`
`
`By: Charles F. Wieland III, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`
`
`1737 King Street, Suite 500
`
`Alexandria, Virginia 22314-2727
`
`Telephone (703) 836-6620
`
`Facsimile (703) 836-2021
`charles.wieland@bipc.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`DELL INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2013-00385
`Patent 6,218,930
`Administrative Patent Judges Jameson Lee, Joni Y. Chang and Justin T. Arbes
`___________________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW FOR U.S. PATENT NO. 6,218,930
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`
`
`Table of Contents
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`Dell’s Petition should be denied because it is time-barred .............................. 1
`
`I.
`
`
`B.
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`A. Dell’s Petition is time-barred because it was filed more than
`one year after Dell was served with a complaint .................................. 1
`
`The exception in Section 315(b) does not apply because it
`permits late-filed requests for joinder, not late-filed petitions.............. 2
`
`II. Dell’s Petition fails to meet the minimum required threshold because Dell
`does not demonstrate a reasonable likelihood of prevailing as to any
`challenged claim ……………………………………………….....................8
`
`A. The ‘930 Patent ..................................................................................... 8
`
`
`
`
`
`
`B. Ground 1: The Challenged Claims are not anticipated by Matsuno .. 11
`
`1.
`
`Overview of Matsuno ............................................................... 12
`
`
`
`2. Matsuno does not disclose the claimed “low level
`current” and step [b] of Claim 6 ............................................... 13
`
`
`a.
`
`b.
`
`Reason 1: The current disclosed in
`Matsuno is sufficient to operate the access
`device .................................................................... 13
`
`Reason 2: The current disclosed in
`Matsuno is not below a threshold that
`will not damage a device that is not
`capable of accepting remote power ...................... 19
`
`
`i. The claimed “low level current”
`must be below a threshold level
`such that it would not damage a
`device that is not capable of
`accepting remote power via the
`data signaling pair ................................. 19
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`ii. Matsuno does not disclose or
`teach that the current generated
`from the 48 volts is below a
`threshold level such that it would
`not damage an access device that
`is not capable of accepting remote
`power via the data signaling pair .......... 25
`
`3. Matsuno does not disclose the claimed “sensing a
`voltage level on the data signaling pair.” .................................. 26
`
`
`
`a.
`
`The construction of “sensing a voltage level
`on the data signaling pair.” ................................... 28
`
`b. Matsuno does not disclose “sensing a
`voltage level on the data signaling pair.” ............. 35
`
`
`4. Matsuno does not disclose Claim 9 .......................................... 40
`
`D. Ground 2: The Challenged Claims are not obvious over De
`Nicolo in view of Matsuno .................................................................. 49
`
`
`E.
`
`Ground 3: Dell’s third ground was already rejected by the
`Board twice and has now been withdrawn by Dell ............................. 50
`
`
`Conclusion ..................................................................................................... 51
`
`
`
`V.
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`
`
`
`- ii -
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`The Patent Owner Network-1 respectfully requests that the Board deny
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`Dell’s Petition for Inter Partes Review filed against Network-1’s 6,218,930 Patent
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`for two reasons.1 Reason 1: Dell’s Petition is time-barred. Reason 2: None of the
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`three grounds in Dell’s Petition satisfy the minimum threshold required to initiate
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`this IPR.
`
`I.
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`Dell’s Petition should be denied because it is time-barred.
`
`A. Dell’s Petition is time-barred because it was filed more than one
`year after Dell was served with a complaint.
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`The controlling statute provides:
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`An inter partes review may not be instituted if the petition requesting
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`the proceeding is filed more than 1 year after the date on which…the
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`petitioner is served with a complaint alleging infringement of the
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`patent.
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`
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`35 U.S.C. § 315(b). Dell was served with a complaint on December 14, 2011. N1-
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`2001. Dell filed this petition on June 24, 2013, more than 18 months after Dell
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`
`1
`Although Dell’s Petition tracks Avaya’s Petition in IPR2013-0071 (“the
`
`Avaya IPR”) and Network-1 previously submitted a Preliminary Response to
`
`Avaya’s Petition, Network-1 has a statutory right to file this Preliminary Response
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`and additional arguments are presented. See 35 U.S.C. § 313 (“If an inter partes
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`review petition is filed … the patent owner shall have the right to file a preliminary
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`response.”) (emphasis added).
