2Wire, Inc.v.TQ Delta LLCDownload PDFPatent Trial and Appeal BoardMay 29, 201511863581 (P.T.A.B. May. 29, 2015) Copy Citation 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 IPR2015-00239 Patent 7,471,721 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 IPR2015-00239 Patent 7,471,721 B2 2 Petitioner 2Wire, Inc. filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claim 1 of U.S. Patent No. 7,471,721 B2 (Ex. 1001, “the ’721 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 ’721 Patent The ’721 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. 25–31. 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. 40–44. 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 IPR2015-00239 Patent 7,471,721 B2 3 (e.g., voltage, current, phase, frequency, power) to the time-averaged value of the signal parameter.” Id. at col. 1, l. 52–col. 2, l. 17. According to the ’721 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. 1, l. 67–col. 2, l. 19. 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. 20–22. Figure 1 of the ’721 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. 18–43. 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. 56–61. Modulator 46 modulates each carrier signal with a different IPR2015-00239 Patent 7,471,721 B2 4 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. 3–15. 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, ll. 41–64, col. 6, ll. 35–49. 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. 41–46, 57–60. 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. 46–51. According to the ’721 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, ll. 26–62. 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. 18–23. B. Challenged Claim Claim 1 of the ’721 patent recites: 1. In a multicarrier modulation system including a first transceiver in communication with a second transceiver using 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, a method for scrambling the phase characteristics of the carrier signals comprising: IPR2015-00239 Patent 7,471,721 B2 5 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 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. C. The Prior Art Petitioner relies on the following prior art: Alleged admitted prior art in the Specification of the ’721 patent at col. 1, ll. 25–39, col. 3, ll. 18–29, and Fig. 1 (Ex. 1001, “Admitted Prior Art”) (described at page 20 of the Petition); 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”). IPR2015-00239 Patent 7,471,721 B2 6 D. The Asserted Grounds Petitioner challenges claim 1 of the ’721 patent on the following grounds: 1 Reference(s) Basis Suzuki ’614, Suzuki ’415, and Admitted Prior Art 35 U.S.C. § 103(a) Laroia, T1.413, and Admitted Prior Art 35 U.S.C. § 103(a) Fifield and Suzuki ’415 35 U.S.C. § 103(a) 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 claim 1 require interpretation. Pet. 18. Patent Owner proposes an interpretation for “a value determined independently of any input bit value.” Prelim. Resp. 9–12. After reviewing the parties’ papers, we determine that no claim terms require express interpretation for purposes of this Decision. 1 Petitioner states that it “requests cancellation of claim 1 of the ’721 patent as unpatentable under 35 U.S.C. §§ 102(b) and 103,” but does not include any ground under 35 U.S.C. § 102(b) in its Petition. See Pet. 16–17. IPR2015-00239 Patent 7,471,721 B2 7 II. DISCUSSION A. Obviousness Based on Suzuki ’614, Suzuki ’415, and Admitted Prior Art Petitioner contends that claim 1 is unpatentable over Suzuki ’614, Suzuki ’415, and Admitted Prior Art under 35 U.S.C. § 103(a). Pet. 30–38. Petitioner relies on Suzuki ’614 for the limitations recited in the preamble of claim 1 (e.g., first and second transceivers, transmission signal having carrier signals) and “Suzuki ’614 in combination with Suzuki ’415” for the three steps of the recited method. Id. at 30–33. 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 30, 34–38 (citing Ex. 1002 ¶¶ 158–93, App. A1). Petitioner also argues that “[t]o 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,” citing in particular the ’721 patent’s discussion of multicarrier transceivers using DMT modulation. Id. at 33 (citing Ex. 1002 ¶¶ 189–93). 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 IPR2015-00239 Patent 7,471,721 B2 8 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. Petitioner merely alleges that the claim 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. 30–33. For example, with respect to the step of “associating each carrier signal with a value determined independently of any input bit value carried by that carrier signal,” Petitioner acknowledges that Suzuki ’614 does not “describe in detail” 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 IPR2015-00239 Patent 7,471,721 B2 9 independently of any input bit value” because they are random. Id. at 30–32 (citing Ex. 1009, col. 1, ll. 52–55, col. 3, ll. 25–30). Petitioner, however, 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 Suzuki ’614. The mere fact that Suzuki ’614 does not explain its random phase shift data “in detail” does not mean that a person of ordinary skill in the art would have looked to the particular calculations of Suzuki ’415. See id. at 31. 