Paper 16
`Entered: July 29, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

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`Case IPR2013-00385
`Patent 6,218,930
`
`
`Dell Inc. (“Dell”) filed a Petition (Paper 2) (“Pet.”) to institute an inter
`partes review of claims 6 and 9 of Patent 6,218,930 (the “’930 patent”)
`pursuant to 35 U.S.C. § 311 et seq. and a motion for joinder with Case
`IPR2013-00071 (Paper 4) (“Mot.”). Patent Owner Network-1 Security
`Solutions, Inc. filed a preliminary response (Paper 14) (“Prelim. Resp.”) to
`the Petition. We have jurisdiction under 35 U.S.C. § 314. For the reasons
`that follow, the Board has determined to institute an inter partes review.1
`
`
`I. BACKGROUND
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a):
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`Dell challenges claims 6 and 9 of the ’930 patent as anticipated under
`35 U.S.C. § 102(b) and as obvious under 35 U.S.C. § 103(a). Pet. 7; Paper
`11. We grant the Petition as to claims 6 and 9 on those grounds as discussed
`below.
`
`
`A. Related Case IPR2013-00071
`On December 5, 2012, Avaya Inc. (“Avaya”) filed a petition to
`institute an inter partes review of claims 6 and 9 of the ’930 patent, asserting
`five grounds of unpatentability. IPR2013-00071, Paper 1. On May 24,
`
`
`1 In a decision being entered concurrently, Dell’s motion for joinder is
`granted and this proceeding is joined with Case IPR2013-00071.
`2
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`2013, the Board granted the petition and instituted an inter partes review on
`the following grounds:
`Claims 6 and 9 under 35 U.S.C. § 102(b) as anticipated
`by Japanese Unexamined Patent Application Publication No.
`H10-13576 (“Matsuno”); and
`Claims 6 and 9 under 35 U.S.C. § 103(a) as unpatentable
`over Patent 6,115,468 (“De Nicolo”) in view of Matsuno.
`IPR2013-00071, Paper 18 at 29 (“’71 Dec.”). Avaya’s request for rehearing
`as to a portion of the Board’s decision was denied. IPR2013-00071, Paper
`32.
`
`Dell challenges claims 6 and 9 on the same grounds on which a trial
`was instituted in Case IPR2013-00071, and the arguments made by Dell in
`its Petition appear to be identical to those made by Avaya. See Pet. 7; Paper
`11; compare Pet. 17-35, with IPR2013-00071, Paper 1 at 17-26, 36-45. Dell
`also submitted a declaration from Dr. George A. Zimmerman that contains
`essentially the same testimony as the declaration of Dr. Zimmerman
`submitted by Avaya, but removes testimony regarding prior art references on
`which a trial was not instituted in Case IPR2013-00071. Compare Ex. 1011,
`with IPR2013-00071, Ex. 1011.
`
`
`B. The ’930 Patent (Ex. 1001)
`The ’930 patent, entitled “Apparatus and Method for Remotely
`Powering Access Equipment Over a 10/100 Switched Ethernet Network,”
`issued on April 17, 2001 based on Application 09/520,350, filed March 7,
`2000, which claims priority to Provisional Application 60/123,688, filed
`Mar. 10, 1999.
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`The ’930 patent relates to “the powering of 10/100 Ethernet
`compatible equipment,” specifically “automatically determining if remote
`equipment is capable of remote power feed and if it is determined that the
`remote equipment is able to accept power remotely then to provide power in
`a reliable non-intrusive way.” Col. 1, ll. 13-19. The patent describes how it
`was generally known in the prior art to power telecommunications
`equipment, such as telephones, remotely, but doing so had not “migrated to
`data communications equipment” due to various problems, such as the high
`power levels required by data communications equipment. Col. 1, ll. 22-32.
`The patent describes a need in the art to power data communications
`equipment remotely and to “reliably determin[e] if a remote piece of
`equipment is capable of accepting remote power.” Col. 1, ll. 42-44.