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`
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`
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`was served (and more than six months after the statutory deadline). Accordingly,
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`Dell’s petition is time-barred and should be rejected.
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`B.
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`The exception in Section 315(b) does not apply because it permits
`late-filed requests for joinder, not late-filed petitions.
`
`
`Section 315(b) provides the following exception: “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).” 35 U.S.C. § 315(b) (emphasis added). There are two competing
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`readings of this exception:
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`Reading 1: This exception permits a party to request joining another IPR after
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`the one-year statutory bar if all of the other statutory requirements,
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`including filing a petition before the statutory bar, are satisfied.
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`Reading 2: This exception permits a party to end around the one-year statutory
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`bar for filing a petition as long as the party files a motion for
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`joinder.
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`There are four reasons why Reading 1 is correct and Reading 2 is incorrect.
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`First, the statutory language demonstrates, and the legislative history
`
`confirms, that Reading 1 is correct. “Absent a clear indication of legislative intent
`
`to the contrary, the statutory language controls its construction.” Ford Motor
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`Credit Co. v. Cenance, 452 U.S. 155, 158 n.3 (1981). Here, the language of the
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`statute demonstrates that Reading 1 is correct because it applies “to a request for
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`2
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`joinder” filed after the 1-year date, not for a new petition filed after the 1-year
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`date: “The time limitation set forth in the preceding sentence shall not apply to a
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`request for joinder under subsection (c).” 35 U.S.C. § 315(b) (emphasis added).
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`Had the statute been intended to apply to late-filed petitions, it would have been
`
`written differently, e.g., “The time limitation set forth in the preceding sentence
`
`shall not apply to a new petition for inter partes review that is filed in connection
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`with a request for joinder under subsection (c).” While the statute allows for a late
`
`request for joinder, it provides no exception for a late-filed petition.
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`Moreover, there is no “clear indication of legislative intent to the contrary.”
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`Rather, the legislative history confirms that Reading 1 is correct. In particular, it
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`makes clear that Congress did not contemplate any exceptions for the one-year bar
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`for filing petitions:
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`• “[I]n his 2008 remarks on a substantially identical joinder provision in the
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`bill that he introduced that year, Senator Kyl commented ... time deadlines
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`for filing petitions must be complied with in all cases.” (N1-2002 at 613-
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`614) (emphasis added);
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`• “[T]he gist of these decisions is that a petition is properly filed when it is
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`delivered and accepted in compliance with applicable rules governing
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`fillings, though particular claims within filings be barred on other procedural
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`grounds, and that time deadlines for filling petitions must be complied with
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`3
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`in all cases.” (N1-2003 at S9988) (emphasis added).
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` Second, Reading 1 is correct because Reading 2 would lead to absurd
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`results. When interpreting statutes, “absurd results are to be avoided,” not adopted.
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`United States v. Wilson, 503 U.S. 329, 334 (1992). Under Reading 2, both of the
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`following scenarios (and absurd results) would be permitted under the statute.
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`Scenario 1: If there is a multi-defendant lawsuit, and only one defendant
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`initially files an IPR petition, the defendants can tie up the patent in IPR
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`proceedings for an indefinite period. For example, 18 months after Defendant 1
`
`files the first petition, Defendant 2 can file a new petition accompanied by a
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`joinder request. If that Petition is granted (which could take up to 6 months to
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`decide under normal timelines), Defendant 3 can file a new petition filed by a
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`joinder request. And so on, in a continuous string of follow-on IPR petitions. In
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`cases with fifteen defendants (which is not uncommon) this approach could tie up a
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`patent in IPR proceedings for years.
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`Scenario 2: As an extreme scenario, if there is a one defendant lawsuit, and
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`that defendant misses the one year statutory bar, he can file (a) a late petition, and
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`(b) a pro forma joinder request for another (unrelated) pending IPR proceeding.
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`Although the joinder request will of course be denied, merely filing the joinder
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`request excludes the petition from the 1-year bar. This allows a defendant to
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`circumvent the one year statutory bar whenever it chooses.
