UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________
`
`CASE IPR2013-00071
`U.S. Patent No. 6,218,930
`____________________
`
`Before the honorable Jameson Lee, Joni Y. Chang, and Justin T. Arbes
`____________________
`
`
`
`AVAYA’S REQUEST FOR REHEARING
`
`
`
`
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________
`
`CASE IPR2013-00071
`U.S. Patent No. 6,218,930
`____________________
`
`Before the honorable Jameson Lee, Joni Y. Chang, and Justin T. Arbes
`____________________
`
`
`
`AVAYA’S REQUEST FOR REHEARING
`
`
`
`
`
`Avaya’s Request for Rehearing
`IPR2013-00071
`
`
`STATEMENT OF RELIEF REQUESTED
`In the “Decision on Institution of Inter Parties Review 37 C.F.R. § 42.108”
`
`
`I.
`
`(Paper 18, May 24, 2013) (“Decision”), Grounds 2, 4 and 5 were denied, while
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`Grounds 1 and 3 were granted. Petitioner respectfully requests only a limited
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`rehearing as to Ground 5 based on the combination of Chang (AV-1006) and De
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`Nicolo (AV-1007) (Decision at 24-29).
`
`Accordingly, this Request for Rehearing (“Request”) moves for rehearing of
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`the Board’s decision to deny the Petition as to Ground 5 and for an order which
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`expands the trial to include Ground 5 as a basis invalidating claims 6 and 9 of U.S.
`
`Patent No. 6,218,930 (“the ’930 Patent”).1
`
`II.
`
`INTRODUCTION
`
`Chang delivers a low level current in the form of its presence request signal
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`to detect whether a remote terminal (access device) is present. If detected, Chang
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`then controls power (current) to the access device. The Patent Owner agrees that
`
`
`1 Separately, Petitioner notes an apparent typographical error in the Decision
`as to the claim construction of “low level current,” in which an incorrect
`exemplary current level of approximately “2 mA” is stated at times (Decision at
`10, 17 and 23) rather than the correct “20 mA” disclosed in the ‘930 Patent and
`noted in the Decision at other times. (Decision at 9 (lines 6 and 26)). Clarification
`is requested.
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`DCACTIVE-23463979.6
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`Page 2 of 13
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`“Chang actually addresses the problem addressed by the ’930 Patent . . . .”2 Even
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`Avaya’s Request for Rehearing
`IPR2013-00071
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`if Chang is read to do so by using different wire pairs than are used for data
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`transmission in an Ethernet environment, De Nicolo, in such an Ethernet
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`environment, teaches one skilled in the art how current can be supplied to an
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`Ethernet access device over the same wire pairs used for data transmission. As
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`such, it would be obvious to modify Chang’s Ethernet network connections to
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`supply Chang’s low level current and operational power (current) to an Ethernet
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`access device over the same wire pairs used for data transmission based on De
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`Nicolo’s teachings. One simple motivation is the savings in wire connections.
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`The above is the essence of Petitioner’s Ground 5, which was amply
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`supported in the Petition and by the declarant, Dr. Zimmerman, as will be
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`discussed below. The Decision erred in denying Ground 5 by not applying
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`De Nicolo in a manner consistent with its own application of De Nicolo with
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`respect to granted Ground 3, which was based on the combination of De Nicolo
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`(AV-1007) in view of Matsuno (AV-1004) (Decision at 18-22). In granting
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`Ground 3, the Board agreed that one reference, Matsuno, could teach the “low
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`level current” limitation found in the “delivering” step of claim 6 (as does Chang),
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`while another reference, De Nicolo, could teach the delivery of current “over the
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`2 Patent Owner’s Preliminary Response, page 42.
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`DCACTIVE-23463979.6
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`Page 3 of 13
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`same data signaling pair” limitation also found in the “delivering” step of claim 6.
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`IPR2013-00071
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`(Decision at 21). In combination, De Nicolo and Matsuno met the “delivering”
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`step of claim 6.
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`In parallel fashion, the Petitioner argues in Ground 5 that the combination of
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`Chang and De Nicolo renders claims 6 and 9 obvious, with one reference (Chang)
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`being relied upon for disclosing the “low level current” limitation of the
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`“delivering” step and the second reference (De Nicolo) being relied upon for
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`generally disclosing the delivery of current (albeit operational current)3 over the
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`same data signaling pair, such that Chang and De Nicolo in combination also teach
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`the “delivering” step of claim 6.
