Filed on behalf of Patent Owner Network-1 Security Solutions, Inc.
`
`By: Robert G. Mukai, Esq.
`Charles F. Wieland III, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`Telephone (703) 836-6620
`Facsimile (703) 836-2021
`robert.mukai@bipc.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`AVAYA INC., DELL INC., SONY CORP. OF AMERICA, and
`HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2013-000711
`Patent 6,218,930
`Administrative Patent Judges Jameson Lee, Joni Y. Chang and Justin T. Arbes
`____________________
`
`
`
`
`SECOND DECLARATION OF DR. JAMES KNOX
`
`
`
`1
`IPR2013-00385 and IPR2013-00495 have been joined with this proceeding.
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`

`

`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
`
`
`Table of Contents
`
`I.
`
`
`
`“Ethernet” additions......................................................................................... 4
`
`II. New step: “determining whether the access device is capable of
`accepting remote power based on the sensed voltage.” .................................. 4
`
`A.
`
`“voltage” and “voltage level.” ............................................................... 5
`
`1.
`
`2.
`
`3.
`
`The determining step does not broaden the scope of
`original Claim 6. ......................................................................... 5
`
`The proposed determining step has written description
`support in the ‘930 Patent. ........................................................10
`
`Avaya’s assertion as to Network-1’s motives for the
`proposed language in the determining step is wrong. ...............11
`
`B.
`
`Construction of the proposed determining step. .................................13
`
`1.
`
`2.
`
`Background to the determining step. ........................................13
`
`The broadest reasonable interpretation of “determining
`whether a device is capable of accepting remote power”
`in the context of the ‘930 Patent means determining
`whether a device is designed to accept remote power. .............15
`
`3. While Avaya proposed an incorrect additional second
`requirement in its construction of the determining step, it
`includes the proper construction as its first requirement. .........17
`
`a.
`
`b.
`
`Because the construction proposed by Avaya
`includes, as its first requirement, the construction I
`set forth above, Avaya’s additional requirement
`creates a narrower construction. .....................................18
`
`Avaya’s additional requirement is not reasonable
`in light of the specification of the ‘930 Patent. ..............20
`
`III. The proposed claims are patentable over Matsuno. ...................................... 21
`
`A.
`
`Because all devices taught in Matsuno are designed to accept
`remote power, “determining whether a device is capable of
`accepting remote power” is neither expressed nor inherent in
`Matsuno. ..............................................................................................22
`
`IV. The proposed claims are patentable over Woodmas. .................................... 36
`
`A. Overview of Woodmas. .......................................................................36
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`B. Woodmas does not disclose the amended elements of the
`proposed claims, including the proposed determining step. ...............38
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`V. Proposed Claims 10 and 11 are patentable over Matsuno and De Nicolo
`in view of Woodmas or Chang. ..................................................................... 43
`
`A.
`
`B.
`
`The proposed new claims are not obvious over Matsuno and De
`Nicolo in view of Woodmas. ...............................................................43
`
`The proposed new claims are not obvious over Matsuno and De
`Nicolo in view of Chang. ....................................................................48
`
`VI. Proposed Claims 10 and 11 are not obvious over other references
`brought to attention during previous litigations. ........................................... 52
`
`VII. Signature. ....................................................................................................... 56
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`2
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`I, James Knox, declare:
`
`219. I am making this Declaration at the request of Network-1 Security
`
`Solutions, Inc. in the joined Inter Partes Reviews of U.S. Patent No. 6,218,930.
`
`220. On August 6, 2013, I signed a “First Declaration” (N1-2015) that
`
`included paragraphs 1 through 218. For ease of reference, I continue this
`
`numbering and begin this Declaration with paragraph 219. In my First
`
`Declaration, I provided a summary of my expertise (¶2-¶6) and the background to
`
`my opinions (¶7–¶14), which I incorporate herein by reference.
`
`221. I understand that Dr. George Zimmerman submitted a second
`
`declaration (AV-1041) responding to certain opinions expressed in my First
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`Declaration, taking additional positions with respect to the ‘930 Patent and the
`
`prior art, and addressing Network-1’s Motion to Amend.