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`4
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`Because Reading 2 permits both of these absurd scenarios, it cannot be
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`adopted.
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`Third, Reading 1 is correct because, a “contrary conclusion [i.e., Reading 2]
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`would permit the … exception to swallow the rule.” Johnson v. California, 541
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`U.S. 428, 430 (2004). If an interpretation of an exception to a requirement renders
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`meaningless the requirement itself (i.e., “swallows the rule”), then that
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`interpretation of the exception cannot be correct. Here, Reading 2 renders
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`meaningless the requirement that an IPR petition must be filed within one year.
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`For example, as demonstrated above (in Scenarios 1 and 2), so long as a party files
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`a pro forma joinder request, which need not even be granted, it can file an IPR
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`petition at any time it chooses – e.g., one year after service of the complaint, three
`
`years after, etc. Because Reading 2 renders the one-year statutory bar for petitions
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`meaningless, it cannot be correct. Reading 1 must be adopted.
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`Fourth, Reading 1 is correct because Reading 2 is inconsistent with the
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`purpose of the statute as expressed in the statutory language. The IPR statutes
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`establish precise deadlines with the purpose of assuring that IPRs will not
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`unreasonably delay district court infringement lawsuits. See 35 U.S.C. § 315(b)
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`(an IPR petition must be filed within 1-year of being served); 35 USC § 316(a)(11)
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`(“requiring that the final determination in an inter partes review be issued not later
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`than 1 year after the date on which the Director notices the institution of a review
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`5
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`under this chapter” with the potential for a 6-month extension for good cause).
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`Reading 2 would not only undermine this purpose underlying the statute, but could
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`make it virtually impossible to meet these statutory requirements while
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`maintaining “a just, speedy, and inexpensive resolution of every proceeding.” 37
`
`CFR § 42.1(b).
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`Any reliance on a CFR regulation and prior Board decisions to support
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`Reading 2 cannot overcome the controlling statutory language.
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`CFR Regulation: To the extent that 37 CFR § 42.122(b) is inconsistent with
`
`the controlling statute, the statute controls. 37 CFR § 42.122(b) suggests that a
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`late-filed petition, accompanied by a request for joinder, may be proper: “The time
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`period set forth in §42.101(b) shall not apply when the petition is accompanied by
`
`a request for joinder.” 37 CFR § 42.122(b). Section 42.101(b) provides that a
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`petition is time-barred if it “is filed more than one year after the date on which the
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`petitioner… is served with a complaint alleging infringement of the patent.” 37
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`CFR § 42.101(b).
`
`If a CFR regulation is inconsistent with a statute, the statute controls. Belkin
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`Intern., Inc. v. Kappas, 696 F.3d 1379, 1384 (Fed. Cir. 2012) (“Statutes rank
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`higher than regulations.”); Caldera v. JS. Alberici Canst. Co., 153 F.3d 1381, 1383
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`n** (Fed. Cir. 1998) (“Statutes trump conflicting regulations.”). Moreover, a CFR
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`regulation cannot trump law because the USPTO is not authorized to prescribe
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`6
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`regulations that conflict with the statute. 35 U.S.C. § 2(b)(2) (“The Office … may
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`establish regulations, not inconsistent with law.”) Thus, if Section 42.122(b) is
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`inconsistent with 35 U.S.C. § 315(c), it is trumped by the statute. As set forth
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`above, 35 U.S.C. § 315(b) bars Dell’s Petition. Section 42.122(b) is subordinate to
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`the law (i.e., the statute) and cannot be followed if it contradicts the law.
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`Prior Board decision: IPR 2013-00109 Paper 15 is not precedent that a
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`petition filed outside the 1-year bar is permitted under Section 315(b) for two
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`reasons.
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`First, “[t]he parties did not actually litigate the matter so the stipulated
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`decision carries no precedential value.” Maes v. United States, 2010 U.S. Dist.
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`LEXIS 109205, *13 (D. Mont. 2010) (citing U.S. v. Int’l Bldg. Co., 345 U.S. 502
`
`(1953). In IPR 2013-00109, all parties agreed to the joinder and the issue of the
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`petition’s untimeliness was not litigated. See IPR2013-00109 Paper 15 at 2
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`(“Patent Owner has advised the Board that it does not oppose, and in fact
`
`encourages joinder.”). Because the issue was not in dispute, the prior decision has
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`no precedential value.
