, and 9 of the ‘930 Patent—the same
`
`Woodmas that Sony asserts in this CBM. Ex. 2001 (Sony I) at 21 (Decision on
`
`Inter Partes Review). In May, 2013, the Board rejected Sony’s first petition:
`
`we conclude that Petitioners have not established a reasonable
`likelihood of prevailing on their assertion that claim 6, as well as
`claims 8 and 9 which depend from claim 6, are anticipated by
`Woodmas.
`Id. at 24. Sony requested a rehearing “contend[ing] that the Board erred in not
`
`instituting on the ground that claims 6, 8, and 9 are anticipated by Woodmas.” Ex.
`
`2002 (Sony I) at 2 (Decision Denying Request for Rehearing). The Board again
`
`rejected Sony’s first petition. Id. at 5.
`
`Second petition (Sony II): In June 2013, a month after the Board rejected
`
`Sony’s first petition, Sony filed its second IPR asserting that claims of the ‘930
`
`Patent are invalid based on: (a) Woodmas (the same Woodmas Sony asserts in this
`
`CBM); (b) Matsuno (the same Matsuno Sony asserts in this CBM); and (c)
`
`Television Production (the same Television Production Sony asserts in this CBM).
`
`
`2
`Sony also filed a request for ex parte reexamination of the ‘930 Patent
`(90/013,444) along with this Petition. Network-1 agrees with Sony that this
`proceeding should take “priority over the ex parte reexamination.” Pet. 3, n. 1.
`
`5
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`

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`Ex. 2004 (Sony II) at 4-5 (Decision on Inter Partes Review). The Board rejected
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`Sony’s second petition: “we decline to institute an inter partes review in the
`
`instant proceeding.” Id. at 6.
`
`Third petition (Sony III): In August 2013, Sony filed its third IPR petition
`
`asserting that claims of the ‘930 Patent are invalid based on Matsuno—the same
`
`Matsuno Sony asserts in this CBM. Ex. 2005 (Sony III); Ex. 2008 (Avaya v.
`
`Network-1, IPR2013-0071 Paper 103 at 3 (May 22, 2014)) (“Avaya, Dell, Sony,
`
`and HP are all Petitioners for purposes of this proceeding”). The Board instituted
`
`trial and in a Final Written Decision, rejected Sony’s third petition finding that “the
`
`identified current in Matsuno is not a ‘low level current.’” Id. at 22.3
`
`B.
`
`Each factor the Board considers when evaluating second-try
`petitions demonstrates that the Board should deny this Petition.
`
`
`In addressing the parallel statute for inter partes reviews, the Board
`
`held:
`
`Congress did not mandate that an inter partes review must be
`instituted under certain conditions. Rather, by stating that the
`Director—and by extension, the Board—may not institute review
`
`3
`Although Sony included a section in its current Petition entitled “Related
`
`Matters” (Pet. 2-3) in which it referenced 16 related matters, Sony failed to
`
`mention any of Sony’s three prior IPR petitions challenging the ‘930 Patent.
`
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`unless certain conditions are met, Congress made institution
`discretionary.
`Intelligent Bio Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324 Paper 19
`
`at 4 (Nov. 21, 2013) (Informative Decision). The same statutory standard applies
`
`to CBM Reviews. 35 U.S.C § 324(a) (“The director may not authorize a post-grant
`
`review to be instituted unless….”).
`
`The Board has been cautious in exercising its discretion to grant a party’s
`
`second petition for review of a patent after that same party previously filed an
`
`unsuccessful petition (or petitions) for review of that same patent. In doing so, the
`
`Board has considered “the efficient administration of the Office” and “the ability
`
`of the Office to timely complete proceedings instituted.” 35 U.S.C. § 316(b);
`
`Unified Patents, Inc. v. PersonalWeb Tech’s, LLC, IPR2014-00702 Paper 13 at 8-9
`
`(July 24, 2014) (Informative Opinion). The Board “must determine whether its
`
`resources are best spent on one matter or another.” Conopco v. The Proctor &
`
`Gamble Co., IPR2014-00628 Paper 21 at 12 (Oct. 20, 2014) (internal quotes
`
`omitted). “Permitting second chances in cases like this one ties up the Board’s
`
`limited resources; we must be mindful not only of this proceeding, but of ‘every
`
`proceeding.’” Zimmer v. Bonutti, IPR2014-01080 Paper 17 at 6 (Oct. 31, 2014)
`
`(quoting 37 C.F.R. § 42.1(b)).
