Trials@uspto.gov
`571-272-7822
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` Paper 11
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` Entered: 28 September 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioners,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00429
`Patent 8,432,956 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
`
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`
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` Paper 11
`
`
`
` Entered: 28 September 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioners,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00429
`Patent 8,432,956 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2016-00429
`Patent 8,432,956 B2
`
`
`INTRODUCTION
`I.
`Arris Group, Inc. (“Petitioner”) filed a request for rehearing (Paper
`10, “Req. Reh’g”) of the Board’s decision (Paper 9, “Dec.”) dated July 1,
`2017, which denied institution of inter partes review of claims 1–10 of U.S.
`Patent No. 8,432,956 B2 (Ex. 1001, “the ’956 patent”). Petitioner contends
`that “the Board overlooked or misapprehended important points presented in
`the Petition regarding why a person of ordinary skill in the art at the time of
`the alleged invention would have been motivated to combine the teachings
`of Hughes-Hartogs with those of Baran and Frenkel.” Req. Reh’g 2 (italics
`omitted). For the reasons provided below, Petitioner’s request is denied.
`II. STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” An abuse of
`discretion occurs when a “decision was based on an erroneous conclusion of
`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
`PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
`(Fed. Cir. 1988). The request must identify, specifically, all matters the
`party believes the Board misapprehended or overlooked. 37 C.F.R.
`§ 42.71(d).
`
`III. DISCUSSION
`Our Decision Denying Institution stated:
`Petitioner generally states the subject matter of the claims
`was described by Hughes-Hartogs, Baran, and Frenkel “in a
`manner that would have led a person of ordinary skill in the art
`to the claimed subject matter through the exercise of only routine
`skill.” Pet. 17. Petitioner further states that “the modification of
`‘227 Patent [Hughes-Hartogs] to include the teachings of ‘511
`2
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`IPR2016-00429
`Patent 8,432,956 B2
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`
`Patent [Baran] and ‘268 Patent [Frenkel] is demonstrative of the
`application of a known technique to a known device to yield
`predictable results under 35 U.S.C. §103.” Id. at 17–18.
`Petitioner does not point to evidence or make any other argument
`explaining why a person with ordinary skill in the art would have
`combined Hughes-Hartogs, Baran, and Frenkel, why such a
`combination would have required only “routine skill,” or even
`why the results of such a combination would have been
`predictable. See Prelim. Resp. 33. Accordingly, we agree that
`Petitioner has not provided any reason that would have prompted
`a person with ordinary skill in the art to combine Hughes-
`Hartogs, Baran, and Frenkel in the manner Petitioner proposes.
`Dec. 13–14.
`Petitioner on rehearing argues that we overlooked page 11 of the
`Petition, which explains that Hughes-Hartogs expressly references Baran,
`and Frenkel expressly references Hughes-Hartogs. Req. Reh’g 5‒7 (citing
`Ex. 1004, 1:46‒51; Ex. 1006, 1:50‒54, 2:8‒10). Petitioner further argues
`that we overlooked that Hughes-Hartogs discloses that it is a continuation in
`the efforts previously initiated by Baran and incorporates Baran by
`reference. Id. at 5 (citing Ex. 1004, 1:65‒66, 7:40‒42). Assuming a
`familiarity with the prior art by a person of ordinary skill in the art,
`Petitioner then contends that “the only question, then, is whether a person of
`ordinary skill in the art at the time of the invention would have had ‘an
`apparent reason to combine the known elements in the fashion claimed by
`the patent at issue.’” Id. at 7 (quoting KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007)).
`We disagree with Petitioner that we overlooked these points in the
`Petition. First, Petitioner mischaracterizes our Decision. We did not
`determine that there was not a reason to combine Hughes-Hartogs, Baran,
`3
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`IPR2016-00429
`Patent 8,432,956 B2
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`and Frenkel, but rather we determined that Petitioner failed to set forth
`sufficient evidence and rationale explaining why a person with ordinary skill
`in the art would have combined Hughes-Hartogs, Baran, and Frenkel. See
`Dec. 13‒14 (stating that “Petitioner does not point to evidence or make any
`other argument explaining why a person with ordinary skill in the art would
`have combined Hughes-Hartogs, Baran, and Frenkel, why such a
`combination would have required only ‘routine skill,’ or even why the
`results of such a combination would have been predictable.”). At best, the
`Petition only sets forth that Hughes-Hartogs references Baran, and Frenkel
`indirectly references Hughes-Hartogs, which alone does not set forth a
`rationale to combine Hughes-Hartogs, Baran, and Frenkel. See Pet. 10‒12.