`Figure 3 of the patent is reproduced below:
`
`
`Figure 3 depicts a remote telephone 62 capable of receiving and transmitting
`both voice and data. Col. 3, ll. 60-66. Telephone 62 is connected to access
`node 64 at the customer’s premises, and access node 64 is connected to one
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`of the ports of Ethernet switch 68 via wiring 66 comprising “a Category 5
`Ethernet 100BaseX cable of 4 sets of unshielded twisted pairs.” Id.
`Ethernet switch 68 comprises an automatic remote power detector 22
`(shown in Fig. 1) and remote power supply 34 (shown in Fig. 2). Col. 4,
`ll. 1-4.
`The preferred embodiment described in the ’930 patent operates as
`follows. A remote access device, such as the telephone shown in Figure 3, is
`normally powered by “an ac transformer adapter plugged in to the local 110
`volt supply,” but may or may not be capable of being powered remotely.
`Col. 2, ll. 40-44. The system detects whether the access device is capable of
`being powered remotely by “delivering a low level current (approx. 20 ma)”
`over existing twisted pairs of an Ethernet cable used for data signaling and
`“measuring a voltage drop in the return path.” Col. 2, l. 66-col. 3, l. 2; col.
`3, ll. 44-48. If there is no voltage drop or a fixed voltage level is detected,
`the device is not capable of accepting remote power. Col. 3, ll. 2-11. If a
`varying or “sawtooth” voltage level occurs (caused by the access device
`repeatedly beginning to start up but being “unable to sustain the start up”
`due to the low current level), the device is capable of accepting remote
`power. Col. 3, ll. 12-22. The system then increases the power being
`supplied remotely to the access device. Id. Once the access device is
`operating under remote power, the system looks for removal of the access
`device and decreases the power being supplied when the device is no longer
`connected. Col. 3, ll. 49-58.
`
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`
`C. The Challenged Claims
`Claims 6 and 9 of the ’930 patent recite:
`6. Method for remotely powering access equipment in a
`data network, comprising,
`providing a data node adapted for data switching, an
`access device adapted for data transmission, at least one data
`signaling pair connected between the data node and the access
`device and arranged to transmit data therebetween, a main
`power source connected to supply power to the data node, and a
`secondary power source arranged to supply power from the data
`node via said data signaling pair to the access device,
`delivering a low level current from said main power
`source to the access device over said data signaling pair,
`sensing a voltage level on the data signaling pair in
`response to the low level current, and
`controlling power supplied by said secondary power
`source to said access device in response to a preselected
`condition of said voltage level.
`9. Method according to claim 6, including the step of
`continuing to sense voltage level and to decrease power from
`the secondary power source if voltage level drops on the data
`signaling pair, indicating removal of the access device.
`
`
`D. The Prior Art
`Dell relies on the following prior art:
`1. Patent 6,115,468, filed Mar. 26, 1998, issued Sept. 5,
`2000 (“De Nicolo”) (Ex. 1007); and
`2. Japanese Unexamined Patent Application Publication
`No. H10-13576, published Jan. 16, 1998 (“Matsuno”)
`(Ex. 1004).2
`
`2 We refer to “Matsuno” as the English translation (Ex. 1004) of the original
`reference (Ex. 1002). Dell provided an affidavit attesting to the accuracy of
`the translation. See Ex. 1003; 37 C.F.R. § 42.63(b).
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`E. The Asserted Grounds
`Dell challenges claims 6 and 9 of the ’930 patent on the following
`grounds:
`Claims 6 and 9 under 35 U.S.C. § 102(b) as being anticipated by
`Matsuno; and
`Claims 6 and 9 under 35 U.S.C. § 103(a) as being unpatentable over
`De Nicolo in view of Matsuno.3
`
`
`F. Claim Interpretation
`Consistent with the statute and legislative history of the America
`Invents Act (AIA), the Board will interpret claims using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).
