2Wire, Incv.TQ Delta LLC

Patent Trial and Appeal Board

May 29, 2015

11211535 (P.T.A.B. May. 29, 2015)

Trials@uspto.gov Paper 19
Tel: 571-272-7822 Entered: May 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

2WIRE, INC.,
Petitioner,

v.

TQ DELTA LLC,
Patent Owner.

Case IPR2015-00247
Patent 7,292,627 B2

Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner 2Wire, Inc. filed a Petition (Paper 1, “Pet.”) requesting an
inter partes review of claims 20 and 26 of U.S. Patent No. 7,292,627 B2
(Ex. 1001, “the ’627 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent
Owner TQ Delta LLC filed a Preliminary Response (Paper 11, “Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
an inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” After considering the Petition, and
associated evidence, we conclude that Petitioner has not demonstrated a
reasonable likelihood that it would prevail in showing unpatentability of all
the challenged claims. For the reasons that follow, we deny institution of an
inter partes review of claims 20 and 26 of the ’627 patent.
II. BACKGROUND
Related Proceedings A.
The parties state that the ’627 patent has been asserted in TQ Delta
LLC v. 2Wire Inc., Case No. 1:13-cv-01835-RGA (D. Del.); TQ Delta LLC
v. Zhone Technologies, Inc., Case No. 1:13-cv-01836-RGA (D. Del.); TQ
Delta LLC v. ZyXEL Communications Inc. et al., Case No. 1:13-cv-02013-
RGA (D. Del.); TQ Delta, LLC v. ADTRAN, Inc., Case No. 1:14-cv-00954-
RGA (D. Del.); and ADTRAN, Inc. v. TQ Delta LLC, Case No. 5:14-cv-
01381 (N.D. Ala.). Pet. 1; Paper 13, 2.
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The ’627 Patent B.
The ’627 patent pertains to communications systems using
multicarrier modulation, such as digital subscriber line (DSL) systems using
discrete multitone modulation (DMT), where a transmitter communicates
over a communication channel by modulating “[c]arrier signals (carriers) or
sub-channels spaced within a usable frequency band of the communication
channel.” Ex. 1001, col. 1, ll. 29–31. In such a system, the phase and
amplitude of the modulated carrier signals typically “can be considered
random” because they “result from the modulation of an arbitrary sequence
of input data bits comprising the transmitted information.” Id. at col. 1,
ll. 42–46. In some situations, however, the phases of the modulated carriers
may combine to produce a spike in the transmitted signal, which increases
the peak-to-average power ratio (PAR) of the signal, i.e., the “ratio of the
instantaneous peak value (i.e., maximum magnitude) of a signal parameter
(e.g., voltage, current, phase, frequency, power) to the time-averaged value
of the signal parameter.” Id. at col. 1, l. 55–col. 2, l. 23. According to the
’627 patent, PAR is an important consideration in designing a DMT
communication system because an increased PAR can result in high power
consumption or clipping of the transmission signal. Id. at col. 2, ll. 1–22.
Therefore, there was a need in the art for a system that can “effectively
scramble the phase of the modulated carrier signals in order to provide a low
PAR for the transmission signal.” Id. at col. 2, ll. 23–26.
Figure 1 of the ’627 patent is reproduced below.
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Figure 1 above depicts a digital subscriber line (DSL0 communication
system, including a transceiver 10 communicating transmission signals 38
over communication channel 18 (e.g., a pair of twisted wires of a telephone
line) to remote transceiver 14. Id. at col. 3, ll. 24–51. Quadrature amplitude
modulation (QAM) encoder 42 maps input serial data bit stream 54 in the
time domain into parallel QAM symbols 58 in the frequency domain. Id. at
col. 3, ll. 64–col. 4, l. 367. Modulator 46 modulates each carrier signal with
a different QAM symbol 58 so that the signals have the phase and amplitude
associated with the respective QAM symbol 58 (and input serial bit stream
54). Id. at col. 4, ll. 12–21. Phase scrambler 66 in modulator 46 calculates a
phase shift for each carrier signal and combines the calculated phase shift
with the phase characteristic of the respective carrier signal. Id. at col. 4, l.
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52–67, col. 6, ll. 35–46. Phase scrambler 66 calculates the phase shift for a
carrier signal by (1) determining one or more values “independently of the
QAM symbols 58, and, therefore, independently of the bit value(s)
modulated onto the carrier signal,” and (2) solving a “predetermined
equation” using the value associated with the carrier signal. Id. at col. 4, ll.
52–57, col. 5, ll. 1–4. For example, the value for a carrier signal may be
“derived from one or more predefined parameters, such as a pseudo random
number generator.” Id. at col. 4, ll. 57–61. According to the ’627 patent, the
use of a value determined independently of the input bit values results in a
lower PAR for the transmission signal. Id. at col. 2, l. 31–col. 3, l. 2, col. 6,
ll. 47–52. Transceiver 10 combines all of the carrier signals to form the
transmission signal that is sent to remote transceiver 14. Id. at col. 8, ll. 22–
27.
Challenged Claims of the ’627 Patent C.
Claims 20 and 26 of the ’627 patent recite:
20. A multicarrier modulation transceiver that uses
a transmission signal having a plurality of carrier
signals for modulating an input bit stream, each
carrier signal having a phase characteristic
associated with the input bit stream, wherein the
multicarrier modulation transceiver is capable of
associating each carrier signal with a value
determined independently of any input bit value
carried by that carrier signal, computing a phase
shift for each carrier signal based on the value
associated with that carrier signal and combining
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the phase shift computed for each carrier signal
with the phase characteristic of that carrier signal
so as to substantially scramble the phase
characteristics of the plurality of carrier signals.

