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 IPR: Unassigned
`____________________
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
`UNDER 35 U.S.C §§311-319 AND 37 C.F.R. §§ 42.1-.80 & 42.100-.123
`
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DCACTIVE-21802215.1
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`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`
`TABLE OF CONTENTS
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`2.
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 3
`A.
`Real party-in-interest under 37 C.F.R. § 42.8(b)(1) .............................. 3
`B.
`Related matters under 37 C.F.R. § 42.8(b)(2) ....................................... 4
`1.
`Current Litigation ........................................................................ 4
`2.
`Prior Litigation ............................................................................ 4
`Ex Parte Reexamination ............................................................. 5
`3.
`Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3) ...................... 5
`C.
`III. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 5
`A. Grounds for standing under 37 C.F.R. § 42.104(a) ............................... 5
`B.
`Identification of challenge and relief requested .................................... 6
`1.
`How the challenged claims are to be construed under 37
`C.F.R. § 42.104(b)(3) .................................................................. 7
`How the construed claims are unpatentable under 37
`C.F.R. § 42.104(b)(4) ................................................................10
`Supporting evidence under 37 C.F.R. § 42.104(b)(5) ..............10
`3.
`IV. SUMMARY OF THE ’930 PATENT AND TECHNOLOGY
`BACKGROUND .....................................................................................................11
`A. Description of the alleged invention of the ’930 Patent ......................11
`B.
`Technology Background Relevant to the ’930 Patent ........................13
`1.
`ISDN – Integrated Services Digital Network ...........................13
`2.
`Powering Ethernet Devices .......................................................15
`a.
`The Development of Ethernet.........................................15
`b.
`Power Over Ethernet ......................................................15
`Summary of the prosecution history of the ’930 Patent......................16
`C.
`V. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b) .................17
`A. Ground 1: Claims 6 and 9 are anticipated under 35 U.S.C. §
`102(b) over Matsuno (Ex. AV-1004) ..................................................17
`1.
`Brief Overview of Matsuno ......................................................17
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`2.
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`3.
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`2.
`3.
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`Analysis of Matsuno’s teachings against claims 6 and 9 .........18
`Claim chart showing that Matsuno discloses each of the
`elements of claims 6 and 9 ........................................................22
`B. Ground 2: Claims 6 and 9 are anticipated under 35 U.S.C.
`102(a) over Akhteruzzaman (Ex. AV-1005) .......................................26
`1.
`Brief overview of Akhteruzzaman ............................................26
`2.
`Analysis of Akhteruzzaman against claims 6 and 9 .................27
`3.
`Claim chart showing that Akhteruzzaman discloses each
`of the elements of claims 6 and 9..............................................32
`C. Ground 3: Claims 6 and 9 are obvious under § 103(a) over De
`Nicolo in view of Matsuno (Ex. AV-1004 & AV-1007) ....................36
`1.
`Brief overview of combination of De Nicolo and
`Matsuno .....................................................................................36
`Analysis of combination of De Nicolo and Matsuno
`against claims 6 and 9 ...............................................................37
`Claim chart showing that De Nicolo and Matsuno
`disclose each of the elements of claims 6 and 9 .......................40
`4. Motivation to combine ..............................................................43
`5.
`Conclusion ................................................................................45
`D. Ground 4: Claims 6 and 9 are obvious under §103(a) over De
`Nicolo in view of Akhteruzzaman (Ex. AV-1005 & AV-1007) .........45
`1.
`The combination of De Nicolo and Akhteruzzaman
`discloses each of the elements of claims 6 and 9 ......................46
`2. Motivation to combine ..............................................................46
`3.
`Conclusion ................................................................................47
`Ground 5: Claims 6 and 9 are Obvious Under 35 U.S.C. 103(a)
`Over Chang in view of De Nicolo .......................................................47
`1.
`Brief overview of Chang ...........................................................47
`2.
