throbber
Filed on behalf of TQ Delta, LLC
`By: Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ARRIS GROUP, INC.
`Petitioner
`
`v.
`
`TQ DELTA, LLC
`Patent Owner
`_____________
`
`
`Case No. IPR2016-00428
`Patent No. 7,835,430
`_____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
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`
`

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`
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`TABLE OF CONTENTS
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`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`SUMMARY OF THE ’430 PATENT ............................................................. 7
`
`III. CLAIM CONSTRUCTION ............................................................................ 8
`
`IV. NO REVIEW SHOULD BE INSTITUTED BECAUSE THE PETITION IS
`UNTIMELY .................................................................................................... 8
`
`A. Factual Background of Petitioner Arris ..................................................... 9
`
`B. The 1-Year Bar of 35 U.S.C. § 315(b) Applies to Any Privy of a
`Company Served With a Complaint And Is Not Limited in Time .......... 11
`
`C. Even if Privity Must Exist as of the Petition Date for § 315(b)’s
`Bar to Apply, That Requirement Would Also Be Satisfied Here ............ 15
`
`V. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO THE
`GROUNDS RAISED BY PETITIONER ......................................................17
`
`A. Ground 1: Obviousness of Claims 1-6 Over T2500 Manual In
`View of Held-DataComDev4 ................................................................. 21
`
`1. Petitioner Improperly Relies On a Product Rather Than a
`Printed Publication, Fails to Identify All Prior Art Forming
`the Basis for the Challenge, and Relies on Unauthenticated
`and Unreliable Evidence ...................................................................21
`
`2. The Combination of T2500 and Held-DataComDev4 Fails to
`Disclose All Limitations of Claims 1-6 ............................................25
`
`3. Petitioner Fails to Provide Sufficient Non-Conclusory Evidence
`to Support a Reason to Combine the References ...............................33
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`B. Ground 2: Obviousness of Claims 1-6 Over US Patent 4,679,227
`(Hughes), US Patent 4,438,511 (Baran), and US Patent 5,838,268
`(Frenkel) .................................................................................................. 40
`
`1. The Combination of the Hughes, Baran, and Frenkel Would
`Still Fail to Disclose Several Claim Elements ....................................40
`
`2. Petitioner Fails to Provide Sufficient Non-Conclusory Evidence
`to Support a Reason to Combine the References ...............................48
`
`VI. CONCLUSION ..............................................................................................52
`
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`EXHIBIT LIST
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`Exhibit 2001: IEEE Dictionary Excerpts
`
`Exhibit 2002: Co-operation Agreement
`
`Exhibit 2003: 10/21/2015 Arris Press Release
`
`Exhibit 2004: Common Defense Agreement, May 20, 2015
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`Exhibit 2005: 12/23/2015 Pace Press Release
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`Exhibit 2006: 1/4/2016 Arris Press Release
`
`Exhibit 2007: Corporate Disclosure Statement, 13-cv-01835-RGA, (D. Del.), D.I.
`
`142, Filed 02/17/16
`
`Exhibit 2008: Second Amended Complaint for Patent Infringement, 13-cv-01835-
`
`RGA, (D. Del.), D.I. 24, Filed and Served via ECF on 02/07/14
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`I.
`
`INTRODUCTION
`
`Patent Owner TQ Delta, LLC (“TQ Delta” or “Patent Owner”) submits this
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`preliminary response to the Petition filed by Arris Group, Inc. (“Arris” or
`
`“Petitioner”) requesting inter partes review of claims 1-6 of U.S. Pat. No.
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`7,835,430 (“the ’430 patent”).
`
`As an initial matter, the Board must deny Institution of this proceeding
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`under the 1-year bar date of 35 U.S.C. § 315(b). 2Wire, Inc., a privy of Petitioner
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`Arris and a real party in interest, was served with a complaint alleging
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`infringement of the ’430 Patent on February 7, 2014—more than one year before
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`the January 2, 2016 filing date of this Petition. Arris is the acquirer and successor-
`
`in-interest of 2Wire. Arris should not be allowed to circumvent the statutory bar
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`of § 315(b), especially when Arris controls the on-going district court proceedings
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`where it can still challenge the validity of the ’430 patent.