`
`222. In rendering my opinions in this declaration, in addition to the
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`materials I considered in connection with my First Declaration, I also considered
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`(a) Dr. Zimmerman’s 2nd Declaration, (b) Avaya’s Opposition to Network-1’s
`
`Motion to Amend, and (c) the other documents referenced in this Declaration.
`
`223. In this Declaration, I address:
`
`(a) the arguments made by Avaya in its Opposition to Network-1’s Motion
`
`to Amend, and
`
`(b) the portions of Dr. Zimmerman’s 2nd Declaration that address Network-
`
`1’s Motion to Amend (¶66-¶98).
`
`In doing so, I address Dr. Zimmerman’s (and Avaya’s) arguments concerning:
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` the proposed “Ethernet” amendments (Section I);
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` the proposed additional step: “determining whether the access device is
`
`capable of accepting remote power based on the sensed voltage” (Section
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`II); and
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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` the known prior art (including Matsuno and Woodmas and combinations
`
`of these references with De Nicolo and Chang) (Sections III – VI).
`
`I.
`
`“Ethernet” additions.
`
`224. I understand that, if the Board determines that original Claims 6 and 9
`
`are not patentable, Network-1 proposes new substitute Claims 10 and 11. New
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`Claim 10 adds “Ethernet” to the following two claim elements:
`
`a)
`
`b)
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`“an Ethernet data network;” and
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`“an Ethernet data node.”
`
`It is my opinion (as would be the understanding of one of ordinary skill in the art)
`
`that these two proposed “Ethernet” limitations respond to and distinguish
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`Ground 1 which asserts that Claims 6 and 9 are anticipated by Matsuno.
`
`225. In my First Declaration, I identified several elements in original Claim
`
`6 that are missing from Matsuno. First Decl. (N1-2015) ¶95 – ¶171. In addition to
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`not disclosing these elements, Matsuno also does not teach an “Ethernet data
`
`network” or “an Ethernet data node” as presented in Claim 10. Matsuno does not
`
`include the word “Ethernet,” disclose any Ethernet network or Ethernet data node,
`
`or address the concept of Ethernet.
`
`226. Based on my review of the documents submitted by Avaya, it appears
`
`that Avaya and its expert, Dr. Zimmerman, agree with my opinion. Neither
`
`Avaya’s Petition nor Dr. Zimmerman’s Declarations (AV-1011 and AV-1041)
`
`suggest that Matsuno discloses an “Ethernet data network” or an “Ethernet data
`
`node.” Accordingly, the two proposed Ethernet amendments directly respond to
`
`and distinguish Ground 1.
`
`
`
`II. New step: “determining whether the access device is capable of
`accepting remote power based on the sensed voltage.”
`
`227. If the Board determines that Claim 6 is not patentable, it is my
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`4
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`understanding that Network-1 proposes to add the following additional step as the
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`new fourth step in substitute Claim 10:
`
`“determining whether the access device is capable of accepting
`remote power based on the sensed voltage.”
`
`
`Below, I address Dr. Zimmerman’s and Avaya’s arguments concerning this
`
`proposed determining step.
`
`
`
`A.
`
`“voltage” and “voltage level.”
`
`228. I understand that Avaya argues that “the sensed voltage” in the
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`proposed new determining step does not refer to and mean the same thing as the
`
`“voltage level” sensed in the prior sensing step. Opp. at 13-15. I also understand
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`that, based on this premise, Avaya makes three assertions:
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`(1) adding the determining step impermissibly broadens the scope of
`
`original Claim 6;
`
`(2) the determining step is not supported by the written description of the
`
`‘930 Patent; and
`
`(3) the Patent Owner’s motive for including “voltage” rather than “voltage
`
`level” in the proposed determining step was to broaden the substitute
`
`claims for purposes of proving infringement.
`
`I respectfully disagree with each of Avaya’s assertions.
`
`1.
`
`The determining step does not broaden the scope of original
`Claim 6.
`
`229. In its Opposition, Avaya suggests that the proposed determining step
`
`impermissibly broadens the claim scope by reciting “the voltage” rather than “the
`
`voltage level.” Opp. at 13-14. Adding the proposed determining step in Claim 10
`
`does not broaden the scope of original Claim 6 for the following four reasons.
