U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`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 IPR: To Be Assigned
`
`
`
`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
`
`
`
`
`
`

`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Customer Number 22,852
`
`Table of Contents
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES ............................................................................. 4 
`A. 
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 4 
`B. 
`Related Matters ...................................................................................... 4 
`C. 
`Lead and Backup Counsel ..................................................................... 6 
`D. 
`Service of Information .......................................................................... 6 
`III.  PAYMENT OF FEES ..................................................................................... 6 
`IV.  CERTIFICATION OF GROUNDS FOR STANDING .................................. 7 
`V.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 7 
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`A. 
`Relief Requested .................................................................................... 7 
`Claims for Which Inter Partes Review is Requested ........................... 7 
`The Specific Art and Statutory Grounds on Which the
`Challenge is Based ................................................................................ 7 
`D.  Grounds for Challenge .......................................................................... 8 
`VI.  OVERVIEW OF THE ’930 PATENT ............................................................ 9 
`VII.  PROSECUTION HISTORY OF THE ’930 PATENT .................................. 10 
`VIII.  CLAIM CONSTRUCTION .......................................................................... 11 
`IX.  REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF
`THE ’930 PATENT IS UNPATENTABLE .................................................. 13 
`A. 
`Identification of the References as Prior Art ....................................... 13 
`B. 
`Summary of Invalidity Arguments ...................................................... 14 
`C. 
`State of the Prior Art ........................................................................... 16 
`
`B. 
`C. 
`
`
`
`(ii)
`
`

`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Customer Number 22,852
`
`
`X. 
`
`CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 6, 8, AND 9 ....................................... 18 
`A.  Ground 1: Detailed Explanation Under 37 C.F.R. § 42.104(b) of
`How Chang (Ex. 1003) Anticipates Claims 6, 8, and 9 ...................... 18 
`B.  Ground 2: Detailed Explanation Under 37 C.F.R. § 42.104(b) of
`How Woodmas (Ex. 1005) Anticipates Claims 6, 8, and 9 ................ 26 
`C.  Ground 3: Detailed Explanation Under 37 C.F.R. § 42.104(b) of
`How Satou (Ex. 1007) Anticipates and/or Obviates Claims 6, 8,
`and 9 .................................................................................................... 34 
`D.  Ground 4: Detailed Explanation Under 37 C.F.R. § 42.104(b) of
`How Claims 6, 8, and 9 Are Obvious Over Fisher (Ex. 1004) in
`View of Chang. .................................................................................... 43 
`XI.  CONCLUSION .............................................................................................. 52 
`
`
`
`
`
`
`(iii)
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`

`
`
`
`Ex. 1002
`
`List of Exhibits
`
`
`Exhibit
`No.
`Ex. 1001 U.S. Patent No. 6,218,930, titled “Apparatus and Method for Remotely
`Powering Access Equipment Over a 10/100 Switched Ethernet
`Network” (“the ’930 Patent”).
`“Network-1 Announces Settlement of Patent Litigation with
`GarrettCom, Inc.,” October 18, 2012.
`Ex. 1003 U.S. Patent No. 5,991,885, titled “Method and Apparatus for Detecting
`the Presence of a Remote Device and Providing Power Thereto”
`(“Chang”)
`Ex. 1004 U.S. Patent No. 5,994,998, titled “Power Transfer Apparatus for
`Concurrently Transmitting Data and Power over Data Wires”
`(“Fisher”).
`Ex. 1005 U.S. Patent No. 5,345,592, titled “Signal Transfer and Power Delivery
`System for a Television Camera Station” (“Woodmas”).
`Japanese Unexamined Patent Application Publication No. 6-189535,
`titled “Switching Regulator Provided with Co-Axial Cable Connection
`Protection Function” (“Satou”).
`Ex. 1007 English translation of Satou with translation verification.
`Ex. 1008 Petitioner Sony Corporation of America’s Power of Attorney
`Ex. 1009 Petitioners Axis Communications AB’s and Axis Communications,
`Inc.’s Power of Attorney.
`Ex. 1010 Notice of Allowability for Application No. 09/520,350 underlying the
`’930 Patent.
`Joint Claim Construction Chart, Network-1 v. D-Link. Corp., No. 6:05-
`cv-00291-LED, filed September 11, 2006.
`Joint Claim Construction and Prehearing Statement, Network-1 v.
`Cisco, No. 6:08-cv-00030-LED, filed July 24, 2009.
`Ex. 1013 Network-1 Security Solutions, Inc.’s Disclosure of Asserted Claims
`and Infringement Contentions under Patent Rule 3-1 to Sony, Ex. A.
`Ex. 1014 Network-1 Security Solutions, Inc.’s Disclosure of Asserted Claims
`and Infringement Contentions under Patent Rule 3-1 to Axis, Ex. A.
`
`Ex. 1006
`
`Ex. 1011
`
`Ex. 1012
`
`
`
`(iv)
`
`

