In its Final Written Decision, the Board found that Petitioners had not shown by a preponderance of the evidence that challenged claims 6 and 9 of the ‘930 patent are unpatentable.
The ‘930 patent is drawn to powering Ethernet compatible equipment and, 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.” Independent claim 6 and its dependent claim 9 were the only challenged claims. The Board had instituted trial on two grounds: anticipation of both claims by Matsuno, and obviousness of both claims in view of De Nicolo and Matsuno.
The Board began with claim construction, stating that the claims are interpreted using the broadest reasonable construction in light of the specification. Claim terms are given their ordinary and customary meaning unless the patentee clearly set forth a definition of the disputed claim term in the specification or prosecution history. Particular embodiments may not be read into the claim if the claim language is broader than the embodiment.
The Board discussed the construction of the term “low level current.” Petitioners did not dispute the construction provided in the Decision on Institution, but Patent Owner argued for a more limiting construction. The Board disagreed with Patent Owner’s proposed construction, holding that the claims did not recite or impose any conditions on a voltage generating the “low level current,” as suggested by Patent Owner’s proposed construction. Thus, the Board incorporated its previous interpretation set forth in the Decision on Institution that the term means “a current (e.g., approximately 20 mA) that is sufficiently low that, by itself, it will not operate the access device.”
With respect to the remaining claim terms, the Board adopted the same interpretations set forth in the Decision on Institution.
The Board then compared the claims, as construed, to the cited prior art. The Board noted that it is Petitioners’ burden to establish by a preponderance of the evidence that Matsuno discloses the claim limitations or that the combination of De Nicolo and Matsuno would have rendered the claims obvious.
The Board held that Petitioners had failed to show that Matsuno discloses “delivering a low level current from said main power source to the access device over said data signaling pair.” In particular, Petitioners relied upon the disclosure of a low voltage in Matsuno as disclosing the claimed low level current. Patent Owner and its expert argued that Matsuno did not disclose the recited low level current. The Board was persuaded by Patent Owner’s expert that the low level voltage of Matsuno did not necessarily result in the access device not being operable (as required based on the claim construction of “low level current”). At the very least, the Board noted, “it is questionable as to what the language in Matsuno means, which does not amount to a preponderance of the evidence in favor of [Petitioners].”
The Board also faulted Petitioners’ expert (Dr. Zimmerman) for not providing a sufficient analysis of Matsuno in the initial declaration served with the Petition. “Unlike Dr. Knox, Dr. Zimmerman did not analyze the disclosure of Matsuno in detail and prepare a technical analysis explaining why the identified current is or is not a ‘low level current.’” Thus, the Board only reviewed Petitioners’ expert’s new analysis in the reply declaration to determine whether it was within the proper scope of refuting the points raised by Patent Owner’s expert in his declaration. The Board did not consider it “as part of [Petitioners’] attempt to make out a prima facie case of unpatentability of the challenged claims.”
The Board also held that Petitioners failed to show by a preponderance of the evidence that claims 6 and 9 were obvious over De Nicolo and Matsuno. In particular, Petitioners again relied upon Matsuno as disclosing the “low level current” limitation, which the Board held was not disclosed by Matsuno. Because Petitioners did not contend that the “low level current” limitation would have been obvious in view of the combination of references, the Board held that Petitioners failed to show obviousness of claims 6 and 9.
The Board then addressed Patent Owner’s Motion to Amend, which was contingent upon a finding of unpatentability. Because the Board did not find any challenged claim unpatentable, the Board dismissed the Motion as moot.
With respect to Petitioners’ Motion for Observation on Cross-Examination, the Board noted that most of the Motions were directed to testimony regarding the Motion to Amend. Given the dismissal of the Motion to Amend, the Board declined to consider those observations or Patent Owner’s responses. The Board also noted that any observations regarding the credibility of Patent Owner’s expert, and Patent Owner’s responses to those observations, had been considered.
The Board then dismissed the parties’ Motions to Exclude as moot. Petitioners moved to exclude expert testimony concerning the Motion to Amend, which the Board had dismissed as moot. Patent Owner moved to exclude expert testimony submitted with Petitioners’ Reply to the Patent Owner Response. The subject testimony rebutted evidence of secondary considerations of nonobviousness. The Board stated that because Petitioners failed to show that Matsuno discloses the “low level current” step of claim 6, the Board need not reach arguments regarding secondary considerations.
Finally, the Board lifted the stay of a pending ex parte reexamination. The Board had previously entered an Order staying Reexamination Control No. 90/012,401. The reexamination was based on different prior art and challenged claim 8 in addition to claims 6 and 9. The Board held that under the circumstances where the challenged claims were not shown to be unpatentable, “the stay should be lifted before the time for any appeal in this proceeding has expired and any appeal has terminated.”
Avaya Inc., Dell Inc., Sony Corp. of America, and Hewlett-Packard Co. v. Network-1 Security Solutions, Inc., IPR2013-00071
Final Written Decision
Dated: May 22, 2014
Patent 6,218,930 B1
Before: Joni Y. Chang, Justin T. Arbes, and Glenn J. Perry
Written by: Arbes
Related Proceedings: IPR2013-00385; IPR2013-00495; and Ex parte Reexamination Control No. 90/012,401