`
`230. Reason 1: Adding a new step cannot broaden the scope of the original
`
`claim. By adding the determining step in new Claim 10, Claim 10 includes:
`
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`(a) all elements of original Claim 6 (no elements from original Claim 6 were
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`deleted or modified); and, in addition,
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`(b) all proposed additional limitations.
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`Accordingly, the scope of proposed Claim 10 is limited to the scope of original
`
`Claim 6 and further narrowed by the additional proposed limitations. Because all
`
`limitations of original Claim 6 are found in Claim 10 (every word in the original
`
`claim is still in the substitute claim), one skilled in the art would understand that
`
`the proposed determining step cannot broaden the scope of original Claim 6.
`
`231. Avaya stated in its Opposition:
`
`“the proposed amendment broadens the phrase by dropping the word
`‘level’ in the ‘determining step.’”
`
`Opp. at 13. It appears that Avaya’s argument is misplaced. Whether or not “level”
`
`was “dropped” from the new proposed determining step, it was not dropped from
`
`original Claim 6. As a result, one skilled in the art would understand that the scope
`
`of proposed Claim 10 cannot broaden the scope of original Claim 6.
`
`232. Reason 2: Because “the voltage” in the proposed determining step
`
`refers to the “voltage level” sensed in the prior step, “voltage” and “voltage level”
`
`are the same. It is my understanding that when the word “the” is used in a claim,
`
`what follows the “the” refers to the prior use of that term presented earlier in the
`
`claim. The antecedent basis for “the voltage” in the new proposed determining
`
`step is “a voltage level” in the third step of the claim. As a result, one of ordinary
`
`skill in the art would understand that “the voltage” in the proposed determining
`
`step refers back to “a voltage level” in the prior step and, as a result, has the exact
`
`same meaning.
`
`233. Reason 3: The claim language and specification of the ‘930 Patent
`
`demonstrate that “voltage” is not broader than “voltage level.” The premise
`
`underlying Avaya’s argument is that “voltage level” is limited to a single attribute
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`of a voltage – the amplitude of the voltage at a single point in time – while
`
`“voltage” includes both the amplitude and waveform. Claim 7 of the ‘930 Patent
`
`(which depends on Claim 6) demonstrates that the premise underlying Avaya’s
`
`suggestion cannot be right. Claim 7 requires:
`
`“Method according to claim 6, including the step of: increasing power
`supplied to the access device in response to a ‘sawtooth’ voltage level
`sensed on the data signaling pair.”
`
`
`Accordingly, Claim 7 narrows the broader “voltage level” of Claim 6 to a
`
`particular voltage level waveform - namely that it be of a “sawtooth” shape.
`
`234. A “sawtooth” voltage level is a voltage level that is in the shape of a
`
`sawtooth, e.g.:
`
`
`
`http://en.wikipedia.org/wiki/Sawtooth_wave. Accordingly, the phrase “sawtooth
`
`voltage level” in the claim cannot be limited to just a measurement of the voltage
`
`amplitude at a given point in time but rather must reflect the characteristics of the
`
`voltage (both the amplitude and waveform) over a period of time. If the phrase
`
`“voltage level” were taken to mean a voltage amplitude alone, then there would be
`
`no way by which the system could sense a “‘sawtooth’ voltage level.” The
`
`claimed “voltage level” therefore is not limited to just an amplitude measurement
`
`(although that is the mechanism by which the waveform understanding is derived);
`
`it must also include other characteristics – e.g., the waveform created by a
`
`successive sequence of amplitude measurements. As a result, Claim 7
`
`demonstrates to one of ordinary skill in the art that “voltage level” cannot be
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`limited to just the amplitude of the voltage at a given time.
