Trials@uspto.gov
`571-272-7822
`
`Paper 103
`Entered: May 22, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC., DELL INC., SONY CORPORATION OF AMERICA,
`and HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-000711
`Patent 6,218,930 B1
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and GLENN J. PERRY,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Cases IPR2013-00385 and IPR2013-00495 have been joined with this
`proceeding.
`
`
`
`

`

`Case IPR2013-00071
`Patent 6,218,930 B1
`
`
`I. BACKGROUND
`
`Petitioner Avaya Inc. (“Avaya”) filed a Petition (Paper 1) (“Pet.)
`
`seeking inter partes review of claims 6 and 9 of U.S. Patent No. 6,218,930
`
`B1 (Ex. 1001) (“the ’930 patent”) pursuant to 35 U.S.C. §§ 311-19. On May
`
`24, 2013, we instituted an inter partes review of claims 6 and 9 on two
`
`grounds of unpatentability (Paper 18) (“-71 Dec. on Inst.”).
`
`This proceeding involves three other Petitioners in addition to Avaya.
`
`Subsequent to institution in Case IPR2013-00071, Dell Inc. (“Dell”) filed a
`
`petition in Case IPR2013-00385 seeking 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. See
`
`IPR2013-00385, Papers 2, 4, 11. We instituted an inter partes review and
`
`joined Dell as a party to Case IPR2013-00071 in a limited capacity. See
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`IPR2013-00385, Papers 16 (“-385 Dec. on Inst.”), 17. Specifically, we
`
`ordered Avaya and Dell to file all papers, other than motions not involving
`
`the other party, as consolidated filings, and permitted Dell to file an
`
`additional paper addressing any points of disagreement with each
`
`consolidated filing if necessary. See IPR2013-00385, Paper 17 at 11. Over
`
`the course of this proceeding, Dell did not file any paper disagreeing with
`
`any filing made by Avaya.
`
`Sony Corporation of America (“Sony”) and Hewlett-Packard Co.
`
`(“HP”) also filed a similar petition and motion for joinder in Case
`
`IPR2013-00495. See IPR2013-00495, Papers 3, 7. We instituted an inter
`
`partes review and joined Sony and HP as parties to Case IPR2013-00071 in
`
`a limited capacity. See IPR2013-00495, Papers 12, 13.
`
`
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`2
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`

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`Case IPR2013-00071
`Patent 6,218,930 B1
`
`
`Avaya, Dell, Sony, and HP are all Petitioners for purposes of this
`
`proceeding. For ease of reference, however, we refer herein to arguments as
`
`being made by Avaya, the original Petitioner.
`
`Patent Owner Network-1 Security Solutions, Inc. (“Network-1”) filed
`
`a Patent Owner Response (Paper 44)2 (“PO Resp.”), and Avaya filed a Reply
`
`(Paper 56) (“Reply”). Along with its Patent Owner Response, Network-1
`
`filed a Motion to Amend (Paper 43) (“Mot. to Amend”), proposing
`
`substitute claim 10 if the Board determines claim 6 to be unpatentable, and
`
`substitute claim 11 if the Board determines claim 9 to be unpatentable.
`
`Avaya filed an Opposition to the Motion to Amend (Paper 57), and
`
`Network-1 filed a Reply (Paper 65).
`
`Avaya filed a Motion for Observation (Paper 80) (“Mot. for Obs.”) on
`
`the cross-examination testimony of Network-1’s declarant, James M. Knox,
`
`Ph.D., and Network-1 filed a Response (Paper 90) (“Obs. Resp.”).
`
`Avaya filed a Motion to Exclude (Paper 79) (“Pet. Mot. to Exclude”)
`
`certain testimony of Dr. Knox submitted by Network-1 with Network-1’s
`
`Reply to Avaya’s Opposition to the Motion to Amend. Network-1 filed an
`
`Opposition to the Motion to Exclude (Paper 88), and Avaya filed a Reply
`
`(Paper 95). Network-1 also filed a Motion to Exclude (Paper 83) (“PO Mot.