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`Second, because the untimeliness of the petition was not at issue, the Board
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`had no opportunity to hear arguments why the statutory interpretation that permits
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`a late-filed petition, accompanied by a joinder, is incorrect. As demonstrated
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`above, this statutory interpretation fails as a matter of law and logic.
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`7
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`Because Dell waited 18 months after being served before filing its Petition,
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`its Petition is time barred and must be rejected.
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`
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`II. Dell’s Petition fails to meet the minimum required threshold because
`Dell does not demonstrate a reasonable likelihood of prevailing as to any
`challenged claim.
`
`
`
`A.
`
`The ‘930 Patent.
`
`
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`Generally speaking, the ‘930 Patent teaches and claims a method in which
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`an Ethernet data node (e.g., switch) determines whether a connected access device
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`(e.g., VoIP telephone) is capable of accepting power over the Ethernet data
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`transmission signaling pairs, which is referred to as “remote power.” ‘930 Patent
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`(DE-1001), 1:41-43; id. Title (“Apparatus and method for remotely powering
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`access equipment over a 10-/100 switched Ethernet Network.”).
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`The ‘930 Patent addresses the problem of detecting whether a device
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`attached to Ethernet cables can accept remote power before sending remote power
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`that might otherwise damage connected equipment:
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`It is therefore an object of the invention to provide methods and
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`apparatus for reliably determining if a remote piece of equipment is
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`capable of accepting remote power.
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`
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`‘930 Patent 1:41-43 (emphasis added).
`
`The invention more particularly relates to apparatus and methods for
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`automatically determining if remote equipment is capable of remote
`
`8
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`
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`power feed and if it is determined that the remote equipment is able to
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`accept power remotely then to provide power in a reliable non-
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`intrusive way.
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`Id. at 1:14-19 (emphasis added).
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`The ‘930 Patent describes and claims a system that can (a) detect whether a
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`device is attached to the Ethernet cable and, in addition, (b) if a device is
`
`connected, determine whether the device can accept remote power:
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`[a] automatic detection of remote equipment being connected to the
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`network; [b] determining whether the remote equipment is capable of
`
`accepting remote power in a non-intrusive manner.
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`
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`‘930 Patent 1:53-56 (enumeration added); see also Zimmerman Decl. (DE-1011)
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`¶132 (“The ’930 Patent generally relates to powering remote equipment over a
`
`network. In particular, it relates to a method for automatically determining if
`
`remote equipment is capable of receiving a remote power feed and, if it is
`
`determined that the remote equipment is able to accept power remotely, then to
`
`provide power.”).
`
`Determining whether a remote device can accept remote power is a central
`
`
`2
`As the Board is aware, the Patent Owner took the deposition of Dr.
`
`Zimmerman as part of the Avaya IPR this past Tuesday, July 9, 2013. If the Board
`
`would like to review Dr. Zimmerman’s deposition transcript, the Patent Owner can
`
`provide a copy after it receives the official transcript.
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`9
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`
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`aspect of the invention because devices that can be connected to Ethernet cables
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`include both devices that can accept power and devices that cannot. For example,
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`the connection depicted in the preferred embodiment of the ‘930 Patent, an “RJ45
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`connector” (‘930 Patent 3:33-34), can be connected to both devices that can accept
`
`remote power through the Ethernet cables (e.g., certain VoIP telephones) and
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`devices that cannot accept remote power (e.g., computers). Ethernet devices were
`
`originally designed with no expectation that power would be delivered over the
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`Ethernet cable.
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`As set forth in Claim 6 of the ‘930 Patent, the claimed invention makes these
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`determinations by:
`
`
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`‘930 Patent, Claim 6, 4:60-68. If the sensing reveals that the access device can
`
`accept remote power, then the data node controls the power by providing operating
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`power over the data signaling pairs.
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`
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`The Board previously summarized the invention disclosed and claimed in
`
`the ‘930 Patent as follows:
`
`10
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`Avaya IPR Paper 18 (Decision) at 34.
