U.S. Patent No. 6,218,930
`IPR2013-00092
`Customer Number 22,852
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; and
`AXIS COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
`Case IPR2013-00092
`Administrative Patent Judges Jameson Lee, Joni Y. Chang, and Justin T. Arbes
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`IPR2013-00092
`Customer Number 22,852
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; and
`AXIS COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
`Case IPR2013-00092
`Administrative Patent Judges Jameson Lee, Joni Y. Chang, and Justin T. Arbes
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Petitioners Sony Corporation of America, Axis Communications AB, and
`
`
`I.
`
`Axis Communications, Inc. (collectively, “Petitioners”) respectfully request
`
`rehearing of the Patent and Trial Appeal Board’s (“Board”) Decision entered May
`
`24, 2013 (Paper 21, the “Decision”) determining not to institute an inter partes
`
`review based on the Petition (Paper 8, the “Petition”) filed December 19, 2012.
`
`This request addresses a single issue: whether the sections of U.S. Patent No.
`
`5,345,592 to Woodmas (“Woodmas”) cited in the Petition for the claimed “data
`
`node adapted for data switching” satisfy the Board’s construction of that term and
`
`were misapprehended or inadvertently overlooked by the Board. Because these
`
`sections of Woodmas satisfy the Board’s construction and were not addressed in
`
`the Decision, and because Woodmas discloses all elements of the claims as
`
`construed by the Board, Petitioners respectfully request rehearing and institution of
`
`an inter partes review on the ground that Woodmas anticipates claims 6, 8, and 9
`
`of U.S. Patent No. 6,218,930 (“the ’930 patent”) under 35 U.S.C. § 102(b).
`
`II.
`
`STATEMENT IDENTIFYING MATERIAL FACTS IN DISPUTE
`
`In accordance with 37 C.F.R. § 42.23(a), Petitioners identify the following
`
`material facts in dispute.
`
`
`
`1
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`1. Whether Woodmas’s disclosure cited in the Petition for the “data node
`
`
`
`adapted for data switching,” of independent claim 6 of the ’930 patent, satisfies the
`
`Board’s construction of that term.
`
`2. Whether the Board misapprehended or overlooked the cited portions
`
`of Woodmas.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`Woodmas discloses a “control station 14” that includes “conventional
`
`television production equipment well known to those skilled in the art such as the
`
`production switcher, video and audio transmitters, camera monitors, preview
`
`monitors, [and] program monitors. . . .” Woodmas, col. 2, ll. 44-50 (emphasis
`
`added).1 Control station 14 is configured to send “a plurality of signals” that are
`
`“combine[d] and multiplex[ed] . . . onto coaxial cable portion 36 for transmission
`
`to camera station 16.” Id. at col. 2, l. 66 - col. 3, l. 3. Control station 14 is also
`
`configured to receive “multiplexed signals over cable portion 36” via signal unit
`
`32. Id. at col. 3, ll. 3-6. Each of these sections of Woodmas was cited in the
`
`
`1 The Patent Owner’s Preliminary Response filed March 20, 2013 (Paper 19, the
`“Preliminary Response”) misquotes Woodmas so as to omit a reference to the
`“production switcher” in control station 14. The Preliminary Response recognizes
`that “Control station 14 includes conventional television production equipment,”
`but fails to complete the sentence in Woodmas, which states that control station 14
`includes “the production switcher,” as well as other components for handling
`multiple channels of signals. Preliminary Response at 42.
`2
`
`
`
`
`
`
`Petition as disclosing the “data node adapted for data switching” of claim 6.
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`Petition at 28.
`
`An inter partes review should be instituted based on Woodmas because the
`
`portions of Woodmas cited in the Petition satisfy the Board’s construction of the
`
`term “data node adapted for data switching” and were not addressed in the
`
`Decision. Moreover, all of the other elements recited in claims 6, 8, and 9 are
`
`anticipated by Woodmas, including the “low level current,” which the Patent
`
`Owner characterizes as a “key phrase” and “key element” in independent claim 6.
`
`Preliminary Response at 2, 4.2
`
`Requests for rehearing are judged under an abuse of discretion standard.
`
`Illumina, Inc. v. Trustees of Columbia Univ. in the City of N.Y., Case IPR2012-
`
`00006 (May 10, 2013), p. 2 (citing 37 C.F.R. § 42.71(c)) (Ex. 1022). The party
`
`seeking rehearing bears the burden of demonstrating grounds for the relief it seeks
`
`and must “specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was previously
`
`addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Below,
`
`
`2 The Patent Owner suggests that the “low level current” recited in claim 6 is the
`purportedly inventive aspect of the claim. See Preliminary Response at 7-10.