`
`
`
`Ex. 1015 U.S. Patent No. 4,992,774, titled “Method for Powering Remote
`Ex. 1015 U.S. Patent No. 4,992,774, titled “Method for Powering Remote
`Visual Displays and Allowing for Data Exchange Pair Over the Same
`Visual Displays and Allowing for Data Exchange Pair Over the Same
`Wire Pair.”
`Wire Pair.”
`
`
`
`
`(v)
`(V)
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`On behalf of Sony Corporation of America, Axis Communications AB, and
`
`Axis Communications, Inc. (collectively “Petitioners”) and in accordance with 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. §§ 42.1–.80 & 42.100–.123, inter partes review
`
`is respectfully requested for claims 6, 8, and 9 of U.S. Patent No. 6,218,930 (“the
`
`’930 Patent”) (Ex. 1001).
`
`This Petition presents prior art that was not considered by the Examiner
`
`during the original examination of the ’930 Patent and that discloses every feature
`
`of claims 6, 8, and 9. The prior art demonstrates that the remote powering features
`
`claimed in the ’930 Patent were well known in various technical fields before the
`
`purported priority date of the ’930 Patent,1 including with respect to Ethernet
`
`networks.
`
`According to Network-1’s promotional material, the ’930 Patent “cover[s]
`
`the remote delivery of power over Ethernet networks.” (Ex. 1002, Network-1
`
`October 18, 2012 press release announcing settlement with GarrettCom.) Yet the
`
`remote delivery of power over an Ethernet network was not new at the time of the
`
`alleged invention of the ’930 Patent. For example, U.S. Patent No. 5,991,885 to
`
`1 The ’930 Patent is based on U.S. Application No. 09/520,350, which was filed on
`
`March 7, 2000 and claims priority to U.S. Provisional Application No. 60/123,688,
`
`filed on March 10, 1999.
`
`
`
`1
`
`

`
`
`
`Chang (“Chang”) discloses detecting the presence of a remote network device and
`
`supplying data and power to the device from a network hub via an Ethernet
`
`connection. (See Ex. 1003 at 4:50–58.) Chang explains that, “[s]ince the detected
`
`device receives the electrical power from the detecting device, a separate costly
`
`electrical power supply is not needed,” thus allowing one to “reduce cost” and
`
`minimize electrical wiring. (See id. at 4:58–62.)
`
`Remote delivery of power over an Ethernet network is also disclosed in U.S.
`
`Patent No. 5,994,998 to Fisher (“Fisher”). Fisher describes techniques for
`
`“[e]lectrical supply current, sufficient to power a wireless access point, . . .
`
`transmitted concurrently with a network data signal across a transmission line.”
`
`(Ex. 1004 at Abstract.) Figure 1 of Fisher (reproduced below) illustrates such a
`
`remote power delivery system.
`
`
`
`
`
`2
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`

`
`
`
`Not only was remote powering of network devices known in the Ethernet
`
`network arts prior to the ’930 Patent, but techniques for “remotely powering access
`
`equipment in a data network,” as broadly claimed in the ’930 Patent, were known
`
`in other technical fields. For instance, remote delivery of power in a television
`
`network is disclosed in U.S. Patent No. 5,345,592 to Woodmas (“Woodmas”).
`
`(See Ex. 1005.) Further, delivery of power to access equipment in data networks
`
`via coaxial cabling is disclosed in Japanese Unexamined Patent Application No. 6-
`
`189535 to Satou (“Satou”). (See Exs. 1006, 1007.) Woodmas and Satou each
`
`disclose every element of claims 6, 8, and 9 of the ’930 patent.
`
`Other technical fields in which it was known to remotely power access
`
`equipment in a data network include Universal Serial Bus (“USB”) technology2
`
`and Integrated Services Digital Network (“ISDN”) technology.3 Both solutions,
`
`2 Prior art references disclosing remote powering techniques for USB networks are
`
`identified in a request for Ex Parte Reexamination of the ’930 Patent. That request
`
`was assigned Control Number 90/12,401 and was granted on September 5, 2012.
`
`An Office Action has not yet issued.
`
`3 Prior art references disclosing remote powering techniques for ISDN networks
`
`are identified in a Petition for Inter Partes Review of the ’930 Patent filed by
`
`Avaya Inc. on December 5, 2012. The petition has been assigned Case IPR2013-
`
`00071.
`
`
`
`3
`
`