`
`235. Moreover, if one were to restrict “voltage level” to apply to only the
`
`amplitude of the sensed voltage at a single point in time, then the teachings of the
`
`preferred embodiment of the ‘930 Patent would not fall within the scope of the
`
`claims, and I understand that a claim interpretation that excludes a preferred
`
`embodiment is rarely correct. In the preferred embodiment, the system does not
`
`sense just a single value of the voltage. Rather, it senses “no voltage drop, a fixed
`
`level voltage drop, or a varying level voltage drop.” ‘930, 3:2-4. These three
`
`conditions can only be determined by multiple measurements of the voltage
`
`amplitude taken over a period of time and using this sequence of voltage
`
`measurements to determine the waveform of the sensed voltage. The condition of
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`“no voltage drop” is itself a waveform (a flat line). “No voltage drop” can only be
`
`determined by analyzing a series of voltage amplitude values and determining the
`
`waveform. Likewise, a “fixed level voltage drop” is a waveform consisting of a
`
`horizontal line (series of fixed level amplitudes), followed by a vertical drop to a
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`new amplitude which is then determined to be another horizontal line (series of
`
`fixed level amplitudes).
`
`236. Reason 4: One skilled in the art would understand that, in the context
`
`of the ‘930 Patent, “voltage” and “voltage level” are used interchangeably and
`
`mean the exact same thing.
`
`237. The ‘930 Patent uses “voltage” and “voltage level” interchangeably,
`
`for example:
`
` “Automatic detection of remote equipment being connected to the network
`
`is accomplished by delivering a low level current (approx. 20 ma) to the
`
`network interface and measuring a voltage drop in the return path.” ‘930
`
`2:66-3:2 (here, the ‘930 Patent refers to a “voltage” not a “voltage level”);
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`Case No. IPR2013-00071
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` “There are three states which can be determined: no voltage drop, a fixed
`
`level voltage drop or a varying level voltage drop.” ‘930, 3:2-4 (here, the
`
`‘930 Patent uses “voltage” and “voltage level” interchangeably in the same
`
`sentence).
`
`238. Moreover, the Board, in referencing these portions of the
`
`specification, also used “voltage” and “voltage level” interchangeably:
`
`“the Specification describes in broad terms ‘measuring a voltage drop in
`the return path’ to look for a ‘sawtooth’ voltage level in the return path.’”
`
`Dell Decision (IPR2013-00385, Paper 16) at 11-12, citing ‘930, 2:66-3:17.
`
`239. In addition, throughout its Petition, Avaya used “voltage” and
`
`“voltage level” interchangeably when describing what the prior art allegedly
`
`discloses. For example:
`
` “power supplied to NT1/DTE is decreased in response to sensing a voltage
`
`that indicates local power has been restored.” Petition at 21;
`
` “Matsuno fully discloses delivering a low level current, sensing a voltage
`
`and controlling the power supplied to access devices, per the claims of the
`
`’930 Patent.” Petition at 21;
`
`240. Throughout his First Declaration, Dr. Zimmerman also used “voltage”
`
`and “voltage level” interchangeably in the context of the ‘930 Patent. The
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`following are a few examples:
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` “Matsuno … detects a resulting voltage or current.” (AV-1011 ¶40);
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` “The voltage would correspondingly drop to zero. The disconnection or
`
`removal of the terminal device would be understood to result in the voltage
`
`decreasing to zero.” (AV-1011 ¶42).
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`241. In addition, the construction for “sensing a voltage level on the data
`
`signaling pair” that Dr. Zimmerman applied in his analysis incorporates “voltage”
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`rather than “voltage level.” Zimmerman 2nd Decl. ¶4 (“I have … relied upon the
`
`Board’s constructions in my analysis including the following constructions:
`
`‘sensing a voltage level on the data signaling pair’: sensing a voltage at a point on
`
`the pair of wires used to transmit data.”). While Dr. Zimmerman suggested (in a
`
`later section of his Second Declaration) that the proper construction should
`
`include “sensing a voltage level” rather than “sensing a voltage,” he confirmed
`
`that he applied the construction without “level” in his analysis:
`
`
`
`Zimmerman Depo. 335.
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`
`
`2.
`
`The proposed determining step has written description
`support in the ‘930 Patent.
`
`242. I understand that Avaya asserts that the determining step does not
`
`have adequate written description support in the ‘930 Patent. Opp. at 14-15. There
`
`are two reasons why one of ordinary skill in the art would understand that the
`
`additional determining step has written description support in the ‘930 Patent.