`3
`
`
`
`
`
`
`Petitioners explain how the cited features of Woodmas satisfy the Board’s claim
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`construction and why they appear to have been misapprehended or overlooked.
`
`A. The Cited Features of Woodmas Satisfy the Board’s Construction
`of the Claimed “Data Node Adapted for Data Switching”
`
`The Board construed the term “data node adapted for data switching” in
`
`claim 6 of the ’930 patent to mean “a data switch or hub configured to
`
`communicate data using temporary rather than permanent connections with other
`
`devices or to route data between devices.” Decision at 12. Applying this
`
`construction, the Board found that Woodmas does not teach a “data node adapted
`
`for data switching” for two reasons: (1) Woodmas discloses “a one-to-one fixed
`
`signaling path” rather than “a data switch or hub” or “communicat[ing] data using
`
`temporarily established connections with other devices or rout[ing] data between
`
`different devices”; and (2) the control station 14 in Woodmas is not “adapted for
`
`data switching.” Id. at 22-23. This is incorrect. Woodmas discloses a “production
`
`switcher” in the control station 14 and bi-directional communication of
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`“multiplexed” signals using the control station 14, as previously addressed in the
`
`Petition. Woodmas, col. 2, ll. 44-50; col. 2, l. 66 – col. 3, l. 6; Petition at 27-28.
`
`These features of Woodmas satisfy both aspects of the Board’s construction.
`
`
`
`4
`
`
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`1. Woodmas discloses “a data switch or hub configured to
`communicate data using temporary rather than permanent
`connections with other devices”
`The control station 14 in Woodmas is a “data switch or hub configured to
`
`communicate data” because it includes a “production switcher” that is able to send
`
`and receive multiple channels of “multiplexed” communications to and from the
`
`plurality of devices at camera station 16. Woodmas, col. 2, ll. 44-50; col. 2, l. 63 -
`
`col. 3, l. 6; Petition 27-28. Woodmas describes the “production switcher” as
`
`“conventional television production equipment.” Id. at col. 2, ll. 44-50.3 Also, as
`
`described in Woodmas, control station 14 is “coupled with” control station module
`
`26, and both are part of “signal transfer and power delivery apparatus 10.” Id. at
`
`col. 2, ll. 41-44, 54-61. These components are illustrated in Fig. 1, reproduced
`
`below.
`
`
`3 At the time of Woodmas’s disclosure, one of ordinary skill in the art would have
`understood the “production switcher” to refer to a device capable of receiving a
`plurality of video and control signals and selecting and feeding any combination of
`those signals to other modules. See Ex. 1023, U.S. Patent No. 5,325,202, col. 3, ll.
`34-47; col. 5, ll. 28-33.
`
`
`
`5
`
`
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`
`
`Control station 14 communicates bi-directionally with camera station 16 (id.
`
`at col. 2, l. 66 - col. 3, l. 6) and the signals may be sent to or from each of the
`
`devices at camera station 16, such as “D.C. powerable video camera 18, talent
`
`earpiece 20, camera operator intercom headset 22, and talent microphone 24” (id.
`
`at col. 2, ll. 50-53). In addition, in some embodiments, “a number of remote
`
`camera stations” may be used. Id. at col. 1, ll. 15-19.
`
`The “production switcher” of control station 14 provides a “temporary rather
`
`than permanent connection” as required by the Board’s construction, because it
`
`supports bi-directional communication of “multiplexed” signals and can
`
`temporarily form connections for signals to and from any of the plurality of
`
`devices at camera station 16. Id. at col. 2, ll. 44-53; see also id. at col. 1, ll. 21-26.
`
`In addition, “temporary” connections are utilized when certain signals are selected
`
`
`
`6
`
`
`
`
`with “production switcher” for display or playback via the “camera monitors,
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`preview monitors, [and] program monitors” included within control station 14. Id.
`
`at col. 2, ll. 44-50.
