Paper 11
`Entered: August 29, 2016
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00430
`Patent 8,238,412 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and TREVOR M.
`JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
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`

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`IPR2016-00430
`Patent 8,238,412 B2
`
`
`I.
`INTRODUCTION
`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 2016, which
`denied institution of inter partes review of claims 1‒21 of U.S. Patent No.
`8,238,412 B2 (Ex. 1001, “the ’412 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
`stated 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
`We determined in our Decision Denying Institution that
`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. 15.
`Petitioner further states that “the modification of ‘227 Patent [Hughes-
`Hartogs] to include the teachings of ‘511 Patent [Baran] and ‘268
`Patent [Frenkel] is demonstrative of the application of a known
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`IPR2016-00430
`Patent 8,238,412 B2
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`technique to a known device to yield predictable results under
`35 U.S.C. §103.” Id. at 15‒16. However, 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. 33‒34. Accordingly,
`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 proposed by Petitioner.
`Dec. 12.
`
`Petitioner argues that we overlooked pages 10‒12 of the Petition, which
`explains that Hughes-Hartogs expressly references Baran, and Frenkel expressly
`references Hughes-Hartogs.1 Req. Reh’g 5‒6 (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). 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.
`Petitioner mischaracterizes our Decision. We did not determine that there was not
`a reason to combine Hughes-Hartogs, Baran, and Frenkel, but rather we
`determined that Petitioner failed to set forth sufficient evidence and rationale
`
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`1 Petitioner explains that Frenkel discloses an express reference to U.S. Patent No.
`4,833,706, which is a grandchild of Hughes-Hartogs.
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`IPR2016-00430
`Patent 8,238,412 B2
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`explaining why a person with ordinary skill in the art would have combined
`Hughes-Hartogs, Baran, and Frenkel. See Dec. 12‒14. At best, the Petition only
`sets forth that Hughes-Hartogs references Baran, and Frenkel indirectly references
`Hughes-Hartogs. See Pet. 10‒12. The Petition does not set forth any rationale to
`combine Hughes-Hartogs, Baran, and Frenkel, but rather only states the prior art
`references each other. See id. 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 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.”
`Id. at 4. We determined
`At best, Petitioner directs us to pages 42‒44 of the Declaration of Mr.
`Lance McNally. Id. at 18‒19, 22‒23. Although we decline to
`incorporate Mr. McNally’s Declaration into the Petition, we note that
`pages 42‒44 of Mr. McNally’s Declaration consist of several
`paragraphs discussing the application of the cited prior art to
`independent claim 1 of the ’412 patent. Ex. 1002 ¶¶ 52–60. Only
`paragraph 58 discusses the combination of Hughes-Hartogs and
`Baran. Id. ¶ 58. Paragraph 58 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. However, the statement is conclusory,
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`IPR2016-00430
`Patent 8,238,412 B2
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`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. 13. 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 . . . [and] 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.
`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 the request for rehearing.
`
`V. ORDER
`
`Accordingly, it is hereby
`ORDERED that Petitioner’s request for rehearing is denied.
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`IPR2016-00430
`Patent 8,238,412 B2
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`For PETITIONER:
`Charles Griggers
`Dan Gresham
`THOMAS | HORSTEMEYER, LLP
`charles.griggers@thomashorstemeyer.com
`dan.gresham@thomashorstemeyer.com
`
`Bob Starr
`ARRIS Group, Inc.
`bob.starr@arris.com
`
`For PATENT OWNER:
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`MCANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
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