`
`
`
`which predate the alleged invention of the ’930 Patent, involve the transmission of
`
`data and power over a single cable to access equipment in a data network.
`
`Petitioners respectfully submit that there is a reasonable likelihood that
`
`claims 6, 8, and 9 of the ’930 Patent will be found unpatentable overthe prior art
`
`presented herein. As explained in detail below and shown in the accompanying
`
`exhibits, Chang, Woodmas, and Satou anticipate claims 6, 8, and 9 and the
`
`combination of Fisher and Chang render those claims obvious. Accordingly, this
`
`Petition for inter partes review of the ’930 Patent should be granted.
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Sony Corporation of America is a real party-in-interest. Sony Electronics
`
`Inc. is a wholly owned subsidiary of Sony Corporation of America. Sony
`
`Corporation of America is an indirect, wholly-owned subsidiary of Sony
`
`Corporation. Axis Communications AB and Axis Communications, Inc. are real
`
`parties-in-interest. Axis AB is the parent corporation of Axis Communications
`
`AB. Axis Communications AB is the parent corporation of Axis Communications,
`
`Inc.
`
`B. Related Matters
`The following matters would affect or be affected by a decision in this
`
`matter:
`
`
`
`4
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`

`
`
`
`i. Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al.,
`
`E.D. Tex., No. 6:11-cv-00492-LED, a patent infringement lawsuit
`
`involving the ’930 Patent that was brought by the patent owner,
`
`Network-1 Security Solutions, Inc.;
`
`ii. Avaya Inc. v. Network-1 Security Solutions, Inc., No. IPR2013-00071,
`
`a pending petition for an inter partes review proceeding involving the
`
`’930 Patent that was filed by Avaya Inc. on December 5, 2012; and
`
`iii. Ex Parte reexamination proceeding of the ’930 Patent, Control No.
`
`90/012,401, that was granted on September 5, 2012 and is awaiting an
`
`initial Office Action.
`
`In addition to the above-noted active matters involving the ’930 Patent,
`
`Petitioners are aware of three prior litigations involving the ’930 Patent, each of
`
`which is now terminated and none of which reached a final judgment on the issue
`
`of validity based on prior art. Those litigations include: (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-00030 (E.D. Tex. filed
`
`Feb. 7, 2008) (“the Cisco Litigation”).
`
`
`
`
`
`5
`
`

`
`
`
`
`
`C. Lead and Backup Counsel
`Petitioners provide the following designation of counsel:
`
`Lead Counsel for Petitioners Sony
`Corporation of America, Axis
`Communications AB, and Axis
`Communications, Inc.
`Lionel M. Lavenue (Reg. No. 46,859)
`lionel.lavenue@finnegan.com
`Postal and Hand-Delivery Address
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571.203.2700
`Fax: 202.408.4400
`
`Powers of attorney accompany this Petition. See Exs. 1008, 1009.
`
`Backup Counsel for Petitioners Sony
`Corporation of America, Axis
`Communications AB, and Axis
`Communications, Inc.
`C. Gregory Gramenopoulos (Reg. No.
`36,532)
`gramenoc@finnegan.com
`Postal and Hand-Delivery Address
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`901 New York Avenue, NW
`Washington, D.C. 20001-4413
`Telephone: 202.408.4263
`Fax: 202.408.4400
`
`Service of Information
`
`D.
`Service information for lead and backup counsel is provided above in the
`
`designation of lead and backup counsel.
`
`III. PAYMENT OF FEES
`Fees are submitted herewith. If any additional fees are due at any time
`
`through the course of the inter partes review, the undersigned authorizes the Office
`
`to charge such fees to Deposit Account No. 06-0916.
`
`
`
`6
`
`