`
`The misconception advanced by the Patent Owner, that Woodmas involves a
`
`“lone signaling path” without “switching anything,” is directly contrary to
`
`Woodmas’s disclosure of a “production switcher” in control station 14, the ability
`
`of control station 14 to handle bi-directional “multiplexed” communications with
`
`multiple devices connected to camera station 16, and the ability of control station
`
`14 to switch and communicate selected signals to different display “monitors.” See
`
`Preliminary Response at 48. Similarly, the conclusion in the Decision that
`
`Woodmas’s control station 14 merely “transmits and receives signals to and from a
`
`single remote device” misapprehends or overlooks both the ability of the control
`
`station 14 to perform switching via “production switcher” and handle the ingress
`
`and egress “multiplexed” signals, and the temporary nature of the data connections
`
`over the coaxial cable with the various devices at the camera station. See Decision
`
`at 23.
`
`2.
`
`Control station 14 in Woodmas is “adapted for data
`switching”
`As discussed above, Woodmas discloses a “production switcher” in control
`
`station 14, and explains that control station 14 can both send “a plurality of
`7
`
`
`
`
`
`
`signals” for “transmission to camera station 16” and “receive multiplexed signals
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`over cable portion 36” via unit 32. Woodmas, col. 2, l. 66 - col. 3, l. 6; Petition at
`
`27-28. The ability of the control station 14 to perform switching via the
`
`“production switcher” and handle multiple bi-directional signals means that control
`
`station 14 is “adapted for data switching.” Indeed, the need for a “production
`
`switcher” in control station 14 is readily apparent from Woodmas’s “Description of
`
`the Prior Art,” which explains that “[o]n-location production of television
`
`programs typically involves the use of a production control center housed in a
`
`trailer or van connected with a number of remote camera stations by way of control
`
`and power cables,” where “[e]ach camera station typically includes a camera,
`
`camera operator headset, talent earpiece, and talent microphone.” Woodmas, col.
`
`1, ll. 15-21 (emphases added). And, as explained in Woodmas’s detailed
`
`description, control station 14 includes a “production switcher” and other devices
`
`used for switching between multiple different channels of signals for display, such
`
`as “camera monitors, preview monitors, [and] program monitors.” Id. at col. 2, ll.
`
`44-50. Accordingly, Woodmas discloses that the control station 14 is adapted for
`
`switching signals to and from the multiple devices connected to camera station 16,
`
`as well as switching signals for display on the plurality of “monitors” in control
`
`station 14.
`
`
`
`8
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`Although not adopted by the Board, Petitioners also note that the Patent
`
`
`
`Owner’s arguments that purport to distinguish between “data” and “other signals,
`
`such as video,” are meritless. See Preliminary Response at 45-46. First, Woodmas
`
`teaches that the coaxial cable 30 carries much more than merely analog video
`
`signals. Woodmas explains:
`
`The control cables must have the capability of carrying a wide
`variety of signals including camera video and program audio signals
`from the camera station to the control facility, and two-way intercom
`audio between the control facility and the camera operator and talent.
`The cables also carry various control signals from the control center to
`the camera station such as system master reference signals including
`color black and a composite video signal (black burst) used as a
`synchronizing signal (gen-lock), and an on-air tally signal which
`activates the tally light on the camera viewable by the talent as an on-
`air cue.
`
` Woodmas, col. 1, ll. 21-32 (emphases added); see also id. at col. 2, ll. 44-50.
`
`Second, the Patent Owner’s suggestion that “data” means only “digital data” is
`
`both atextual as the term appears in claim 6 and contradicted the Patent Owner’s
`
`own dictionary definition of “switching,” which was cited in the Board’s decision.
`
`See Decision at 11 (citing Ex. 2010, Microsoft Computer Dictionary at 505 (5th ed.
`
`2002)). The dictionary defines “switching” as “[a] communications method that
`
`uses temporary rather than permanent connections to establish a link or to route
`
`information between two parties.” Id. (emphasis added). Rather than being
`
`
`
`9
`
`
`
`
`constrained to digital data, the definition refers more broadly to “information.”
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`Accordingly, the suggestion by the Patent Owner that a device is only “adapted for
`
`data switching” if it switches “digital data” is unsound, and the Board was correct
`
`not to adopt it.
`
`B.
`
`The Cited Sections of Woodmas Were Misapprehended or
`Overlooked
`The Decision appears to have focused on features of Woodmas other than
`
`the “production switcher” in control station 14 and the capability of bi-directional
`
`“multiplexed” communications involving multiple devices connected to camera
`
`station 16. See Decision at 21-24. Although these features were cited in the
`
`Petition (see Petition at 28 (citing Woodmas, col. 2:41-53; 2:54-61; 2:62-3:11)),
`
`they were disregarded by the Patent Owner’s Preliminary Response, which may
`
`have detracted from the apparent strength of Woodmas.4 See Preliminary
`
`Response at 41-50. Petitioners respectfully submit that the teachings in Woodmas
`
`regarding the “production switcher” in control station 14 and the capability of bi-
`
`directional “multiplexed” communications were misapprehended or overlooked in
`
`the Decision.