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`
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`In Network-1’s Preliminary Response in the Avaya IPR, Network-1
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`explained the significant differences between the “low level current” approach and
`
`the approach taken in the prior art. See Avaya IPR Paper 16 (Preliminary
`
`Response) at 7-11.
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`B. Ground 1: The Challenged Claims are not anticipated by
`Matsuno.
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`
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`Dell’s first ground is that Claims 6 and 9 are anticipated by JP H10-13576
`
`(“Matsuno”) (DE-1002). Petition at 17-27. In this Section, Network-1 provides
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`brief background of Matsuno. Network-1 then demonstrates that Matsuno does not
`
`anticipate claims 6 and 9 of the ‘930 Patent for three reasons – Matsuno does not
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`disclose:
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`11
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`(1) the claimed “low level current” and step [b] of Claim 6;
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`(2) “sensing a voltage level on the data signaling pair” as required by step
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`[c] of Claim 6; and
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`(3) all elements of Claim 9.3
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`
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`
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`1.
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`Overview of Matsuno.
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`As illustrated in Figure 1, Matsuno
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`discloses a system involving an ISDN network
`
`that operates over standard telephone lines.
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`Matsuno (DE-1002), Figure 1. The system
`
`disclosed in Matsuno increases the power to a
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`device (e.g., DTE 3) connected to the telephone lines (12) if the local power supply
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`(11) fails. The remote device (3) would ordinarily be powered using local power
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`(11). When local power (11) is available to power the remote device (3), the
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`voltage on the telephone line (12) is the standard -48 volts delivered over telephone
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`lines. The current at -48 volts is sufficient to power NT1s connected to the ISDN.
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`See, e.g.,N1-2004 at 126 (“The minimum voltage at the NT1 required for correct
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`operation is 28V”).
`
`Because the system of Matsuno operates on a traditional telephone line
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`While Matsuno does not establish unpatentability for other reasons, this
`3
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`Preliminary Response only focuses on these key missing elements.
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`12
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`rather than a data network (see Zimmerman Decl. (DE-1011) ¶¶ 17, 32 (“ISDN
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`equipment enables both voice and data communication over telephone lines”)), it
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`was expected that devices connected to the network (e.g., NT1 (2) and DTE (3))
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`would be capable of accepting remote power via the telephone lines. As a result,
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`Matsuno shows no awareness of the need for detecting whether a device connected
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`to the telephone line is capable of accepting remote power, and does nothing to
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`address that need.
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`2. Matsuno does not disclose the claimed “low level current”
`and step [b] of Claim 6.
`
`
`Matsuno discloses two currents, one generated from -48 volts and one from
`
`-120 volts. Although the current generated from the -48 volts might be lower than
`
`the current generated from the -120 volts, it is not the claimed “low level current”
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`for two independent reasons:
`
` a. Reason 1: The current disclosed in Matsuno is
`sufficient to operate the access device.
`
`
`Under both the Board’s preliminary construction and Network-1’s proposed
`
`construction,4 the claimed “low level current” must be below a threshold level such
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`that it would not, by itself, operate the access device. See Avaya IPR Paper 18
`
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`Neither Dell nor Dell’s declarant (Dr. Zimmerman) proposed or identified
`4
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`any construction of the phrase “low level current.” See Petition 8-10; Zimmerman
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`Decl. (DE-1011) ¶24.
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`13
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`
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`(Decision) at 17 (“we interpret ‘low level current’ to mean a current (e.g.,
`
`approximately 2 mA) that is sufficiently low that, by itself, it will not operate the
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`access device.”).
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`In the Avaya IPR, the Board agreed with the Patent Owner that the phrase
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`“low level current” is a relative term of degree, and a result, should be interpreted
`
`to accomplish the purpose of the invention disclosed and claimed in the ‘930
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`Patent:
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`We agree with Patent Owner that ‘low level current’ in the context of
`
`claim 6 is a term of degree. Such terms require a standard for
`
`measuring the degree; otherwise the scope of what is claimed cannot
`
`be determined.
`
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`Avaya IPR Paper 18 (Decision) at 8. The Board also agreed with the Patent Owner
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`that, in the context of the ‘930 Patent, to accomplish the inventors’ purpose, the
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`phrase “low level current” should be construed such that it is at a level that is not
`
`sufficient to operate the access device: “The Specification therefore indicates that
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`the ‘low level current’ is sufficiently low that, by itself, it will not operate the
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`access device.” Id. at 9-10.
