2Wire, Inc.v.TQ Delta LLCDownload PDFPatent Trial and Appeal BoardMay 29, 201511860080 (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 IPR2015-00241 Patent 8,073,041 B1 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 IPR2015-00241 Patent 8,073,041 B1 2 I. INTRODUCTION Petitioner 2Wire, Inc., Inc. filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1 and 14 of U.S. Patent No. 8,073,041 B1 (Ex. 1001, “the ’041 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 and 14 of the ’041 patent. II. BACKGROUND Related Proceedings A. The parties state that the ’041 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. IPR2015-00241 Patent 8,073,041 B1 3 The ’041 Patent B. The ’041 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. 29–34. 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. 44–48. 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. 22. According to the ’041 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 ’041 patent is reproduced below. IPR2015-00241 Patent 8,073,041 B1 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. 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, 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 “independently of the QAM symbols 58, and, therefore, independently of the IPR2015-00241 Patent 8,073,041 B1 5 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 ’041 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. 16–22. Challenged Claims of the ’041 Patent C. Independent claims 1 and 14 of the ’041 patent recite: 1. A method, in a first multicarrier transceiver that uses a plurality of carrier signals for receiving a bit stream, wherein each carrier signal has a phase characteristic associated with the bit stream, the method comprising: receiving the bit stream, 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 based on: the value associated with that carrier signal, and IPR2015-00241 Patent 8,073,041 B1 6 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 multicarrier transceiver to demodulate a same bit value of the received bit stream. 14. A multicarrier system including a first transceiver that uses a plurality of carrier signals for receiving a bit stream, wherein each carrier signal has a phase characteristic associated with the bit stream, the transceiver capable of receiving the bit stream, 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 based on: the value associated with that respective carrier signal, and the combining of a phase shift 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, multiple carrier signals corresponding to the plurality of phase shifted and scrambled carrier signals are used by the first multicarrier transceiver to demodulate a same input bit value of the received bit stream. IPR2015-00241 Patent 8,073,041 B1 7 Ex. 1001, col. 10, l. 58–col. 11, l. 11; col. 11, l. 42–col. 12, l. 16. The Asserted Grounds D. Petitioner asserts that the challenged claims of the ’041 patent are unpatentable for the following specific grounds (Pet. 14–15): Reference Basis Claims Challenged Suzuki ’614, 1 Suzuki ’415, 2 and Admitted Prior Art 3 35 U.S.C. § 103(a) 1 and 14 Laroia, 4 Suzuki ’415, and T1.413 5 35 U.S.C. § 103(a) 1 and 14 Fifield, 6 Suzuki ’415, and Admitted Prior Art 35 U.S.C. § 103(a) 1 and 14 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 ’041 patent at col. 1, ll. 29–43, 49–54, 57–64, col. 3, ll. 24–36, and Fig. 1 (Ex. 1001, “Admitted Prior Art”). 4 U.S. Patent No. 6,301,268 B1, filed Mar. 10, 1998, issued Oct. 9, 2001 (Ex. 1004, “Laroia”). 5 U.S. Patent No. 6,781,951 B1, filed Oct. 22, 1999, issued Aug. 24, 2004 (Ex. 1008, “Fifield”). 6 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”). IPR2015-00241 Patent 8,073,041 B1 8 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 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 1 and 14 do not require interpretation. Pet. 15–16. 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 multicarrier 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. IPR2015-00241 Patent 8,073,041 B1 9 Obviousness based on Suzuki ’614, Suzuki ’415, and Admitted Prior Art B. 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. 27–38. Petitioner relies on Suzuki ’614 and Suzuki ’415 for the limitations recited in claims 1 and 14. Id. at 33–38. 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 ¶¶ 158–220, 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 IPR2015-00241 Patent 8,073,041 B1 10 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 argues that the Suzuki ’614 with Suzuki ’415 references teach various aspects of the challenged claims. Pet. 27–31. For example, with respect to the limitation of “each carrier signal . . . associated with a value determined independently of any bit value of the bit stream carried by that respective carrier signal” in claim 1, Petitioner acknowledges that Suzuki ’614 does not “describe the details” of how the reference generates random phase shift data for each subcarrier, arguing that Suzuki ’415 teaches the generation of M-bit random numbers, which are “determined independently of any bit value” according to Petitioner because they are random. Id. at 29–30 (citing Ex. 1009, col. 1, ll. 52–55, col. 3, ll. 25–30, col. 4, ll. 22–34). With respect to combining these references, Petitioner 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 IPR2015-00241 Patent 8,073,041 B1 11 disclosed in Suzuki ’415 in order to produce the random phase shifts used in Suzuki ’614. Id. at 31 (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 result of the asserted combination, i.e., the basic components of Suzuki ’614 performing the random number calculations described in Suzuki ’415. 