`
`
`4 See supra note 1.
`
`
`
`10
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`C. Woodmas Also Satisfies the Board’s Other Claim Constructions
`The Decision construed several terms in claim 6 other than “data node
`
`
`
`adapted for data switching.” Confirming Woodmas’s strength as an anticipatory
`
`reference, Woodmas satisfies these claim constructions as well. Moreover, as
`
`demonstrated in the Petition, Woodmas anticipates each of the elements of claim 6,
`
`as well as those of dependent claims 8 and 9. Petition at 26-34.
`
`The Decision construed “low level current” to mean “a current (e.g.,
`
`approximately 2 mA) that is sufficiently low that, by itself, it will not operate the
`
`access device.” Decision at 11. Woodmas’s disclosure of a “low voltage level”
`
`applied to cable 30, which has a current “limited to 15 m[A],” falls squarely within
`
`the construction.5 Woodmas, col. 6, ll. 45-53 (emphasis added). Woodmas
`
`explains that, “[b]y limiting the output current to 15 m[A], a short circuit in cable
`
`30 causes a voltage drop which can be detected safely before full operating power
`
`is imposed.” Id. at col. 7, ll. 24-26 (emphasis added).
`
`The Decision construed “data signaling pair” to mean “a pair of wires used
`
`to transmit data.” Decision at 13. Woodmas’s disclosure of a coaxial cable (e.g.,
`
`cable 30) satisfies this construction. In particular, Woodmas discloses “transferring
`
`
`5 Woodmas’s low level current of 15 mA is actually lower than the example of 20
`mA given in the ’930 patent. See ’930 patent, col. 2, l. 66 - col. 3, l. 2.
`
`
`
`
`11
`
`
`
`
`signals between a conductor pair.” Woodmas, col. 2, ll. 3-5. The conductor pair
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`described in detail in Woodmas is that of a coaxial cable. See id., Abstract; col. 2,
`
`ll. 54-56. Woodmas also discloses that a “two wire pair” may be used instead of a
`
`coaxial cable. Id. at col. 9, ll. 47-49. The Patent Owner does not dispute
`
`Woodmas’s disclosure of this claim element.
`
`Lastly, the Decision construed “main power source” and “secondary power
`
`source” such that they need not be “physically separate devices.” Decision at 14.
`
`The various types of power sources in Woodmas that are identified in the Petition
`
`satisfy this construction as well. See Petition at 29-30. These claim elements are
`
`also undisputedly present in Woodmas.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request a rehearing and
`
`institution of an inter partes review on the ground that Woodmas anticipates claims
`
`6, 8, and 9 of U.S. Patent No. 6,218,930 (“the ’930 patent”) under 35 U.S.C.
`
`§ 102(b).
`
`
`
`
`
`
`
`12
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
` Respectfully submitted,
`
`
`
`
`
` /Lionel Lavenue/
`Lionel M. Lavenue (Lead Counsel)
`Reg. No. 46,859
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel. 571.203.2750
`Fax. 202.408.4400
`lionel.lavenue@finnegan.com
`
`C. Gregory Gramenopoulos (Backup
`Counsel)
`Reg. No. 36,532
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Tel. 202.408.4263
`Fax. 202.408.4400
`gramenoc@finnegan.com
`
`
`Dated: June 10, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`13
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §§ 42.6(e), 42.105(a))
`
`Pursuant to 37 C.P.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`
`
`caused to be served a true and correct copy of the foregoing “Petitioners’ Request
`
`for Rehearing Pursuant to 37 C.F.R. § 42.71(d)” by Federal Express delivery, on
`
`this 10th day of June, 2013 on the Patent Owner at the correspondence address of
`
`the Patent Owner as follows:
`
`BUCHANAN, INGERSOLL & ROONEY PC
`1737 KING STREET, SUITE 500
`ALEXANDRIA, VA 22314-2727
`
`
`
`Dated: June 10, 2013
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Lionel Lavenue/
`Lionel M. Lavenue (Lead Counsel)
`Reg. No. 46,859
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel. 571.203.2750
`Fax. 202.408.4400
`lionel.lavenue@finnegan.com
`
`14
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