`
`
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioners hereby certify that the ’930 Patent is available for inter partes
`
`review and that the Petitioners are not barred or estopped from requesting inter
`
`partes review challenging the claims of the ’930 Patent on the grounds identified in
`
`this Petition. This Petition is being filed within one year from the date on which
`
`each of the Petitioners were first served with a complaint by Network-1 in the
`
`above-referenced pending litigation.
`
`V. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`A.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Pursuant to Rules 42.22(a)(1) and 42.104 (b)(1)–(2), Petitioners challenge
`
`claims 6, 8, and 9 of the ’930 Patent and request that these claims be found
`
`unpatentable over the prior art.
`
`B. Claims for Which Inter Partes Review is Requested
`Petitioners request inter partes review of claims 6, 8, and 9 of the ’930
`
`Patent.
`
`C. The Specific Art and Statutory Grounds on Which the Challenge
`is Based
`Inter partes review of the ’930 Patent is requested in view of the following
`
`references: (1) U.S. Patent No. 5,991,885 to Chang (“Chang”) (Ex. 1003); (2) U.S.
`
`Patent No. 5,345,592 to Woodmas (“Woodmas”) (Ex. 1005); (3) Japanese Patent
`
`
`
`7
`
`

`
`
`
`Publication No. H6-189535 to Satou (“Satou”) (Ex. 1006; Ex. 1007 [English])4;
`
`and (4) U.S. Patent No. 5,994,998 to Fisher (“Fisher”) (Ex. 1004).
`
`Each of the patents and printed publications listed above is prior art to the
`
`’930 Patent under 35 U.S.C. §§ 102(a), (b), and/or (e), as explained in Section
`
`V(A), below.
`
`D. Grounds for Challenge
`Petitioners request that the challenged claims be found unpatentable on the
`
`following statutory grounds:
`
`Ground
`No.
`1
`2
`3
`4
`
`Proposed Statutory Rejections for the ’930 Patent
`
`Claim
`Nos.
`6, 8, 9 Anticipated under 35 U.S.C. § 102 by Chang (Ex. 1003).
`6, 8, 9 Anticipated under 35 U.S.C. § 102 by Woodmas (Ex. 1005).
`6, 8, 9 Anticipated under 35 U.S.C. § 102 by Satou (Ex. 1007).
`6, 8, 9 Obvious under 35 U.S.C. § 103 over Fisher (Ex. 1004) in view
`of Chang (Ex. 1003).
`
`
`Petitioners submit that the above-identified prior art references invalidate the
`
`claims of the ’930 Patent without the need of characterizations, explanations, or
`
`opinions from an expert declarant. However, because Petitioners do not yet know
`
`the scope and content of any response from the patent owner, including any expert
`
`statements or other evidence, Petitioners reserve all rights permitted under these
`
`4 Ex. 1006 for Satou includes a copy of the original reference in Japanese. Ex.
`
`1007 contains a certified English translation of the Satou reference. Citations in
`
`this Petition to Satou refer to the certified English translation.
`
`
`
`8
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`

`
`
`
`proceedings, including the right to present expert declarations in response to any
`
`expert statements or other evidence presented by the patent owner.
`
`VI. OVERVIEW OF THE ’930 PATENT
`The ’930 Patent purports to provide techniques for “automatically
`
`determining if remote equipment is capable of remote power feed,” and, if so, to
`
`then “provide power in a reliable non-intrusive way.” (Ex. 1001 at 1:14–19.) The
`
`’930 Patent describes a method that includes “delivering a low level current from
`
`the main power source to the access device over [a] data signaling pair, sensing a
`
`voltage level on the data signaling pair in response to the low level current, and
`
`controlling power supplied by [a] secondary power source to the access device in
`
`response to a preselected condition of the voltage level.” (Id. at 2:8–14.) Once an
`
`access device is supplied with power, the removal of the device or an overload
`
`fault condition may be detected, in which case power may be cut off from the
`
`access device. (Id. at 3:49–58.)
`
`In the example illustrated in Figure 3 (reproduced below), remote access
`
`equipment (telephone 62) is “equipped to handle data communications as well as
`
`voice and is connected through an access node 64 to premises wiring 66,
`
`comprising Category 5 Ethernet 100BaseX cable of 4 sets of unshielded twisted
`
`pairs, which carry both data and power to the telephone 62.” (Id. at 3:59-66.)
`
`Ethernet switch 68 is powered from main power supply 70 and power is provided
`
`
`
`9
`
`