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, and Admitted Prior Art to achieve the method of claim 1 or system of claim 14. 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 IPR2015-00241 Patent 8,073,041 B1 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. 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, 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 an articulated rationale for combining the Admitted Prior Art with the teachings 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’s claim charts and analysis does not specifically cite the Admitted Prior Art in its analysis, or identify any rationale to combine any Admitted Prior Art teachings with those of the other cited references. See id. at 27–38. Petitioner merely offers conclusory statements on combining the prior art references, stating 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.” Pet. 31–32 (citations omitted). Accordingly, Petitioner has not provided, in the Petition, sufficient explanation of an articulated IPR2015-00241 Patent 8,073,041 B1 13 reason to combine the various teachings of the prior art. See 37 C.F.R. § 2.104(b)(4)–(5); see Prelim. Resp. 23–25. 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 ¶¶ 199–203. That analysis, however, is not discussed adequately in the Petition itself, as Petitioner relies on blanket citations to 62 paragraphs and a 27-page appendix of the Declaration. See Pet. 27–30 (citing Ex. 1002 ¶¶ 158–220, Appendix 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 IPR2015-00241 Patent 8,073,041 B1 14 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 claims 1 and 14 are unpatentable over Suzuki ’614, Suzuki ’415, and Admitted Prior Art. Obviousness Based on Laroia, Suzuki ’415, and T1.413 C. 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. 31–32. Petitioner relies on Laroia, Suzuki ’415, and T1.413 for the limitations recited in claims 1 and 14, specifically relying on Laroia for the multicarrier transceiver as well as the “value associated with [a] carrier signal” and “combining” steps of each claim. Pet. 39–47. Petitioner relies on Laroia in combination with Suzuki ’415 for the remaining steps recited in each claim, citing 57 paragraphs and a 19-page appendix of Dr. Jacobsen’s Declaration. Pet. 39–47 (citing Ex. 1002 ¶¶ 221–278, App. B1). Again, Petitioner argues that the claims would have been “obvious” in view of the three prior art references, but does not IPR2015-00241 Patent 8,073,041 B1 15 identify in the Petition any reason why an ordinarily skilled artisan would have combined the teachings of Laroia and Suzuki ’415. See id. at 36–39. With respect to T1.413, Petitioner argues that “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. [Ex. 1002] Jacobsen Decl., ¶¶ 254-257.” Pet. 41. As Patent Owner notes, Petitioner fails to offer any rationale for the combination of Suzuki ’415 with Laroia and T1.413. Prelim. Resp. 31; Pet. 41. In addition, 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. 39–47; 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 four pages of the lengthy standard document without pointing out any specific features. See Pet. 42, 44 (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 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. IPR2015-00241 Patent 8,073,041 B1 16 Obviousness Based on Fifield, Suzuki ’415, and Admitted Prior Art D. Petitioner’s asserted ground of unpatentability based on Fifield, Suzuki ’415, and Admitted Prior Art under 35 U.S.C. § 103(a) suffers from the same deficiencies discussed above. See Prelim. Resp. 34–36. Similar to the 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, carrier signals), relies on “Fifield, combined with Suzuki ’415,” for the remaining limitations recited in the claims, relies on “Fifield alone or in combination with Suzuki ’415, T1.413 7 or the Admitted Prior Art,” for the limitation of “multiple carrier signals corresponding to the scrambled carrier signals are used by the first multicarrier transceiver to demodulate a same bit value” and cites 52 paragraphs and a 26-page appendix of Dr. Jacobsen’s Declaration. Pet. 48– 56 (citing Ex. 1002 ¶¶ 279–331, App. C1). 7 Petitioner also argues that “it would have been obvious for multiple carriers to be used by the DMT transceiver of Fifield combined with Suzuki ’415 to demodulate a same bit value of a received bit stream, as T1.413 teaches that such multiple carriers may be used for backup transmissions of a same bitstream,” and that claim 14 would have been obvious in view of “Fifield, in combination with Suzuki ’415 and the Admitted Prior Art or T1.413.” Pet. 48–50. We presume that the citations to T1.413 were typographical errors, as the asserted ground is based only on Fifield, Suzuki ’415, and Admitted Prior Art. See id. at 15, 48. IPR2015-00241 Patent 8,073,041 B1 17 Petitioner fails to demonstrate a rationale to combine Fifield, Suzuki ’415, and Admitted Prior Art. Pet. 48–56; Prelim. Resp. 34. Indeed, the word “obvious” is used only in conclusory statements that the claims are “rendered obvious” with citation to the Jacobsen Declaration. Pet. 48, 50. 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 and 14 are unpatentable over Fifield, Suzuki ’415, and Admitted Prior Art. 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 ’041 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 ’041 patent. IPR2015-00241 Patent 8,073,041 B1 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