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`Neither Dell’s Petition (Petition at 22), nor the passages from Matsuno cited
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`in Dell’s Petition (Petition at 24-25), nor Dr. Zimmerman (Zimmerman Decl. (DE-
`
`1011) ¶40) state that the current generated by the -48 volts disclosed in Matsuno is
`
`not sufficient to, by itself, to operate the specific device disclosed in Matsuno.
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`14
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`To the contrary, the current generated by the -48 volts disclosed in Matsuno
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`is sufficient to, by itself, operate the specific access device disclosed in Matsuno.
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`According to Dell, The NT1 and DTE in Figure 1 (or 103 in Figure 11) are the
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`access devices disclose in Matsuno. See e.g., Petition at 18-19 (“Matsuno
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`describes several methods to remotely power a digital subscriber unit (NT1 2) and
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`subscriber terminal (DTE 3), which are ‘access equipment’ within an ISDN
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`network.”); id. at 21 (“access device (NT1/DTE)”).
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`Matsuno explicitly states that a current generated from 40 volts (i.e., a 40
`
`volt power supply) can operate the DTE (subscriber terminal) attached to the ISDN
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`lines: “When the commercial AC power source 111 is functioning normally, for
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`example, an AC current of 100 V is rectified in the phantom power supply part 112
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`and is converted to a prescribed voltage, for example, a DC voltage of 40 V, for
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`use as the local power supply that is supplied to the subscriber terminal 103.”
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`Matsuno (DE-1004) at (0004) (emphasis added). According to the disclosure in
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`Matsuno, an access device can operate at a current generated from 40 volts.
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`The lower voltage generated by the circuit in Matsuno of 48 volts is more
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`than sufficient to operate a device that can operate on 40 volts. Because a voltage
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`of 48 volts can provide more power to a given load than a voltage of 40 volts, the
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`lower voltage of 48 volts is “sufficient, by itself, to operate the access device” and
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`therefore, the current generated from such a voltage does not qualify as the claimed
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`“low level current.” Matsuno confirms that, based on the lower voltage level V2,
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`up to 48 volts are delivered to the home of the subscriber to be used by the access
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`device. See Matsuno (DE-1004) at (0026) (“[t]he low voltage is supplied to the
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`digital subscriber line. The voltage to ground or the line voltage of the digital
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`subscriber line 12 that runs into the home of the subscriber is thus at approximately
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`48 V.”);
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`In its Decision in the Avaya IPR, the Board stated:
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`Whether the current in Matsuno would be sufficient for ‘conventional’
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`devices in other contexts is not the issue. The issue is whether the
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`specific current in Matsuno is sufficient, by itself, to operate the specific
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`access device in Matsuno such that it would be more than a ‘low level
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`current’ as recited in claim 6.
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`Avaya IPR Paper 18 (Decision) at 17 (emphasis in original). Neither Dell nor its
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`expert asserts that the any current disclosed in Matsuno is insufficient to operate
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`“the specific access device in Matsuno.” As demonstrated above, the specific
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`current disclosed in Matsuno (i.e., the current generated from the 48 volts) is
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`sufficient, by itself, to operate the specific access device (DTE 3) in Matsuno that
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`requires a current generated from 40 volts.
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`Matsuno does not expressly state that the current generated from the 48 volts
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`is insufficient to operate the specific access device disclosed in Matsuno. And
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`such a current is not inherent. “Inherent anticipation requires that the missing
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`characteristic is necessarily present . . . in the single anticipating reference.” Glaxo
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`Group Limited v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004) (emphasis
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`added). An NT1 that cannot operate based on a current generated from 48 volts is
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`not “necessarily present” because NT1s can operate based on currents generated
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`from much lower voltages. N1-2004 at 126 (“The minimum voltage at the NT1
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`required for correct operation is 28V”).
