Trials@uspto.gov
`571-272-7822
`
`
`Paper 32
`Entered: July 2, 2013
`
`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
`Patent 6,218,930
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`571-272-7822
`
`
`Paper 32
`Entered: July 2, 2013
`
`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
`Patent 6,218,930
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`Introduction
`
`Petitioner filed a request for rehearing (Paper 20, “Rehearing
`
`Request”) of the Board’s decision (Paper 18, “Decision”) instituting an inter
`
`partes review of claims 6 and 9 of Patent 6,218,930 (the “’930 patent”). In
`
`the Decision, the Board ordered a trial on two grounds of unpatentability
`
`asserted in the Petition:
`
`Claims 6 and 9 under 35 U.S.C. § 102(b) as being anticipated
`by Matsuno (Ex. 1004); and
`
`Claims 6 and 9 under 35 U.S.C. § 103(a) as being unpatentable
`over De Nicolo (Ex. 1007) in view of Matsuno.
`
`Dec. 29. Petitioner contends that the Board erred in not also instituting a
`
`trial based on the combination of Chang (Ex. 1006) and De Nicolo under 35
`
`U.S.C. § 103(a). For the reasons stated below, Petitioner’s request is denied.
`
`
`
`Analysis
`
`In determining whether to institute an inter partes review of a patent,
`
`the Board may “deny some or all grounds for unpatentability for some or all
`
`of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a
`
`decision on petition, the Board will review the decision for an abuse of
`
`discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the
`
`burden of showing an abuse of discretion, and “[t]he request must
`
`specifically identify all matters the party believes the Board misapprehended
`
`or overlooked.” 37 C.F.R. § 42.71(d).
`
`We determined in the Decision that Petitioner had not established a
`
`reasonable likelihood of prevailing on its assertion that claims 6 and 9 are
`
`unpatentable over Chang in view of De Nicolo under 35 U.S.C. § 103(a).
`
`Dec. 24-29. Specifically, independent claim 6 recites the step of “delivering
`
`
`
`2
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`a low level current from said main power source to the access device over
`
`said data signaling pair.” We interpreted “data signaling pair” to mean a
`
`pair of wires used to transmit data, and concluded that Petitioner had not
`
`shown that Chang discloses the “delivering” step because the wires
`
`connected to pins 7 and 8 in Chang, which are used to provide presence
`
`request signal 619 (identified by Petitioner as the claimed “low level
`
`current”), are not used to transmit data and therefore are not a “data
`
`signaling pair.” Id. at 12-13, 26-29. We also noted Chang’s disclosure that
`
`the reason device presence detector 414 does not use signal lines to send
`
`presence request signal 619 is to ensure that the detection signaling
`
`“perform[s] detection that is continuous and does not interfere with the
`
`normal transmit and receive.” Id. at 27 (citing Chang, col. 10, ll. 3-7).
`
`Petitioner does not challenge our claim interpretation or our
`
`determination that Chang does not disclose the full “delivering” step of
`
`claim 6. Rather, Petitioner contends that the “delivering” step has “two
`
`distinct sub-limitations” and that Petitioner relied on De Nicolo for one of
`
`those limitations. Rehearing Req. 6-10. Petitioner asserts that Chang
`
`discloses the portion of the “delivering” step dealing with “low level
`
`current” and De Nicolo discloses the other portion dealing with “over said
`
`data signaling pair.” Id. According to Petitioner, this was the “essence” of
`
`Petitioner’s asserted ground of unpatentability based on Chang and De
`
`Nicolo, which the Board overlooked. Id. at 2-3. Petitioner further disputes
`
`the Board’s conclusion that Petitioner had not shown sufficient support for
`
`why it would have been obvious to combine the teachings of Chang and De
`
`Nicolo, given the “sub-limitation” argument allegedly made in the Petition.
`
`Id. at 10-12 (citing Dec. 28).
`
`
`
`3
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`We could not have misapprehended or overlooked something not
`
`explained adequately in the initial Petition. Petitioner addressed the
`
`“delivering” step of claim 6 with respect to the asserted ground of
`
`unpatentability based on Chang and De Nicolo at two points in its Petition:
`
`in an introductory discussion on page 51 and in a claim chart section on page
`
`56. Petitioner explained on page 51 of the Petition (emphasis added):
`
`In Chang, the presence detector in the network hub sends
`a presence request signal over the twisted pair cable to the
`remote terminal. See infra § V.E.3, claim element 6(b).
