2Wire, Inc.v.TQ Delta LLC

Patent Trial and Appeal Board

May 29, 2015

12783725 (P.T.A.B. May. 29, 2015)

Trials@uspto.gov Paper 18
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 IPR2015-00240
Patent 8,090,008 B2
____________

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

ARBES, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Petitioner 2Wire, Inc. filed a Petition (Paper 2, “Pet.”) to institute an
inter partes review of claims 1 and 14 of U.S. Patent No. 8,090,008 B2
(Ex. 1001, “the ’008 patent”) pursuant to 35 U.S.C. §§ 311–19. Patent
Owner TQ Delta LLC filed a Preliminary Response (Paper 11, “Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314. Pursuant to 35 U.S.C.
§ 314(a), the Director may not authorize an inter partes review unless the
information in the petition and preliminary response “shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition.” For the reasons that follow,
we have decided not to institute an inter partes review.

I. BACKGROUND
A. The ’008 Patent
The ’008 patent pertains to multicarrier communications systems,
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. 33–39. 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. 48–52. 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
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(e.g., voltage, current, phase, frequency, power) to the time-averaged value
of the signal parameter.” Id. at col. 1, l. 60–col. 2, l. 25. According to the
’008 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. 8–27.
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. 28–30.
Figure 1 of the ’008 patent is reproduced below.

Figure 1 above depicts transceiver 10 communicating transmission signal 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. 25–50. 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, l. 63–col. 4, l. 1. Modulator 46 modulates each carrier signal with a
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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. 10–22. 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. 48–col. 5, l. 4, col. 6, ll. 41–53. 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. 48–53, 64–67. 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. 53–58. According to the
’008 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. 34–col. 3, l. 3. 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.

B. Challenged Claims
Claims 1 and 14 of the ’008 patent recite:
1. A method for scrambling phase characteristics of
carrier signals in a first multicarrier transceiver that uses a
plurality of carrier signals for modulating a bit stream, wherein
each carrier signal has a phase characteristic associated with the
bit stream, the method comprising:
associating each carrier signal with a value determined
independently of any bit value of the bit stream carried by that
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respective carrier signal, the value associated with each carrier
signal determined using a pseudo-random number generator;
computing a phase shift for each carrier signal based on
the value associated with that carrier signal; and
combining the phase shift computed for each respective
carrier signal with the phase characteristic of that carrier signal
so as to substantially scramble the phase characteristics of the
plurality of carrier signals, wherein multiple carrier signals
corresponding to the scrambled carrier signals are used by the
first multicarrier transceiver to modulate the same bit value.
14. A multicarrier system including a first transceiver
that uses a plurality of carrier signals for modulating a bit
stream, wherein each carrier signal has a phase characteristic
associated with the bit stream, the transceiver capable of:
associating each carrier signal 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 using a pseudo-random number generator;
computing a phase shift for each carrier signal based on
the value associated with that carrier signal; and
combining the phase shift computed for each respective
carrier signal with the phase characteristic of that carrier signal
to substantially scramble the phase characteristics of the
plurality of carrier signals, wherein multiple carrier signals
corresponding to the scrambled carrier signals are used by the
first transceiver to modulate the same bit value.

C. The Prior Art
Petitioner relies on the following prior art:
Alleged admitted prior art in the Specification of the ’008
patent at col. 1, ll. 33–47, col. 3, ll. 25–37, and Fig. 1
(Ex. 1001), and in U.S. Provisional Patent Application
No. 60/164,134 (Ex. 1015) (“Admitted Prior Art”) (described at
pages 17–18 of the Petition);
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U.S. Patent No. 5,694,415, issued Dec. 2, 1997
(Ex. 1009, “Suzuki ’415”);
U.S. Patent No. 5,903,614, issued May 11, 1999
(Ex. 1003, “Suzuki ’614”);
U.S. Patent No. 6,301,268 B1, filed Mar. 10, 1998,
issued Oct. 9, 2001 (Ex. 1004, “Laroia”);
U.S. Patent No. 6,781,951 B1, filed Oct. 22, 1999, issued
Aug. 24, 2004 (Ex. 1008, “Fifield”); and
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”).