`Analysis of combination of Chang and De Nicolo against
`claims 6 and 9 ...........................................................................48
`Claim chart showing that Chang and De Nicolo disclose
`each of the elements of claims 6 and 9 .....................................52
`4. Motivation to combine ..............................................................58
`ii
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`E.
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`3.
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`DCACTIVE-21802215.1
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`Generally .........................................................................58
`a.
`Conclusion ......................................................................59
`b.
`VI. CONCLUSION ..............................................................................................59
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`DCACTIVE-21802215.1
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`Under 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Avaya Inc. (“Petitioner”)
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`
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`respectfully requests inter partes review of claims 6 and 9 of U.S. Patent No.
`
`6,218,930 (“the ’930 Patent”) (Exhibit (“Ex.”) AV-1001).
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`I.
`
`INTRODUCTION
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`While the ’930 Patent specification attempts to describe a particular way of
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`determining when a piece of 10/100 Ethernet equipment is capable of receiving
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`power and data over an Ethernet network connection, the alleged invention, as
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`actually claimed, is more akin to the well-known operation of remotely providing
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`so-called “phantom power” over transmission lines.
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`Phantom power, however, has been used in telephone systems ever since
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`their nascency. Alexander Graham Bell's telephone network of 1877 transmitted
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`both power and data (telegraph signals or the sound of voice) over the same wires:
`
`My invention has for its object, first, the transmission
`simultaneously of . . . musical notes or telegraphic
`signals along a single wire in either or in both directions,
`and with a single battery for the whole circuit . . . .
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`(U.S. Patent No. 186,787 to Bell.) Bell’s system provided DC power from a
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`central source and an AC signal for communicating data — (the voice or other
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`sound signal) to a piece of equipment (the telephone). The result was a
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`communications system that did not require a “local” power source for the
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`telephone. Known as “line-powered telephone service,” or more colloquially as
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`“plain old telephone service” or “POTS,” it has been used ever since.
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`And while more complex data formats and network equipment have evolved
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`over the last 135 years, the basic invention of providing data and power over a wire
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`has not changed. The ’930 Patent itself admits that prior art telecommunications
`
`equipment, such as telephones and network repeaters, were providing power and
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`data over the same wires. See Ex. AV-1001, col. 1:22-24.
`
`So what exactly is alleged to be new in the ’930 Patent? According to its
`
`Background section, the ’930 Patent states that the prior art was missing the ability
`
`to remotely power devices on a “data network,” as opposed to a telecommunication
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`network. Aside from being a glaringly obvious extension of what was already
`
`being done in the telecommunications field, this assertion is incorrect as remotely
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`powering data network devices was already known.
`
`The prior art “Matsuno” and “Akhteruzzaman” references, described below
`
`in Sections V.A and V.B, respectively, provide two examples of methods for
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`remotely powering networked devices on an Integrated Services Digital Network
`
`(“ISDN”). Each of these references describe in detail how power could be
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`provided to ISDN equipment (“access device”) from a switching station (“data
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`node”), and how the supply of such power can be controlled in response to sensed
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`voltage or current levels as set forth in the challenged claims of the ’930 Patent.
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`Additional prior art (including the “De Nicolo” and “Chang” references
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`discussed below) shows that it was known to remotely power access devices,
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`including specifically Ethernet equipment in an Ethernet network. Controlling the
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`supplied power in an Ethernet network requires nothing more than the application
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`of well-known principles that can readily be found in the prior art, including in any
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`of the Matsuno, Akhteruzzaman, or Chang references discussed herein.
`
`Unfortunately, none of the above references were considered by the United
`
`States Patent & Trademark Office (“USPTO”) in granting the ’930 Patent. Indeed,
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`not a single reference from the vast fields of telephony, ISDN, or the Ethernet were
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`cited against the claims contained in the for the ’930 Patent. Had the above
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`references been considered, the claims of the ’930 Patent would not have issued.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. Real party-in-interest under 37 C.F.R. § 42.8(b)(1)
`Avaya Inc. is the real party-in-interest for this Petition. Avaya Inc. is owned
`
`by parent company, Avaya Holding Corp., a company formed and owned by
`
`affiliates of TPG Capital and Silver Lake Partners, and by members of
`
`management. Avaya is not a publicly traded company, and no publicly held
`
`corporation beneficially owns 10% or more of Avaya Inc.’s stock.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`B. Related matters under 37 C.F.R. § 42.8(b)(2)
`
`Current Litigation
`1.