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`But in any event, the Petition also fails to demonstrate a reasonable
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`likelihood that claims 1-6 of the ’430 patent are unpatentable. Each of the asserted
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`prior art references differs significantly from the inventions claimed by the ’430
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`patent. Numerous claim limitations are missing from each of the asserted prior art
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`references.
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` Not surprisingly, each of Petitioner’s asserted grounds for
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`unpatentability
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`therefore
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`relies on obviousness.
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` Petitioner, however,
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`unsuccessfully attempts to cobble together various discrete features from multiple
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`different prior art references, with no rhyme nor reason, no evidence of any reason
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`why one of ordinary skill in the art would do so, and no evidence of any reasonable
`
`expectation of success.
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`At this stage, the Board can decline instituting trial on both of the two
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`proposed Grounds for several straightforward reasons.
`
`Ground 1: First, Petitioner misleadingly claims that it is combining only
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`two prior art references for obviousness purposes (i.e., the T2500 Manual and the
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`Held-DataComDev4 reference) in Ground 1. In fact, however, Petitioner relies on
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`numerous additional references including informal weblog entries and online
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`discussion forums to attempt to fill in various deficiencies in the asserted T2500
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`Manual and Held-DataComDev4 reference. These other references are cited to
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`purportedly describe features of a T2500 modem product—not to explain any
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`disclosure in the T2500 Manual. But a product cannot form the basis of an inter
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`partes review Petition—only a patent or printed publication can be raised as prior
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`art. See 35 U.S.C. §311. Moreover, to the extent that Petitioner is relying on any
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`of those other documents describing the T2500 product as prior art publications
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`themselves to support alleged obviousness, Petitioner failed to identify those
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`references in its recitation of the proposed grounds for unpatentability. See 37
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`C.F.R. §42.104(b)(2)). Further, none of these additional documents (such as
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`printouts of Usenet postings) was authenticated (via declaration or otherwise), and
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`each constitutes inadmissible hearsay regarding the truth of the matters asserted
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`(alleged capabilities of a T2500 product).
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`Second, even after mixing-and-matching the T2500 Manual, the Held-
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`DataComDev4 reference, and the various other documents, Petitioner’s asserted
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`obviousness combination still fails to disclose several limitations of claims 1-6 of
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`the ’430 patent. None of the references discloses at least (a) “transmitting test
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`information over a communication channel,” (b) “transmitting a message, wherein
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`the message comprises one or more data variable that represent the test
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`information, wherein bits in the message are modulated onto DMT symbols using
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`Quadrature Amplitude Modulation (QAM) with more than 1 bit per subchannel,”
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`or (c) “an array representing frequency domain received idle channel noise
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`information.” For each of these limitations, Petitioner either mischaracterizes
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`features of the T2500 Manual or Held-DataComDev 4 publication (e.g., Petitioner
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`incorrectly assumes without support that the T2500 Manual’s disclosure of
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`“Equivalent Line Noise Profile” data constitutes a disclosure of the claimed “idle
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`channel noise” data) or Petitioner misleadingly relies on disclosures that do not
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`relate to each other (e.g., disclosure in the T2500 Manual of collecting “Line
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`Monitoring Data” and separate disclosure of collecting “receive rate” and “transmit
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`rate” data statistics showing that the modem both transmits and receives data (but
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`not the “Line Monitoring Data”)).
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`Third, Petitioner fails to provide a sufficient articulated reason for why it
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`allegedly would have been obvious to combine concepts from the T2500 Manual
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`and Held-DataComDev4 reference to arrive at the ’430 patent claims. Petitioner’s
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`insufficient rationale is simply that it allegedly would have been obvious to
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`combine the concepts in the two references because Telebit PEP (used in the
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`T2500 Manual) and DMT (used in the Held-DataComDev4 reference) were related
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`technologies and known by some of the same people. (See Petition at p. 21-22.)
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`But “related” and “known” does not equal obvious – at best this shows that the art
`
`may be analogous. Petitioner never explains why it would have been useful or
`
`desirable to substitute the teachings of the Held-DataComDev4 publication for
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`those of the T2500 reference, or indeed why anyone would have had any reason
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`whatsoever to do so. The Board has rejected such conclusory allegations as being
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`insufficient to show obviousness. (See infra at 33-40, citing cases.)