`
`to Exclude”) the expert report of Dr. Melvin Ray Mercer (Exhibit 1042)
`
`submitted by Avaya with its Reply to Network-1’s Patent Owner Response.
`
`Avaya filed an Opposition to the Motion to Exclude (Paper 91), and
`
`Network-1 filed a Reply (Paper 94).
`
`
`2 It appears that Network-1 filed two copies of its Patent Owner Response in
`the Patent Review Processing System (PRPS) as Papers 42 and 44. Paper 42
`will be expunged.
`
`
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`3
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`Case IPR2013-00071
`Patent 6,218,930 B1
`
`
`An oral hearing was held on January 9, 2014, and a transcript of the
`
`hearing is included in the record (Paper 102) (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`
`the reasons that follow, we determine that Avaya has not shown by a
`
`preponderance of the evidence that claims 6 and 9 of the ’930 patent are
`
`unpatentable.
`
`
`
`A. The ’930 Patent
`
`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.” Ex. 1001, col. 1, ll. 13-19. The ’930 patent
`
`describes how it generally was 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. Id. at col. 1, ll. 22-32. The ’930 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.” Id. at col. 1, ll. 42-43.
`
`
`
`
`4
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`Case IPR2013-00071
`Patent 6,218,930 B1
`
`
`Figure 3 of the ’930 patent is reproduced below.
`
`
`
`Figure 3 depicts remote telephone 62 capable of receiving and transmitting
`
`both voice and data. Id. at 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 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 automatic remote power detector 22
`
`(shown in Figure 1) and remote power supply 34 (shown in Figure 2). Id. at
`
`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,
`
`normally is powered by “an [alternating current] ac transformer adapter
`
`plugged in to the local 110 volt supply,” but may or may not be capable of
`
`being powered remotely. Id. at 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 [milliamperes (mA)])” over existing twisted pairs
`
`
`
`
`5
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`Case IPR2013-00071
`Patent 6,218,930 B1
`
`of an Ethernet cable used for data signaling and “measuring a voltage drop
`
`in the return path.” Id. at 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. Id. at 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. Id. at 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. Id. at col. 3,
`
`ll. 49-58.
`
`
`
`
`
`
`B. Challenged Claims
`
`Claims 6 and 9 of the ’930 patent are the only claims at issue:
`
`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
`
`6
`
`
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`

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`Case IPR2013-00071
`Patent 6,218,930 B1
`
`
`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.
`
`
`
`C. Prior Art
`
`The pending grounds of unpatentability in this inter partes review are
`
`based on the following prior art:
`
`1. U.S. Patent No. 6,115,468, filed March 26, 1998,
`issued September 5, 2000 (“De Nicolo”) (Ex. 1007); and
`
`2. Japanese Unexamined Patent Application Publication
`No. H10-13576, published January 16, 1998 (“Matsuno”)
`(Ex. 1004).3
`
`
`
`D. Pending Grounds of Unpatentability
`
`This inter partes review involves the following grounds of
`
`unpatentability:
`
`Reference(s)
`
`Matsuno
`
`Basis
`
`Claims
`
`35 U.S.C. § 102(b) 6 and 9
`
`De Nicolo and Matsuno
`
`35 U.S.C. § 103(a) 6 and 9
`
`
`
`
`3 We refer to “Matsuno” as the English translation (Ex. 1004) of the original
`reference (Ex. 1002). Avaya provided an affidavit attesting to the accuracy
`of the translation. See Ex. 1003; 37 C.F.R. § 42.63(b).
`
`
`
`
`7
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`Case IPR2013-00071
`Patent 6,218,930 B1
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`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), the
`
`Board interprets 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.
`
`48,756, 48,766 (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 the claim language is broader than the embodiment. See In re
`
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be
`
`read into the claims from the specification”).
