`
`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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`
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`
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`
`
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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
`____________________
`
`
`REPLY TO OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`
`1
`IPR2013-00385 and IPR2013-00495 have been joined with this proceeding.
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`
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`Case No. IPR2013-00071
`Patent Owner’s Reply to Opposition to Motion to Amend
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`
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`In its Opposition, Avaya makes eight arguments. Each is addressed.
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`Argument 1: Whether the Ethernet amendments must, in themselves,
`distinguish Ground 2. Opp. at 2-3.
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`
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`Avaya’s argument is based on a made-up requirement that each proposed
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`amendment distinguish all grounds at issue. That is not the rule. “A motion to
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`amend may be denied where … [t]he amendment does not respond to a ground of
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`unpatentability involved in the trial.” 37 C.F.R. §42.121. The Ethernet
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`amendments respond to and distinguish “a ground of unpatentability involved in
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`the trial” (Ground 1) because Matsuno does not disclose (a) an Ethernet data
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`network or (b) an Ethernet data node. Knox Decl. ¶¶224-226.
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`Argument 2: Whether the proposed determining step broadens the claim.
`Opp. at 13-14.
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`
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`As a matter of law and logic, adding an additional limitation cannot broaden
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`a claim’s scope. Avaya asserts: “By re-wording the claim in a manner which
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`would render one of its key terms less susceptible to a narrower interpretation,
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`Network-1 is engaging in a de facto broadening.” Opp. at 14. Avaya is wrong.
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`First, Network-1 proposes adding limitations, not “re-wording the claim.” Second,
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`Avaya provides no legal support for its “de facto” broadening theory. Idle Free,
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`cited by Avaya to support its theory, states: “a substitute claim may not enlarge the
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`scope of the challenged claim it replaces by eliminating any feature.” Idle Free,
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`IPR2012-00027 (Paper 26) at 5. Network-1 did not “eliminat[e] any feature” of
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`
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`the challenged claims. Third, Avaya provides zero analysis or factual support for
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`Case No. IPR2013-00071
`Patent Owner’s Reply to Opposition to Motion to Amend
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`its unsupported conclusion that adding the new step broadens the scope of the
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`original claim. Fourth, the understanding of one of ordinary skill in the art (Knox
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`Decl. ¶¶236-240), the relevant antecedent basis (id. ¶232), and the claim language
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`and specification (id. ¶¶233-235) all demonstrate that “voltage” and “voltage level”
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`mean the exact same thing in the context of the ‘930 Patent. Even Avaya’s expert
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`uses “voltage” and “voltage level” interchangeably. Id. ¶240.
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`Argument 3: Whether there is adequate written description for “sensing a
`voltage.” Opp. at 14-15.
`
`
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`First, as set forth above, “the voltage” in the proposed new step refers to,
`
`and is the same as, the “voltage level” in the prior step. Second, the ‘930 Patent
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`includes written description support for both “voltage” and “voltage level.” Avaya
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`asserts: “The ‘930 patent
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`consistently refers to sensing a
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`voltage level.” Opp. at 14. Avaya
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`is wrong. The Patent refers to
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`sensing a “voltage” in addition to a
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`“voltage level” (‘930, 2:66-3:7):
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`Argument 4: Whether Matsuno discloses the determining step. Opp. at 3-8.
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`
` “Determining whether the access device is capable of accepting remote
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`power” means determining whether the device is designed to accept remote power.
`
`2
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`
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`The ‘930 Patent teaches “determining if a remote piece of equipment is capable of
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`Case No. IPR2013-00071
`Patent Owner’s Reply to Opposition to Motion to Amend
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`accepting remote power” (‘930, 1:42-43), that is, whether the device is “known
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`access equipment capable of accepting remote power” (‘930, 3:26-27), based on
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`the design of the access device:
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`Determination:
`Design:
`“does not contain a dc resistive termination” “unable to support remote power”
`“contains a dc resistive termination”
`“unable to support remote power”
`contains a “dc-dc switching supply”
`“capable of accepting remote power”
`
`‘930, 3:2-27; Knox Decl. ¶¶250-252. Avaya adds an additional requirement to its
`
`construction of the determining step, such that its construction includes
`
`determining both whether the device [1] is designed to accept power, and, in
`
`addition, [2] “currently needs and would use power, if applied.” Zimmerman 2nd
`
`Decl. ¶¶78-79; Knox Decl. ¶¶253-256; Opp. at 5. Avaya’s additional requirement
`
`is wrong. Knox Decl. ¶¶257-258. It is also irrelevant because Avaya’s
`
`construction includes the proper construction as its first requirement (id. ¶¶254-
`
`255) and, as demonstrated below, no reference discloses this first requirement.
`
` Matsuno does not expressly or inherently teach “determining whether the
`
`device is designed to accept remote power.” Unlike the ‘930 Patent, which
`
`addresses the problem of distinguishing devices that can and cannot accept remote
`
`power, all devices in Matsuno are designed to accept remote power. Knox Decl.