`
`7
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`

`
`As set forth in a series of seven Informative Opinions,4 when considering
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`whether to exercise its discretion to allow a second petition challenging the same
`
`patent, the Board considers the following four factors:
`
`(1) whether the same or substantially the same prior art was previously
`
`presented;
`
`(2) whether the same or substantially the same arguments were previously
`
`presented;
`
` (3) whether a second petition attempts to use the Board’s prior decision as a
`
`roadmap to remedy deficiencies; and
`
`
`4
`These Informative Opinions, all denying institution, are: Medtronic, Inc. v.
`
`Nuvasive, Inc., IPR2014-00487 Paper 8 (Sep. 11, 2014); Unified Patents, Inc. v.
`
`PersonalWeb Technologies, LLC, IPR2014-00702 Paper 13 (July 24, 2014); Prism
`
`Pharma Co. v. Choongwae Pharma Corp., IPR2014-00315 Paper 14 (July 8,
`
`2014); Unilever v. The Procter & Gamble Company, IPR2014-00506 Paper 17
`
`(July 7, 2014); Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc.,
`
`IPR2014-00436 Paper 17 (June 19, 2014); Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge, Ltd., IPR2013-00324 Paper 19 (Nov. 21, 2013); and ZTE Corp. v.
`
`Contentguard Holdings, Inc., IPR2013-00454 Paper 12 (Sept. 25, 2013).
`
`8
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`

`
`(4) whether the petitioner provides any meaningful justification for filing the
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`subsequent petition.
`
`Here, each factor weighs heavily in favor of denying Sony’s fourth Petition.
`
`1.
`
`The Petition should be denied because it presents the same
`art that Sony presented in its previous petitions.
`
`
`35 U.S.C. Section 325(d) provides:
`
`
`
`In determining whether to institute or order a proceeding … the
`Director may take into account whether, and reject the petition or
`request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.
`
`35 U.S.C. § 325(d). Asserting a reference or references that were previously
`
`presented unsuccessfully is a strong signal that a petitioner is improperly seeking
`
`“second bites at the apple.” Butamax, IPR2014-00581 Paper 8 at 12-13.
`
`Accordingly, the Board regularly uses its discretion to deny a second-filed petition
`
`if the second petition includes overlapping art:
`
` “we reject the Petition … based on our exercise of discretion under 35
`
`U.S.C. § 325(d) because the ‘same or substantially the same prior art
`
`or arguments previously were presented to the Office.’” Medtronic,
`
`IPR2014-00436 Paper 17 at 3 (quoting 35 U.S.C. § 325(d));
`
` “exercising our discretion under 35 U.S.C. § 325(d) we deny the
`
`9
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`petition … because these grounds are based upon substantially the
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`same prior art and arguments.” SAS v. Complementsoft, LLC,
`
`IPR2013-00581 Paper 15 at 4 (Dec. 30, 2013);
`
` “eight grounds rely on … a reference previously presented in the 505
`
`Petition. A ninth ground is based on … references previously
`
`presented in the 505 Petition…. we exercise our discretion and ‘reject
`
`the petition’ because ‘the same or substantially the same prior art’
`
`previously was ‘presented to the Office.’” Unilever, IPR2014-00506
`
`Paper 17 at 6 (quoting 35 U.S.C. § 325(d)).