`
`
`
`over the wiring 66 to both the remote access node 64 and telephone 62. (Id. at
`
`3:66-4:5.)
`
`
`
`VII. PROSECUTION HISTORY OF THE ’930 PATENT
`The ’930 Patent is based on U.S. Application No. 09/520,350 (“’350
`
`application”), which was filed on March 7, 2000 and claims priority to U.S.
`
`Provisional Application No. 60/123,688, filed on March 10, 1999. The ’350
`
`application was allowed in the first action by the Examiner. Only six prior art
`
`references were considered by the Examiner, including only one patent (U.S.
`
`Patent No. 5,144,544) cited by the Applicants. The Examiner’s statement of
`
`reasons for allowance, which accompanied the Notice of Allowability of
`
`September 11, 2000, concludes that the prior art considered did not disclose “all
`
`
`
`10
`
`

`
`
`
`subject matter[]” of independent claim 1. (Ex. 1010 at 2.) The Examiner did not
`
`identify any specific feature of the claims that was not found in the prior art. As
`
`indicated above, none of the prior art presented in this Petition was considered by
`
`the Examiner.
`
`VIII. CLAIM CONSTRUCTION
`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). With respect to the ’930 Patent, Network-1 has already
`
`stated in the related litigations what it believes to be the reasonable scope of the
`
`claims, including as part of the prior claim construction proceedings (see Exs.
`
`1011, 1012) and its infringement contentions against Petitioners’ accused products
`
`(see Exs. 1013, 1014).
`
`Independent claim 6 of the ’930 Patent recites a method for remotely
`
`powering access equipment in a data network that includes, in part: “providing a
`
`data node adapted for data switching, 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.”
`
`
`
`11
`
`

`
`
`
`Network-1 has offered three different constructions of the “main power
`
`source.” Under its first construction, the term “main power source” means “a DC
`
`power supply that provides DC power to components of the data nodes,” where the
`
`power supply “is a collection of electronic circuitry or components used to convert
`
`voltages and currents.” (See Ex. 1013 at 27.) Its second construction construes
`
`main power source as “a combination of power supplies, series or parallel, that
`
`provides DC power to components of the data nodes.” (Id. at 28.) And its third
`
`construction construes “main power source” as meaning “an AC power source
`
`provided via a power cord that is adapted to connect an AC outlet to” the data
`
`nodes. (Id.)
`
`With respect to the “secondary power source,” Network-1 has taken the
`
`broad position that the secondary power source (1) “is the same source of power
`
`as the main power source,” (2) “may be derived from the main power source, or
`
`separate,” and (3) “need not be physically separate from the main power source.”
`
`(See id. at 35; Ex. 1011 at 2; Ex. 1012 at 25 (emphases added)).
`
`With respect to the recitations in claims 6, 8, and 9 involving voltages and
`
`currents, Network-1 has taken the position that voltages and currents are
`
`interchangeable. (See, e.g., Ex. 1013 at 38-40, 44-45, and 51-52.)
`
`Network-1 should not be allowed to assert a narrower construction of these
`
`claim elements during the requested inter partes review, consistent with the
`
`
`
`12
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`

`
`
`
`principle of applying the broadest reasonable interpretation to the claim terms in
`
`dispute.
`
`IX. REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF
`THE ’930 PATENT IS UNPATENTABLE
`A.
`The ’930 Patent is based on U.S. Application No. 09/520,350, which was
`
`Identification of the References as Prior Art
`
`filed on March 7, 2000 and claims priority to U.S. Provisional Application No.
`
`60/123,688, filed on March 10, 1999. Even if the claims of the ’930 Patent are
`
`assumed at most to be entitled to a priority date of March 10, 1999 (which
`
`Petitioners do not concede), each of the identified references in this Petition are
`
`prior art to the claims.
`
`Chang was filed on June 11, 1997 and issued on November 23, 1999. (Ex.
`
`1003) Chang is prior art to the ’930 Patent under 35 U.S.C §§ 102(a), (e).
`
`Woodmas was filed on April 8, 1992 and issued on September 6, 1994. (Ex.
`
`1005) Woodmas is prior art to the ’930 Patent under 35 U.S.C. § 102(b).
`
`Satou was filed on June 23, 1992 and published on July 8, 1994. (Ex. 1007)
`
`Satou is prior art to the ’930 Patent under 35 U.S.C. § 102(b).
`
`Fisher was filed on May 29, 1997 and issued on November 30, 1999. (Ex.
`
`1004) Fisher is prior art to the ’930 Patent under 35 U.S.C. §§ 102(a), (e).
`
`
`
`13
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`