`
`
`
`1. “Low Level Current”
`
`Avaya did not propose an interpretation for “low level current” in its
`
`Petition. Network-1, in its Preliminary Response, argued that the term
`
`means “a current at a level that is sufficiently low that it will not (a) operate
`
`the access device, or (b) damage an access device that is not designed to
`
`
`
`
`8
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`Case IPR2013-00071
`Patent 6,218,930 B1
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`accept power through the data signaling pair.” Prelim. Resp. 24. In the
`
`Decisions on Institution, we interpreted the term 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. on Inst. 7-10; Paper 21; -385 Dec. on
`
`Inst. 8-10. Avaya does not argue in its Reply that this interpretation is
`
`incorrect.
`
`Network-1, however, argues in its Patent Owner Response that our
`
`prior interpretation should be modified slightly to account for the length of
`
`the data signaling pair. PO Resp. 3-4. Network-1 contends that, due to the
`
`resistance of the data signaling pair, a particular voltage at the data node
`
`could be sufficient to generate enough current to operate the access device if
`
`the length of the data signaling pair is very short, and at the same time not be
`
`sufficient to generate enough current to operate the same device when the
`
`data signaling pair is very long. Id. at 3 (citing Ex. 2015 ¶ 63). Therefore,
`
`according to Network-1, a “low level current” is one that is sufficiently low
`
`that it will not operate the access device “at all reasonable data signaling pair
`
`lengths (unless the system specifically precludes certain data signaling pair
`
`lengths).” Id. at 4. Avaya disagrees with Network-1’s proposed
`
`interpretation, arguing that the Specification of the ’930 patent never
`
`mentions the length of the data signaling pair. Reply 2.
`
`We are not persuaded that our previous interpretation of “low level
`
`current” is incorrect, and incorporate our previous analysis for purposes of
`
`this decision. See -71 Dec. on Inst. 7-10; Paper 21; -385 Dec. on Inst. 8-10.
`
`Network-1’s argument is premised on a particular voltage generating the
`
`“low level current,” and on that voltage being sufficient to generate a “low
`
`level current” for some lengths of the data signaling pair but not for others.
`
`
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`9
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`Case IPR2013-00071
`Patent 6,218,930 B1
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`Claim 6, however, does not recite or impose any conditions on a voltage
`
`generating the “low level current.” All that is required is that the current be
`
`“low level.” In addition, as explained in the Decisions on Institution, “low
`
`level current” is a term of degree, and we refer to the Specification of the
`
`’930 patent for a standard with which to measure that degree. See -71 Dec.
`
`on Inst. 7-10. The Specification does not mention the length of the data
`
`signaling pair or indicate its importance in connection with determining
`
`whether a current is “low level.” Accordingly, applying the broadest
`
`reasonable interpretation, we interpret “low level current” in claim 6 to mean
`
`a current (e.g., approximately 20 mA) that is sufficiently low that, by itself,
`
`it will not operate the access device.
`
`
`
`2. Other Terms
`
`In the Decisions on Institution in Cases IPR2013-00071 and
`
`IPR2013-00385, we interpreted three other claim terms as follows:
`
`Term
`
`Interpretation
`
`“data node adapted for data
`switching” (claim 6)
`
`“data signaling pair” (claim 6)
`
`“sensing a voltage level on the
`data signaling pair” (claim 6)
`
`a data switch or hub configured
`to communicate data using
`temporary rather than permanent
`connections with other devices
`or to route data between devices
`
`a pair of wires used to transmit
`data
`
`sensing a voltage at a point on
`the pair of wires used to
`transmit data
`
`-71 Dec. on Inst. 10-14; -385 Dec. on Inst. 11-13. Further, we did not
`
`interpret “main power source” and “secondary power source” in claim 6 as
`
`
`
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`10
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`Case IPR2013-00071
`Patent 6,218,930 B1
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`requiring physically separate devices. -71 Dec. on Inst. 13-14. We
`
`incorporate our previous analysis for purposes of this decision.
`
`
`
`B. Anticipation by Matsuno
`
`With respect to the alleged anticipation of claims 6 and 9 by Matsuno,
`
`we have reviewed Avaya’s Petition, Network-1’s Patent Owner Response,
`
`and Avaya’s Reply, as well as the evidence discussed in each of those
`
`papers. We are not persuaded, by a preponderance of the evidence, that
`
`claims 6 and 9 are anticipated by Matsuno under 35 U.S.C. § 102(b).