`
`243. Reason 1: As I explained above, “the voltage” in the proposed
`
`determining step refers to, and means the same thing as, the sensed “voltage level”
`
`in the prior sensing step. ¶232, -¶236-¶241 above. As a result, “the voltage,”
`
`which means the same thing as “the voltage level,” has written description support.
`
`244. Reason 2: One of ordinary skill in the art would understand that there
`
`is written description support for basing the determining step on a “voltage” rather
`
`than just a “voltage level.” In its Opposition, Avaya asserts:
`
`10
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`

`
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` “The ‘930 patent consistently refers to sensing a voltage level” (Opp.
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`at 14), and
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` “The only embodiment that decides when to apply power is based on
`
`the sensed voltage ‘level.’” Opp. at 13.
`
`I respectfully disagree with Avaya.
`
`245. Contrary to Avaya’s assertions, the ‘930 Patent discloses
`
`“determining” based on a “voltage” (without the qualifying “level”) in addition to
`
`a “voltage level.” For example, the ‘930 Patent describes how the determining
`
`(“[a]utomatic detection”) is based on measuring a “voltage drop” – in addition to a
`
`“voltage level drop:”
`
`“Automatic detection of remote equipment being connected to the
`network is accomplished by delivering a low level current (approx. 20
`ma) to the network interface and measuring a voltage drop in the
`return path.”
`
`‘930, 2:66-3:2. This portion of the specification refers to a “voltage drop” – not a
`
`“voltage level drop” or a “drop in the voltage level.” The following portion of the
`
`specification provides further support to one of ordinary skill in the art:
`
`“There are three states which can be determined: no voltage drop, a
`fixed level voltage drop or a varying level voltage drop.”
`
`‘930, 3:2-4 (referring to both voltage and voltage level drops). To the extent that
`
`“voltage,” in the context of the ‘930 Patent, means something other than “voltage
`
`level” (as asserted by Avaya), these cited portions of the specification of the ‘930
`
`Patent demonstrate that one of ordinary skill in the art would understand that there
`
`is written description support for determining based on a “voltage.”
`
`
`
`3.
`
`Avaya’s assertion as to Network-1’s motives for the
`proposed language in the determining step is wrong.
`
`246. In its opposition, Avaya speculates as to why Network-1 included
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`Case No. IPR2013-00071
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`“voltage” rather than “voltage level” in the proposed determining step:
`
`“Network-1 purposefully selected the broader term to improve its
`litigation infringement posture.”
`
`
`
`Opp. at 14. As support for this speculation, Avaya exclusively cites my deposition
`
`transcript: “Specifically, Dr. Knox explained …” Opp. at 14. Avaya
`
`misrepresents my testimony.
`
`247. As I clearly stated in the cited deposition testimony, I do not know
`
`why “level” was not included in the proposed determining step:
`
`Knox Depo. (AV-1028) at 136:8-15. What I did confirm in my deposition,
`
`however, is what I explained above: that in the context of the ‘930 Patent “voltage
`
`
`
`level” and “voltage” mean the same thing:
`
`
`
`24 Q BY MR. LINDSAY: Isn't it the case that the
`25 concept of sensing voltage is broader than the concept
`Page 137
`1 of sensing a voltage level?
`2 A Generally speaking, no. The only issue there
`3 that I can think of as I sit here is the issue that has
`4 been addressed before multiple times of whether we are
`5 talking about only an instantaneous value or a more
`6 continuous sensing, which would allow for detections of
`7 patterns.
`8 And since we have a dependent claim, which
`9 requires continuing to sense -- we have to be able to
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`10 spot a pattern, and that obviously means more than one
`11 value. Even within things like claim 9, which requires
`12 a voltage, detection of a voltage decrease, we obviously
`13 had more than one value. You can't make a decrease out
`14 of only one value.
`15 So I don't see any inconsistency between either
`16 phrase. And again, until you addressed this a moment
`17 ago, it had never even dawned on me that someone would
`18 read them differently.
`
`
`Knox Depo. (AV-1028) 136:24-137:18.