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`Ground 2: Similar to the deficiencies in Ground 1, the proposed
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`combination of references for Ground 2 would also fail to disclose several
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`elements of the ’430 patent, including (a) “transmitting a message, wherein the
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`message comprises one or more data variables that represent the test information
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`. . . wherein at least one data variable of the one or more data variables comprise
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`an array representing frequency domain received idle channel noise information”
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`(b) “wherein bits in the message are modulated . . . with more than 1 bit per
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`subchannel,” and (c) “wherein bits in the message are modulated onto DMT
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`symbols using Quadrature Amplitude Modulation (QAM) . . . .” For example,
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`Petitioner relies exclusively on Hughes (the ’227 patent) as allegedly disclosing
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`transmitting “receive noise” data, which Petitioner in turn alleges constitutes
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`“frequency domain received idle channel noise.” But in fact, the complete
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`disclosure of Hughes states that noise data is merely used locally as one variable to
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`determine “which carrier frequencies will support two bit transmission.” The noise
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`data is never transmitted. What is transmitted in Hughes is information regarding
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`which carrier frequencies support communicating 2 bits of information—and not
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`the noise data itself. And even if Hughes did disclose transmitting “frequency
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`domain received idle channel noise” (which it does not), Hughes discloses
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`communicating that information by modulating only 1 bit per subchannel—not
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`“more than 1 bit” as required by the ’430 patent claims. Moreover, the only
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`reference asserted by Petitioner to disclose modulating onto DMT symbols “using
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`Quadrature Amplitude Modulation (QAM)” (Frenkel) never in fact discloses
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`QAM—it only discloses what it refers to as “Quadrature Amplitude Shift Keying
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`(QASK).” Petitioner provides no expert testimony that QASK is the same thing as
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`QAM—Petitioner cites to only a single hearsay patent for this argument.
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`
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`Ground 2 also fails to set forth sufficient reasoning or factual underpinnings
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`to support obviousness. Petitioner’s failed attempt to provide a sufficient reason
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`for combining Hughes, Baran, and Frenkel amounts to a single sentence, where
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`Petitioner conclusorily parrots the Supreme Court’s KSR decision and alleges that
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`“[t]he modification of ‘227 Patent [Hughes] to include the teachings of ‘511 Patent
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`[Baran] and ‘268 Patent [Frenkel] is demonstrative of the application of a known
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`technique to a known device to yield predictable results under 35 U.S.C. §103.”
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`(Pet. at p. 45.) Petitioner never explains or provides any support as to why there
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`would have been a reason to apply Baran and Frenkel’s “techniques” to Hughes,
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`why doing so would have been at all useful or desirable, what the result would be
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`or why the result would have been predictable.
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`Accordingly, Petitioner has not carried its burden of showing that any of
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`claims 1-6 are unpatentable. Petitioner has failed to show that any combination of
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`printed publication prior art references expressly or inherently discloses every
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`element of the claims. With respect to several claim elements, Petitioner relies on
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`bare assumptions regarding teachings of the prior art, with no support from its
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`expert or otherwise. And by failing to provide a specific obviousness rationale in
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`its Petition and providing only conclusory statements in its expert declaration,
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`Petitioner has attempted to flip the burden to the Patent Owner to affirmatively
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`prove patentability by disproving the existence of any one of the recognized
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`rationales, including addressing all possibly relevant factual underpinnings. But
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`the burden of proving unpatentability of the challenged claims always rests with
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`the Petitioner and, thus, it was incumbent upon Petitioner to clearly articulate and
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`factually support one or more sufficient reasons to combine. Because Petitioner
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`did not meet its burdens of proof, the Board should decline to institute inter partes
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`review of the ’430 patent.
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`Should the Board institute review, however, Patent Owner reserves the right
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`to explain why Petitioner’s proposed combinations do not make sense from a
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`technological standpoint. Among other things, Patent Owner reserves the right to
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`explain how the cited references are incompatible or would be rendered inoperable
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`or unsuitable for their intended purposes, why the prior art teaches away from the
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`combinations, and why a person of ordinary skill in the art would have reasons not
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`to make the combinations. Patent Owner also reserves the right to object to, and
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`move to exclude, Petitioner’s non-authenticated and hearsay evidence.
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`II.
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`SUMMARY OF THE ’430 PATENT
`
`The ’430 patent is one of a series of patents by the named inventors
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`covering inventions that are applicable to digital subscriber line (“DSL”) and other
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`communications technologies. DSL is a technology that provides high-speed
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`broadband access over the wires of a telephone network.