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. 15–16; 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. 33. Petitioner merely states that to the extent any aspect of the claimed modulation is not taught by Suzuki ’614 and Suzuki ’415, it “would have been obvious from the Admitted Prior Art.” Id. 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. 18–21. 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 ¶¶ 189–93. That analysis, however, is not discussed adequately in the Petition itself, as Petitioner only IPR2015-00239 Patent 7,471,721 B2 10 includes blanket citations to thirty-six paragraphs and an eight-page appendix of the Declaration. See Pet. 30–33 (citing Ex. 1002 ¶¶ 158–93, 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 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 claim 1 is unpatentable over Suzuki ’614, Suzuki ’415, and Admitted Prior Art. IPR2015-00239 Patent 7,471,721 B2 11 B. Obviousness Based on Laroia, T1.413, and Admitted Prior Art Petitioner’s asserted ground of unpatentability based on Laroia, T1.413, and Admitted Prior Art 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. 28. Petitioner relies on Laroia for the majority of the limitations of claim 1, citing twenty paragraphs and a five-page appendix of Dr. Jacobsen’s Declaration. See Pet. 39–44 (citing Ex. 1002 ¶¶ 194–213, App. B1). With respect to T1.413, Petitioner argues as follows: In addition, 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. Laroia in combination with the T1.413 standard teach a multicarrier modulation transceiver, a multicarrier transceiver in a DSL system. Id. at 39–40 (citations omitted). Thus, the only argument in the Petition as to why a person of ordinary skill in the art would have had reason to combine the teachings of T1.413 with those of Laroia is that it “would have been obvious” to combine the references. Such conclusory statements are insufficient. 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)). Nor can Petitioner 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. 39–44. Further, it is unclear what “network structures” in T1.413 Petitioner is relying on for the asserted IPR2015-00239 Patent 7,471,721 B2 12 combination, as Petitioner cites four figures and four pages of the lengthy standard document without pointing out any specific features. See id. at 39, 42 (citing Ex. 1006, 10–13, Figs. 2–5). Petitioner has not shown sufficiently a reason to combine the teachings of Laroia and T1.413 or explained sufficiently what aspects of the references would be combined. Finally, although the asserted ground is based on the combination of Laroia, T1.413, and Admitted Prior Art, Petitioner does not cite anything from the Admitted Prior Art in its analysis. See id. at 17, 39–44. Thus, Petitioner also has not shown sufficiently a reason to combine with respect to the Admitted Prior Art. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Laroia, T1.413, and Admitted Prior Art. C. Obviousness Based on Fifield and Suzuki ’415 Petitioner’s asserted ground of unpatentability based on Fifield and Suzuki ’415 under 35 U.S.C. § 103(a) is deficient as well. See Prelim. Resp. 30. Similar to its ground based on Suzuki ’614, Suzuki ’415, and Admitted Prior Art, Petitioner relies on Fifield for the limitations recited in the preamble of claim 1 (e.g., first and second transceivers, transmission signal having carrier signals), relies on “Fifield, in combination with Suzuki ’415,” for the three steps of the recited method, and cites twenty-five paragraphs and a nine-page appendix of Dr. Jacobsen’s Declaration. Pet. 45–51 (citing Ex. 1002 ¶¶ 241–38, App. C1). In particular, Petitioner cites Suzuki ’415’s random number generation for the limitation of a “value determined independently of any input bit value.” Id. at 46. Petitioner argues that IPR2015-00239 Patent 7,471,721 B2 13 “[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,” and that “[c]ombining Fifield with Suzuki ’415’s way of randomizing initial phase data of carriers will result in the ‘substantial scrambling’ described” in the Petition. Id. at 46–47. These statements, however, merely state the result of the asserted combination, i.e., Fifield’s basic components performing the random number calculations described in Suzuki ’415. They do not explain why a person of ordinary skill in the art would have considered making the combination. See KSR, 550 U.S. at 417–18; Unigene, 655 F.3d at 1360; Chaganti, 554 F. App’x at 922. Petitioner’s conclusory statements and citations to Dr. Jacobsen’s Declaration, without meaningful argument or explanation, are insufficient to meet its burden. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Fifield and Suzuki ’415. D. Conclusion We conclude that Petitioner has not demonstrated a reasonable likelihood that at least one of the challenged claims of the ’721 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. IPR2015-00239 Patent 7,471,721 B2 14 III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’721 patent. IPR2015-00239 Patent 7,471,721 B2 15 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