`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`DELL INC.
`Petitioner
`
`v.
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`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`
`CASE IPR: IPR2013-00385
`
`
`
`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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`
`
`
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`TABLE OF CONTENTS
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`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) ...................................... 3
`1.
`Current Litigation ........................................................................ 3
`2.
`Prior Litigation ............................................................................ 4
`Current Inter Partes Review ....................................................... 4
`3.
`Ex Parte Reexamination ............................................................. 5
`4.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ................... 5
`C.
`III. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 6
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) .............................. 6
`B.
`Identification of Challenge and Relief Requested ................................ 7
`1.
`How the Challenged Claims Are to Be Construed under 37
`C.F.R. § 42.104(b)(3) .................................................................. 8
`How the Construed Claims are Unpatentable under 37
`C.F.R. § 42.104(b)(4) ................................................................ 11
`Supporting Evidence under 37 C.F.R. § 42.104(b)(5) .............. 11
`3.
`IV. SUMMARY OF THE ’930 PATENT AND TECHNOLOGY
`BACKGROUND ........................................................................................... 12
`A. Description of the Alleged Invention of the ’930 Patent .................... 12
`B.
`Technology Background Relevant to the ’930 Patent ........................ 13
`1.
`ISDN – Integrated Services Digital Network ........................... 14
`2.
`Powering Ethernet Devices ....................................................... 15
`a.
`The Development of Ethernet ......................................... 15
`b.
`Power Over Ethernet ...................................................... 16
`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. DE-1004) .................................................. 17
`
`2.
`
`i
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`
`
`1.
`2.
`3.
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`Brief Overview of Matsuno ...................................................... 17
`Analysis of Matsuno’s Disclosure 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 Obvious under § 103(a) over De
`Nicolo in view of Matsuno (Ex. DE-1004 & DE-1007) ..................... 27
`1.
`Brief Overview of Combination of De Nicolo and Matsuno ... 27
`2.
`Analysis of Combination of De Nicolo and Matsuno
`Against Claims 6 and 9 ............................................................. 28
`Claim Chart Showing that De Nicolo and Matsuno
`Disclose Each of the Elements of Claims 6 and 9 .................... 31
`4. Motivation to Combine ............................................................. 34
`5.
`Conclusion ................................................................................ 35
`C. Ground 3: Claims 6 and 9 Are Obvious under 35 U.S.C. 103(a)
`over Chang in view of De Nicolo (Ex. DE-1006 & DE-1007) ........... 35
`1.
`Brief Overview of Chang .......................................................... 36
`2.
`Analysis of Combination of Chang and De Nicolo Against
`Claims 6 and 9 ........................................................................... 36
`Claim Chart Showing that Chang and De Nicolo Disclose
`Each of the Elements of Claims 6 and 9 ................................... 40
`4. Motivation to Combine ............................................................. 45
`5.
`Conclusion ................................................................................ 46
`VI. CONCLUSION .............................................................................................. 46
`
`3.
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`3.
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`
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`ii
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`Under 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Dell Inc. (“Petitioner”)
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`respectfully requests inter partes review of claims 6 and 9 of U.S. Patent No.
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`6,218,930 (“the ’930 Patent”) (Exhibit (“Ex.”) DE-1001).
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`I.
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`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:
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`My invention has for its object, first, the transmission
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`simultaneously of . . . musical notes or telegraphic
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`signals along a single wire in either or in both directions,
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`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 central
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`source and an AC signal for communicating data — (the voice or other sound
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`signal) to a piece of equipment (the telephone). The result was a communications
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`system that did not require a “local” power source for the telephone. Known as
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`Page 1
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`“line-powered telephone service,” or more colloquially as “plain old telephone
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`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
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`equipment, such as telephones and network repeaters, were providing power and
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`data over the same wires. See Ex. DE-1001, col. 1:22-24.
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`So what exactly is alleged to be new in the ’930 Patent? According to its
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`Background section, the ’930 Patent states that the prior art was missing the ability
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`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
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`being done in the telecommunications field, this assertion is incorrect as remotely
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`powering data network devices was already known.
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`The prior art “Matsuno” reference, described below in Section V.A, provides
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`a clear example of a method for remotely powering networked devices on an
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`Integrated Services Digital Network (“ISDN”). Each of these references describe
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`in detail how power could be provided to ISDN equipment (“access device”) from
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`a switching station (“data node”), and how the supply of such power can be
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`controlled in response to sensed voltage or current levels as set forth in the
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`challenged claims of the ’930 Patent.