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`The inventors were and are substantial contributors of core technology to
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`DSL standards on behalf of TQ Delta and its predecessor in interest, Aware, Inc., a
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`world-leading innovator and provider of DSL technologies. Some of the core
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`technologies developed by Aware, including the inventions of the ’430 Patent,
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`have been adopted for use in other communications systems, such as Multimedia
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`over Coax (“MoCA”), which is used for high-speed communication of content
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`over coaxial cables within a home. Petitioner, Arris, Inc., uses the inventions of
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`the ’430 patent in both its DSL and MoCA products.
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`III. CLAIM CONSTRUCTION
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`The Petition offers no proposed claim constructions for any terms. Patent
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`Owner TQ Delta agrees that, for purposes of determining whether to institute based
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`on the Petition (i.e., whether there is a reasonable likelihood that Petitioner will
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`prevail in demonstrating that a challenged claim is unpatentable), there is no need
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`to construe any of the terms of the claims.
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`IV. NO REVIEW SHOULD BE
`PETITION IS UNTIMELY
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`INSTITUTED BECAUSE THE
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`Under 35 U.S.C. § 315(b), an inter partes review “may not be instituted if
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`the petition requesting the proceeding is filed more than 1 year after the date on
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). “Whether a
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`party who is not a named participant in a given proceeding nonetheless constitutes
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`a ‘real party-in-interest’ or ‘privy’ to that proceeding is a highly fact-dependent
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`question.” Office Patent Trial Practice Guide, Fed. Reg. 48759 (Aug. 14, 2012).
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`“The Office intends to evaluate what parties constitute ‘privies’ in a manner
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`consistent with the flexible and equitable considerations established under federal
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`caselaw.” Id. Under 35 U.S.C. § 315, to find privity between a party served with a
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`complaint and petitioner, it is not necessary that the party and petitioner be in
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`privity at the time of service of the complaint alleging infringement. See VMWare,
`
`Inc. v. Good Technology Software, Inc., Case IPR2015-00027, Paper 11 at 4
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`(P.T.A.B. February 20, 2015) (refusing to “conclude that privity under § 315(b) is
`
`determined only at the time of service of a complaint alleging infringement of the
`
`challenged patent.”). Here, the Petition should be denied on its face because
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`Petitioner Arris is simply the successor-in-interest of another company, 2Wire,
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`Inc., which has been involved in litigation with Patent Owner for over two years.
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`A.
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`Factual Background of Petitioner Arris
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`The facts are uncontroverted. On February 7, 2014, Patent Owner served
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`2Wire with a Second Amended Complaint (Ex. 2008) alleging infringement by
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`2Wire of the ’430 Patent (the “2Wire Lawsuit”).1 At the time of the filing of the
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`
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`1 On November 7, 2013, Patent Owner filed an original complaint against 2Wire,
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`Inc.’s sister company Pace Americas, Inc. in the United States District Court for
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`the District of Delaware. The Second Amended Complaint, which is referenced
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`and relied upon for purposes of this Patent Owner’s Preliminary Response, added
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`2Wire, Inc. and Pace Plc as defendants. (Ex. 2008.)
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`Second Amended Complaint, 2Wire was a wholly-owned subsidiary of Pace Plc.
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`It is incontrovertible, therefore, that at least since February 7, 2015, under 35
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`U.S.C. § 315(b), 2Wire and Pace Plc have been barred from challenging the
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`validity of the claims of ’430 Patent in an inter partes review proceeding. The
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`2Wire Lawsuit is ongoing, and the ’430 patent’s validity is being challenged in the
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`2Wire Lawsuit.
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`Subsequently, on April 22, 2015, Arris and Pace Plc entered into a Co-
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`operation Agreement to implement a Scheme for the Acquisition and Merger of
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`Pace/2Wire and Arris. (Ex. 2002, Co-Operation Agreement dated 4/15.) The Co-
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`operation Agreement provided, inter alia, that “Arris, through one of its wholly-
`
`owned Affiliates, New Arris, intends to announce a firm intention to acquire the
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`entire issued and to be issued share capital of Pace on the terms and subject to the
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`conditions referred to in this Agreement and set out in the 2.7 Announcement.”