26. The transceiver of claim 20 wherein the value
varies with each DMT symbol.
Ex. 1001, col. 11, l. 64–col. 12, l. 11, col. 12, ll. 30–31.
The Asserted Grounds D.
Petitioner asserts that the challenged claims of the ’627 patent are
unpatentable for the following specific grounds (Pet. 16–17):
References Basis
Claim(s)
Challenged
Suzuki ’614,
1
Suzuki ’415,
2
and
Admitted Prior Art
3

35 U.S.C. § 103(a) 20 and 26

1
U.S. Patent No. 5,903,614, issued May 11, 1999 (Ex. 1003, “Suzuki
’614”).
2
U.S. Patent No. 5,694,415, issued Dec. 2, 1997 (Ex. 1009, “Suzuki ’415”).
3
Alleged admitted prior art in the Specification of the ’627 patent at col. 1,
ll. 26–40, 49–54, 57–64, col. 3, ll. 24–37, and Fig. 1 (Ex. 1001, “Admitted
Prior Art”). See Pet. 19–20.
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References Basis
Claim(s)
Challenged
Laroia
4
and T1.413
5
35 U.S.C. § 103(a) 20
Laroia, T1.413, and Suzuki ’415 35 U.S.C. § 103(a) 26
Fifield
6
and Suzuki ’415 35 U.S.C. § 103(a) 20 and 26
III. ANALYSIS
Claim Interpretation A.
We determine the meaning of the claims as the first step of our
analysis. In an inter partes review, we interpret claims of an unexpired
patent using the broadest reasonable construction. 37 C.F.R. § 42.100(b);
see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
14, 2012); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–82 (Fed.
Cir. 2015). If an inventor acts as his or her own lexicographer, the definition
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d