`Petitioner now argues that a “person of ordinary skill in the art, having
`ordinary curiosity and creativity, could then connect the dots,” and now
`provides an explanation as to why a person of ordinary skill in the art would
`have combined Hughes-Hartogs, Baran, and Frenkel. See Req. Reh’g 7‒9.
`However, we did not overlook or misapprehend these now asserted reasons
`to combine the prior art because this rationale was not presented in the
`Petition. Similarly, Petitioner’s argument that we overlooked or
`misapprehended that Hughes-Hartogs discloses that it is a continuation in
`the efforts previously initiated by Baran and incorporates Baran by reference
`(Req. Reh’g 5) is not persuasive because Petitioner did not present this
`argument in the Petition.
`Petitioner further mischaracterizes our Decision in their argument that
`“the Board stated that Petitioner’s argument was based on the testimony of
`its expert.” Req. Reh’g 4. We determined:
`
`4
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`IPR2016-00429
`Patent 8,432,956 B2
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`With respect to claims 1, 3, 5, and 7, at best, Petitioner
`directs us to pages 34‒38 of the Declaration of Mr. Lance
`McNally. Id. at 17‒31. Although we decline to incorporate Mr.
`McNally’s Declaration into the Petition, we note that pages 34‒
`37 of Mr. McNally’s Declaration consist of several paragraphs
`discussing the application of the cited prior art to independent
`claim 1 of the ’956 patent. Ex. 1002 ¶¶ 55–65. Only paragraph
`61 discusses the combination of Hughes-Hartogs and Baran. Id.
`¶ 61. Paragraph 61 states “[a] POSA would combine the ‘227
`[Hughes-Hartogs] and ‘511 [Baran] patents to show a test mode
`with messages comprising one or more data variables that
`represent the test information.” Id. McNally’s Declaration
`statement
`in support of
`the combination
`is conclusory,
`unsupported by a sufficient rationale or reason to combine
`Hughes-Hartogs and Baran. This statement additionally does not
`provide a sufficient reason for a person of ordinary skill in the art
`to combine Frenkel with Hughes-Hartogs and Baran. As such,
`even if we were to incorporate this passage from Mr. McNally’s
`Declaration into the Petition, which we do not, this single
`statement is insufficient to support the legal conclusion of
`obviousness.
`Dec. 14. As such, we declined to incorporate Mr. McNally’s declaration
`into the Petition, and determined that the Petition could not incorporate
`portions of the Declaration without a discussion of these portions in the
`Petition. We further determined that Mr. McNally’s Declaration is
`insufficient to establish a rationale to combine Hughes-Hartogs, Baran, and
`Frenkel because the Declaration “is conclusory, unsupported by sufficient
`rationale or reason to combine Hughes-Hartogs and Baran” or “to combine
`Frenkel with Hughes-Hartogs and Baran.” Id. Therefore, we did not
`determine that there is a “corollary requirement that the ‘rational
`underpinning’ be further supported by an expert,” as argued by Petitioner.
`Req. Reh’g 4‒5.
`
`5
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`IPR2016-00429
`Patent 8,432,956 B2
`
`
`Accordingly, we are not persuaded by Petitioner that we
`misapprehended or overlooked points in the Petition that provided a
`rationale to combine Hughes-Hartogs, Baran, and Frenkel. We are also not
`persuaded by Petitioner’s argument that we required a rationale to combine
`to be supported by an expert. Therefore, Petitioner’s request for rehearing is
`denied.
`
`IV. CONCLUSION
`The Board denies the relief requested in Petitioner’s request for
`rehearing.
`
`V. ORDER
`Accordingly, it is hereby
`ORDERED that Petitioner’s request for rehearing is denied.
`
`
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`6
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`IPR2016-00429
`Patent 8,432,956 B2
`
`For PETITIONER:
`Dan Gresham
`Thomas | Horstemeyer, LLP
`dan.gresham@thomashorstemeyer.com
`
`Charles Griggers
`Thomas | Horstemeyer, LLP
`charles.griggers@thomashorstemeyer.com
`
`Bob Starr
`ARRIS Group, Inc.
`bob.starr@arris.com
`
`For PATENT OWNER:
`
`Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`pmcandrews@mcandrews-ip.com
`
`Thomas J. Wimbiscus
`McAndrews, Held & Malloy, Ltd.
`twimbiscus@mcandrews-ip.com
`
`Scott P. McBride
`McAndrews, Held & Malloy, Ltd.
`smcbride@mcandrews-ip.com
`
`Christopher M. Scharff
`McAndrews, Held & Malloy, Ltd.
`cscharff@mcandrews-ip.com
`
`
`7
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