`There is a “heavy presumption” that a claim term carries its ordinary
`and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1366 (Fed. Cir. 2002). However, a “claim term will not receive its
`ordinary meaning if the patentee acted as his own lexicographer and clearly
`set forth a definition of the disputed claim term in either the specification or
`prosecution history.” Id. “Although an inventor is indeed free to define the
`specific terms used to describe his or her invention, this must be done with
`reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). Also, we must be careful not to read a
`particular embodiment appearing in the written description into the claim if
`
`3 Dell in its Petition also challenged claims 6 and 9 under 35 U.S.C. § 103(a)
`as being unpatentable over Patent 5,991,885 (“Chang”) (Ex. 1006) in view
`of De Nicolo, but later withdrew the ground. See Pet. 7, 35-46; Paper 11.
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`the claim language is broader than the embodiment. See In re Van Geuns,
`988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`the claims from the specification.”).
`We construed various limitations of claims 6 and 9 in Case
`IPR2013-00071. See ’71 Dec. 6-14; IPR2013-00071, Paper 21. Dell makes
`the same claim interpretation arguments as Avaya did in that proceeding.
`Compare Pet. 8-11, with IPR2013-00071, Paper 1 at 7-10. Network-1 in its
`preliminary response argues that one of the terms construed in Case
`IPR2013-00071 (“low level current”) should be interpreted differently, and
`an additional phrase (“sensing a voltage level on the data signaling pair”)
`should be interpreted, but does not propose interpretations for any other
`terms. See Prelim. Resp. 19-25, 28-35. We incorporate by reference our
`previous analysis, see ’71 Dec. 6-14; IPR2013-00071, Paper 21, and address
`Network-1’s additional arguments below.
`For purposes of this decision, we construe certain claim limitations as
`follows:
`
`
`1. “Low Level Current” (Claim 6)
`Claim 6 recites “delivering a low level current from said main power
`source to the access device over said data signaling pair.” In our previous
`decision, we interpreted “low level current” to mean a current (e.g.,
`approximately 20 mA) that is sufficiently low that, by itself, it will not
`operate the access device. ’71 Dec. 7-10; IPR2013-00071, Paper 21. Dell
`does not propose a definition for “low level current.”
`Network-1 argues that “low level current” means a current that is
`(1) sufficiently low that, by itself, it will not operate the access device, and
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`(2) sufficiently low that it will not “damage an access device that is not
`capable of accepting remote power.”4 Prelim. Resp. 13-25. Network-1
`contends that the purpose of the claimed “low level current” is to determine
`whether an access device is capable of accepting remote power before
`providing the remote power, and that purpose would be undermined if the
`“low level current” is sufficient to damage a device not capable of accepting
`remote power. Id. at 20-23. According to Network-1, “[i]f it were
`acceptable to damage devices not designed to accept remote power, there
`would be no reason to use a low level current detection process at all; the
`system could simply skip the detection steps and deliver operating power to
`all access devices.” Id. at 21. Network-1 also points to the statement in the
`Specification that the determination of whether an access device is capable
`of accepting remote power is done in a “non-intrusive manner.” Id. at 23-25
`(citing Ex. 1001, Abstract, col. 1, ll. 54-56). Network-1 argues that
`“non-intrusive” means “testing that does not damage or destroy the device
`being tested,” citing a book and unrelated patent application publication for
`the alleged meaning of “non-intrusive.” Id. (citing Exs. 2005, 2006).
`We disagree with Network-1’s proposed interpretation. While the
`Specification describes a process for determining whether an access device
`is “capable of accepting remote power” through the use of a “low level
`current,” the “low level current” is not tied to any measurement standard
`based on damage. See, e.g., Ex. 1001, col. 1, ll. 41-43; col. 2, l. 66-col. 3,
`l. 27. Indeed, the word “damage” does not appear in the Specification.
`
`4 Network-1 made a similar argument in Case IPR2013-00071, which we
`rejected. See IPR2013-00071, Paper 16 at 24 (arguing that the current must
`be sufficiently low to not “damage an access device that is not designed to
`accept power through the data signaling pair”); ’71 Dec. 7-10.