`
`
`
`1. Matsuno
`
`Matsuno discloses a “power supply circuit that switches power supply
`
`voltage and supplies the desired power while ensuring safety.” Ex. 1004,
`
`Abstract. Matsuno describes a prior art “conventional example” of remote
`
`power supply in an Integrated Services Digital Network (ISDN), as shown in
`
`Figure 11 reproduced below.
`
`
`
`
`11
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`

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`Case IPR2013-00071
`Patent 6,218,930 B1
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`Id. ¶ 2. Figure 11 depicts subscriber terminal (DTE) 103, network terminal
`
`device (NT1) 102, and power supply circuit 101. Id. Power supply circuit
`
`101, having power source 105, is capable of supplying power to NT1 102
`
`over digital subscriber line 104, which comprises a TIP line and RING line.
`
`Id. ¶¶ 2-3. NT1 102 and DTE 103 may be powered locally by commercial
`
`AC power source 111, or may be powered by “station power supply” from
`
`power supply circuit 101 when local power is unavailable. Id. ¶¶ 3-4.
`
`Matsuno discloses the following with respect to Figure 11:
`
`is
`the commercial AC power source 111
`When
`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.
`
`Id. ¶ 4 (emphasis added).
`
`According to Matsuno, the high voltages required in conventional
`
`arrangements of the type shown in Figure 11 cause various safety problems.
`
`Id. ¶¶ 5-6. To address those problems, Matsuno discloses a particular
`
`remote power supply arrangement that “suppl[ies] a prescribed power level
`
`while maintaining safety by applying a low voltage during local power
`
`supply and a high voltage during station power supply.” Id. ¶ 6.
`
`
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`12
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`Case IPR2013-00071
`Patent 6,218,930 B1
`
`
`Figure 1 of Matsuno is reproduced below.
`
`
`
`Figure 1 depicts DTE 3 and NT1 2 in communication with power supply
`
`circuit 1 in an ISDN “switching station” over digital subscriber line 12. Id.
`
`¶ 16. NT1 2 typically is powered by local AC power supply 11, and powers
`
`DTE 3. Id. ¶ 8. When local power is available, contact breaker point 8 in
`
`NT1 2 is OFF, loop detection part 4 in power supply circuit 1 detects no DC
`
`loop, and power supply circuit 1 supplies “low voltage V2” (-48 V) to digital
`
`subscriber line 12. Id. ¶¶ 7-8, 18-20. When local power stops, the stoppage
`
`is detected by power stoppage detection part 10 in NT1 2, contact breaker
`
`point 8 turns ON, loop detection part 4 detects the resulting DC loop, and
`
`power supply circuit 1 switches to “high-voltage V1” (-120 V), “thereby
`
`allowing the desired power to be supplied from the station.” Id.
`
`
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`13
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`Case IPR2013-00071
`Patent 6,218,930 B1
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`
`2. Avaya’s Contentions Regarding Matsuno
`
`In its Petition, Avaya identifies the following devices in Matsuno as
`
`disclosing the various devices recited in claim 6:
`
`Claim Limitation
`
`Identified Device(s) in Matsuno
`
`“data node adapted for
`data switching”
`
`ISDN switching station (including
`power supply circuit 1)
`
`“data network”
`
`ISDN network
`
`“access device”
`
`network terminal device (NT1) 2,
`“either alone or in combination”
`with subscriber terminal (DTE) 3
`
`“data signaling pair”
`
`subscriber line 12
`
`“main power source”
`
`a power supply of the switching
`station providing “a standard -48V
`supply”
`
`“secondary power source” power supply circuit 1 applying
`current from -120 V
`
`Pet. 18-24.4 Avaya’s declarant, George A. Zimmerman, Ph.D., identifies the
`
`same devices in his declaration served with the Petition. Ex. 1011 ¶¶ 30-37.
