2Wire, Inc.v.TQ Delta LLCDownload PDFPatent Trial and Appeal BoardMay 29, 201513439605 (P.T.A.B. May. 29, 2015) Copy Citation Trials@uspto.gov Paper 18 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 IPR2015-00243 Patent 8,355,427 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 IPR2015-00243 Patent 8,355,427 B2 2 I. INTRODUCTION Petitioner 2Wire, Inc. filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1, 6, 7, and 29 of U.S. Patent No. 8,355,427 B2 (Ex. 1001, “the ’427 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 1, 6, 7, and 29 of the ’427 patent. II. BACKGROUND Related Proceedings A. The parties state that the ’427 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. IPR2015-00243 Patent 8,355,427 B2 3 The ’427 Patent B. The ’427 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. 32–38. 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. 47–51. 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. 59–col. 2, l. 26. According to the ’427 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. 7–29. 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. 27–29. Figure 1 of the ’427 patent is reproduced below. IPR2015-00243 Patent 8,355,427 B2 4 Figure 1 above depicts 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. 24–49. 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. 62–67. 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. 9–21. 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. 47–col. 5, l. 3, col. 6, ll. 40–52. Phase scrambler 66 calculates the phase shift for a carrier signal by (1) determining one or more values IPR2015-00243 Patent 8,355,427 B2 5 “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. 47–52, 63–66. 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. 53–55. According to the ’427 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. 46–53. 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. 17–22. Illustrative Claim of the ’427 Patent C. Independent claim 1 of the ’427 patent recites: 1. A method, in a first transceiver that uses a plurality of carrier signals for receiving a bit stream that was transmitted by a second transceiver, wherein each carrier signal has a phase characteristic associated with the bit stream, comprising: receiving the bit stream from the second transceiver, wherein: each carrier signal is associated with a value determined independently of any bit value of the bit stream carried by that respective carrier signal, the value associated with each carrier signal determined by a pseudo-random number generator, a phase shift for each carrier signal is at least based on: IPR2015-00243 Patent 8,355,427 B2 6 the value associated with that carrier signal, and the combining of a phase for each carrier signal with the phase characteristic of that respective carrier signal so as to substantially scramble the phase characteristics of the plurality of carrier signals, and multiple carrier signals corresponding to the plurality of phase shifted and scrambled carrier signals are used by the first transceiver to demodulate a same bit value of the received bit stream; and wherein: the first and second transceivers communicate over one or more of a pair of twisted wires of a telephone subscriber line, fiber optic and wireless, and the first and second transceivers transport one or more applications. Ex. 1001, col. 10, l. 58–col. 11, l. 20. The Asserted Grounds D. Petitioner asserts that the challenged claims of the ’427 patent are unpatentable for the following specific grounds (Pet. 13–14): IPR2015-00243 Patent 8,355,427 B2 7 References Basis Claims Challenged Suzuki ’614, 1 Suzuki ’415, 2 Admitted Prior Art, 3 and McGregor 4 35 U.S.C. § 103(a) 1, 6, 7, and 29 T1.413, 5 Laroia, 6 and Suzuki ’415 35 U.S.C. § 103(a) 1, 6, 7, and 29 Fifield, 7 Suzuki ’415, and McGregor 35 U.S.C. § 103(a) 1, 6, 7, and 29 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 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 ’427 patent at col. 1, ll. 24–46 and Fig. 1 (Ex. 1001), and in U.S. Provisional Patent Application No. 60/164,134 (Ex. 1015) (“Admitted Prior Art”). See Pet. 17. 4 U.S. Patent No. 5,577,100, issued Nov. 19, 1996 (Ex. 1022, “McGregor”). 5 U.S. Patent No. 6,781,951 B1, filed Oct. 22, 1999, issued Aug. 24, 2004 (Ex. 1008, “Fifield”). 6 U.S. Patent No. 6,301,268 B1, filed Mar. 10, 1998, issued Oct. 9, 2001 (Ex. 1004, “Laroia”). 7 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”). IPR2015-00243 Patent 8,355,427 B2 8 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 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 the challenged claims do not require interpretation. Pet. 15. Patent Owner proposes interpretations for two limitations: “a value determined independently of any bit value” and “multiple carrier signals corresponding to the plurality of phase shifted and scrambled carrier signals are used by the first transceiver to demodulate a same bit value of the received bit stream.” Prelim. Resp. 9–16. 