`In the pending lawsuit styled Network-1 Security Solutions, Inc. v. Alcatel-
`
`Lucent USA Inc., et al., Case No. 6:11 cv492 (E.D. Tex. filed Sept. 15, 2011),
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`Network-1 Security Solutions, Inc. (“Patent Owner”) sued twenty-six (26) different
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`companies, including the Petitioner, for allegedly infringing the ’930 Patent by
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`selling devices that are compliant with the IEEE 802.3af and 802.3at Power over
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`Ethernet (PoE) standards (PoE standards define a protocol by which Ethernet
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`equipment may be remotely powered). See Ex. AV-1010, page 4, fn. 1. The
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`subject of this Petition is limited to claims 6 and 9, the same two claims asserted by
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`the Patent Owner in the current litigation.
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`Prior Litigation
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`2.
`Petitioner is aware of the following three prior litigations involving the ’930
`
`Patent, none of which reached a final judgment on the issue of validity based on
`
`prior art: (i) PowerDsine, Inc. v. Network-1 Security Solutions, Inc., No. 1:2004-
`
`cv-02502 (S.D.N.Y. filed Mar. 31, 2004); (ii) Network-1 Security Solutions, Inc v.
`
`D-Link Corporation et al., No. 6:2005-cv-00291 (E.D. Tex. filed Aug. 10, 2005);
`
`and (iii) Network-1 Security Solutions, Inc v. Cisco Systems, Inc., et al., No. 6:08-
`
`cv-30-LED (E.D.Tex., filed Feb. 7, 2008) (Judge Davis) (“the Cisco Litigation”).
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`In the Cisco Litigation, the District Court granted summary judgment of invalidity
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`of claim 1 under 35 U.S.C. 112, second paragraph.
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`Ex Parte Reexamination
`3.
`The ’930 Patent is also presently the subject of an ex parte reexamination,
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`the request for which was granted on September 5, 2012 and was accorded App.
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`No. 90/012,401. Petitioner was not the real party in interest.
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`C. Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel
`Jeffrey D. Sanok (Reg. No. 32,169)
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`Telephone No.: (202) 624-2995
`Facsimile No.: (202) 628-8844
`JSanok@Crowell.com
`
`
`
`
`Back-Up Counsel
`Jonathan Lindsay (Reg. No. 45,810)
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`Telephone No.: (949) 798-1325
`Facsimile No.: (949) 263-8414
`JLindsay@Crowell.com
`
`
`Service of any documents via hand-delivery may be made at the postal
`
`mailing address of the respective lead or back-up counsel designated above.
`
`Petitioner consents to electronic service by e-mail at AV1-PRPS@Crowell.com.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that (1) the ’930 Patent is available for inter partes
`
`review; and (2) Petitioner is not barred or estopped from requesting inter partes
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`review of claims 6 or 9 of the ’930 Patent on the grounds identified in this Petition.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
`
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`In particular, this Petition is being filed less than one year from December 15, 2011
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`—the date on which the Petitioner was first served with a complaint by the Patent
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`Owner in the above-reference pending litigation.
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`Concurrently, Petitioner is filing a Power of Attorney and Exhibit List
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`pursuant to § 42.10(b) and § 42.63(e), respectively. The required fee is paid
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`through online credit card payment—no excess claim fees are required. The Office
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`is authorized to charge any fee deficiency, or credit any overpayment, to Deposit
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`Acct. No. 05-1323 (Customer ID No. 29311).
`
`Identification of challenge and relief requested
`
`B.
`Petitioner is requesting cancellation of claims 6 and 9 of the ’930 Patent in
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`view of the following prior art references:
`
`Patent/Pub. No.