`
`As to the step of “delivering a low level current from said main power
`
`source to the access device over said data signaling pair,” Avaya argues that
`
`the ISDN switching station in Matsuno “provides a low level current/voltage
`
`(-V2) to an access device (NT1/DTE) over the data signaling pair (subscriber
`
`line 12).” Pet. 20-21. Avaya further includes a claim chart citing
`
`paragraphs 6, 7, 18, 20, and 22, and claims 1-9, of Matsuno, which describe
`
`
`4 Dell’s Petition asserts the same ground of unpatentability based on
`Matsuno and makes the same arguments as Avaya does in its Petition.
`Compare Pet. 18-24, with IPR2013-00385, Paper 2 at 17-24.
`
`
`
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`14
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`Case IPR2013-00071
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`“low-voltage power supply” V2 (-48 V). Id. at 24. Dr. Zimmerman testifies
`
`as follows:
`
`Matsuno further describes how, in response to providing
`a low level current, such as -V2, it detects a resulting voltage or
`current and, based on that detected voltage or current, it then
`controls whether to provide a high voltage or a low voltage.
`See e.g., Matsuno (AV-1004), ¶¶ (0018) - (0020), (0033),
`(0035), (0036) and (0039). Thus, Matsuno teaches the same
`general approach to controlling power as claim 6 in the ’930
`Patent.
`
`Ex. 1011 ¶ 40. Thus, Avaya’s position, as argued in the Petition, is that the
`
`current generated from low voltage V2 (-48 V) in Matsuno is a “low level
`
`current” as recited in claim 6.
`
`As to the step of “sensing a voltage level on the data signaling pair in
`
`response to the low level current,” Avaya cites loop detection part 4 in
`
`power supply circuit 1, which detects “the voltages at both terminals of the
`
`constant-current circuits 21a and 21b” (shown in Figure 2 of Matsuno). Pet.
`
`21, 25 (citing Ex. 1004 ¶ 33) (emphasis omitted).
`
`As to the step of “controlling power supplied by said secondary power
`
`source to said access device in response to a preselected condition of said
`
`voltage level,” Avaya argues that Matsuno controls the power supplied to
`
`NT1 2 and DTE 3 by increasing the voltage from low voltage V2 (-48 V) to
`
`high voltage V1 (-120 V) when local power is unavailable. Id. at 21, 25
`
`(citing Ex. 1011 ¶ 40).
`
`
`
`3. Analysis
`
`For the reasons explained below, we conclude that Avaya has not
`
`shown, by a preponderance of the evidence, that Matsuno discloses
`
`“delivering a low level current from said main power source to the access
`
`
`
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`15
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`Case IPR2013-00071
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`
`device over said data signaling pair,” as recited in claim 6. It is Avaya’s
`
`burden to establish that Matsuno discloses the “low level current” step. See
`
`35 U.S.C. § 316(e); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
`
`868 F.2d 1251, 1255-56 (Fed. Cir. 1989) (“Anticipation requires that every
`
`limitation of the claim in issue be disclosed, either expressly or under
`
`principles of inherency, in a single prior art reference.”). Avaya’s position,
`
`as argued in the Petition, is that the current generated from low voltage V2
`
`(-48 V) in Matsuno is a “low level current.” Pet. 20-21, 24. Thus, Avaya
`
`must show sufficient proof, amounting to a preponderance of the evidence,
`
`that such current is a “low level current,” which we interpret to mean a
`
`current (e.g., approximately 20 mA) that is sufficiently low that, by itself, it
`
`will not operate the access device. Avaya has not done so.
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`
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`a. Avaya Has Not Shown That Matsuno Expressly or Inherently
`Discloses the “Low Level Current” Recited in Claim 6
`
`We begin by noting that Avaya does not point to any express
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`statement in Matsuno that the current generated from low voltage V2 (-48 V)
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`is insufficient by itself to operate the alleged “access device” in Matsuno
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`(i.e., the NT1, either alone or in combination with the DTE). Avaya’s
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`declarant, Dr. Zimmerman, acknowledged this lack of disclosure during
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`cross-examination:
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`Q. Does Matsuno anywhere expressly state that the 48
`volts is insufficient to operate a DTE that requires 40 volts?