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`Thus, we are not persuaded that “low level current” should be defined in
`terms of damage to an access device.
`We also are not persuaded that the use of the word “non-intrusive” in
`the Specification implies a measurement standard for “low level current.”
`As explained in our decision in Case IPR2013-00071, the Specification
`indicates clearly in the portion describing the “low level current” that the
`access device does not operate based on just the low level current used for
`detection, but does operate when the power is increased by a certain amount.
`See ’71 Dec. 8-10; Ex. 1001, col. 2, l. 66-col. 3, l. 52. By contrast, the
`“non-intrusive” language cited by Network-1 appears in other portions of the
`Specification and is not tied to the “low level current.” See Ex. 1001,
`Abstract; col. 1, ll. 54-56. Moreover, even if the “non-intrusive” language in
`the Specification could be read as defining the claimed “low level current,”
`we are not persuaded that “non-intrusive” in the context of the ’930 patent
`means a current sufficiently low not to damage an access device incapable of
`accepting remote power. The evidence submitted by Network-1 relates to
`testing the integrity of physical structures, not electrical circuits. See Ex.
`2005 (entitled “Fracture Mechanics of Metals, Composites, Welds, and
`Bolted Joints”); Ex. 2006 (entitled “An Apparatus and Method for Testing a
`Socket on a Burn-In Board Using a Flex Strip Probe”). Accordingly, we do
`not include any standard based on damage in our interpretation of “low level
`current.”
`Applying the broadest reasonable interpretation of the claim in light of
`the Specification, we interpret “low level current” to mean a current (e.g.,
`approximately 20 mA) that is sufficiently low that, by itself, it will not
`operate the access device.
`
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`
`2. “Sensing a Voltage Level on the Data Signaling Pair” (Claim 6)
`Claim 6 recites “sensing a voltage level on the data signaling pair in
`response to the low level current.” Dell does not propose a definition for
`“sensing a voltage level on the data signaling pair.” Network-1 argues that
`the phrase requires that the low level current be delivered over the data
`signaling pair in “common mode” such that “the voltage on each
`corresponding point on each wire constituting the data signaling pair is the
`same.” Prelim. Resp. 28-35. Network-1 cites Figure 2 of the Specification
`of the ’930 patent as illustrating the “common mode” delivery of current
`with the voltage on wires 40/42 of one pair being the same and the voltage
`on wires 48/50 of another pair also being the same, and the difference
`between those voltages generating the power delivered to the access device.
`Id. at 29-30. Network-1 contrasts “common mode” current delivery with
`“differential mode” delivery where “the voltage on one wire of the data
`signaling pair is different than the voltage on the other wire” and the
`“measured voltage is the potential ‘difference’ between the two wires.” Id.
`at 30-33. Network-1 points out that claim 6 recites “on the data signaling
`pair,” not “on one wire of the data signaling pair” or “across or between the
`data signaling pair,” and argues that the concept of voltage “on” a pair is
`meaningless when the voltage on each wire is different. Id. at 33-35.
`We disagree with Network-1’s proposed interpretation. Claim 6 does
`not recite the term “common mode” or state that the voltage on each of the
`two wires of the data signaling pair must be the same. Nor does the
`Specification so define “sensing a voltage level on the data signaling pair.”
`Rather, the Specification describes in broad terms “measuring a voltage drop
`in the return path” to look for a “‘sawtooth’ voltage level in the return
`
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`path.” See Ex. 1001, col. 2, l. 66-col. 3, l. 17 (emphasis added). The
`Specification also describes Figure 2 as an exemplary embodiment of a
`remote power supply; it does not define the claimed phrase in terms of what
`is depicted in the Figure 2 embodiment. See id., col. 3, ll. 28-48; col. 4,
`ll. 6-8; In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004) (“Absent claim
`language carrying a narrow meaning, the PTO should only limit the claim
`based on the specification or prosecution history when those sources
`expressly disclaim the broader definition.”). Finally, while Network-1
`suggests that “common mode” requires multiple pairs, claim 6 allows for
`only a single pair by reciting “at least one data signaling pair.” See Prelim.