`
`¶261; Zimmerman Depo. 305:15-18; 304:15-18. As a result, Matsuno does not
`
`teach a system that determines whether the attached device is capable of accepting
`
`3
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`
`
`
`remote power; and such a system is not inherent. Knox Decl. ¶¶261-266. Rather,
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`Case No. IPR2013-00071
`Patent Owner’s Reply to Opposition to Motion to Amend
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`the system disclosed in Matsuno determines whether local power is being supplied
`
`based on whether the contract breaker points (8) are opened or closed. Id. If a
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`device that cannot accept power (e.g., a device with a Bob Smith termination
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`which is “unable to support remote power feed” (‘930, 3:7-11)) is connected and if
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`local power stops, then the Matsuno circuitry would still send high power to the
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`device even though it is not capable of accepting remote power. Knox Decl.
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`¶¶263-265. Accordingly, the claimed determining step is not taught or inherent.
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`Argument 5: Whether Woodmas discloses the determining step. Opp. at 9-11.
`
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`First, because all devices disclosed in Woodmas were designed to accept
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`remote power, Woodmas does not disclose the first part of the proposed step
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`“determining whether a device is capable of accepting remote power.” Knox Decl.
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`¶¶292-295. Second, what Avaya relies on for the second part of the determining
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`step (“based on the sensed voltage”) is not the voltage sensed in response to the
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`low level current (as required by the claim) but rather a “power status signal.”
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`Opp. at 10; Knox Decl. ¶¶296-297.
`
`Argument 6: Whether the proposed claims would have been obvious in light
`of Matsuno and De Nicolo in view of Woodmas or Chang. Opp.
`at 12-13.
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`
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`The proposed claims cannot be obvious in light of either combination
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`because no reference teaches the new determining step. Knox Decl. ¶¶303; 317.
`
`4
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`
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`Contrary to Avaya’s assertion, Network-1 did not “admit[] that the added step was
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`Case No. IPR2013-00071
`Patent Owner’s Reply to Opposition to Motion to Amend
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`known.” Opp. at 2; 8. While Network-1 acknowledges that Chang is the closest
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`prior art because it taught “determining whether an access device is capable of
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`accepting remote power” (the first part of the proposed step), Chang does not teach
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`doing so “based on the sensed voltage” (the second part of the step). Knox Decl.
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`¶317. Instead, Chang teaches using a very different approach based on a data pulse
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`rather than the claimed “sensed voltage” from the claimed “low level current.” Id.
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`In addition, one of ordinary skill in the art would not have thought to combine the
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`references to produce the claimed inventions (id. ¶¶304-309; 318-322), the prior art
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`taught away (id. ¶¶176-180; 323-326), objective factors demonstrate non-
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`obviousness (id. ¶¶188-191), and the art is not analogous (id. ¶¶181-187, 310-314).
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`Argument 7: Whether Network-1 was required to address each known
`reference. Opp. at 8-9.
`
`
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`Over 950 references have been identified in the various proceedings
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`involving the ‘930 Patent. Exh. N1-2027; Knox Decl. ¶¶119-121. Distinguishing
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`each would be time and cost prohibitive, not possible in a 15-page Motion, and
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`inconsistent with the policy underlying this IPR. Id. ¶122. Network-1
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`appropriately identified and distinguished the most relevant known art. Id.
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`Argument 8: Whether Network-1 acknowledged the basic skill set. Opp. at
`15.
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`
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`Network-1 did. Knox Decl. ¶¶11-14; 215-218; Mot. at 14-15.
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`5
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`Case No. IPR2013-00071
`Patent Owner’s Reply to Opposition to Motion to Amend
`
`Respectfully submitted,
`
`BUCHANAN INGERSOLL & ROONEY PC
`
`Date: Nov. 14, 2013
`
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Telephone (703) 836-6620
`
`
`
`
`
`By: /Charles F. Wieland III/
`Charles F. Wieland III
`Registration No. 33,096
`Counsel for NETWORK-1 SECURITY
`
` SOLUTIONS, INC.
`
`
`
`
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`6
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`
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`Case No. IPR2013-00071
`Patent Owner’s Reply to Opposition to Motion to Amend
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing REPLY TO
`OPPOSITION TO PATENT OWNER’S MOTION TO AMEND UNDER 37
`C.F.R. § 42.121is being served upon the following this 14th day of November,
`2013, via electronic mail:
`Jeffrey D. Sanok and Jonathan Lindsay
`AV1-PRPS@Crowell.com
`JSanok@Crowell.com
`JLindsay@Crowell.com
`Counsel for Avaya Inc.
`
`Michael J. Scheer and Thomas M. Dunham
`WINSTON & STRAWN LLP
`mscheer@winston.com
`tdunham@winston.com
`Counsel for Dell, Inc.
`
`Lionel M. Lavenue and Erika Arner
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`Counsel for Sony Corp. of America
`
`Robert J. Walters and Charles J. Hawkins
`McDERMOTT WILL & EMERY LLP
`rwalters@mwe.com
`chawkins@mwe.com
`Counsel for Hewlett-Packard Co.
`
`Date: November 14, 2013
`
`
`
`
`
`
`
`/Charles F. Wieland III/
`Charles F. Wieland III
`Registration No. 33,096
`Counsel for NETWORK-1 SECURITY
` SOLUTIONS, INC.
`
`
`
`
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