`
`
`
`Summary of Invalidity Arguments
`
`B.
`According to the ’930 Patent specification, the essential feature of the
`
`claimed invention is the ability to “reliably [determine] if a remote piece of access
`
`equipment is capable of accepting remote power,” and, if so, to “[deliver] remote
`
`power to remote equipment over 10/100 switched Ethernet segments.” (’930
`
`Patent 1:41–47.) Although the ’930 Patent describes the purported invention as
`
`pertaining to “power[ing] remote equipment over 10/100 switched Ethernet
`
`segments,” the claims broadly cover remotely powering any type of “access
`
`device” connected to any type of “data network.”
`
`Independent claim 6, reproduced below, is the only independent claim
`
`involved in this Petition:
`
`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
`controlling power supplied by said secondary
`power source to said access device in response to a
`preselected condition of said voltage level.
`
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`The ’930 Patent asserts that techniques for remotely powering devices
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`“ha[d] not migrated to data communications equipment” as of the filing date of the
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`application for the ’930 Patent. To the contrary, the ability to remotely power
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`equipment in various types of data networks was well known in the art at the time
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`of the filing of the ’930 Patent, as evidenced by the references assembled in this
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`Petition.
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`The alleged invention of the ’930 Patent was not novel. For example, Chang
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`discloses networks including “network hubs and network interface adapters for
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`automatically and continuously detecting the presence of a remote adapter coupled
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`to a network twisted-pair cable, providing electrical power from a network hub to
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`the remote adapter via the network twisted-pair cable.” (Ex. 1003 at 1:8–12.)
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`Similarly, Fisher discloses systems for providing data and remote power through
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`an Ethernet network to an access device. (Ex. 1004 at 3:9-16.)
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`Woodmas discloses a method for “providing both signaling and power over a
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`single coaxial cable between a television control station and a remote camera
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`station and for controlling the voltage delivered to the camera station.” (Ex. 1005
`
`at 1:9–13.) Additionally, Satou discloses a system and method that “eliminate[s]
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`the risk of an electric shock hazard and a short circuit hazard due to misoperation
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`in the work, poor connector connection, or the like at the time of the detaching of a
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`co-axial cable through which the power-supplying side is connected to the power-
`15
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`
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`consuming side with the superposing of a direct-current voltage onto a signal
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`voltage.” (Ex. 1007 at Abstract.)
`
`In short, the ’930 Patent claims no inventive subject matter. Instead, the
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`’930 Patent claims recite techniques that were well known at the time of the
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`alleged invention. In light of the disclosure of the prior art identified herein,
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`claims 6, 8, and 9 of the ’930 Patent should be found unpatentable over the prior
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`art.
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`State of the Prior Art
`
`C.
`Prior to 1999 and the claimed priority of the ’930 Patent, remotely powering
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`access equipment in a data network was well known. Satou, filed in 1992 and
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`published in 1994, discloses a method for detecting when a remote device is
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`capable of receiving power and delivering that power superimposed on the data
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`signal. (See Ex. 1007 at ¶ [0008].) The ’930 Patent itself acknowledges that
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`remote power was generally incorporated in related technology fields, including
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`telephony and network repeaters. (See Ex. 1001 at 1:22–24.) Thus, the application
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`of remote-powering technologies to data networks and communication systems
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`was developed long before the ’930 Patent was filed.
`
`The ’930 Patent explains that the application of remote-powering techniques
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`to data communications equipment “[o]bviously has many advantages” and “is
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`being pushed by the convergence of voice and data technologies.” (See Ex. 1001
`
`
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`
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`at 1:24–25; 1:34–35.) As evidenced by Woodmas, which was filed seven years