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`So why does Matsuno also disclose a higher voltage – 120 volts – if only 48
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`volts is needed to operate an NT1 and DTE? We can speculate as to the possible
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`reasons, for example, (a) some devices need extra power for certain functionality;
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`(b) some devices operate better or more efficiently at higher voltages; (c) higher
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`power allows NT1s to power additional premises equipment; or (d) higher power
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`allows devices to operate at full functionality over very long subscriber loop runs
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`that have higher line losses. For purposes of this Petition, however, such
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`speculation is irrelevant. What is relevant (and dispositive) is that Matsuno does
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`not disclose that the current generated from the 48 volts is insufficient to power the
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`access device disclosed and such a current is not inherent.
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`In its Decision in the Avaya IPR, the Board stated:
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`Patent Owner does not point to any disclosure in Matsuno itself
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`indicating that the current generated from low voltage V2 (-48 V) is
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`sufficient, by itself, to operate network terminal device 2.
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`Avaya IPR Paper 18 (Decision) at 17. Patent Owner respectfully provides two
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`responses.
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`First, it is not a patent owner’s burden to demonstrate what a reference does
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`not disclose (i.e., it is not the Patent Owner’s burden to demonstrate that Matsuno
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`does not disclose the claimed “low level current”). It is a petitioner’s burden to
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`demonstrate that a reference does disclose the claimed element. See Microsoft
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`Corp. v. Proxyconn, Inc., Case IPR2012-00026 (Paper 17) at 10 (P.T.A.B. Dec. 21,
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`2012) (“[S]ome analysis of the challenged claims in relation to the prior art is
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`necessary to meet Petitioner’s burden under 35 U.S.C. § 314(a).”) (emphasis
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`added). In this case, it is Dell’s burden to demonstrate that Matsuno teaches that
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`the current generated from the 48 volts is insufficient to operate the access device.
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`Dell has not satisfied its burden. Neither Dell’s Petition (Petition at 22), nor the
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`passages from Matsuno cited in Dell’s Petition (Petition at 24-25), nor Dr.
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`Zimmerman (Zimmerman Decl. (DE-1011) ¶40) even assert that the current
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`generated by the 48 volts disclosed in Matsuno is not sufficient to, by itself,
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`operate the specific device disclosed.
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`Second, as demonstrated above, Network-1 can point to disclosures in
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`Matsuno indicating that the current generated from the lower voltage V2 (-48) is
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`sufficient, by itself, to operate subscriber terminal 103: “a DC voltage of 40 V, for
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`use as the local power supply that is supplied to the subscriber terminal 103.”
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`Matsuno (DE-1004) at (0004). Because the power generated by 48 volts is greater
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`than 40 volts and the lower voltage level generates “approximately 48 V” at the
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`home of the subscriber (id. at (0026)), the current generated from the 48 volts is
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`sufficient to power the subscriber terminal.
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`In its decision in the Avaya IPR, the Board stated: “Patent Owner
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`acknowledges that the current generated from low voltage V2 (-48 V) in Matsuno
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`may not be able to fully power all connected ISDN equipment.” Avaya IPR Paper
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`(Decision) at 17, fn. 2. A “low level current” is a current that is “sufficiently low
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`that, by itself, it will not operate the access device” (Board’s construction) not a
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`current that is “sufficiently low that, by itself, it will not fully operate some
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`potential connected access devices under some circumstances.” And, as the Board
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`observed, the issue is not whether the current can operate “all connected ISDN
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`equipment” but rather the specific access device disclosed in Matsuno.
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`b.
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`Reason 2: The current disclosed in Matsuno is not
`below a threshold that will not damage a device that is
`not capable of accepting remote power.
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`The current generated from V2 (the -48 volts) disclosed in Matsuno is not the
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`claimed “low level current” because it is not below a threshold level that will not
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`damage a device that is not capable of accepting remote power.
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`i.
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`The claimed “low level current” must be below
`a threshold level such that it would not damage
`a device that is not capable of accepting remote
`power via the data signaling pair.
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`In addition to being sufficiently low that, by itself, it will not operate the
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`access device, the claimed “low level current” must be sufficiently low that it will
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`not damage a device that is not capable of accepting remote power,5 for two
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`reasons.
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`Reason 1: The purpose of the invention disclosed and claimed in the ‘930
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`Patent would be undermined if the claimed “low level current” used to determine
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`whether the access device could accept remote power were sufficient to damage an
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`access device that is not capa