D. The Asserted Grounds
Petitioner challenges claims 1 and 14 of the ’008 patent on the
following grounds:
1

Reference(s) Basis
Suzuki ’614, Suzuki ’415,
and Admitted Prior Art
35 U.S.C. § 103(a)
Laroia, Suzuki ’415, and
T1.413
35 U.S.C. § 103(a)
Fifield, Suzuki ’415, and
Admitted Prior Art
35 U.S.C. § 103(a)

1
Petitioner states that it “requests cancellation of claims 1 and 14 of the ’008
patent as unpatentable under 35 U.S.C. §§ 102 and 103,” but does not
include any ground under 35 U.S.C. § 102 in its Petition. See Pet. 14–15.
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E. Claim Interpretation
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 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). Petitioner argues that no
terms in claims 1 and 14 require interpretation. Pet. 15–16. Patent Owner
proposes interpretations for two phrases: “a value determined independently
of any bit value” and “wherein multiple carrier signals corresponding to the
scrambled carrier signals are used by the first transceiver to modulate the
same bit value.” Prelim. Resp. 9–16. After reviewing the parties’ papers,
we determine that no claim terms require express interpretation for purposes
of this Decision.

II. DISCUSSION
A. Obviousness Based on Suzuki ’614, Suzuki ’415, and
Admitted Prior Art
Petitioner contends that claims 1 and 14 are unpatentable over Suzuki
’614, Suzuki ’415, and Admitted Prior Art under 35 U.S.C. § 103(a). Pet.
27–35. Petitioner relies on Suzuki ’614 for the limitations recited in the
preambles of the claims (e.g., transceiver, carrier signals) and “Suzuki ’614
in combination with Suzuki ’415” for the three steps recited in the claims.
Id. at 27–30. Petitioner provides a claim chart citing various portions of
Suzuki ’614 and Suzuki ’415, 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 ¶¶ 157–200, App. A1).
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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 418. “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
conclusion of obviousness.’” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
Petitioner does not explain sufficiently in the Petition why a person of
ordinary skill in the art would have had reason to combine the teachings of
Suzuki ’614, Suzuki ’415, and Admitted Prior Art to achieve the method of
claim 1 or system of claim 14. Petitioner merely alleges that the claims
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would have been “obvious” in view of the three items of prior art, and
describes how Suzuki ’614 and Suzuki ’415 allegedly teach various aspects
of the claims. See Pet. 27–30. For example, with respect to the step of
“associating each carrier signal with a value determined independently of
any bit value of the bit stream carried by that respective carrier signal,”
Petitioner acknowledges that Suzuki ’614 does not “describe the details” of
how the reference generates random phase shift data for each subcarrier, and
argues that Suzuki ’415 teaches the generation of M-bit random numbers,
which, according to Petitioner, are “determined independently of any bit
value” because they are random. Id. at 28–29 (citing Ex. 1009, col. 1,
ll. 52–55, col. 3, ll. 25–30, col. 4, ll. 22–34). Petitioner then argues as
follows:
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.
Id. at 30 (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)
(“It 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 result of the asserted combination,
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i.e., the basic components of Suzuki ’614 performing the random number
calculations described in Suzuki ’415. It does not offer any rationale to
modify the basic components of Suzuki ’614 to perform the calculations of
Suzuki ’415, or explain why an ordinarily skilled artisan would have
incorporated the phase shift calculations of Suzuki ’415 into the system of
Suzuki ’614. Further, the mere fact that Suzuki ’614 does not describe the
“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. Indeed, as Patent Owner correctly points out,
Suzuki ’614 only discloses the end result of phase shifts, without any detail
as to how the phase shifts are calculated. See Prelim. Resp. 19–20;
Ex. 1003, col. 6, l. 36–col. 7, l. 18, Fig. 6. Accordingly, Petitioner has not
set forth, in the Petition, a rationale for combining the calculations of Suzuki
ʼ415 with Suzuki ʼ614 in reaching a conclusion of obviousness.
Likewise, Petitioner does not explain sufficiently why a person of
ordinary skill in the art would have had reason to combine any Admitted
Prior Art teachings with those of Suzuki ’614 and Suzuki ’415. See Pet. 27.
Petitioner’s asserted ground is based on the combination of Suzuki ’614,
Suzuki ’415, and Admitted Prior Art, but Petitioner does not cite anything
from the Admitted Prior Art in its analysis of the ground in the Petition, or
identify any reason why a person of ordinary skill in the art would have
combined any Admitted Prior Art teachings with those of the other cited
references. See id. at 27–35. Accordingly, Petitioner has not provided, in
the Petition, sufficient explanation of a reason to combine the various
teachings of the prior art. See 37 C.F.R. § 42.104(b)(4)–(5); Prelim. Resp.
23–25.
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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 ¶¶ 196–200. That
analysis, however, is not discussed adequately in the Petition itself, as
Petitioner only includes blanket citations to forty-four paragraphs and
a twenty-three-page appendix of the Declaration. See Pet. 27–30 (citing
Ex. 1002 ¶¶ 157–200, 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 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 consider
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information presented in the Declaration but not discussed sufficiently in the
Petition.
Petitioner has not demonstrated a reasonable likelihood of prevailing
on its assertion that claims 1 and 14 are unpatentable over Suzuki ’614,
Suzuki ’415, and Admitted Prior Art.