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`De Nicolo, in fact, picks up exactly where Chang left off by disclosing a
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`particular approach that would have been obvious to use in order for Chang to
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`deliver both its presence request signal (low level current) and its operational
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`power (perhaps a higher level current) to Ethernet-based devices over the same
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`twisted pair lines used for data transmission. Petitioner’s Ground 5 thus modified
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`Chang with the teachings of De Nicolo showing that “current” generally—whether
`
`
`3 De Nicolo supplies operational power to the Ethernet access devices over
`the same wire pairs used for data transmission. Power (P), by definition is a
`function of current, as it is the product of voltage (V) and current (I): P=VI.
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`DCACTIVE-23463979.6
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`Page 4 of 13
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`of a low or high level—may be supplied from Chang’s network hub to an
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`additional type of remote access device (i.e., an Ethernet-based device) in a manner
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`which makes efficient use of the same twisted pair lines that are used to provide
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`data. Petitioner respectfully submits that Ground 5, under the same logic applied
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`by the Board with respect to granted Ground 3, should also be included in the trial.
`
`III. ARGUMENTS
`A. The Decision Erred In Finding That The Combination Of Chang
`And De Nicolo Does Not Teach The ‘Delivering’ Step of Claim 6
`
`The Board concluded that the Petitioner had not met its burden with respect
`
`to Ground 5 for two reasons. First, the Board stated that:
`
`that Chang
`“Petitioner has not demonstrated
`teaches the claim step of ‘delivering a low level current
`from said main power source to the access device over
`said data signaling pair.’ Petitioner also does not argue
`in the Petition that De Nicolo teaches the missing
`limitation.”
`
`(Decision at p. 28, lines 6-9) (emphasis added).
`
`Second, the Board stated that “Petitioner gives no explanation in the Petition
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`. . . as to why the “delivering” step of claim 6 (missing from Chang) would be
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`obvious based on the combination of Chang and De Nicolo . . . .” (Decision at 28).
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`However, as set forth below, the Petitioner did in fact expressly argue that Chang
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`and De Nicolo teach, in combination, the “delivering” step of claim 6, as well as
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`DCACTIVE-23463979.6
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`Page 5 of 13
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`why it would have been obvious to combine their teachings. Therefore, the denial
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`of Ground 5 was in error.
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`1.
`
`The Petition Expressly Argues That De Nicolo Teaches The
`Use Of The Same Data Signaling Pair To Deliver Current
`As Well As To Transmit Data
`
`The element of claim 6 that is in question is “delivering a low level current
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`from said main power source to the access device over said data signaling pair,”
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`where the “data signaling pair” is separately recited as also being “arranged to
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`transmit data” between the recited data node and the access device. This
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`“delivering” step actually consists of two distinct sub-limitations: (1) a “low level
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`current” delivered to the access device; and (2) a “data signaling pair” that is used
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`to carry both the “low level current” and data between the data node and the access
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`device. While these two separate sub-limitations may have been conflated in the
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`arguments advanced by the Patent Owner, there is no requirement that both sub-
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`limitations be found in a single prior art reference when the ground advanced for
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`unpatentability is based on obviousness in view of a properly motivated prior art
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`combination, as is the case here with Ground 5.
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`While the Petition does argue that, under a broadest reasonable
`
`interpretation, Chang could be reasonably interpreted as disclosing the entire
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`“delivering” step of claim 6, both the Petition and the supporting Declaration of
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`DCACTIVE-23463979.6
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`Page 6 of 13
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`Dr. Zimmerman (AV-1011) also expressly advance the position that Chang
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`IPR2013-00071
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`satisfies the sub-limitation of providing a “low level current” at least in the form of
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`its “presence detection signal 619,” 4 and that it would have been obvious to do so
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`over the same data signaling pairs that are used to provide data, as is expressly
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`taught by De Nicolo. In setting forth Ground 5, the Petition states that:
`
`De Nicolo also discloses the recited “data signaling pair.”
`See supra § V.C.3, claim element 6(a3); see also Ex.
`AV-1011, ¶ 66.
` A PHOSITA would have been
`motivated to combine features from De Nicolo relating to
`power over data lines with the network set forth in
`Chang, thereby forming the claimed combination of the
`’930 Patent. See id. at ¶¶ 80-81.
`
`(Petition at 49-50) (emphasis added).
`
`Moreover, in Section V.C.3 of the Petition, which is specifically referenced
`
`in the above-cited passage, the Petition states that:
`
`De Nicolo discloses the claimed step of “delivering . . .”
`since its center tapped transformers on the data node side
`of the system deliver power to the load devices over the
`Ethernet
`link, which
`is a “data signaling pair.”