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`(See id. at p. 2.) The Co-operation Agreement further provided that “[t]he
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`Acquisition [was] intended to be effected by way of a scheme of arrangement
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`(‘Scheme’) under sections 895 to 899 of the UK Companies Act.” (Id.) On May
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`20, 2015, Arris and Pace/2Wire entered into a Common Defense Agreement. (Ex.
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`2004, Common Defense Agreement dated 5/20/15.) On October 21, 2015, “Arris’
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`stockholders approved the merger agreement implementing ARRIS’ pending
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`acquisition of Pace and the related reorganization in a cash and stock transaction.”
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`(See Ex. 2003, 10/21/15 Arris Press Release.) Dealing in Pace shares was
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`suspended on December 23, 2015. (Ex. 2005, 12/23/15 Pace Press Release). All
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`that was left on January 4, 2016 was final closing of the merger. (Ex. 2006, 1/4/16
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`Arris Press Release.) Knowing that the merger was about to close, Arris filed the
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`present Petition on January 2, 2016, apparently attempting to create an argument
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`that the bar of § 315(b) does not apply.
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`B. The 1-Year Bar of 35 U.S.C. § 315(b) Applies to Any Privy of a
`Company Served With a Complaint And Is Not Limited in Time
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`Importantly, § 315(b) does not limit the cut-off date for determining whether
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`privity exists between a barred party and a Petitioner to only the date of the
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`petition—indeed, the only dates referenced in § 315(b) are the dates when the 1-
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`year period starts and stops. See 35 U.S.C. § 315 (b) (an inter partes review “may
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`not be instituted if the petition requesting the proceeding is filed more than 1 year
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`after the date on which the petitioner, real party in interest, or privy of the
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`petitioner is served with a complaint alleging infringement of the patent”). In other
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`words, the express language of § 315(b) does not read that inter partes review may
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`not be instituted if the petition is filed more than one year after the date on which a
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`“privy of the petitioner as of the date of the Petition” is served with a complaint.
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`Such an interpretation would improperly read words into the statute that are not
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`present. See, e.g., Momenta Pharms., Inc. v. Amphastar Pharms., Inc., 686 F.3d
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`1348 (Fed. Cir. 2012) (it is improper to “read words into [a] statute in violation of
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`the express language chosen by Congress”).
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`In contrast, what § 315(b) does state regarding the privity determination is
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`that it is decided by the Board when determining whether or not to institute the
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`inter partes review. That date is set by the statute as “within 3 months after (1)
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`receiving a preliminary response to the petition under section 313; or (2) if no such
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`preliminary response is filed, the last date on which such response may be filed.”
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`35 U.S.C. § 314.
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`Accordingly, under the plain language of the statute, the Board cannot
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`institute review here, where Arris has acquired a company that otherwise was
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`barred from filing a petition under § 315(b).2 This is the only result that makes
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`sense, because after a merger or acquisition, the acquiring party becomes the
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`“successor-in-interest” to the acquired party. Indeed, for other legal bars such as
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` The Board’s non-binding, non-precedential decision in Synopsys, Inc. v. Mentor
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`2
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`Graphics Corp. does not compel a different result. See Synopsys, Inc. v. Mentor
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`Graphics Corp., IPR2012-00042, Paper 16 at 18 (P.T.A.B. February 22, 2013)
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`(finding no privity relationship to successor entity). In any case, Synopsys is
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`factually distinguishable. In Synopsys, the prior district court proceeding was
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`dismissed with prejudice before the defendant was acquired by the petitioner
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`Synopsys. See IPR2012-00042, Paper 16 at 3.
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`estoppel, injunctions, or res judicata, an acquiring company that becomes a
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`“successor-in-interest” to another company steps into the shoes of the predecessor
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`company for purposes of such legal bars. See, e.g., Jamesbury Corp. v. Litton
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`Indus. Prods., Inc., 839 F.2d 1544, 1555 (Fed. Cir. 1988), overruled on other
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`grounds by A. C. Aukerman Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020 (Fed.
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`Cir. 1992) (equitable estoppel as to predecessor-in-interest transfers to successor-
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`in-interest); Additive Controls & Measurement Sys. v. Flowdata, Inc., 154 F.3d
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`1345, 1352 (Fed. Cir. 1998) (“An injunction may survive the dissolution of the
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`corporation at which it is directed and continue to bind any successor in interest to
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`the original defendant.”) As the Federal Circuit has explained, “[s]uch a rule is
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`necessary to prevent an enjoined defendant from nullifying a decree by carrying
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`out prohibited acts through aiders and abettors, although they were not parties to
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`the original proceeding.” Additive Controls, 154 F.3d at 1352.