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`Page 2
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`Additional prior art (including the “De Nicolo” and “Chang” references
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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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
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`both the Matsuno and Chang references discussed herein.
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`Unfortunately, none of the above references were considered by the United
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`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)
`Dell Inc. is the real party-in-interest for this Petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`1.
`Current Litigation
`In the pending lawsuit styled Network-1 Security Solutions, Inc. v. Alcatel-
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`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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`Page 3
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`selling devices that are compliant with the IEEE 802.3af and 802.3at Power over
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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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. DE-1010, page 4, fn. 1. The subject
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`of this Petition is limited to claims 6 and 9, the same two claims asserted by the
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`Patent Owner against Petitioner 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
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`Patent, none of which reached a final judgment on the issue of validity based on
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`prior art: (i) PowerDsine, Inc. v. Network-1 Security Solutions, Inc., No. 1:2004-
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`cv-02502 (S.D.N.Y. filed Mar. 31, 2004); (ii) Network-1 Security Solutions, Inc v.
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`D-Link Corporation et al., No. 6:2005-cv-00291 (E.D. Tex. filed Aug. 10, 2005);
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`and (iii) Network-1 Security Solutions, Inc v. Cisco Systems, Inc., et al., No. 6:08-
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`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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`of claim 1 under 35 U.S.C. § 112, second paragraph.
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`3.
`Current Inter Partes Review
`The ’930 Patent is presently the subject of an instituted inter partes review
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`styled Avaya Inc. v. Network-1 Security Solutions Inc., which is assigned Case No.
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`Page 4
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`IPR2013-00071.1 Petitioner seeks joinder with that inter partes review, for the
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`reasons expressed in the concurrently filed Motion for Joinder under 35 U.S.C. §
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`315(c), 37 C.F.R. §§ 42.22 and 42.122(b).
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`4.
`Ex Parte Reexamination
`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 Control
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`No. 90/012,401. The ex parte reexamination has been stayed by the Board
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`pending outcome of IPR2013-00071 (See Paper No. 9, IPR2013-00071).
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`Petitioner is 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
`Back-Up Counsel
`Thomas M. Dunham (Reg. #39,965)
`Michael J. Scheer (Reg. # 34,425)
`WINSTON & STRAWN LLP
`WINSTON & STRAWN LLP
`1700 K Street NW
`200 Park Ave.
`Washington, D.C. 20006-3817
`New York, NY 10166-4193
`Telephone: (202) 282-5000
`Telephone: (212) 294-4700
`Fax: (202) 282-5100
`Fax: (212) 294-6700
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`Service of any documents via hand-delivery may be made at the postal
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`
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`mailing address of the respective lead or back-up counsel designated above.
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`1 Petitioner also notes that another petition for inter partes review of the ’930
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`Patent (Case No. IPR2013-00092) was previously submitted by Sony Corporation
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`of America. That petition was denied. Sony has requested rehearing (Paper No.
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`22, IPR2013-00092).
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`Page 5
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`Petitioner consents to electronic service by e-mail at the above listed e-mail
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`address of Lead and Back-Up Counsel.
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`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
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`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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`In particular, as this Petition is accompanied by a Motion for Joinder under 37
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`C.F.R. §§ 42.22 and 42.122(b), the one year time limitation prescribed by 35
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`U.S.C. § 315 (b) does not apply. See 35 U.S.C. § 315 (b) (“The time limitation set
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`forth in the preceding sentence shall not apply to a request for joinder under
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`subsection (c).”); see also Paper No. 15, IPR2013-00109 (“the one-year time bar
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`does not apply to a request for joinder.”).
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`Concurrently, Petitioner is also 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 being paid
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`through PRPS—no excess claim fees are required. The Office is authorized to
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`charge any fee deficiency, or credit any overpayment, to Deposit Acct. No. 50-
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`1814.
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`Page 6
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`Identification of Challenge and Relief Requested
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`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:
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`Patent/Pub. No.
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`JP H10-13576
`(“Matsuno”)
`US 5,991,885
`(“Chang”)
`6,115,468
`(“De Nicolo”)
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`Priority Dated Date of Issuance or
`Publication
`January 16, 1998 DE-1004
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`June 20, 1996
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`Exhibit
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`June 11, 1997
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`November 23, 1999 DE-1006
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`March 26, 1998
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`September 5, 2000 DE-1007
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`Matsuno is prior art to the ’930 Patent under 35 U.S.C. § 102(b), and Chang
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`
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`and De Nicolo are prior art to the ’930 Patent at least under 35 U.S.C. § 102(e).