4
U.S. Patent No. 6,301,268 B1, filed Mar. 10, 1998, issued Oct. 9, 2001
(Ex. 1004, “Laroia”).
5
ANSI T1.413-1998, DRAFT AMERICAN NATIONAL STANDARD FOR
TELECOMMUNICATIONS, NETWORK AND CUSTOMER INSTALLATION
INTERFACES—ASYMMETRIC DIGITAL SUBSCRIBER LINE (ADSL) METALLIC
INTERFACE (John Bingham & Frank Van der Putten, eds., 1998) (Ex. 1006,
“T1.413”).
6
U.S. Patent No. 6,781,951 B1, filed Oct. 22, 1999, issued Aug. 24, 2004
(Ex. 1008, “Fifield”).
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1243, 1249 (Fed. Cir. 1998). Claim terms generally are given their ordinary
and customary meaning, as would be understood by one of ordinary skill in
the art in the context of the entire disclosure. See In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner argues that the terms in claims 20 and 26 do not require
interpretation. Pet. 17. Patent Owner proposes interpretations for the claim
limitation: “a value determined independently of any bit value.” Prelim.
Resp. 9–12. After reviewing the parties’ papers, we find that no express
claim constructions are required for purposes of this Decision.
Obviousness based on Suzuki ’614, Suzuki ’415, B.
and Admitted Prior Art
Petitioner contends that claims 20 and 26 are unpatentable over
Suzuki ’614, Suzuki ’415, and Admitted Prior Art under 35 U.S.C. § 103(a).
Pet. 29–37. Petitioner relies on Suzuki ’614 to disclose a “multicarrier
modulation transceiver that uses a transmission signal having a plurality of
carrier signals for modulating an input bit stream” as recited in claim 20. Id.
at 29–30, 32–33. Petitioner also relies on Suzuki ’415 for the teaching that
the value associated with each carrier signal is generated by a random
number generator. Id. at 30, 34. Petitioner then relies on a combination of
Suzuki ’614 and Suzuki ’415 to teach that the phase shift is based on the
random value associated with the carrier signal. Id. at 31. Petitioner
provides a claim chart citing Suzuki ’614 and Suzuki ’415 and states that the
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claim chart is supported by the Declaration of Krista S. Jacobsen, Ph.D. Id.
at 29, 33–37 (citing Ex. 1002 ¶¶ 147–183, App. A1).
We are not persuaded that Petitioner has established a reasonable
likelihood of prevailing on its asserted ground based on Suzuki ’614, Suzuki
’415, and Admitted Prior Art. “Section 103(a) forbids issuance of a patent
when ‘the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 405 (2007). A patent claim, however, “is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” Id. at 401. “Rather, obviousness
requires the additional showing that a person of ordinary skill at the time of
the invention would have selected and combined those prior art elements in
the normal course of research and development to yield the claimed
invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
Cir. 2011). For an obviousness analysis, “it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
KSR, 550 U.S. at 418. Further, an assertion of obviousness “‘cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
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conclusion of obviousness.’” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
Based on the record before us, Petitioner fails to provide an articulated
reasoning or rationale in support of the combination of Suzuki ’614, Suzuki
’415, and Admitted Prior Art. See Pet. 29–32. With respect to the
combination, Petitioner states
It would have been obvious to combine Suzuki ’614 with
Suzuki ’415 in order to produce the subject matter of Claim 20.
For example, it would have been obvious to compute the
random phases disclosed in Suzuki ’614 in the manner
disclosed in Suzuki ’415 in order to produce the random phase
shifts used in Suzuki ’614. To the extent that some claimed
aspect of the transceiver or multicarrier modulation is
considered missing in Suzuki ’614 and Suzuki ’415, it would
have been obvious from the Admitted Prior Art in order to
implement the multicarrier modulation and transmission
disclosed in Suzuki ’614.