`
`
`
`
`B. Construction of the proposed determining step.
`
`1.
`
` Background to the determining step.
`
`248. As set forth in the Field of the Invention of the ‘930 Patent:
`
`
`
`‘930, 1:11-19. Traditionally, Ethernet devices were not designed to accept remote
`
`power through Ethernet cables. This can be contrasted with telephone networks in
`
`which all devices were traditionally powered via the telephone lines (rather than a
`
`wall outlet). Once Ethernet devices were introduced into the market that could be
`
`powered through the Ethernet cables (via “Power over Ethernet” or “PoE”), a need
`
`developed for a detection system that could effectively distinguish between
`
`Ethernet devices that were capable of accepting remote power and those that were
`
`not (as illustrated in the following diagram):
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`13
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`Case No. IPR2013-00071
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`249. To address this need, the object of the ‘930 invention is to determine
`
`if the remote equipment is capable of accepting remote power:
`
` “It is therefore an object of the invention to provide methods and apparatus
`
`for reliably determining if a remote piece of equipment is capable of
`
`accepting remote power.” ‘930, 1:41-43.
`
` “The invention more particularly relates to apparatus and methods for
`
`automatically determining if remote equipment is capable of remote power
`
`feed and if it is determined that the remote equipment is able to accept
`
`power remotely then to provide power in a reliable non-intrusive way.”
`
`‘930, 1:14-19.
`
`
`
`
`
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`14
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`2.
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`The broadest reasonable interpretation of “determining
`whether a device is capable of accepting remote power” in
`the context of the ‘930 Patent means determining whether a
`device is designed to accept remote power.
`
`250. The specification of the ‘930 Patent describes a system that
`
`determines whether an access device is capable of accepting remote power based
`
`on the specific design of the device. In particular, the ‘930 Patent describes three
`
`possible access device designs – an access device that:
`
`(1) does “not contain a dc resistive termination;”
`
`(2) “contains a dc resistive termination (a ‘bob smith’ is typical for Ethernet
`
`terminations);” and
`
`(3) includes a “dc-dc switching supply.”
`
`‘930, 3:2-27. The specification of the ‘930 Patent then explains how the disclosed
`
`system determines whether the access device is capable of accepting remote power
`
`based on the particular design of the access device:
`
`‘930, 3:2-27.
`
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`Case No. IPR2013-00071
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`251. To summarize, the specification of the ‘930 Patent provides (a) three
`
`specific access device designs, and (b) determines whether the access device is
`
`capable of accepting remote power based on which of these three designs is present
`
`in the access device:
`
`Accordingly, the specification demonstrates that “determining whether a device is
`
`capable of accepting remote power” means, in the context of the ‘930 Patent,
`
`determining whether the remote device is designed to accept remote power. This
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`is the broadest reasonable construction of this language in the context of the ‘930
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`Patent.
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`252. I understand that Avaya asserts that this construction is “inconsistent
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`with the teachings of the ‘930 Patent” (Opp. at 5) and “lacks support in the ‘930
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`Patent.” Opp. at 2. I respectfully disagree. As one of ordinary skill in the art
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`would understand, this construction is the only construction consistent with (and
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`required by) the teachings of the ‘930 Patent, as reflected in the portions of the
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`specification that I quoted above.
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`3. While Avaya proposed an incorrect additional second
`requirement in its construction of the determining step, it
`includes the proper construction as its first requirement.
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`253. According to Avaya:
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`“the broadest ordinary and customary meaning of determining if the
`access device is capable of accepting power, when read in light of the
`specification, requires determining if the access device is currently
`able to receive power.”
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`Zimmerman 2nd Decl. ¶78.2 As its proposed construction, Avaya simply adds an
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`additional requirement to the proposed claim language –“currently” (or “at that
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`time” Opp. at 4, 5) such that its proposed construction is:
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` “determining whether the access device is currently able to accept remote
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`power;”
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` “determining whether the access device is capable of accepting remote
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`power at that time.”