`
`JP H10-13576
`(“Matsuno”)
`US 5,754,644
`(“Akhteruzzaman”)
`US 5,991,885
`(“Chang”)
`6,115,468
`(“De Nicolo”)
`
`Priority Dated Date of Issuance or
`Publication
`January 16, 1998 AV-1004
`
`June 20, 1996
`
`Exhibit
`
`June 27, 1996
`
`May 19, 1998
`
`AV-1005
`
`June 11, 1997
`
`November 23, 1999 AV-1006
`
`March 26, 1998
`
`September 5, 2000 AV-1007
`
`Matsuno is prior art to the ’930 Patent under 35 U.S.C. § 102(b); Chang and
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`De Nicolo are prior art to the ’930 Patent at least under 35 U.S.C. § 102(e), and
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`Akhteruzzaman is prior art to the ’930 Patent at least under 35 U.S.C. §§ 102(a)
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`and 102(e). None of the references relied upon were cited during original
`
`prosecution of the ’930 Patent, and none are presently before the ex parte
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`reexamination. Two additional references, attached as Exhibits AV-1012 and AV-
`
`1013, are offered only for what one of ordinary skill in the art would have known
`
`at the time of the invention of the ’930 Patent. Petitioner asserts the following
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`specific grounds of rejection under 35 U.S.C. §§ 102 and 103:
`
`Ground
`No.
`1
`2
`3
`
`4
`
`5
`
`Proposed Statutory Rejections for the Claims of the
`Claim
`’930 Patent
`No(s).
`6, 9 Are anticipated under § 102(b) by Matsuno
`6, 9 Are anticipated under § 102(a) by Akhteruzzaman
`6, 9 Are obvious under § 103(a) over De Nicolo in view of
`Matsuno
`6, 9 Are obvious under § 103(a) over De Nicolo in view of
`Akhteruzzaman
`6, 9 Are obvious under § 103(a) over Chang in view of De
`Nicolo
`
`1. How the challenged claims are to be construed under 37
`C.F.R. § 42.104(b)(3)
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 42
`
`C.F.R. § 42.100(b). Petitioner submits, for the purposes of this inter partes review
`
`only, that the claim terms are presumed to take on their broadest reasonable
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`ordinary and customary meaning that the term would have to a person of ordinary
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`skill in the art (“PHOSITA”) in light of the specification of the ’930 Patent.
`
`In that regard, the Patent Owner already has set forth a broad meaning for
`
`the italicized limitations of claim 6 below based upon its proposed claim
`
`constructions in previous litigations (See Ex. AV-1008 & AV-1009), as well as in
`
`its infringement contentions against Petitioner’s products. See Ex. AV-1010,
`
`Appendix A.
`
`Independent method claim 6 of the ’930 Patent recites:
`
`6. Method for remotely powering access equipment in a
`data network, comprising,
`providing a data node adapted for data switching, an
`access device adapted for data transmission, at least one data
`signaling pair connected between the data node and the access
`device and arranged to transmit data therebetween, a main
`power source connected to supply power to the data node, and a
`secondary power source arranged to supply power from the
`data node via said data signaling pair to the access device,
`delivering a low level current from said main power
`source to the access device over said data signaling pair,
`sensing a voltage level on the data signaling pair in
`response to the low level current, and
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`controlling power supplied by said secondary power
`source to said access device in response to a preselected
`condition of said voltage level.
`
`Regarding the recited “main power source” and “secondary power source”
`
`claim limitations, the Patent Owner asserts that the “main power source” may
`
`include “a combination of power supplies, arranged in series or parallel, that
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`provides DC power to components of the data nodes,” as well as “an AC power
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`source provided via a power cord that is adapted to connect a standard AC outlet to
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`the power sourcing equipment (data nodes).” Ex. AV-1010, App. A, pp. 23-24.