`
`Each of the five grounds asserted in Sony’s current Petition is based
`
`primarily on art that Sony previously asserted in at least one prior petition:
`
` Ground 1 is based on Woodmas that Sony asserted in two prior petitions and
`
`the Board rejected three times. Pet. 30; Ex. 2001 (Sony I) at 24; Ex. 2002
`
`(Sony I) at 2; Ex. 2004 (Sony II) at 6.
`
` Ground 2 is also based on Woodmas as the primary reference that Sony
`
`asserted in two prior petitions and the Board rejected three times. Pet. 55;
`
`Ex. 2001 (Sony I) at 24; Ex. 2002 (Sony I) at 2; Ex. 2004 (Sony II) at 6.
`
` Ground 3 is based on (a) Woodmas that Sony asserted in two prior petitions
`
`and the Board rejected three times, and (b) Television Production which
`
`Sony previously asserted and the Board rejected. Pet. 69; Ex. 2001 (Sony I)
`
`10
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`
`at 24; Ex. 2002 (Sony I) at 2; Ex. 2004 (Sony II) at 4, 6.
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` Ground 4 is based on Matsuno that Sony asserted and the Board rejected
`
`twice, including in a Final Written Decision. Pet. 72; Ex. 2004 (Sony II) at
`
`4, 6; Ex. 2008 (Sony III) at 11.
`
` Ground 5 is based on Matsuno that Sony asserted and the Board rejected
`
`twice, including in a Final Written Decision. Pet. 78; Ex. 2004 (Sony II) at
`
`4, 6; Ex. 2008 (Sony III) at 11.
`
`* * *
`
`Because each ground asserted in Sony’s current Petition is based on art that
`
`was previously asserted by Sony and rejected by the Board, the Board should
`
`“reject the Petition … based on our exercise of discretion under 35 U.S.C. § 325(d)
`
`because the ‘same or substantially the same prior art or arguments previously were
`
`presented to the Office.’” Medtronic, IPR2014-00436 Paper 17 at 3 (quoting 35
`
`U.S.C. § 325(d)). This factor weighs heavily in favor of denying the Petition.
`
`2.
`
`The Petition should be denied because it presents the same
`arguments that Sony presented in its previous petitions.
`
`
`A second factor the Board considers when deciding whether to exercise its
`
`discretion to deny a second petition is whether a petition includes the same or
`
`substantially the same arguments that were previously presented:
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`11
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`In determining whether to institute or order a proceeding … the
`Director may … reject the petition or request because[ ] the same or
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`
`
`35 U.S.C. § 325(d). Asserting arguments that were previously presented
`
`unsuccessfully is also a strong signal that a petitioner is improperly seeking
`
`“second bites at the apple.” Butamax, IPR2014-00581 Paper 8 at 12-13. As a
`
`result, the Board regularly uses its discretion to deny a second-filed petition if the
`
`second petition includes overlapping arguments:
`
` “[W]e reject the Petition … based on our exercise of discretion under
`
`35 U.S.C. § 325(d) because the ‘same or substantially the same prior
`
`art or arguments previously were presented to the Office.’”
`
`Medtronic, IPR2014-00436 Paper 17 at 3 (quoting 35 U.S.C. §
`
`325(d));
`
` “exercising our discretion under 35 U.S.C. § 325(d) we deny the
`
`petition as to the grounds listed below because these grounds are
`
`based upon substantially the same prior art and arguments.” SAS
`
`Institute, IPR2013-000581 Paper 15 at 4;
`
` “The same … arguments substantially the same as Petitioner’s current
`
`contention … were presented previously to the Office …. Based on
`
`12
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`

`
`these facts, we conclude that the same prior art and substantially the
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`same arguments were presented to the Office previously. We exercise
`
`our discretion and deny the Petition under 35 U.S.C. § 325(d).” Prism
`
`Pharma, IPR2014-00315 Paper 14 at 12-13;
`
` “arguments raised in the Petition are ‘substantially the same’ as those
`
`‘previously [] presented to the Office.’” Unilever, IPR2014-00506
`
`Paper 17 at 7.