`
`4 While the Patent Owner has argued that Chang’s “presence detection signal
`619” is not a “low level current,” this argument is predicated on two different
`claim constructions, neither of which were adopted by the Board. The fact is that
`Chang’s “presence detection signal 619” is a modulated form of an electrical
`current flowing through a wire that, by itself, will not operate an access device.
`See Decl. of Dr. Zimmerman, ¶ 82.
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`DCACTIVE-23463979.6
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`Page 7 of 13
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`Avaya’s Request for Rehearing
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`Therefore, current is provided from the main power
`source to the access device over the data signaling pair.
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`(Petition at 39) (emphasis added).
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`The claim chart accompanying the arguments for Ground 5, spanning pages
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`53 to 57 in the Petition, further specifically identify how Chang and De Nicolo are
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`being relied upon for teaching the various limitations of claim 6. In particular, for
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`each element that Chang is relied upon, the claim chart includes detailed citations
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`to various teachings in Chang that are relevant to those particular elements. And
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`for each element on which De Nicolo is additionally being relied upon, the claim
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`chart includes a reference back to Section V.C.3 (done for the sake of brevity in the
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`chart) where the detailed citations to various relevant teachings in De Nicolo can
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`be found.
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`With respect to the “data signaling pair,” for example, the Ground 5 claim
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`chart cites to the corresponding claim mapping for De Nicolo found in Section
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`V.C.3. In particular, the “data signaling pair” (which is actually addressed when it
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`first appears in the claim in element 6(a3), rather than in element 6(b)), is
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`described in the claim mapping of Section V.C.3 as being disclosed by De Nicolo
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`by virtue of the following teachings:
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`Ethernet link 128 couples first and second secondaries
`130, 132 of first transformer 112 to first and second
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`DCACTIVE-23463979.6
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`Page 8 of 13
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`Avaya’s Request for Rehearing
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`primaries 134, 136 of second transformer 118. Ethernet
`link 128 preferably comprises a pair of twisted pair
`conductors 128a and 128b wherein twisted pair 128a
`connects first secondary 130 to first primary 134 of the
`twisted pair 128b connects second secondary B2 to
`several primary 136.” AV-1007, Col. 3:25-31; Fig. 3;
`Abstract; Cols. 1:50-2:8, 2:20-24, 2:30-34; Claims 1-3, 6-
`8, 11-16; Fig. 1.
`
`(Petition at page 42, element 6(a3)).
`
`
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`Moreover, specifically-identified passages in De Nicolo clearly disclose the
`
`transmission of power and Ethernet data over the same wire pairs. For example,
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`Column 2, lines 30 – 34, which is one of the passages specifically identified in the
`
`claim mapping section for De Nicolo, states that:
`
`An Ethernet device power transmission system provides
`electrical power to devices such as Ethernet telephones
`and related equipment over a 4-wire Ethernet connection
`without any need for rewiring premises having an
`existing 4-wire Ethernet system.
`
`(De Nicolo (AV-1007), col. 2, lines 30-34) (emphasis added).
`
`Therefore, Ground 5, as set forth in the original Petition, expressly includes
`
`the argument that, with respect to the “delivering” step of claim 6, Chang satisfies
`
`sub-limitation (1)5, i.e., the delivery of low level current, and that De Nicolo
`
`
`5 In attempting to distinguish Chang, the Patent Owner finds itself in a pickle
`trying to take the position that Chang’s detection signal is not data when arguing
`(continued…)
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`
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`DCACTIVE-23463979.6
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`Page 9 of 13
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`satisfies sub-limitation (2), i.e., doing so over the same data signaling pair.
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`Avaya’s Request for Rehearing
`IPR2013-00071
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`Therefore, the combination of Chang and De Nicolo clearly teaches the entire
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`“delivering” step of claim 6.
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`2.
`
`The Petition Does Provide Support For Why It Would Have
`Been Obvious To Combine The Teachings of Chang And De
`Nicolo
`
`As noted above, in denying Ground 5, the Board further found that the
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`Petitioner had made only a “bare assertion” regarding the motivation to combine
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`Chang and De Nicolo. And, that the “Petitioner gives no explanation in the
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`Petition, however, as to why the “delivering” step of claim 6 (missing from Chang)
`
`would be obvious based on the combination of Chang and De Nicolo, nor does
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`Petitioner provide any facts or reasoning as to why a person of ordinary skill in the
`
`art would have found the claimed subject matter obvious in spite of the missing
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`limitation.” (Decision at 28). For the reasons set forth below, however, this finding
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`is incorrect.