`
`With respect to the “secondary power source,” the Patent Owner has
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`repeatedly taken the broad position that the “secondary power source” (i) “is the
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`same source of power as the main power source,” (ii) “may be derived from the
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`main power source, or separate,” and (iii) “need not be physically separate from
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`the main power source.” See Ex. AV-1010, Appendix A, pages 30-31; Ex. AV-
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`1008, page 2; Ex. AV-1009, page 25. Thus, accepting the Patent Owner’s position,
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`the broadest reasonable interpretation of the “secondary power source,” for the
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`purposes of inter partes review, must include that the secondary power source can
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`be the same as the “main power source.”1
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`2. How the construed claims are unpatentable under
`37 C.F.R. § 42.104(b)(4)
`
`An explanation of how construed claims 6 and 9 of the ’930 Patent are
`
`unpatentable under the statutory grounds identified above, including the
`
`identification of where each element of the claim is found in the prior art patents or
`
`printed publications, is provided in Section V below.
`
`Supporting evidence under 37 C.F.R. § 42.104(b)(5)
`
`3.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
`
`provided herein. An Exhibit List identifying the exhibits is also attached. Pursuant
`
`
`1 The Petitioner takes this position based on the “broadest reasonable
`
`interpretation” standard that is to be applied in connection with inter partes review,
`
`but does not endorse such an interpretation as part of its district court litigation.
`
`The USPTO’s approach to claim interpretation is different for at least the reason
`
`that the applicant is able to amend the patent claims to be more specific. In re
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`Yamamoto, 740 F.2d 1569, 1571-72 (Fed. Cir. 1984).
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`to 37 C.F.R. § 42.63(b), an Affidavit attesting to the fact that Exhibit AV-1004 is
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`an accurate and complete translation of Exhibit AV-1002 is included as Exhibit
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`AV-1003. In further support of the proposed grounds of rejection, this Petition is
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`accompanied by a declaration by technical expert Dr. George Zimmerman,
`
`attached as Exhibit AV-1011, explaining who would be a PHOSITA, how a
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`PHOSITA would read the teachings and claims of the ’930 Patent, and what would
`
`be conveyed to a PHOSITA by the relied-upon prior art. Finally, as mentioned
`
`above, the patent references included as Exhibits AV-1012 and AV-1013 are
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`offered only for what one of ordinary skill in the art would have known at the time
`
`of the invention of the ’930 Patent.
`
`IV. SUMMARY OF THE ’930 PATENT AND TECHNOLOGY
`BACKGROUND
`A. Description of the alleged invention of the ’930 Patent
`The ’930 Patent describes powering of 10/100 Ethernet compatible
`
`equipment, although the claims are simply directed to powering a generic “access
`
`device adapted for data transmission.” See Ex. AV-1001, Claim 6.
`
`The ’930 Patent states there are two objects of the invention. The first stated
`
`object is to “provide methods and apparatus for reliably determining if a remote
`
`piece of equipment is capable of accepting remote power.” Id. at Col. 1:41-43.
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`Independent claim 6, however, is devoid of any such determining operation.
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`The second and only other stated object of the invention is to “provide
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`Petition for Inter Partes Review of
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`methods and apparatus for delivering remote power to remote equipment over
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`10/100 switched Ethernet segments and maintain compliance with IEEE 802.3
`
`standards.” Again, however, the claims themselves fail to mention Ethernet
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`segments or compliance with IEEE 802.3 standards.
`
`The “Background” of the ’930 Patent acknowledges “[a] variety of
`
`telecommunications equipment [was] remotely powered” at the time the
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`application that led to the ’930 Patent was filed. Id. at col. 1:22-23. For example,
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`the specification references “Telephones and Network Repeater devices” as
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`examples of “remotely powered equipment.” Id. at col. 1:23-24. The ’930 Patent
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`further suggests —incorrectly— that such techniques “ha[d] not migrated to data
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`communications equipment” (Id. at col. 1:25-27), yet concludes that “[t]he desire
`
`to add remotely powered devices to a data network is being pushed by the
`
`convergence of voice and data technologies.” Id. at col. 1:33-35.