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. Admitted Prior Art, and McGregor Petitioner contends that claims 1, 6, 7, and 29 are unpatentable over Suzuki ’614, Suzuki ’415, Admitted Prior Art, and McGregor under 35 U.S.C. § 103(a). Pet. 27–36. Petitioner relies on Suzuki ’614 to disclose the IPR2015-00243 Patent 8,355,427 B2 9 first transceiver using a plurality of carrier signals for receiving a bit stream transmitted from the second transceiver. Id. at 27–28. Petitioner relies on Suzuki ’415 for the disclosure that the value associated with each carrier signal is generated by a random number generator. Id. at 29. Petitioner’s contention 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. Finally, Petitioner relies on McGregor in combination with Suzuki ’614 to disclose that the first and second transceivers are used to transport one or more applications. Id. at 31, 35–36. Petitioner provides a claim chart citing Suzuki ’614, Suzuki ’415 and McGregor, and states that the claim chart is supported by the Declaration of Krista S. Jacobsen, Ph.D. Id. at 27, 31–35 (citing Ex. 1002 ¶¶ 162–260, 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, Admitted Prior Art, and McGregor. “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 IPR2015-00243 Patent 8,355,427 B2 10 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 conclusion of obviousness.’” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We agree with Patent Owner (Prelim. Resp. 24–25) that Petitioner fails to provide an articulated reasoning or rationale in support of the combination of Suzuki ’614, Suzuki ’415, Admitted Prior Art, or McGregor. See Pet. 27–31. 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 1. 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. . . . Moreover, it would have been obvious to combine the wireless network disclosed in Suzuki IPR2015-00243 Patent 8,355,427 B2 11 ’614 with the teachings of McGregor, which discloses applications to be carried over wireless networks. 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 regarding phase shifts also is insufficient, as it merely states the result of the asserted combination, i.e., the basic components of Suzuki ’614 performing the random number calculations described in Suzuki ’415. In sum, Petitioner has not provided articulated reasoning with some rational underpinning to support its contentions that a person of ordinary skill in the art would have had reason to combine the teachings of Suzuki ’614, Suzuki ’415, McGregor, and Admitted Prior Art to achieve the challenged claims. Petitioner 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 IPR2015-00243 Patent 8,355,427 B2 12 “details” of its random phase shift data does not mean that a person of ordinary skill in the art would have looked to the particular calculations of Suzuki ’415. See Pet. 28–29. 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’s contention that it would have been obvious to combine McGregor with Suzuki ’614 because they both use wireless networks also is conclusory. See id. at 30–31. Petitioner also fails to set forth a sufficient articulated rationale for combining the Admitted Prior Art with the teachings of Suzuki ’614, Suzuki ’415, and McGregor. See id. at 31. Although Petitioner’s asserted ground is based on the combination of Suzuki ’614, Suzuki ’415, Admitted Prior Art, and McGregor, Petitioner does not identify a rationale to combine the Admitted Prior Art with the other cited references. See id. at 27–36. Instead, Petitioner merely offers conclusory statements that Admitted Prior Art teaches “some claimed aspect of the transceiver or multicarrier modulation” that may be judged missing from Suzuki ’614 and Suzuki ’415. Id. at 31 (citations omitted). Accordingly, Petitioner has not provided, in the Petition, sufficient explanation of an articulated reason to combine the various teachings of the prior art. See 37 C.F.R. § 42.104(b)(4)–(5). We recognize that the Declaration of Dr. Jacobsen (Ex. 1002) includes additional discussion regarding the combination of Suzuki ’614, Suzuki ’415, Admitted Prior Art, and McGregor. See, e.g., Ex. 1002 ¶¶ 192, 211– IPR2015-00243 Patent 8,355,427 B2 13 221. That analysis, however, is not discussed adequately in the Petition itself, as Petitioner relies on blanket citations to 98 paragraphs and a 31-page appendix of the Declaration. See Pet. 27–32 (citing Ex. 1002 ¶¶ 163–260, 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 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 IPR2015-00243 Patent 8,355,427 B2 14 consider information presented in the Declaration but not discussed sufficiently in the Petition. Based on the