`Resp. 30 (arguing that “[f]our wires (two data signaling pairs) are needed to
`power the access device – with one pair at one voltage and a second pair at a
`different voltage than the first pair”).
`Applying the broadest reasonable interpretation of the claim in light of
`the Specification, we interpret “sensing a voltage level on the data signaling
`pair” to mean sensing a voltage at a point on the pair of wires used to
`transmit data. We do not interpret the phrase to require “common mode”
`current delivery or that the voltage on each of the two wires of the data
`signaling pair be the same.
`
`
`3. Other Terms
`As explained in our previous decision, we interpret “data node
`adapted for data switching” to mean a data switch or hub configured to
`communicate data using temporary rather than permanent connections with
`other devices or to route data between devices; interpret “data signaling
`pair” to mean a pair of wires used to transmit data; and do not interpret claim
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`6 as requiring the “main power source” and “secondary power source” to be
`physically separate devices. ’71 Dec. 10-14. All other terms in claims 6 and
`9 are given their ordinary and customary meaning and need not be further
`construed at this time.
`
`
`II. ANALYSIS
`We turn now to Dell’s asserted grounds of unpatentability and
`Network-1’s arguments in its preliminary response to determine whether
`Dell has met the threshold standard of 35 U.S.C. § 314(a).
`
`
`A. Whether the Petition Should be Denied as Time-Barred
`Under 35 U.S.C. § 315
`Network-1 argues in its preliminary response that the Petition should
`be denied as time-barred under 35 U.S.C. § 315(b) because Dell was served
`with a complaint alleging infringement of the ’930 patent more than one
`year before filing the Petition in the instant proceeding. Prelim. Resp. 1-8.
`In a decision being entered concurrently, Dell’s motion for joinder is
`granted and this proceeding is joined with Case IPR2013-00071. As
`explained in that decision, the exception in the second sentence of Section
`315(b) applies and Dell’s Petition is not time-barred.
`
`
`B. Grounds Based on Matsuno (Ex. 1004)
`Dell contends that claims 6 and 9 are anticipated by Matsuno under
`35 U.S.C. § 102(b). Pet. 17-26. The Board instituted a trial on this ground
`in Case IPR2013-00071. ’71 Dec. 15-18, 29. We incorporate by reference
`our previous analysis regarding Matsuno, see id. at 15-18, and are persuaded
`that, like Avaya, Dell has established a reasonable likelihood of prevailing
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`on its assertion that claims 6 and 9 are anticipated by Matsuno. Network-1
`in its preliminary response makes additional arguments not made in Case
`IPR2013-00071, which we address below.
`Matsuno discloses a “power supply circuit that switches power supply
`voltage and supplies the desired power while ensuring safety.” Matsuno,
`Abstract. Figure 1 of Matsuno is reproduced below:
`
`
`Figure 1 depicts a network terminal device 2 in communication with power
`supply circuit 1 over digital subscriber line 12 in an Integrated Services
`Digital Network (ISDN). Id. ¶ 16. Network terminal device 2 is typically
`powered locally by AC power supply 11. Id. ¶¶ 4, 8. When local power is
`available, power supply circuit 1 in the ISDN “switching station” provides
`over digital subscriber line 12 a current generated from “low voltage V2,”
`which may be -48 V. Id. ¶¶ 7, 18-20. When local power stops, loop
`detection part 4 of power supply circuit 1 detects the change and the voltage
`is switched to “high-voltage V1,” which may be -120 V, “thereby allowing
`the desired power to be supplied from the station.” Id.