`
`The ’930 Patent describes the detection of remote equipment for deciding
`
`when to supply operational power by “delivering a low level current (approx. 20
`
`ma) to the network interface and measuring a voltage drop in the return path.” Id.
`
`at col. 2:66 – col. 3:2. If a “varying voltage level” is measured, this signifies that
`
`the remote access equipment is capable of accepting remote power. Id. at col. 3:12-
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`16. By contrast, “no voltage drop” or a “fixed voltage drop” indicates that the
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`remote equipment is not capable of accepting remote power. Id. at col. 3:2-11.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`Upon detecting a varying voltage level, “switch S1 is closed which increases the
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`power output to the remote equipment.” Id. at col. 3:17-19. Once the remote
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`access equipment is active, it may be monitored to detect when it is disconnected,
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`in which event power may be withdrawn. Id. at col. 3:49-55.
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`Technology Background Relevant to the ’930 Patent
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`B.
`The concept of providing power to remote network equipment was well
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`known as acknowledged in the ’930 Patent, with ISDN and Ethernet networks
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`representing two such examples. It is ISDN and Ethernet data networking prior art
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`that form the grounds of this Petition in support of the invalidity of claims 6 and 9
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`of the ’930 Patent. Each is further discussed below.
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`ISDN – Integrated Services Digital Network
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`1.
`Contrary to the suggestion in the ’930 Patent that the 10/100 Ethernet
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`standard was the first switch-based data communication network to remotely
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`power devices, that distinction belongs to the earlier-developed ISDN standard, not
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`to Ethernet.
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`ISDN is a set of communication standards for the simultaneous digital
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`transmission of voice and digital data over a traditional public switched telephone
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`network. See Ex. AV-1011, ¶ 17. ISDN was defined in 1988 by the Telephone
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`and Telegraph Consultative Committee in the “Red Book.” See id. Specifically, an
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`ISDN “is a circuit-switched network that includes a packet data channel and
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`provides access to packet-switched networks that transmit digital voice and data
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`over media, including traditional telephone copper wires.” See id. at ¶ 18. Prior to
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`ISDN, telephone systems were used largely for only voice transmission. With the
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`advent of ISDN, however, speech and data were allowed to be integrated on the
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`same lines, thereby providing data-related features to remote terminals in a way
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`that was not available in the classic telephone system.
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`The ’930 Patent suggests that, as of its claimed priority date, there was still a
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`“desire to add remotely powered devices to a data network . . . .” Ex. AV-1001,
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`col. 1:33-35. However, any such desire would have been satisfied by those
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`previously-developed systems that were already providing power and data to
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`remote terminals in an ISDN environment. And while the ’930 Patent
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`acknowledges that a variety of telecommunication systems are already providing
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`remote powering, it attempts to distinguish them by suggesting that those systems
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`have not been used for data communications, nor could they be due to the
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`particulars of data communications. See id. at col. 1:22-32. ISDN-based network
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`developers, including Matsuno and Akhteruzzaman, would certainly disagree.
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`Matsuno and Akhteruzzaman form the bases for several grounds of rejection.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`2.
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`Powering Ethernet Devices
`a.
`Ethernet was originally developed between 1973 and 1974 at XEROX
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`The Development of Ethernet
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`PARC labs as a multipoint communications method. See Ex. AV-1011, ¶ 19.
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`Initially, Ethernet networks were designed to “convey signals across the network
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`by repeating the signals from one twisted pair wiring segment onto all other
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`twisted pair segments to which a device was connected.” Id. at ¶ 20. However, by
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`the late 1980s, Ethernet networks had grown to the point where the traffic repeated
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`from many nodes was congesting the network. In order to alleviate the growing
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`congestion, Ethernet borrowed the concept of ‘switching’ from its close relative,
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`the telephony field, which for decades had been using this technique, notably with
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`Public Switched Telephone Networks. The Ethernet version, which was
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`introduced in 1989, transmitted packets out only onto the wiring segments of their
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`specific destinations. See id. at ¶ 21. By the mid-1990s, the use of hubs in Ethernet
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`was being phased out, while switches of all scales became common. The basic
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`operation of Ethernet switching remains the same today. See id. at ¶ 22.
