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

Patent Trial and Appeal Board

Jul 2, 2013

09520350 (P.T.A.B. Jul. 2, 2013)

Trials@uspto.gov Paper 24
571-272-7822 Entered: July 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS
AB; and AXIS COMMUNICATIONS INC.
Petitioners

v.

NETWORK-1 SECURITY SOLUTIONS, INC.
Patent Owner
____________

Case IPR2013-00092
Patent 6,218,930

Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION
Petitioners’ Request for Rehearing
37 C.F.R. § 42.71
Case IPR2013-00092
Patent 6,218,930

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Introduction
Petitioners filed a request for rehearing (Paper 22, “Rehearing
Request”) of the Board’s decision (Paper 21, “Decision”) not to institute an
inter partes review of claims 6, 8, and 9 of Patent 6,218,930 (the “’930
patent”). Petitioners contend that the Board erred in not instituting on the
ground that claims 6, 8, and 9 are anticipated by Woodmas (Ex. 1005) under
35 U.S.C. § 102(b). Petitioners do not challenge the Board’s decision as to
any of the other grounds of unpatentability asserted in the Petition. For the
reasons stated below, Petitioners’ request is denied.

Analysis
In determining whether to institute an inter partes review of a patent,
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). When rehearing a
decision on petition, the Board will review the decision for an abuse of
discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the
burden of showing an abuse of discretion, and “[t]he request must
specifically identify all matters the party believes the Board misapprehended
or overlooked.” 37 C.F.R. § 42.71(d).
We determined in the Decision that Petitioners had not established a
reasonable likelihood of prevailing on their assertion that claims 6, 8, and 9
are anticipated by Woodmas under 35 U.S.C. § 102(b). Dec. 21-24.
Specifically, independent claim 6 recites providing a “data node adapted for
data switching.” We interpreted “data node adapted for data switching” to
mean a data switch or hub configured to communicate data using temporary
rather than permanent connections with other devices or to route data
Case IPR2013-00092
Patent 6,218,930

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between devices, and concluded that Petitioners had not shown that control
station 14 in Woodmas is a “data node adapted for data switching” under
that interpretation. Id. at 11-12, 22-24.
Petitioners argue that the Board misapprehended or overlooked the
fact that control station 14 includes a particular component, namely a
“production switcher,” that makes control station 14 a “data node adapted
for data switching” as recited in claim 6. Rehearing Req. 4-10. Petitioners
contend that the “production switcher” in Woodmas is able to send and
receive “multiplexed” signals to and from various devices at camera station
16 and “temporarily form connections for signals to and from” those
devices. Id. at 4-8. Petitioners submit new Exhibit 1023, Patent 5,325,202,
as allegedly indicative of what a person of ordinary skill in the art would
have understood the term “production switcher” in Woodmas to mean at the
time. Id. at 5 n.3.
1

We could not have misapprehended or overlooked something not
explained adequately in the initial Petition. The arguments Petitioners now
make with respect to the “production switcher” in Woodmas were not
included in the Petition. The entirety of Petitioners’ argument in the Petition
with respect to the “data node adapted for data switching” limitation of
claim 6 is as follows:

1
Petitioners also argue that Woodmas discloses other limitations of claim 6
(in addition to the “data node adapted for data switching”) and dispute
various arguments made by Patent Owner in its preliminary response.
Rehearing Req. 3, 9-12. None of these issues was addressed in the Decision,
as the Board concluded that Petitioners had not made a threshold showing as
to the “data node adapted for data switching” in independent claim 6. See
Dec. 24 n.3. Thus, the new arguments are not entitled to consideration.
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Woodmas discloses providing a data node adapted for
data switching (e.g., control station 14).
Woodmas, 2:54-61 (“Apparatus 10 broadly includes
control station module 26 and camera station module 28
interconnected by conventional 75-Ohm coaxial cable 30.
Control station module 26 is also coupled with control station
14 for bi-directional signal transfer therewith, and camera
station module 28 is coupled with components 18-24 of camera
station module 16 also for bidirectional signal transfer
therewith.”).
See also id. at 2:41–53; 2:54-61; 2:62–3:11.
Pet. 27-28 (emphases in original). Thus, Petitioners’ argument amounts to
an identification of control station 14 as the claimed “data node adapted for
data switching” and a citation to 38 lines of Woodmas. As explained in the
Decision, Petitioners included no analysis as to how control station 14
allegedly is adapted for data switching. Dec. 23-24. Petitioners do not
mention specifically the “production switcher,” explain how it works, or
identify it as the part of control station 14 allegedly responsible for data
switching. It cannot be said that the Board misapprehended or overlooked
an argument regarding the “production switcher” that was never made.
Similarly, we could not have misapprehended or overlooked evidence
that was not part of the record at the time of the Decision. Petitioners have
not shown good cause for considering Exhibit 1023, submitted for the first
time with Petitioners’ rehearing request, at this stage of the proceeding. See
Rehearing Req. 5 n.3 (citing Ex. 1023 for the alleged meaning of
“production switcher”); Office Patent Trial Practice Guide, 77 Fed. Reg.
48756, 48768 (Aug. 14, 2012) (in deciding a request for rehearing,
“[e]vidence not already of record at the time of the decision will not be
admitted absent a showing of good cause”).
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Petitioners do not point to anything specific in the Petition that would
have provided notice to Patent Owner or the Board that Petitioners were
arguing control station 14 to be a “data node adapted for data switching”
because of the presence and operation of a “production switcher.” The mere
citation to 38 lines in Woodmas, without explanation, does not equate to an
argument that control station 14 is a “data node adapted for data switching”
because it has a “production switcher” that operates in a particular way. A
request for rehearing is not an opportunity to supplement an initial petition
and make arguments a petitioner did not make before. See 37 C.F.R. §
42.104(b)(4) (a petition must identify “[h]ow the construed claim is
unpatentable under the statutory grounds identified” and “where each
element of the claim is found in the prior art patents or printed publications
relied upon”).
Petitioners have not carried their burden of demonstrating that the
Board’s Decision misapprehended or overlooked any matters argued in the
Petition. As such, Petitioners have not shown an abuse of discretion in the
decision not to institute an inter partes review based on Woodmas.
In consideration of the foregoing, it is hereby ORDERED that
Petitioners’ request for rehearing is denied.
Case IPR2013-00092
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

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