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`
`Network-1 makes four arguments. First, Network-1 contends that
`Matsuno does not disclose delivering a “low level current,” as recited in
`claim 6, because the current generated from low voltage V2 (-48 V) is
`sufficient to operate the device. Prelim. Resp. 13-19. Network-1 cites
`paragraph 4 of Matsuno, which reads:
`When the commercial AC power source 111 is
`functioning normally, for example, an AC current of 100 V is
`rectified in the phantom power supply part 112 and is converted
`to a prescribed voltage, for example, a DC voltage of 40 V, for
`use as the local power supply that is supplied to the subscriber
`terminal 103. Switching to the aforementioned station power
`supply occurs with shutdown of the commercial AC power
`supply, and power sufficient to allow minimal communication
`on the digital subscriber terminal 103 is thus supplied.
`Matsuno ¶ 4 (emphasis added); see Prelim. Resp. 13-19. Network-1
`contends that based on this disclosure, 40 volts is sufficient to operate
`subscriber terminal 103 and, therefore, the higher voltage of 48 volts must
`also be sufficient. Prelim. Resp. 13-19.
`We are not persuaded by Network-1’s argument. As explained in our
`previous decision, low voltage V2 (-48 V) is applied when the device is
`operating under local power, but high voltage V1 (-120 V) is applied if the
`local power fails, providing the “desired” power for communication. See
`’71 Dec. 16-18; Matsuno ¶¶ 7-8, 18-22, 35, 56 (describing the “low voltage
`power supply” and “high voltage power supply”). If low voltage V2 (-48 V)
`was sufficient, by itself, for the device to operate, presumably there would
`be no need to switch to high voltage V1 (-120 V) when local power is
`unavailable. This is confirmed by the second sentence of Matsuno’s
`paragraph 4 above, which states that when local power is shut down, the
`system switches to station power whereby “power sufficient to allow
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`minimal communication on the digital subscriber terminal 103 is thus
`supplied” (implying that the power supplied when local power is operational
`would not be sufficient to allow minimal communication). See Matsuno ¶ 4.
`We also note that the “DC voltage of 40 V” in Matsuno’s paragraph 4
`cited by Network-1 is a converted voltage for supplying power from
`phantom power supply part 112 of network terminal device 102 to
`subscriber terminal 103. See id. ¶¶ 3-4. Dell identifies the “network
`terminal device, either alone or in combination with the [subscriber
`terminal],” as the “access device” in claim 6. Pet. 19-20, 23 (citing Ex. 1011
`¶ 35). Network-1 does not explain sufficiently how the converted voltage is
`indicative of what current would be sufficient by itself to operate network
`terminal device 102, or network terminal device 102 in combination with
`subscriber terminal 103. Dell’s analysis, supported by the testimony of Dr.
`Zimmerman, is sufficient at this stage of the proceeding to show that
`Matsuno discloses delivering a “low level current.”
`Second, Network-1 argues that Matsuno does not disclose delivering a
`“low level current” because the current generated from low voltage V2
`(-48 V) in Matsuno is sufficient to “damage” devices that are not capable of
`accepting remote power. Prelim. Resp. 25-26. This argument is not
`persuasive because, as explained above, we do not interpret “low level
`current” as imposing any measurement standard based on damage to the
`access device.
`Third, Network-1 argues that Matsuno does not disclose “sensing a
`voltage level on the data signaling pair.” Id. at 26-40. Patent Owner’s
`argument is premised on its proposed interpretation of the phrase as
`requiring “common mode” current delivery where the voltage on each wire
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`of the pair is the same. Id. As explained above, we disagree with Patent
`Owner’s proposed interpretation and do not interpret the phrase as requiring
`the same voltage on each wire. Based on our interpretation, Dell has made a
`threshold showing with respect to the “sensing” limitation of claim 6. See,
`e.g., Pet. 21-22, 25; Ex. 1011 ¶ 40; Matsuno ¶¶ 19, 33 (“the voltages at both
`terminals of the constant-current circuits 21a and 21b are detected by the
`voltage detection parts 31a and 31b [and] the DC loop of the network
`terminal device 2 is detected”). On this record, we are persuaded that Dell’s
`analysis, supported by the testimony of Dr. Zimmerman, is sufficient to
`demonstrate a reasonable likelihood that claim 6 is anticipated by Matsuno.