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`b.
`Prior to the priority date of the ’930 Patent, there were already several
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`Power Over Ethernet
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`proprietary approaches for providing power over Ethernet cabling. See id. at ¶ 23.
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`One of those early proprietary approaches was developed and disclosed by Cisco
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`Technology, Inc. (“Cisco”). See id. Specifically, Cisco’s prior art De Nicolo
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`patent discloses a network configuration for remotely providing power and data to
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`Ethernet devices over the same wires. The De Nicolo patent forms the basis for
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`several grounds of rejection.
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`Summary of the prosecution history of the ’930 Patent
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`C.
`The ’930 Patent issued from U.S. Patent Application No. 09/520,350, filed
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`on March 7, 2000, and which claims priority to provisional application No.
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`60/123,688, filed on March 10, 1999.2 On May 15, 2000, Applicants submitted an
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`information disclosure statement citing but a single reference, namely U.S. Patent
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`No. 5,144,544.
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`Without a single rejection or objection of any pending claim, a Notice of
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`Allowance issued on September 11, 2000 (“NOA”). In the NOA, the Examiner
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`stated that “no prior art reference utilizes the an [sic] apparatus for remotely
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`powering access equipment in a data network” with all of the limitations of claim
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`2 The Patent Owner’s counsel in the Cisco Litigation informed the Court that
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`the alleged invention of the ’930 Patent was first “conceived” in the Summer of
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`1998. Whether the Patent Owner can prove entitlement to such a timeframe is
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`disputed, but the admission means it can be no earlier.
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`1.” The Examiner’s search uncovered only 5 references, none of which were
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`applied against the claims. The ’930 Patent issued on April 17, 2001.
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`V. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b)
`A. Ground 1: Claims 6 and 9 are anticipated under 35 U.S.C. §
`102(b) over Matsuno (Ex. AV-1004)
`1.
`Matsuno discloses an ISDN switching station that provides power and
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`Brief Overview of Matsuno
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`communicates over the same wires with remote devices in an ISDN network. It
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`was known in the art that the use of ISDN equipment, such as the ISDN switching
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`station in Matsuno, would enable voice and data communication over telephone
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`lines. See Ex. AV-1011, ¶ 18. Moreover, as far back as 1989, ISDN was regarded
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`as “an emerging field of telecommunications which integrates computer and
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`communications technologies to provide, world wide[sic], a common, all-digital
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`network.” Ex. AV-1013, Col. 1:23-27. In fact, prior to 1997, Ethernet data in
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`particular was already being transmitted using ISDN equipment. See id. at ¶ 39.
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`Thus, in contrast to the assertion in the “Background” of the ’930 Patent that
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`remote powering techniques “ha[d] not migrated to data communications
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`equipment” (Ex. AV-1001, col. 1:25-27), the ISDN system, such as that of
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`Matsuno, is exactly that.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930
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`Analysis of Matsuno’s teachings against claims 6 and 9
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`2.
`For independent claim 6, each of the claimed steps of (i) “providing [certain
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`components] . . . ”, (ii) “delivering a low level current . . .”, (iii) “sensing a voltage
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`level . . .” and (iv) “controlling power . . .” are addressed herein, and more
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`particularly supported by the claim chart below and the declaration of Dr.
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`Zimmerman. See generally, Ex. AV-1011, ¶¶ 27-43.
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`Regarding the preamble of a method for use in a data network environment,
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`Matsuno describes several methods to remotely power a digital subscriber unit
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`(NT1 2) and subscriber terminal (DTE 3), which are “access equipment” within an
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`ISDN network, which is a “data network.” See infra § V.A.3, claim elements 6(a1)
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`and 6(a2); see also Ex. AV-1011, ¶ 35.
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`The “providing” step requires
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`certain components to be in the data
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`