Sony Corporation of AMERICA; Axis Communications AB; Axis Communications Inc.; and Hewlett-Packard Companyv.NETWORK-1 Security Solutions, Inc.

Patent Trial and Appeal Board

Jul 29, 2013

09520350 (P.T.A.B. Jul. 29, 2013)

Trials@uspto.gov Paper 15
571-272-7822 Entered: July 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB;
AXIS COMMUNICATIONS INC.; and HEWLETT-PACKARD
COMPANY
Petitioners

v.

NETWORK-1 SECURITY SOLUTIONS, INC.
Patent Owner
____________

Case IPR2013-00386
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 IPR2013-00386
Patent 6,218,930

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Sony Corporation of America, Axis Communications AB, Axis
Communications Inc., and Hewlett-Packard Company (collectively,
“Petitioners”) filed a Petition (Paper 1) (“Pet.”) to institute an inter partes
review of claims 6, 8, 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 5) (“Mot.”). Patent Owner Network-1 Security
Solutions, Inc. (“Network-1”) has not yet filed a preliminary response to the
Petition. We have jurisdiction under 35 U.S.C. § 314. For the reasons that
follow, the Board has determined not to institute an inter partes review.1

I. BACKGROUND
A. Related Matters
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 of
the ’930 patent 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. Avaya’s request for rehearing as to a
portion of the Board’s decision was denied. IPR2013-00071, Paper 32.

1 In a decision entered concurrently, Petitioners’ motion for joinder with
Case IPR2013-00071 is denied.
Case IPR2013-00386
Patent 6,218,930

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The Board entered subsequently a Revised Scheduling Order setting various
due dates for the trial. IPR2013-00071, Paper 39.

Case IPR2013-00092
On December 19, 2012, Sony Corporation of America, Axis
Communications AB, and Axis Communications Inc. filed a petition to
institute an inter partes review of claims 6, 8, and 9 of the ’930 patent,
asserting the following grounds of unpatentability:
Claims 6, 8, and 9 under 35 U.S.C. §§ 102(a) and (e) as
anticipated by Patent 5,991,885 (“Chang”);
Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as
unpatentable over Patent 5,994,998 (“Fisher”) in view of
Chang;
Claims 6, 8, and 9 under 35 U.S.C. § 102(b) as
anticipated by Patent 5,345,592 (“Woodmas”); and
Claims 6, 8, and 9 under 35 U.S.C. § 102(b) as
anticipated by Japanese Unexamined Patent Application
Publication No. 6-189535 (“Satou”).
IPR2013-00092, Paper 8. On May 24, 2013, the Board denied the petition,
concluding that the petitioners had not demonstrated a reasonable likelihood
that at least one of the challenged claims is unpatentable based on the
asserted grounds. IPR2013-00092, Paper 21. The petitioners’ request for
rehearing as to a portion of the Board’s decision was denied.
IPR2013-00092, Paper 24.

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,”
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Patent 6,218,930

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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.

C. The Prior Art
Petitioners rely on the following prior art:
1. Patent 5,345,592, issued Sept. 6, 1994 (“Woodmas”)
(Ex. 1011);
2. Patent 6,473,608, issued Oct. 29, 2002, claims priority
to Provisional Application 60/115,628, filed on Jan. 12, 1999
(“Lehr”) (Ex. 1014);
3. Japanese Unexamined Patent Application Publication
No. H10-13576, published Jan. 16, 1998 (“Matsuno”) (Ex.
1016);2
4. Patent 6,449,348, issued Sept. 10, 2002, filed May 29,
1997 (“Lamb”) (Ex. 1017);
5. Patent 5,982,456, issued Nov. 9, 1999, filed Mar. 25,
1997 (“Smith”) (Ex. 1012); and
6. Ron Whittaker, TELEVISION PRODUCTION, pp. 232-56
(1993) (“TELEVISION PRODUCTION”) (Ex. 1013).

D. The Asserted Grounds
Petitioners challenge claims 6, 8, and 9 of the ’930 patent on the
following grounds:
Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over
Woodmas in view of Smith and/or TELEVISION PRODUCTION;

2 We refer to “Matsuno” as the English translation (Ex. 1016) of the original
reference (Ex. 1015). Petitioners provided an affidavit attesting to the
accuracy of the translation. See Ex. 1021; 37 C.F.R. § 42.63(b).
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Patent 6,218,930

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Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Lehr
in view of Woodmas;
Claims 6, 8, and 9 under 35 U.S.C. § 102(b) as anticipated by
Matsuno; and
Claims 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over
Lamb in view of Matsuno.

II. ANALYSIS
Network-1 argues in its opposition to Petitioners’ motion for joinder
that the Petition should be denied as time-barred under 35 U.S.C. § 315(b)
because Petitioners were served with a complaint alleging infringement of
the ’930 patent more than one year before filing the Petition in the instant
proceeding. IPR2013-00071, Paper 33 at 2. As explained in the Board’s
decision denying Petitioners’ motion for joinder, which is being entered
concurrently, the exception in the second sentence of Section 315(b) applies
and the Petition is not time-barred. See 37 C.F.R. § 42.122(b).
In any event, however, we do not institute an inter partes review
based on the Petition. In determining whether to institute an inter partes
review, the Board may “deny some or all grounds for unpatentability for
some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C.
§ 314(a). Upon consideration of Petitioners’ motion for joinder and the
oppositions filed by Network-1 and Avaya, the Board in a separate decision
denies the motion for joinder. See Mot.; IPR2013-00071, Papers 33, 35. As
explained in that decision, the Petition introduces (1) a new challenged
claim, (2) three new grounds of unpatentability, (3) one new ground of
unpatentability as to the new challenged claim, and (4) five new prior art
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Patent 6,218,930

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references beyond those at issue in Case IPR2013-00071. Petitioners have
not demonstrated that their need for a cost-effective alternative to district
court litigation outweighs the impact of joinder, including the burden and
prejudice to the existing parties in light of the new challenged claim,
additional grounds of unpatentability and prior art, and other substantive
issues. Petitioners also fail to establish that joinder would promote efficient
resolution of the unpatentability issues without substantially affecting the
schedule for Case IPR2013-00071.
Therefore, based on the record before us and exercising our discretion
under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(b), we decline to institute
an inter partes review in the instant proceeding.

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of
the ’930 patent.
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Patent 6,218,930

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PETITIONERS:

Lionel M. Lavenue
C. Gregory Gramenopoulos
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190-5675
lionel.lavenue@finnegan.com
gramenoc@finnegan.com

Robert J. Walters
Charles J. Hawkins
McDERMOTT WILL & EMERY LLP
500 North Capitol Street, N.W.
Washington, DC 20001
rwalters@mwe.com
chawkins@mwe.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