`
`Sony’s current Petition asserts the same arguments that Sony previously presented
`
`in its prior three petitions (Sony I, Sony II, and Sony III), as illustrated in both the
`
`text and claim charts of Sony’s petitions.
`
`Text: The body of Sony’s current Petition regurgitates the same arguments
`
`that Sony made in its prior Petitions (Sony I, Sony II, and Sony III), often using the
`
`exact same language to make the exact same arguments. As an illustrative
`
`example, the following compares Sony’s arguments relating to Woodmas from
`
`Sony’s current Petition and prior petition (Sony II, from two years ago):
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`Pet. 69-70.
`
`
`
`Ex. 2003 (Sony II
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`–petition) 16-17.
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`Other than replacing the specific cites to Woodmas with “Id.,” the language and
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`arguments in Sony’s current Petition and Sony’s prior petition are identical.
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`In an Informative Opinion, the Board denied a second petition where the
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`same language was used to describe (1) a first reference in a first petition, and (2) a
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`second reference in a second petition: “The instant petition describes [the second
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`reference] using exactly the same language.” Intelligent Bio-Systems, IPR2013-
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`00324 Paper 19 at 6. Here, the case is even stronger for denying Sony’s Petition
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`where the exact same language is used to describe the exact same reference in the
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`subsequent petition.
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`Claim charts: Sony makes the exact same arguments in the claim charts in
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`its current Petition that it made in its prior petitions, often quoting the exact same
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`language from the exact same reference as support for each claim element. As an
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`illustrative example, the following compares claim charts from Sony’s current
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`Petition and Sony’s prior petition (Sony II, from two years ago) for claim 8 of the
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`‘930 Patent:
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`Pet. 48.
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`Ex. 2003 (Sony II—petition) at 28. Other than (a) removing the underlining, (b)
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`replacing “Ex. 1011” with “Id.” and (c) moving the claim language from the top of
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`the chart to the left, Sony’s chart and argument are identical.
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`Although new claims were added to the ‘930 Patent during the recent
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`reexamination, Sony continues to challenge the original claims that it challenged in
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`its three prior petitions (Sony I, Sony II, and Sony III), using the same language to
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`make the same arguments applying the same art. See Pet. 30 (ground 1 re-
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`challenging original claims 6, 8, and 9); Pet. 55 (ground 2 re-challenging original
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`claims 6, 8, and 9); Pet. 69 (ground 3 re-challenging original claims 6, 8, and 9).
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`Moreover, with respect to the new, narrower claims added in reexamination,
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`Sony continues to make the exact same arguments. See Pet. 30 (ground 1
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`challenging dependent claims 12-17 and 19—which all depend on previously
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`challenged claim 6—using the exact same art and arguments); Pet. 55 (ground 2
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`challenging dependent claims 10-19—which all depend on previously challenged
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`claim 6—using the exact same art and arguments); Pet. 69 (ground 3 challenging
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`dependent claims 12-17—which all depend on previously challenged claim 6—
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`using the exact same art and arguments).
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`The four new independent claims (claims 20-23) include (a) the same
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`limitations as the previously challenged claims, and (b) some additional
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`limitations. The new claims “do not broaden the scope of original claim 6.” Ex.
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`1029; 37 C.F.R 1.552(b). As Sony admits, each new independent claim includes
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`the same limitations as previously-challenged claim 6:
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` “New independent claim 20 is identical to claim 6 except for three additional
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`limitations” (Pet. 11);
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` “New independent claim 21 is identical to claim 6 except for two additional
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`limitations” (Pet. 11);
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` “New independent claim 22 is an apparatus claim that recites the same
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`limitations as claim 6” (Pet. 11);
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` “New independent claim 23 sets forth all limitations of claim 6” (Pet. 11).