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`before ’930 Patent’s earliest claimed priority date in 1999, remote-powering
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`technology was already used in media production systems to transmit video, audio,
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`and control signals over a pair of conductors that also deliver power to the remote
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`device. (See Ex. 1005 at Abstract.) Woodmas discloses a method for remotely
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`powering camera modules for on-location productions, undermining the ’930
`
`Patent’s argument that application of such technology to other types of networks
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`was prohibited by “high power level” requirements of the “[d]ata communication
`
`equipment,” as the Woodmas reference. (Ex. 1005 at Abstract; Ex. 1001 at 1:27–
`
`29.)
`
`The relevant prior art also included various examples of Power over Ethernet
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`technology. For example, Fisher described networking using data lines, such as
`
`Ethernet connections, that also carry power. (See Ex. 1004 at 1:6–23.) Also,
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`Chang describes a remote-powering system that detects the presence of a remote
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`device, such as a network device, and controls the application of power to the
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`device. (Ex. 1003 at 2:65–3:2.) When the remote device is disconnected, power
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`being delivered to it may cease. (Ex. 1003 at 3:58–60.)
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`As explained in detail below, each of the prior art references cited in this
`
`Petition disclose remote-powering technologies that anticipate and render obvious
`
`
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`17
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`
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`the alleged invention claimed in the ’930 patent. Therefore, claims 6, 8, and 9 of
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`the ’930 Patent should be found unpatentable over the prior art.
`
`X. CLAIM-BY-CLAIM EXPLANATION5 OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 6, 8, AND 9
`A. Ground 1: Detailed Explanation Under 37 C.F.R. § 42.104(b) of
`How Chang (Ex. 1003) Anticipates Claims 6, 8, and 9
`At least the portions of Chang cited below anticipate claims 6, 8, and 9 of
`
`the ’930 Patent. To the extent that Network-1 asserts that any element of the
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`enumerated claims is not disclosed by Chang, explicitly or implicitly, the addition
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`of that element is a predictable variation that could have been implemented by a
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`person of ordinary skill in the art at the time of the alleged invention.
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`Chang discloses a method for powering access equipment (e.g., infrared
`
`adapter 206) in a data network that includes a data node (e.g., network hub 202), an
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`access device (e.g., infrared adapter 206), a data signaling pair (e.g., common wire
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`or twisted-pair wires), a main power source (e.g., signal generator 608 or interface
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`driver 614), and a secondary power source (e.g., signal generator 608, power
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`supply circuit 640, or interface driver 614). The chart below describes in detail
`
`how Chang’s disclosure of these elements satisfies each limitation of claims 6, 8,
`
`and 9.
`
`
`5 The citations in the charts include underlining to indicate portions that are
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`particularly relevant to the claim element.
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`
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`Disclosure in Chang (Ex. 1003)
`
`Chang discloses a method for remotely powering access
`equipment (e.g., a remote terminal or infrared adapter) in a data
`network.
`Chang, Abstract (“A network system includes a network that
`detects the presence of a remote terminal connected to a network
`and determines the functional protocol of the remote terminal. If
`the remote terminal is an infrared adapter, the network hub
`provides electrical power to the infrared adapter and continually
`monitors for the presence of the infrared adapter.”).
`Id. at 1:8-15 (“This invention relates to networking systems, and
`more particularly, to network hubs and network interface adapters
`for automatically and continuously detecting the presence of a
`remote adapter coupled to a network twisted-pair cable, providing
`electrical power from a network hub to the remote adapter via the
`network twisted-pair cable, creating a multi-protocol networking
`system, and automatically connecting the remote adapter to the
`appropriate network hub.”).
`
`See also id. at 4:50–58; 4:63–66; 6:24–27.
`Chang discloses providing a data node adapted for data switching
`(e.g., a network hub).
`Chang, 5:12–16 (“The network hub 202 includes a plurality of hub
`user connectors 208 and an up-link connector 210. The up-link
`connector 210 allows the network 201 to be connected to another
`network (not shown). The computer 212-1 includes a first interface
`214 which is an infrared transceiver.”).
`Id. at 6:12-23 (“A user may place a computer 212-1 in the vicinity
`of the IR adapter 206 and communicate with the network 201. The
`IR adapter 206 provides bi-direct