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`That same concern is true here. Allowing a party that would otherwise be
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`barred under § 315(b) from pursuing an inter partes proceeding by filing the
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`petition through a soon-to-be merger partner would be a huge loophole. Here there
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`is no question that Arris is at least in privity now with a party that is otherwise
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`time-barred from filing a petition under § 315(b)—Arris acquired the entirety of
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`Pace/2Wire. See, e.g., VMWare, Inc. v. Good Technology Software, Inc., Case
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`IPR2015-00027, Paper 11 at 2 (P.T.A.B. March 6, 2015) (Petitioner in privity with
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`acquired company “as a result of the acquisition”). As a result of the acquisition,
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`Arris is the “successor-in-interest” of Pace/2Wire. At this point, Arris essentially
`
`is Pace/2Wire and has stepped into the shoes of Pace/2Wire. See 3M v. Eco Chem,
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`Inc., 757 F.2d 1256 (Fed. Cir. 1985) (a successor in interest “steps into the shoes of
`
`its predecessor” and “assumes the obligations of the predecessor’s pending
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`litigation”). Allowing Arris to file the present Petition would be essentially the
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`same as letting Pace/2Wire improperly file a petition after the 1-year bar date, or
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`letting Pace/2Wire simply change its legal name or corporate structure to
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`circumvent § 315(b).
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`Additionally, in the ongoing 2Wire Lawsuit, Arris (as the ultimate corporate
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`parent of 2Wire), controls or has the ability to assume control of the 2Wire
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`Lawsuit. (Ex. 2007, Amended Corporate Disclosure Statement filed in 2Wire
`
`Lawsuit.) And control of the 2Wire Lawsuit is an important consideration in
`
`concluding that Arris, a nonparty in the 2Wire Lawsuit, is in fact a privy of 2Wire
`
`and, therefore, properly barred under 35 U.S.C. § 315. See Wavemarket Inc. v.
`
`Locationet Systems Ltd., IPR2014-00920, Paper 23 at 6 (P.T.A.B. January 22,
`
`2015) (noting that “the weight of authority discussed in the Trial Practice Guide
`
`indicates that control is an important consideration in the determination of whether
`
`a non-named party is a privy.”). Also, for a finding of privity, it is not necessary
`
`that Arris actually control the 2Wire Lawsuit. It is sufficient if Arris has a “legal
`
`
`
`14
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00428
`
`right, to assume control” of the on-going 2Wire Lawsuit. See Aruze Gaming
`
`Macau, Ltd. v. MGT Gaming, Inc., IPR2014-01288, Paper 13 at 14 (P.T.A.B.
`
`February 20, 2015) (noting “that actual assumption of control of the lawsuit is not
`
`necessary for a finding of privity; the opportunity, or legal right, to assume control
`
`is sufficient.”) Because Arris had and will have an opportunity to assume control
`
`of the 2Wire Lawsuit and therefore exercise its right to challenge the validity of the
`
`’430 patent in the 2Wire Lawsuit, this Petition filed by Arris must be denied under
`
`35 U.S.C. § 315. Id. at 15 (stating that a petition may be properly denied under 35
`
`U.S.C. § 315 if “the petitioner’s relationship with the prior litigant was sufficiently
`
`close that it can be said that the petitioner had, or will have, a full and fair
`
`opportunity to litigate the validity of the patent in that prior action. If we are
`
`satisfied that petitioner has ‘enjoyed its day in court’ through its relationship with
`
`the litigant, it is fair to consider the parties to be privies.” (emphasis added)).
`
`C. Even if Privity Must Exist as of the Petition Date for § 315(b)’s Bar
`to Apply, That Requirement Would Also Be Satisfied Here
`
`Alternatively, to the extent the Board is inclined to interpret § 315(b) as
`
`requiring absolute privity in the form of a consummated merger between the
`
`parties before the filing date of a petition, other panels have counseled against
`
`adopting such a “bright line” interpretation of § 315(b). See, e.g,. Wavemarket Inc.