`
`None of the references relied upon were cited during original prosecution of the
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`’930 Patent, and none are presently before the Office in the ex parte reexamination.
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`Two additional references, attached as Exhibits DE-1012 and DE-1013, are offered
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`only for what one of ordinary skill in the art would have known at the time of the
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`invention of the ’930 Patent. Petitioner asserts the following specific grounds of
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`rejection under 35 U.S.C. §§ 102 and 103:
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`Ground
`No.
`1
`2
`
`3
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`Proposed Statutory Rejections for the Claims of
`Claim
`the ’930 Patent
`No(s).
`6, 9 Are anticipated under § 102(b) by Matsuno
`6, 9 Are obvious under § 103(a) over De Nicolo in view of
`Matsuno
`6, 9 Are obvious under § 103(a) over Chang in view of De
`Nicolo
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`Page 7
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`1. How the Challenged Claims Are to Be Construed under 37
`C.F.R. § 42.104(b)(3)
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`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
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`C.F.R. § 42.100(b). Petitioner submits, for the purposes of this inter partes review
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`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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`skill in the art (“PHOSITA”) in light of the specification of the ’930 Patent.2
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`In that regard, the Patent Owner already has set forth a broad meaning for
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`the italicized limitations of claim 6 below based upon its proposed claim
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`constructions in previous litigations (See Ex. DE-1008 & DE-1009), as well as in
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`its infringement contentions against Petitioner’s products. See Ex. DE-1010,
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`Appendix A.
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`2 Petitioner notes that in IPR2013-00071, the Board determined that the broadest
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`reasonable construction of “low level current” was “a current (e.g., approximately
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`[20] mA) that is sufficiently low that, by itself, it will not operate the access
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`device.” (See Paper No. 18, IPR2013-00071, at 10; Paper No. 21, IPR2013-00071
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`(errata)). The Board found that Avaya met its burden to demonstrate that at least
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`the Matsuno reference discloses delivering such a “low level current.” (Paper No.
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`18, IPR2013-00071, at 17).
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`Page 8
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`Independent method claim 6 of the ’930 Patent recites:
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`6. Method
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`for
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`remotely powering access
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`equipment in a data network, comprising,
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`providing a data node adapted for data switching,
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`an access device adapted for data transmission, at least
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`one data signaling pair connected between the data node
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`and the access device and arranged to transmit data
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`therebetween, a main power source connected to supply
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`power to the data node, and a secondary power source
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`arranged to supply power from the data node via said
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`data signaling pair to the access device,
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`delivering a low level current from said main
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`power source to the access device over said data
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`signaling pair,
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`sensing a voltage level on the data signaling pair in
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`response to the low level current, and
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`controlling power supplied by said secondary
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`power source to said access device in response to a
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`preselected condition of said voltage level.
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`Page 9
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`Regarding the recited “main power source” and “secondary power source”
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`claim limitations, the Patent Owner asserts that the “main power source” may
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`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. DE-1010, App. A, pp. 23-24.
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`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. DE-1010, Appendix A, pages 30-32; Ex. DE-
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`1008, page 2; Ex. DE-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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`be the same as the “main power source.”3
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`3 The Petitioner
`takes
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`this position based on
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`the “broadest reasonable
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`interpretation” standard that is to be applied in connection with inter partes review,
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`but does not endorse such an interpretation as part of the related district court
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`litigation. The USPTO’s approach to claim interpretation is different for at least the
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`Page 10
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`2. How the Construed Claims are Unpatentable under 37
`C.F.R. § 42.104(b)(4)
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`An explanation of how construed claims 6 and 9 of the ’930 Patent are
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`unpatentable under
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`the statutory grounds
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`identified above,
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`including
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`the
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`identification of where each element of the claim is found in the prior art patents or
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`printed publications, is provided in Section V below.
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`Supporting Evidence under 37 C.F.R. § 42.104(b)(5)
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`3.
`The exhibit numbers of the supporting evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support the challenge, are
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`provided herein. An Exhibit List identifying the exhibits is also attached. Pursuant
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`to 37 C.F.R. § 42.63(b), an Affidavit attesting to the fact that Exhibit DE-1004 is
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`an accurate and complete translation of Exhibit DE-1002 is included as Exhibit
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`DE-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 A. Zimmerman,
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`attached as Exhibit DE-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
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`be conveyed to a PHOSITA by the relied-upon prior art. Finally, as mentioned
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`reason that the applicant is able to amend the patent claims to be more specific. In
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`re Yamamoto, 740 F.2d 1569, 1571-72 (Fed. Cir. 1984).