B. Obviousness Based on Laroia, Suzuki ’415, and T1.413
Petitioner’s asserted ground of unpatentability based on Laroia,
Suzuki ’415, and T1.413 under 35 U.S.C. § 103(a) suffers from the same
deficiency as its ground based on Suzuki ’614, Suzuki ’415, and Admitted
Prior Art. See supra Section II.A; Prelim. Resp. 33–34. Petitioner relies on
Laroia for the limitations recited in the preambles of claims 1 and 14 (e.g.,
transceiver, carrier signals) as well as the “computing” and “combining”
steps of each claim, and relies on “Laroia in combination with Suzuki ’415”
for the step recited in each claim of “associating each carrier signal with a
value determined independently of any bit value of the bit stream carried by
that respective carrier signal,” citing fifty-one paragraphs and an
eighteen-page appendix of Dr. Jacobsen’s Declaration. Pet. 36–43 (citing
Ex. 1002 ¶¶ 215–65, App. B1). Again, Petitioner argues that the claims
would have been “obvious” in view of the three prior art references, but does
not identify in the Petition any reason why an ordinarily skilled artisan
would have incorporated the phase shift calculations of Suzuki ’415 into the
system of Laroia. See id. at 36–39.
With respect to T1.413, Petitioner argues as follows:
To the extent that some claimed aspect of the transceiver
or multicarrier modulation is considered missing in Laroia, it
would have been obvious from T1.413 in order to implement
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the multicarrier modulation and transmission disclosed in
Laroia. It 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.
Id. at 38 (citations omitted). These conclusory statements are insufficient,
and 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. See id. at 36–43; KSR, 550 U.S. at 417–18; Unigene, 655
F.3d at 1360; Chaganti, 554 F. App’x at 922. Further, it is unclear what
“network structures” in T1.413 Petitioner is relying on for the asserted
combination, as Petitioner cites four figures and five pages of the lengthy
standard document without pointing out any specific features. See Pet. 38,
40 (citing Ex. 1006, 10–13, 132, Figs. 2–5). Petitioner has not shown
sufficiently a reason to combine 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 and 14 are unpatentable over
Laroia, Suzuki ’415, and T1.413.

C. Obviousness Based on Fifield, Suzuki ’415, and
Admitted Prior Art
Petitioner’s asserted ground of unpatentability based on Fifield, Suzuki
’415, and Admitted Prior Art under 35 U.S.C. § 103(a) is deficient as well.
See Prelim. Resp. 37–38. Similar to its ground based on Suzuki ’614,
Suzuki ’415, and Admitted Prior Art, Petitioner relies on Fifield for the
limitations recited in the preambles of claims 1 and 14 (e.g., transceiver,
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carrier signals), relies on “Fifield, combined with Suzuki ’415,” for the three
steps recited in the claims, relies on “Fifield alone or in combination with
Suzuki ’415, and the Admitted Prior Art,” for the limitation of “multiple
carrier signals corresponding to the scrambled carrier signals . . . used by the
first transceiver to modulate the same bit value,” and cites sixty-five
paragraphs and a twenty-three-page appendix of Dr. Jacobsen’s Declaration.
Pet. 44–52 (citing Ex. 1002 ¶¶ 252–316, App. C1). Again, Petitioner merely
alleges that the claims would have been “obvious,” without explaining in the
Petition any reason why a person of ordinary skill in the art would have
combined the teachings of the three items of prior art. Id. at 44–46.
Petitioner also 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 and 14 are unpatentable over Fifield, Suzuki ’415, and
Admitted Prior Art.

D. Conclusion
We conclude that Petitioner has not demonstrated a reasonable
likelihood that at least one of the challenged claims of the ’008 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.

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III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of
the ’008 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