`
`A. Matsuno does not expressly state that 48 volts
`delivered at the U interface point would be insufficient.
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`. . .
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`Q. Does Matsuno disclose that the 48 volts would be
`insufficient to operate the NT1?
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`A. He doesn’t discuss that at all.
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`Ex. 2016 at 36:24-37:3, 39:6-8. Indeed, throughout its disclosure, Matsuno
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`speaks in terms of voltage, not current. See, e.g., Ex. 1004 ¶¶ 4, 7, 18-20.
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`Matsuno discloses, for example, “high-voltage V1 of -120 V and low voltage
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`V2 of -48 V,” but never discloses the specific amount of current that is
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`generated on digital subscriber line 12 from low voltage V2 (-48 V). See id.
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`¶ 18; see also id. ¶ 19 (stating that “the desired current” is supplied upon the
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`application of high voltage V1 (-120 V), but not providing a precise amount).
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`Nor does Matsuno disclose the specific amount of current that would be
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`needed for the NT1 or DTE to operate. Thus, we simply cannot compare
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`one level of current to another to determine whether what Avaya identifies
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`as a “low level current” is sufficient.
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`Similarly, Dr. Zimmerman acknowledged that the current generated
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`from low voltage V2 (-48 V) is not inherently sufficient or insufficient for at
`
`least the DTE to operate. Dr. Zimmerman testified as follows:
`
`Q. Is it inherent in Matsuno that the 48 volts would be
`insufficient to operate the DTE?
`
`A. It is not inherent. It is implied.
`
`. . .
`
`Q. Is it the case that, if we have a relatively short
`subscriber line, that 48 volts would be sufficient to power a
`DTE?
`
`A. Not necessarily. And Matsuno doesn’t really speak to
`that at all.
`
`Ex. 2016 at 38:17-19, 42:20-24. Avaya’s position, therefore, appears to be
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`that, although not expressly stated in Matsuno, it is implicit that the current
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`Case IPR2013-00071
`Patent 6,218,930 B1
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`generated from low voltage V2 (-48 V) is insufficient by itself to operate the
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`NT1 and DTE.
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`What Avaya relies on—and what we found in the Decisions on
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`Institution to indicate a reasonable likelihood of prevailing—are two
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`statements that Matsuno makes about how its devices operate. First,
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`paragraph 4 of Matsuno discloses the following:
`
`is
`the commercial AC power source 111
`When
`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.
`
`Ex. 1004 ¶ 4 (emphasis added). Avaya did not rely specifically on this
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`language in its Petition, but cites the language in its Reply for the
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`proposition that if “minimal communication” is provided when the high
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`voltage source in Matsuno (120 volts according to Avaya) is in effect, the
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`low voltage source (48 volts according to Avaya) must not generate enough
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`current for the NT1 and DTE to operate. See Reply 4; Ex. 1041 ¶ 36.
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`We are not persuaded that Avaya’s assumption necessarily follows
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`from the statement in paragraph 4. The cited statement appears in the
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`context of Matsuno’s discussion of the prior art arrangement shown in
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`Figure 11, not the description of Figures 1 and 2 that Avaya relies on as
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`allegedly teaching the method of claim 6. See Ex. 1004 ¶¶ 2, 4; Pet. 24. It is
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`not clear that the station power supply in the prior art arrangement is
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`necessarily the same as the high voltage power supply V1 (-120 V) in the
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`disclosed invention. Matsuno also does not describe in any detail what is
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`meant by “minimal communication,” or indicate whether such
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`communication equates with overall operation of the NT1 and DTE.
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`Further, as Dr. Knox points out, just because one power level is sufficient
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`for “minimal communication” does not mean necessarily that a lower power
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`level is not. See Ex. 2015 ¶ 120 (“if I said that 10 watts is sufficient to
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`power a device, it is not expressed or inherent that 9 watts, 8 watts, or any
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`other wattage would be insufficient to power the device”).