`
`v. Locationet Systems Ltd., IPR2014-00920, Paper 23 at 6 (P.T.A.B. January 22,
`
`2015) (stating that “there is no “bright line test” for determining the necessary
`
`
`
`15
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00428
`
`quantity or degree of participation to qualify as a privy based on the control
`
`concept.”). If the Board interprets § 315(b) as requiring privity before the filing
`
`date of the Petition, notwithstanding the effective merger date of January 4, 2016
`
`(which based on public records appears to merely be a corporate formality), it is
`
`incontrovertible from the history of corporate interactions between Pace Plc and
`
`Arris going back to April 22, 2015 (i.e. entering into the Co-operation Agreement
`
`and culminating in the final approval of the merger on December 22, 2015), that
`
`Pace Plc and Arris were in privity well before the January 2, 2016 filing date of
`
`this Petition and Arris should therefore be barred. See VMWare, Inc., IPR2015-
`
`00027, Paper 11 at 3 (stating that “[t]he analysis under § 315(b) is a ‘highly fact-
`
`dependent question’ that is evaluated consistent with ‘flexible and equitable
`
`considerations.’”)
`
`If however in the Board’s view, the public record of the history of the
`
`merger formalities between Pace Plc and Arris is insufficient to establish privity
`
`before the filing date of this Petition and if the Petition is granted, Patent Owner
`
`will seek the Board’s permission to obtain discovery from Arris to demonstrate
`
`privity before the filing date.
`
`16
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00428
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`V. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO THE
`GROUNDS RAISED BY PETITIONER
`
`As explained in detail below, the Petition also should be denied because it
`
`fails to establish a reasonable likelihood that the challenged claims are
`
`unpatentable. The Petition proposes two grounds against the ’430 patent:
`
`•
`
`Ground 1. Unpatentability of claims 1-6 under 35 U.S.C. § 103(a) over
`
`the T2500 Manual in view of the Held-DataComDev4 reference.
`
`•
`
`Ground 2. Unpatentability of claims 1-6 under 35 U.S.C. § 103 (a)
`
`over U.S. Pat. No. 4,679,227 to Hughes-Hartogs (“Hughes”)3 in view of U.S. Pat.
`
`No. 4,438,511 to Baran (“Baran”) and U.S. Pat. No. 5,838,268 to Frenkel
`
`(“Frenkel”).
`
`As an initial matter, Patent Owner disputes that Petitioner has sufficiently
`
`shown that the references of Ground 1 constitute §102(b) prior art as alleged
`
`(Petitioner does not allege that they constitute §102(a) prior art). Contrary to
`
`Petitioner’s statements, the one-year bar date for the ’430 patent for purposes of 35
`
`U.S.C. §102(b) is January 7, 1999—not January 7, 2000. (See Ex. 1001, ’430
`
`patent at Cover.) Moreover, Petitioner has not provided any declaration or other
`
`
` The PCT version publication of the Hughes publication was considered during the
`
`3
`
`prosecution of the ’430 patent. The Petition incorrectly states that Hughes was not
`
`considered during the prosecution of the ’430 patent. (See Pet. at p. 42.)
`
`
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`17
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00428
`
`sufficient evidence to show that the T2500 Manual was publicly available prior to
`
`even January 20, 2000—only the hearsay copyright date on the Manual and
`
`unsworn, hearsay, and unauthenticated printouts from Usenet postings that some
`
`version of a T2500 Manual was shipped with the T2500 product prior to the
`
`critical date. (See Pet. at p. 11.) Further, Petitioner has provided no declaration or
`
`other sufficient evidence showing the actual publication date of the Held-
`
`DataComDev4 reference (i.e., the date it was publicly available)—only a hearsay
`
`and unauthenticated Internet listing containing a date for the reference of January,
`
`1999 (which is also in any event not necessarily prior to the January 20, 1999
`
`§102(b) bar date). Patent Owner reserves the right to object to the admissibility of
`
`Petitioner’s evidence regarding whether these references constitute prior art.
`
`Even if the T2500 Manual and Held-DataComDev4 reference are prior art,
`
`however, the Board should reject institution for several other reasons. Initially, as
`
`discussed in more detail below, the cited references do not, individually or
`
`collectively, disclose, teach, or suggest all of the elements of claims 1-6. Where
`
`none of the references disclose an element of the claims, inter partes review for
`
`obviousness cannot be instituted. See C

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