Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 12
`Entered: September 16, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA and
`HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00495
`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
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 12
`Entered: September 16, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA and
`HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00495
`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
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`Sony Corporation of America (“Sony”) and Hewlett-Packard Co.
`(“HP”) (collectively, “Petitioners”) filed a Petition (Paper 3) (“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 7) (“Mot.”). Patent Owner Network-1
`Security Solutions, Inc. did not file a preliminary response to the Petition by
`the deadline of August 16, 2013. See Paper 9. 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.
`Petitioners challenge 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.
`10-11. We grant the Petition as to claims 6 and 9 on the asserted grounds as
`discussed below.
`
`
`
`1 In a decision being entered concurrently, Petitioners’ motion for joinder is
`granted under certain conditions and this proceeding is joined with Case
`IPR2013-00071.
`
`
`
`2
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`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,
`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.”).
`
`
`B. Related Case IPR2013-00385
`On June 24, 2013, Dell Inc. (“Dell”) filed a petition to institute an
`inter partes review of claims 6 and 9 on the same grounds on which a trial
`was instituted in Case IPR2013-00071 and a motion for joinder with that
`proceeding. IPR2013-00385, Papers 2, 4, 11. On July 29, 2013, the Board
`granted the petition and joined Dell as a party to Case IPR2013-00071.
`IPR2013-00385, Papers 16 (“’385 Dec.”), 17.
`
`
`C. The Prior Art
`Petitioners rely on the following prior art:
`1. Patent 6,115,468, filed Mar. 26, 1998, issued Sept. 5,
`2000 (“De Nicolo”) (Ex. 1007); and
`
`
`
`
`3
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`2. Japanese Unexamined Patent Application Publication
`No. H10-13576, published Jan. 16, 1998 (“Matsuno”)
`(Ex. 1004).2
`
`
`D. The Asserted Grounds
`Petitioners challenge claims 6 and 9 of the ’930 patent on the
`following grounds:
`
`Reference(s)
`Matsuno
`
`Basis
`35 U.S.C. § 102(b)
`
`Claims Challenged
`6 and 9
`
`De Nicolo and Matsuno
`
`35 U.S.C. § 103(a)
`
`6 and 9
`
`
`
`E. Claim Interpretation
`Petitioners make the same claim interpretation arguments that Avaya
`made in Case IPR2013-00071. Compare Pet. 11-14, with IPR2013-00071,
`Paper 1 at 7-10. We construed various limitations of claims 6 and 9 in Cases
`IPR2013-00071 and IPR2013-00385, and incorporate our previous analysis
`for purposes of this decision. See ’71 Dec. 6-14; IPR2013-00071, Paper 21;
`’385 Dec. 7-13.
`
`
`II. ANALYSIS
`Petitioners in their Petition assert the same two grounds of
`unpatentability as those on which a trial was instituted in Case
`IPR2013-00071. See Pet. 10-11; ’71 Dec. 29. Petitioners’ arguments are
`
`
`2 We refer to “Matsuno” as the English translation (Ex. 1004) of the original
`reference (Ex. 1002). Petitioners provided an affidavit attesting to the
`accuracy of the translation. See Ex. 1003; 37 C.F.R. § 42.63(b).
`
`4
`
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`identical to the arguments made by Avaya and Dell in their petitions.
`Compare Pet. 21-40, with IPR2013-00071, Paper 1 at 17-26, 36-45, and
`IPR2013-00385, Paper 2 at 17-35. Petitioners also submit the same
`declaration of Dr. George A. Zimmerman that Dell submitted in support of
`its petition, which itself was largely a copy of the declaration of Dr.
`Zimmerman submitted by Avaya. See Ex. 1011; IPR2013-00071, Ex. 1011;
`IPR2013-00385, Ex. 1011.
`We incorporate our previous analysis regarding the two asserted
`grounds of unpatentability, see ’71 Dec. 15-22; ’385 Dec. 13-19, and
`conclude that Petitioners have demonstrated a reasonable likelihood of
`prevailing on the following grounds 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 as to claims 6 and 9 are authorized.
`
`
`
`
`5
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`PETITIONERS:
`
`Lionel M. Lavenue
`Erika Arner
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`
`Robert J. Walters
`Charles J. Hawkins
`McDERMOTT WILL & EMERY LLP
`rwalters@mwe.com
`chawkins@mwe.com
`
`PATENT OWNER:
`
`Charles F. Wieland III
`Robert G. Mukai
`BUCHANAN, INGERSOLL & ROONEY P.C.
`Charles.Wieland@BIPC.com
`Robert.Mukai@BIPC.com
`
`
`
`
`
`6
`
`
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