foregoing, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 6, 7, and 29 are unpatentable over Suzuki ’614, Suzuki ’415, Admitted Prior Art, and McGregor. Obviousness Based on T1.413, Laroia, and Suzuki ’415 C. Petitioner’s asserted ground of unpatentability based on T1.413, Laroia, and Suzuki ’415 under 35 U.S.C. § 103(a) suffers from the same deficiency as its ground based on Suzuki ’614, Suzuki ’415, Admitted Prior Art, and McGregor. See supra Section III.B; Prelim. Resp. 36–38. Petitioner cites 82 paragraphs and a 31-page appendix of Dr. Jacobsen’s Declaration in support of the claim chart showing that claims 1, 6, 7, and 29 are unpatentable over T1.413, Laroia, and Suzuki ’415. Pet. 39–47 (citing Ex. 1002 ¶¶ 261–342, App. B1). Again, Petitioner provides bare allegations supporting the combination of the prior art. Id. at 38, 39. With respect to combining T1.413 with Suzuki ’415, Petitioner argues that “[i]t would have been obvious to one of ordinary skill in the art to combine the teachings of T1.413 and Laroia with Suzuki ’415, because Suzuki ’415 supplies a method for generating the random numbers disclosed in Laroia.” Id. at 38. Petitioner’s arguments are conclusory and fail to offer any rationale to combine the basic components of T1.413 or Laroia to IPR2015-00243 Patent 8,355,427 B2 15 perform the calculations of Suzuki ʼ415. Petitioner’s statement 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 Laroia” because “T1.413 is the standard for ADSL, which describes operations performed by ADSL transceivers,” are equally unavailing. See id. at 39. It is unclear what “network structures” in T1.413 Petitioner is relying on for the asserted combination, as Petitioner cites numerous figures and pages of the lengthy standard document without pointing out any specific features. See Pet. 41, 43 (citing Ex. 1006, 1, 10– 14, 26, 40, 41, 55, 65–66, 81, 82, Figs. 2, 4). As stated 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. 37–40; KSR, 550 U.S. at 417–18; Unigene, 655 F.3d at 1360; Chaganti, 554 F. App’x at 922. Petitioner has not shown sufficiently an articulated reason with rational underpinnings to support combining the teachings of T1.413 with those of Laroia and Suzuki ’415, 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 claims 1, 6, 7, and 29 are unpatentable over T1.413, Laroia, and Suzuki ’415. IPR2015-00243 Patent 8,355,427 B2 16 Obviousness Based on Fifield, Suzuki ’415, and McGregor D. Petitioner’s asserted ground of unpatentability based on Fifield, Suzuki ’415, and McGregor under 35 U.S.C. § 103(a) suffers from the same deficiencies discussed above. See Section III.B and III.C; Prelim. Resp. 42– 45. Similar to the ground based on Suzuki ’614, Suzuki ’415, Admitted Prior Art, and McGregor, Petitioner relies on Fifield for the limitations allegedly disclosed by Suzuki ’614 for the first and second transceiver. Pet. 45. Petitioner’s analysis and claim charts then rely on combinations of Fifield and Suzuki ’415 for the remaining limitations recited in the claims. Id. at 45–47. Petitioner cites 91 paragraphs and a 30-page appendix of Dr. Jacobsen’s Declaration in support of its claim charts. Id. at 48–56 (citing Ex. 1002 ¶¶ 342–432, App. C1). Petitioner fails to demonstrate a rationale to combine Fifield, Suzuki ’415, and McGregor. Pet. 45–52; Prelim. Resp. 42–43. Indeed, the word “obvious” is used only in conclusory statements with citation to the Jacobsen Declaration. Pet. 46, 47. With respect to the combination, Petitioner contends that “[i]t would have been obvious to combine this disclosure of Suzuki ’415 with Fifield in order to provide Fifield with a way of randomizing the phase shifts of its carriers” (Pet. 46) and that “[i]t would have been obvious for the multicarrier transceivers of Fifield combined with Suzuki ’415 to transport one or more applications” (Pet. 47). As stated previously, Petitioner does not offer any rationale to combine the basic components of Fifield to perform the calculations of Suzuki ʼ415, nor does IPR2015-00243 Patent 8,355,427 B2 17 Petitioner explain why an ordinarily skilled artisan would have incorporated the phase shift calculations of Suzuki ’415 into the system of Fifield. Petitioner also fails to make any statement regarding the reasoning or rational to combine McGregor with Fifield or Suzuki ’415. Id. at 45–47. Finally, Petitioner cannot rely on the more detailed analysis of Dr. Jacobsen, which is not discussed sufficiently in the Petition. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 6, 7, and 29 are unpatentable over Fifield, Suzuki ’415, and McGregor. 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 ’427 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 ’427 patent. IPR2015-00243 Patent 8,355,427 B2 18 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 Copy with citationCopy as parenthetical citation