Pet. 31–32 (citations omitted). Petitioner’s first statement that it “would
have been obvious” to combine Suzuki ’614 with Suzuki ’415 is conclusory
and does not demonstrate a reason to combine. See KSR, 550 U.S. at 417–
18; Unigene, 655 F.3d at 1360; In re Chaganti, 554 F. App’x 917, 922 (Fed.
Cir. 2014) (stating that “[i]t is not enough to say that there would have been
a reason to combine two references because to do so would ‘have been
obvious to one of ordinary skill.’ Such circular reasoning is not sufficient—
more is needed to sustain an obviousness rejection.”) (citation omitted).
Petitioner’s second statement also is insufficient, as it merely states the
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result of the asserted combination, i.e., the basic components of Suzuki ’614
performing the random number calculations described in Suzuki ’415.
Petitioner’s argument does not offer any rationale to combine the
basic components of Suzuki ʼ614 to perform the calculations of Suzuki ʼ415.
Furthermore, Petitioner does not explain why an ordinarily skilled artisan
would have incorporated the phase shift calculations of Suzuki ’415 into the
system of Suzuki ’614. The mere fact that Suzuki ’614 does not describe the
“details” of its random phase shift data (see Pet. 30) does not mean that a
person of ordinary skill in the art would have looked to the particular
calculations of Suzuki ’415. See Pet. 32. Accordingly, we find that
Petitioner has not set forth an articulated rationale for combining the
calculations of Suzuki ʼ415 with Suzuki ʼ614 in reaching a conclusion of
obviousness.
Petitioner also fails to set forth any articulated rationale for combining
the Admitted Prior Art with the teachings of Suzuki ’614 and Suzuki ’415.
See Pet. 31–32. Although Petitioner’s asserted ground is based on the
combination of Suzuki ’614, Suzuki ’415, and Admitted Prior Art, Petitioner
merely offers conclusory statements that the Admitted Prior Art teaches
“some claimed aspect of the transceiver or multicarrier modulation” that
may be deemed missing from Suzuki ’614 and Suzuki ’415. See Pet. 32
(citations omitted). Accordingly, Petitioner has not provided, in the Petition,
sufficient explanation of an articulated reason to combine the various
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teachings of the prior art with Admitted Prior Art. See 37 C.F.R.
§ 42.104(b)(4)–(5).
Although we recognize that the Declaration of Dr. Jacobsen (Ex.
1002) includes additional discussion regarding the combination of Suzuki
’614, Suzuki ’415, and Admitted Prior Art (see, e.g., Ex. 1002 ¶¶ 187–91),
that analysis is not discussed adequately in the Petition itself, as Petitioner
relies on blanket citations to 37 paragraphs and a 10-page appendix of the
Declaration. See Pet. 29–37 (citing Ex. 1002 ¶¶ 147–183, App. A1). A
petition seeking inter partes review 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,” and must explain the
“relevance of the evidence to the challenge raised,” because the Board may
“give no weight to the evidence where a party has failed to state its
relevance or to identify specific portions of the evidence that support the
challenge.” 37 C.F.R. § 42.104(b)(4)–(5); see also 37 C.F.R. § 42.22(a)(2)
(a petition must include a “full statement of the reasons for the relief
requested, including a detailed explanation of the significance of the
evidence”). Dr. Jacobsen’s analysis of the combination of prior art is not
reflected in the Petition itself, and cannot be incorporated in the Petition by
reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated
by reference from one document into another document.”); Cisco Sys., Inc.
v. C-Cation Techs., LLC, Case IPR2014-00454, slip op. at 7–10 (PTAB
Aug. 29, 2014) (Paper 12) (informative) (noting that “[o]ne purpose of the
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prohibition against incorporation by reference is to eliminate abuses” of the
page limits established for the parties’ substantive papers, and that citing
“large portions of another document, without sufficient explanation of those
portions, amounts to incorporation by reference”). Consequently, we do not
consider information presented in the Declaration but not discussed
sufficiently in the Petition.
For the reasons stated above, we find that Petitioner has not
demonstrated a reasonable likelihood of prevailing on its assertion that
claims 20 and 26 are unpatentable over Suzuki ’614, Suzuki ’415, and
Admitted Prior Art.
Obviousness Based on Laroia and T1.413 C.
Petitioner’s asserted ground of unpatentability based on Laroia and
T1.413 under 35 U.S.C. § 103(a) repeats the same deficiency as its ground
based on Suzuki ’614, Suzuki ’415, and Admitted Prior Art. See supra
Section III.B; Prelim. Resp. 28–29. Petitioner cites 20 paragraphs and a 7-
page appendix of Dr. Jacobsen’s Declaration in support of the claim chart
showing that Laroia and T1.413 render claim 20 unpatentable. Pet. 39–47
(citing Ex. 1002 ¶¶ 197–216, App. B1). Again, Petitioner provides bare