`Fourth, as to dependent claim 9, Network-1 argues that Matsuno does
`not disclose the additional steps of “continuing to sense voltage level and to
`decrease power from the secondary power source if voltage level drops on
`the data signaling pair, indicating removal of the access device.” Prelim.
`Resp. 40-49. We have considered Network-1’s arguments but, at this stage
`of the proceeding, are persuaded that Dell has made a threshold showing as
`to claim 9. For instance, Network-1 contends that if the network terminal
`device in Matsuno were removed, the voltage across the data signaling pair
`would increase, not decrease as required by claim 9. Id. at 45-49 (arguing
`that the situation would be the same as when switch 8 of Matsuno opens).
`Dr. Zimmerman, however, testifies that the voltage would decrease:
`If the “network terminal device (NT1)2” in Matsuno
`were disconnected or otherwise removed, the circuit would be
`open and no current would flow. The voltage would
`correspondingly drop to zero. The disconnection or removal of
`the terminal device would be understood to result in the voltage
`decreasing to zero, which would indicate the removal of
`equipment, as recited in claim 9 of the ‘930 Patent.
`
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`Case IPR2013-00385
`Patent 6,218,930
`
`Ex. 1011 ¶ 42 (emphasis added). On this record, and in the absence of
`evidence to the contrary beyond Network-1’s attorney argument, Dr.
`Zimmerman’s testimony is persuasive. We also note that Network-1’s
`argument that Matsuno “teaches away” from the additional steps recited in
`claim 9 is irrelevant to Dell’s ground based on anticipation. See Prelim.
`Resp. 45-49; Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,
`1361 (Fed. Cir. 1998) (“the question whether a reference ‘teaches away’
`from the invention is inapplicable to an anticipation analysis”).
`We are persuaded by the analysis set forth in the Petition and
`accompanying declaration that there is a reasonable likelihood that Dell will
`prevail on its assertion that claims 6 and 9 are anticipated by Matsuno under
`35 U.S.C. § 102(b).
`
`
`C. Grounds Based on De Nicolo (Ex. 1007)
`Dell contends that claims 6 and 9 are unpatentable over De Nicolo in
`view of Matsuno under 35 U.S.C. § 103(a). Pet. 27-35. The Board
`instituted a trial on this ground in Case IPR2013-00071. ’71 Dec. 18-22, 29.
`Network-1’s sole argument with respect to the ground is that Matsuno fails
`to teach the claim limitations addressed above. Prelim. Resp. 49-50. Dell
`has made a threshold showing that Matsuno teaches the limitations for the
`reasons explained above.
`We incorporate by reference our previous analysis regarding the
`combination of De Nicolo and Matsuno, see ’71 Dec. 18-22, and are
`persuaded by the analysis set forth in the Petition and accompanying
`declaration that there is a reasonable likelihood that Dell will prevail on its
`assertion that claims 6 and 9 are unpatentable over De Nicolo in view of
`
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`Case IPR2013-00385
`Patent 6,218,930
`
`Matsuno under 35 U.S.C. § 103(a).
`
`
`D. Conclusion
`We conclude that Dell has demonstrated a reasonable likelihood of
`prevailing on the following grounds of unpatentability asserted in the
`Petition:
`Claims 6 and 9 under 35 U.S.C. § 102(b) as being anticipated by
`Matsuno; and
`Claims 6 and 9 under 35 U.S.C. § 103(a) as being unpatentable over
`De Nicolo in view of Matsuno.
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is granted as to claims 6 and 9 of the ’930
`patent;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’930 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the grounds
`identified above and no other grounds set forth in the Petition as to claims
`6 and 9 are authorized.
`
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`
`Case IPR2013-00385
`Patent 6,218,930
`
`PETITIONER:
`
`Michael J. Scheer
`Thomas M. Dunham
`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166-4193
`mscheer@winston.com
`tdunham@winston.com
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`Buchanan, Ingersoll & Rooney P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
`
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