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`Because the new claims include the same limitations as the original claims, Sony
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`also makes the exact same arguments challenging the new independent claims that
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`it made in its prior petitions—Sony I, Sony II, and Sony III. As an illustrative
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`example, the following compares Sony’s current Petition and Sony’s prior petition
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`(Sony II, from two years ago) for the element “deliver[s] a low level current from
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`said main power source to the access device over said [] data signaling pair” found
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`in new independent claim 22 and previously challenged claim 6:
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`Pet. 76.
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`Ex. 2003 (Sony II—petition) at 48-49. Again, the charts are almost identical. Even
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`for the new claims, Sony makes the exact same arguments for the same limitations
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`using the exact same references and quoting the exact same language from the
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`same references.
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`Accordingly, because “the instant Petition raises, at minimum, ‘substantially
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`the same ... arguments’ that ‘previously were presented to the Office’ in the [first,
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`second, and third] Petition[s],” this factor weighs heavily in favor of denying the
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`Petition. Conopco v. The Proctor & Gamble Co., IPR2014-00628 Paper 21 at 6
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`(Oct. 20, 2014) (quoting 35 U.S.C. § 325(d)); ZTE Corporation and ZTE (USA)
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`Inc. v. Contentguard Holdings Inc., IPR 2013-00454 Paper 12 at 7 (Sept. 25, 2013)
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`(Informative Opinion) (denying petition because “the petition in this case presents
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`many of the same issues previously presented in the petition for IPR2013-
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`00134.”); Unilever v. The Procter & Gamble Company, IPR2014-00506 Paper 17
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`at 8 (July 7, 2014) (“Given that we already have considered the same or
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`substantially the same prior art or arguments in connection with the challenged
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`claims, we deny the request for an inter partes review under § 325(d).”). This
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`factor weighs heavily in favor of denying the Petition.
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`The Petition should be denied because Sony improperly
`attempts to bolster its challenges that were advanced
`unsuccessfully in its prior petitions.
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`3.
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`The third factor the Board considers in evaluating whether to deny a second
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`petition is whether the subsequent petition “uses our prior Decision … to bolster
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`challenges that were advanced, unsuccessfully, in the [prior] Petition.” Unilever,
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`IPR2014-00506 Paper 17 at 8. The Board observed that permitting challengers to
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`use a second petition to correct defects from an earlier petition would improperly
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`enable a petitioner to circumvent an earlier Board ruling. Butamax Advanced v.
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`Gevo, IPR 2014-00581 Paper 8 at 10, 13 (Oct. 14, 2014) (second petition “is
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`effectively an attempt to request rehearing of a prior decision” and improperly
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`seeks to “use our prior decision as a roadmap to remedy [petitioner’s] prior,
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`deficient challenge”). And it would remove incentives for petitioners to
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`thoroughly and carefully address each claim limitation in a first petition. ZTE
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`Corp., IPR 2013-00454 Paper 12 at 5-6 (“The Board is concerned about
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`encouraging, unnecessarily, the filing of petitions which are partially
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`inadequate.”); see also Conopco, Inc. v. The Procter & Gamble Co. IPR2014-
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`00506 Paper 25 at 4-5 (March 20, 2015) (denying Petitioner’s Request for
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`Rehearing because Petitioner’s approach “would allow petitioners to file ‘follow-
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`on’ second petitions in order to ‘correct deficiencies noted’ by the Board in
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`decisions that deny a first petition. … That approach would allow petitioners to
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`[file] serial petitions, using our decisions on institution as a roadmap, until a
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`ground is advanced that results in review—a practice that would tax Board
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`resources, and force patent owners to defend multiple attacks.”)
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`Each ground Sony presents in its current Petition attempts to correct
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`deficiencies identified in the Board’s ruling in Sony I, Sony II, and Sony III.
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`Grounds 1-3: In addressing Woodmas from Sony’s first Petition, the Board
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`found that:
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`Petitioners provide no analysis for how control station 14 allegedly is
`adapted for data switching. … The fact that control station 14
`transmit