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`Page 11
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`above, the patent references included as Exhibits DE-1012 and DE-1013 are
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`offered only for what one of ordinary skill in the art would have known at the time
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`of the invention of the ’930 Patent.
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`IV.
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`’930 PATENT AND TECHNOLOGY
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`SUMMARY OF THE
`BACKGROUND
`A. Description of the Alleged Invention of the ’930 Patent
`The ’930 Patent describes powering of 10/100 Ethernet compatible
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`equipment, although the claims are simply directed to powering a generic “access
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`device adapted for data transmission.” See Ex. DE-1001, Claim 6.
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`The ’930 Patent states there are two objects of the invention. The first stated
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`object is to “provide methods and apparatus for reliably determining if a remote
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`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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`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
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`standards.” Again, however, the claims themselves fail to mention Ethernet
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`segments or compliance with IEEE 802.3 standards.
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`The “Background” of the ’930 Patent acknowledges “[a] variety of
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`telecommunications equipment [was] remotely powered” at
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`the
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`time
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`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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`Page 12
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`the specification references “Telephones and Network Repeater devices” as
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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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
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`to add remotely powered devices to a data network is being pushed by the
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`convergence of voice and data technologies.” Id. at col. 1:33-35.
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`The ’930 Patent describes the detection of remote equipment for deciding
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`when to supply operational power by “delivering a low level current (approx. 20
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`ma) to the network interface and measuring a voltage drop in the return path.” Id.
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`at col. 2:66 – col. 3:2. If a “varying voltage level” is measured, this signifies that
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`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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`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 access
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`equipment is active, it may be monitored to detect when it is disconnected, in
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`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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`Page 13
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`representing two such examples. It is ISDN and Ethernet data networking prior art
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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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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. DE-1011, ¶ 17. ISDN was defined in 1988 by the Telephone and
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`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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`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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`U.S. Patent No. 6,218,930 (IPR2013-00385)
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`“desire to add remotely powered devices to a data network . . . .” Ex. DE-1001, col.
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`1:33-35. However, any such desire would have been satisfied by those previously-
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`developed systems that were already providing power and data to remote terminals
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`in an ISDN environment. And while the ’930 Patent acknowledges that a variety of
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`telecommunication systems are already providing remote powering, it attempts to
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`distinguish them by suggesting that those systems have not been used for data
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`communications, nor could they be due to the particulars of data communications.
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`See id. at col. 1:22-32. ISDN-based network developers, including Matsuno would
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`certainly disagree. Indeed, Matsuno forms the basis for several grounds of
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`rejection.
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`2.
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`Powering Ethernet Devices
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`a.
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`The Development of Ethernet
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`Ethernet was originally developed between 1973 and 1974 at XEROX
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`PARC labs as a multipoint communications method. See Ex. DE-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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`Dell’s Petition for Inter Partes Review of
`U.S. Patent No. 6,218,930 (IPR2013-00385)
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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 introduced
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`in 1989, transmitted packets out only onto the wiring segments of their specific
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`destinations. See id. at ¶ 21. By the mid-1990s, the use of hubs in Ethernet was
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`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.
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`Power Over Ethernet
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`Prior to the priority date of the ’930 Patent, there were already several
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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 patent
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`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, 1999.4 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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`1.” The Examiner’s search uncovered only 5 references, none of which were
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`applied against the claims. The ’930 Patent issued on April 17, 2001.
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`V.
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`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. DE-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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`4 The Patent Owner’s counsel in the Cisco Litigation informed the Court that the
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`alleged invention of the ’930 Patent was first “conceived” in the Summer of 1998.
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`Whether the Patent Owner can prove entitlement to such a timeframe is disputed,
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`but the admission means it can be no earlier.
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`station in Matsuno, would enable voice and data communication over telephone
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`lines. See Ex. DE-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. DE-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. DE-1001, col. 1:25-27), the ISDN system, such as that of
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`Matsuno, is exactly that.
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`Analysis of Matsuno’s Disclosure 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. DE-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.”
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`See infra § V.A.3, claim elements 6(a1) and
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`6(a2); see also Ex. DE-1011, ¶ 35.
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`The “providing” step requires certain
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`components to be in the data network,
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`which Matsuno discloses. Specifically,
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`Matsuno discloses a power supply circuit 1
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`that is part of a “switching station.” See id.
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`at ¶(0016). A PHOSITA would understand this to mean that the power supply
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`circuit disclosed by M