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`As Dr. Zimmerman clarified, determining whether an access device is “currently
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`able to receive power” involves determining both whether the access device [1] is
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`designed to accept remote power (the construction I presented above), and [2]
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`currently needs and would use power if applied:
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`“In order to be able to currently receive power, the device would
`not only [1] have to be designed to receive power, but would also
`[2] have to be in a state in which it currently needs and would use
`power, if applied.”
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`Zimmerman 2nd Decl. ¶79 (I added the numbers). Narrowing the construction of
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`this step to incorporate this “currently” concept (a concept not addressed in the
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`I note that Zimmerman actually purports to construe language that is not the
`2
`exact proposed claim language as reflected in the following, showing his additions
`to the actual proposed claim language underlined and deletions crossed out:
`“determining whether if the access device is capable of accepting remote power.”
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`‘930 Patent) is not the broadest reasonable construction of this step in light of the
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`specification of the ‘930 Patent, as I demonstrate below.
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`a.
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`Because the construction proposed by Avaya includes,
`as its first requirement, the construction I set forth
`above, Avaya’s additional requirement creates a
`narrower construction.
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`254. As I noted above, according to Avaya and Dr. Zimmerman,
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`determining whether an access device is “currently able to receive power” involves
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`determining both whether the access device [1] is designed to accept remote
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`power, and [2] can accept remote power at that time:
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`“to be able to currently receive power, the device would not only [1]
`have to be designed to receive power, but would also [2] have to be in
`a state in which it currently needs and would use power, if applied.”
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`Zimmerman 2nd Decl. ¶79 (I added the numbers). Dr. Zimmerman confirmed that
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`under his construction, an access device must both be [1] designed to receive
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`power, and [2] in a state in which it currently needs and would use power:
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`Zimmerman Depo. 357.
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`Zimmerman Depo. 360.
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`255. Because Avaya’s construction includes, as its first requirement, the
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`construction I set forth above, Avaya’s additional requirement must create a
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`narrower construction. Accordingly, Avaya’s construction cannot be the broadest
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`reasonable interpretation of the claim language.
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`256. Although, as set forth below, there is no support in the specification of
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`the ‘930 Patent for this additional requirement, because Avaya includes the correct
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`first requirement in its proposed construction, my analysis of the references below
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`applies equally to the construction that I set forth above and Avaya’s proposed
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`construction.
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`b.
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`Avaya’s additional requirement is not reasonable in
`light of the specification of the ‘930 Patent.
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`257. As support for the second requirement of Avaya’s proposed
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`construction of the determining step, Dr. Zimmerman asserts that the second
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`requirement:
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`“is confirmed by the specification of the ‘930 patent which identifies a
`varying voltage level as an indication that the device is capable of
`receiving power.”
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`Zimmerman 2nd Decl.¶79 (citing ‘930, 3:12-13). The specification of the ‘930
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`Patent, including the specific portion of the specification cited by Dr. Zimmerman,
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`identifies one (and only one) thing that produces the varying voltage level and,
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`correspondingly, indicates that a device is capable of accepting remote power: the
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`specific design of the access device including a dc-dc power supply:
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`“If a varying voltage level is detected, this identifies the presence of
`dc-dc switching supply in the remote equipment.”
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`‘930, 3:12-13. Operational power is applied because the access device containing
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`a DC-DC power supply is designed to accept remote power over the Ethernet data
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`signaling pairs.
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`258. Dr. Zimmerman states:
`
`“A device that was otherwise designed to be remotely powered may not
`be able to currently make use of power for a number of reasons. For
`example, the circuit connecting the device to the power source may be
`open, the device may be malfunctioning, or the device may be under
`local power and generally unable to make use of additional power. And
`under any of these circumstances, it would be undesirable to apply
`power to the remote device.”
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`
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`Zimmerman 2nd Decl. ¶82. These concepts are not addressed or even suggested in
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`the ‘930 Patent. While the specification of the ‘930 Patent describes in detail the
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`different designs of an access device (i.e., devices without a dc resistive
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`termination, with a dc resistive termination (e.g., a Bob Smith termination), and
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`Case No. IPR2013-00071
`Second Declaration of Dr. James Knox
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`with a dc-dc switching supply), the ‘930 Patent does not address (and is not
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`concerned with) determining whether an access device is capable of acce