`
`(continued…)
`
`that Chang does not satisfy the claimed “data signaling pair,” while later having to
`take the opposite position that Chang’s detection signal is data (i.e., a data signal)
`when trying to argue that it is not a “low level current.” See Patent Owner’s
`Preliminary Response, pages 43-44 (arguing that Chang does not disclose the
`‘data signaling pair’ because the detection signal is sent over a different line than
`the data) and pages 45-50 (arguing that Chang does not disclose a ‘low level
`current’ because the detection signal is a data signal). Surely the Patent Owner
`cannot have it both ways.
`
`DCACTIVE-23463979.6
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`Page 10 of 13
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`As an initial matter, the particularly-cited passage alleged to represent the
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`Petitioner’s “bare assertion” is, in fairness, merely an introductory paragraph in the
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`Petition to the overall section in which the arguments in support of Ground 5 are
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`set forth. Even then, that paragraph expressly includes a citation to thirteen (13)
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`separate paragraphs in Dr. Zimmerman’s declaration that specifically discuss how
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`a PHOSITA would interpret the teachings of Chang and De Nicolo, and why there
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`would have been a motivation to combine their respective teachings.
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`In fact, at least two of the paragraphs in Dr. Zimmerman’s declaration that
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`are referenced in the introductory paragraph specifically address the combination
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`of Chang’s “low level current” with De Nicolo’s “data signaling pair.” In
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`particular, Dr. Zimmerman explains that:
`
`With respect to the recited “data signaling pair” in the
`claims of the ’930 Patent, in connection with the
`substitution to the well known Ethernet networking
`protocol of De Nicolo, it would have correspondingly
`been obvious to similarly adopt the wire pair connection
`of De Nicolo.
`
`(Decl. of Dr. Zimmerman (AV-1011) at 80) (emphasis added).
`
`It would have similarly been obvious to, in utilizing the
`wire pair connection of De Nicolo, adopt De Nicolo’s
`feature of using the same lines to supply power and
`transmit signals since doing so would simplify the
`network connections and reduce the complexity of the
`network structure.
`
`DCACTIVE-23463979.6
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`Page 11 of 13
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`(Decl. of Dr. Zimmerman (AV-1011) at 81) (emphasis added).
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`Avaya’s Request for Rehearing
`IPR2013-00071
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`In addition, however, Ground 5 of the Petition includes a separate
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`“Motivation to combine” section which identifies the similarities between Chang
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`and De Nicolo, as both being designed to supply power and data to remote devices
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`in a network environment, and how the combination would involve no more than
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`the routine substitution of one known networking protocol for another, particularly
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`since Chang itself discloses Ethernet adapters. See Petition, Section V.E.4, pages
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`58-59. Additional citations to Dr. Zimmerman’s Declaration are also provided
`
`therein. The Petition further notes that even the ’930 Patent provides motivation
`
`by acknowledging that “[t]he desire to add remotely powered devices to a data
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`network is being pushed by the convergence of voice and data technologies.” ’930
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`Patent (AV-1001), col. 1, 1ines 33-35.
`
`Thus, Ground 5, as set forth in the original Petition, expressly includes
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`support for why a PHOSITA would have been motivated to combine the teachings
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`regarding the “low level current” in Chang with the “data signaling pair” in De
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`Nicolo. And, such a combination meets all of the limitations of claims 6 and 9.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests rehearing on the
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`denial of Ground 5, and requests the trial be expanded accordingly.
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`DCACTIVE-23463979.6
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`Page 12 of 13
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`Respectfully submitted,
`
` /Jeffrey D. Sanok, Reg. No. 32,169/
`Jeffrey D. Sanok, Reg. No. 32,169
`Jonathan M. Lindsay, Reg. No. 45,810
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`Telephone No.: (202) 624-2500
`Facsimile No.: (202) 628-8844
`
`ATTORNEYS FOR PETITIONER
`
`
`
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`
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`June 7, 2013
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`DCACTIVE-23463979.6
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`Page 13 of 13
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
`
`I hereby certify that on this 7th day of June 2013, a true and correct copy of
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`the foregoing “AVAYA’S REQUEST FOR REHEARING” was served, in
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`accordance with the parties’ electronic service agreement, by electronic mail upon
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`the following lead and backup counsel of record for the Patent Owner:
`
`Robert G. Mukai, Lead Counsel
`Buchanan, Ingersoll & Rooney P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Service E-mail: Robert.Mukai@BIPC.com
`
`Charles F. Wieland III, Back-up Counsel
`Buchanan, Ingersoll & Rooney P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Service E-mail: Charles.Wieland@BIPC.com
`
`
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`Respectfully submitted,
`
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`June 7, 2013
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`DCACTIVE-23571487.1
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`
` /Jonathan M. Lindsay/
`Jonathan M. Lindsay, Reg. No. 45,810
`(Back-up Counsel)
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
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