Sony Corp Of America v. Network 1 Security Solutions Inc

1. Case Identification

• Case #: IPR2013-00071
• Patent #: 6,218,930
• Filed: December 5, 2012
• Petitioner(s): Avaya Inc.
• Patent Owner(s): Network-1 Security Solutions, Inc.
• Challenged Claims: 6 and 9

2. Patent Overview

• Title: Method for Remotely Powering Access Equipment in a Data Network
• Brief Description: The ’930 patent describes methods for remotely powering network devices, such as 10/100 Ethernet equipment, over data communication lines. The invention purports to reliably determine if a remote device can accept power by delivering a low-level current, sensing a resulting voltage, and then controlling a secondary power source in response.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 6 and 9 under 35 U.S.C. §102(b) by Matsuno

• Prior Art Relied Upon: Matsuno (JP H10-13576).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Matsuno, which discloses an Integrated Services Digital Network (ISDN) switching station, teaches every limitation of claims 6 and 9. Matsuno's system provides power and data over the same wires to remote devices. Petitioner mapped the claim limitations as follows: Matsuno's ISDN switching station is a "data node," its subscriber terminals are "access devices," and the subscriber line is a "data signaling pair." The system delivers a low-level voltage (-48V) during normal operation, detects a voltage change when local power to the access device fails, and in response, controls a secondary power source to supply a higher voltage (-120V) to keep the device operational. This process directly maps to the claimed steps of delivering a low-level current, sensing a voltage, and controlling power. For claim 9, Petitioner argued that if the access device in Matsuno were removed, the voltage would drop to zero, which the system would sense, thus teaching the claimed step of decreasing power upon removal of the device.

Ground 2: Obviousness of Claims 6 and 9 under 35 U.S.C. §103(a) over De Nicolo in view of Matsuno

• Prior Art Relied Upon: De Nicolo (Patent 6,115,468) and Matsuno (JP H10-13576).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that De Nicolo discloses the foundational elements of the claims in the context of an Ethernet network. De Nicolo teaches a system for providing "phantom power" to Ethernet telephones over existing 4-wire links using center-tapped transformers, which constitutes a "data node" (multiport hub), "access devices" (Ethernet telephones), and a "secondary power source" (power supply 144) that delivers power over a "data signaling pair." Petitioner argued De Nicolo discloses all limitations except for the specific power control logic. Matsuno was introduced to supply these missing elements, as it explicitly teaches a method for power management: delivering a low-level current/voltage, sensing a resulting voltage to detect a condition (e.g., local power failure), and controlling the power supply in response.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Matsuno’s well-known power control features with De Nicolo’s Ethernet-based remote powering system. The motivation would be to provide power to Ethernet devices in a more controlled, safe, and energy-efficient manner, such as by detecting local power failure before supplying remote operational power. Petitioner noted the ’930 patent itself suggests a motivation by citing the "convergence of voice and data technologies."
  • Expectation of Success: The petition asserted that applying Matsuno's established power management techniques to De Nicolo's Ethernet environment would be a routine implementation with a high expectation of success, as both references address the same fundamental problem of powering remote devices over data lines.

Ground 3: Obviousness of Claims 6 and 9 under 35 U.S.C. §103(a) over Chang in view of De Nicolo

• Prior Art Relied Upon: Chang (Patent 5,991,885) and De Nicolo (Patent 6,115,468).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Chang discloses a network system for controlling power to a detected device that meets most claim limitations. Chang's network hub ("data node") sends a low-voltage "presence request signal" ("low level current") over a twisted-pair cable ("data signaling pair") to a remote terminal ("access device"). The hub then senses a responsive signal using a voltage comparator and, if a specific condition is met, activates an "electrical power supply circuit" ("secondary power source") to power the device. For any limitations not explicitly disclosed in Chang, Petitioner argued they are taught by De Nicolo, which provides a detailed implementation of powering Ethernet devices over data lines.
  • Motivation to Combine: A POSITA would have been motivated to combine the power delivery mechanism of De Nicolo with the power control and device detection system of Chang. Petitioner argued this would be a routine substitution, as both systems are designed to supply power and data to remote devices in a network environment. The motivation would be to incorporate a more robust power delivery architecture (from De Nicolo) into a system with sophisticated presence detection and power control logic (from Chang).
  • Expectation of Success: Success would be expected because the combination involves integrating two known approaches for remote powering in network environments, a task that would be straightforward for a POSITA.

• Additional Grounds: Petitioner asserted additional grounds, including that claims 6 and 9 are anticipated by Akhteruzzaman (Patent 5,754,644) and are obvious over De Nicolo in view of Akhteruzzaman. These arguments relied on similar logic, presenting Akhteruzzaman as another ISDN-based system that taught the claimed power-sensing and control functionalities.

4. Key Claim Construction Positions

• Petitioner argued that for the purposes of the IPR, the claim terms should be given their broadest reasonable interpretation. Crucially, Petitioner adopted the Patent Owner’s broad constructions from parallel district court litigation for the terms "main power source" and "secondary power source."
• The key adopted position was that the "secondary power source" need not be physically separate from the "main power source" and can be the same as or derived from it. This broad construction was central to Petitioner's arguments, as it allowed a single power supply in a prior art reference that provides different voltage levels (e.g., Matsuno) to satisfy the limitations of both a main and a secondary power source.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 6 and 9 of the ’930 patent as unpatentable.