`Chang’s presence request signal is a modulated form of an
`electrical current flowing through the wires, and therefore
`would be understood by a PHOSITA as a low level current.
`See Ex. AV-1011, ¶ 82. Therefore, Chang discloses
`“delivering a low level current from said main power source to
`the access device over said data signaling pair.”
`
`Similarly, in the claim chart section devoted to the “delivering” step on page
`
`56, the only prior art reference cited by Petitioner was Chang. Petitioner in
`
`the claim chart also referenced its earlier Section V.C.3, “claim element
`
`6(b),” of the Petition, but that section argues that the “delivering” step is
`
`disclosed by Matsuno. See Pet. 43, 56. Thus, in both of these discussions in
`
`the Petition, which address the “delivering” step directly, Petitioner relied on
`
`Chang alone, not Chang for one portion of the step and De Nicolo for
`
`another. Moreover, contrary to Petitioner’s position now that the
`
`“delivering” step should be viewed as two distinct “sub-limitations,” the
`
`relevant portions of the Petition address the “delivering” step as a single
`
`limitation “(b)” allegedly taught by Chang. See id. at 51, 56. This is in
`
`contrast to the “providing” step of claim 6, which Petitioner divided into
`
`sub-limitations “(a1)” to “(a5)” and analyzed separately throughout the
`
`Petition. See, e.g., id. at 53-56.
`
`
`
`4
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`
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`Case IPR2013-00071
`Patent 6,218,930
`
`
`In support of its view that the Board overlooked its “sub-limitation”
`
`argument regarding Chang and De Nicolo, Petitioner cites other portions of
`
`the Petition. These portions, however, are directed to other steps of claim 6
`
`or other combinations of references. See, e.g., Rehearing Req. 6-10 (citing
`
`Pet. 49-50 (addressing the “providing” step), 39 (Section V.C.2 addressing
`
`the combination of De Nicolo and Matsuno), and 42 (addressing the
`
`“providing” step as to the combination of De Nicolo and Matsuno)). They
`
`do not explain clearly the position now advocated by Petitioner, i.e., that
`
`Chang discloses the “low level current” aspect of the “delivering” step and
`
`De Nicolo discloses the “over said data signaling pair” aspect. Petitioner
`
`also points to paragraphs 80-81 of the Declaration of Dr. George A.
`
`Zimmerman (Ex. 1011). Rehearing Req. 11-12. These paragraphs,
`
`however, were cited in the Petition’s discussion of the “providing” step of
`
`claim 6, not in the context of the “determining” step. Pet. 49-50. Moreover,
`
`the mere citation to these paragraphs does not demonstrate that Petitioner
`
`made its “sub-limitation” argument in the Petition itself.
`
`It is not for the Board to attempt to piece together a petitioner’s
`
`position based on other, unrelated arguments in a petition, particularly in
`
`circumstances like this where the most relevant portions of the Petition state
`
`clearly that Chang discloses the entire “delivering” step. A request for
`
`rehearing is not an opportunity to supplement the initial Petition. See 37
`
`C.F.R. § 42.104(b)(4) (a petition must identify “[h]ow the construed claim is
`
`unpatentable under the statutory grounds identified” and “where each
`
`element of the claim is found in the prior art patents or printed publications
`
`relied upon”).
`
`
`
`5
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`Petitioner has not carried its burden of demonstrating that the Board’s
`
`Decision misapprehended or overlooked any matters argued in the Petition.
`
`As such, Petitioner has not shown an abuse of discretion in the decision not
`
`to include Petitioner’s asserted ground of unpatentability based on the
`
`combination of Chang and De Nicolo in the instant inter partes review.
`
`In consideration of the foregoing, it is hereby ORDERED that
`
`Petitioner’s request for rehearing is denied.
`
`
`
`
`
`6
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`PETITIONER:
`
`Jeffrey D. Sanok
`Jonathan Lindsay
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`JSanok@Crowell.com
`JLindsay@Crowell.com
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`BUCHANAN, INGERSOLL & ROONEY P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
`
`
`7
`
`
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