`
`Paragraph 4 of Matsuno cannot necessarily be read in the manner
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`proposed by Avaya for another reason as well. Matsuno’s discussion of the
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`Figure 11 prior art arrangement continues in paragraphs 5 and 6:
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`The voltage of station power supply for analog subscriber
`lines is generally -48 V. However, in regard to the voltage for a
`station power supply for a digital subscriber line 104, in order
`to provide the prescribed power to the subscriber terminal 103,
`for example, the line voltage is taken to be about 120 V for the
`power supply power source 105 of the power supply circuit
`101. In addition, because the digital subscriber line 104 runs
`into the home of the consumer, it is desirable to ensure safety
`by decreasing the line voltage of the digital subscriber line 104
`in the home of the subscriber.
`
`During station power supply, the line impedance of the
`digital subscriber line 104 in the network terminal device 102
`becomes small, and the line voltage is sufficiently reduced.
`However, during local power supply, the line impedance of the
`digital subscriber line 104 is large, and thus the line voltage is,
`for example, 85 to 105 V. This type of voltage has been
`problematic in terms of safety when applied as the line voltage
`for the digital subscriber line 104 that runs into the homes of
`subscribers. An object of the present invention is to supply a
`prescribed power level while maintaining safety by applying a
`low voltage during local power supply and a high voltage
`during station power supply.
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`Ex. 1004 ¶¶ 5-6 (emphasis added). Figure 11 depicts one remote power
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`supply, which is not the 48 volt power supply of the disclosed invention.
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`See id. ¶ 2, Fig. 11. When local power is available in Figure 11, the line
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`impedance is large and the line voltage is 85-105 V. Id. ¶ 6. Conversely,
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`when station power is being supplied, the line impedance is low and the line
`
`voltage is reduced below 85 V. Id. Avaya contends that “minimal
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`communication” is permitted upon switching to a 120 V power supply. See
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`Reply 4. Paragraph 6 above, however, indicates that a line voltage of less
`
`than 85 V available to the NT1 and DTE would be sufficient for operation.
`
`See Ex. 1004 ¶ 6. Matsuno does not disclose precisely what that line voltage
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`is, but does state that 40 V is sufficient during local power supply. Id. ¶¶ 4,
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`6. Thus, reading the “minimal communication” language in context with the
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`following paragraphs describing the same prior art arrangement, we are not
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`persuaded by Avaya’s argument that operation/“minimal communication” is
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`only available based on high voltage V1 (-120 V).5
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`Second, Matsuno discloses that low voltage V2 (-48 V) is applied
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`when the NT1 and DTE are operating under local power, but high voltage
`
`V1 (-120 V) is applied if the local power fails. See Ex. 1004 ¶¶ 7-8, 18-22.
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`Citing our analysis in the Decisions on Institution, Avaya in its Reply
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`concludes that if the low voltage power supply was sufficient by itself to
`
`operate the access device, there would be no need to switch to high voltage
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`when local power is unavailable. Reply 3 (citing -385 Dec. on Inst. 15).
`
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`5 We note that Network-1 presented this argument for the first time at the
`hearing. See Tr. at 36:10-38:7. We exercise our discretion to consider this
`argument, however, given the fact that Avaya did not make its “minimal
`communication” argument in the Petition, and only raised the argument for
`the first time in its Reply.
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`Certainly, this reading is one assumption that one might make based on the
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`disclosure of Matsuno. Given the lack of express disclosure in Matsuno as
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`to whether the current generated from low voltage V2 (-48 V) is sufficient to
`
`operate the NT1 and DTE, however, it is not the only possible one. As
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`explained herein, Network-1 has come forward with sufficient evidence and
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`reasoning, particularly with respect to Dr. Knox’s testimony, to put that
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`assumption into question. Dr. Knox also provides numerous reasons why
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`the opposite would be true (i.e., high voltage is used even though the NT1
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`and DTE would operate based on the low voltage