allegations regarding the combination of prior art. Id. at 38.
With respect to T1.413, Petitioner argues that “[i]t would have been
obvious to combine the network structures disclosed in T1.413 to implement
them with the multicarrier modulation and transmission systems disclosed in
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Laroia. Jacobsen Decl., ¶¶199-201.” Id. Petitioner further argues that “[a]s
would have been appreciated by a person having ordinary skill in the art at
the time of the alleged invention, T1.413 is the standard for ADSL, which
describes operations performed by ADSL transceivers (referred to as the
ATU-C and ATU-R).” Id. As discussed above, Petitioner’s conclusory
statements cannot rely on the more detailed analysis of Dr. Jacobsen, as that
analysis is not discussed or reflected in the arguments made in the Petition
itself. See Pet. 37–39; KSR, 550 U.S. at 417–18; Unigene, 655 F.3d at 1360;
Chaganti, 554 F. App’x at 922. In addition, it is unclear what “network
structures” in T1.413 Petitioner is relying on for the asserted combination, as
Petitioner cites four figures and four pages of the lengthy standard document
without pointing out any specific features. See Pet. 40 (citing Ex. 1006, 10–
13, Figs. 2–5). Petitioner has not shown sufficiently an articulated reason
with rational underpinnings to support combining the teachings of T1.413
with those of Laroia or explained sufficiently what aspects of the references
would be combined.
Accordingly, Petitioner has not demonstrated a reasonable likelihood
of prevailing on its assertion that claim 20 is unpatentable over Laroia and
T1.413.
Obviousness Based on Laroia, T1.413, and Suzuki ’415 D.
Claim 26 depends from independent claim 20. Petitioner relies on the
same arguments presented for the unpatentability of claim 20 with respect to
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Laroia and T1.413. Pet. 43. For the reasons discussed above, Petitioner has
not demonstrated a sufficiently articulated reason or rationale to support the
combination of Laroia and T1.413. In addition, Petitioner fails to set out any
reasoning in the Petition for the combination of Suzuki ’415 with either
Laroia or T1.413. See Pet. 43. Finally, as discussed previously, Petitioner
cannot rely on the more detailed analysis of Dr. Jacobsen, as that analysis is
not discussed or reflected in the arguments made in the Petition itself (Pet.
43 (citing 29 paragraphs in Ex. 1002 ¶¶ 217–225)). See KSR, 550 U.S. at
417–18; Unigene, 655 F.3d at 1360; Chaganti, 554 F. App’x at 922.
Accordingly, Petitioner has not demonstrated a reasonable likelihood
of prevailing on its assertion that claim 26 is unpatentable over Laroia,
T1.413, and Suzuki ’415.
Obviousness Based on Fifield and Suzuki ’415 E.
Petitioner’s asserted ground of unpatentability based on Fifield and
Suzuki ’415 under 35 U.S.C. § 103(a) also fails to provide sufficient
reasoning to support the combination of the asserted references. See supra
Section III.B; Prelim. Resp. 34–35. Petitioner cites 29 paragraphs and a 10-
page appendix of Dr. Jacobsen’s Declaration in support of its claim charts
showing that Fifield and Suzuki ’415 render claim 20 and 26 unpatentable.
Pet. 44–51 (citing Ex. 1002 ¶¶ 226–254, App. C1).
To support the combination of Fifield and Suzuki ’415, Petitioner
states that “[i]t would have been obvious to combine [the random number
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generating] disclosure of Suzuki ’415 with Fifield in order to provide Fifield
with a way of randomizing the phase shifts of its carriers.” Pet. 45. As
discussed above, Petitioner does not offer a sufficient rationale to combine
the components of Fifield to perform the calculations of Suzuki ʼ415, nor
does Petitioner explain why an ordinarily skilled artisan would have
incorporated the phase shift calculations of Suzuki ’415 into the disclosure
of Fifield. Finally, Petitioner cannot rely on the more detailed analysis of
Dr. Jacobsen, which is not discussed sufficiently in the Petition. See KSR,
550 U.S. at 417–18; Unigene, 655 F.3d at 1360; Chaganti, 554 F. App’x at
922. Thus, Petitioner has not demonstrated a reasonable likelihood of
prevailing on its assertion that claims 20 and 26 are unpatentable over
Fifield and Suzuki ’415.
IV. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has not
demonstrated a reasonable likelihood that at least one of the challenged
claims of the ’627 patent is unpatentable based on the asserted grounds.
Therefore, we do not institute an inter partes review on any of the asserted
grounds as to any of the challenged claims.
V. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims of
the ’627 patent.
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PETITIONER:

Jennifer A. Albert
Eleanor M. Yost
GOODWIN PROCTER LLP
jalbert@goodwinprocter.com
eyost@goodwinprocter.com

PATENT OWNER:

Peter J. McAndrews
Thomas J. Wimbiscus
Christopher M. Scharff
McANDREWS HELD & MALLOY, LTD.
pmcandrews@mcandrews-ip.com
wimbiscus@mcandrews-ip.com
cscharff@mcandrews-ip.com