UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`CISCO SYSTEMS, INC., DISH NETWORK, LLC,
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS, INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP, INC.,
`Petitioner
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner
`
`_____________________
`
`Case IPR2016-010061
`Patent 7,835,430 B2
`_____________________
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`1 DISH Network, LLC, who filed a Petition in IPR2017-00251, and Comcast Cable
`Communications, LLC, Cox Communications, Inc., Time Warner Cable
`Enterprises LLC, Verizon Services Corp., and ARRIS Group, Inc., who filed a
`Petition in IPR2017-00420, have been joined in this proceeding.
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`CISCO SYSTEMS, INC., DISH NETWORK, LLC,
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS, INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP, INC.,
`Petitioner
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner
`
`_____________________
`
`Case IPR2016-010061
`Patent 7,835,430 B2
`_____________________
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`1 DISH Network, LLC, who filed a Petition in IPR2017-00251, and Comcast Cable
`Communications, LLC, Cox Communications, Inc., Time Warner Cable
`Enterprises LLC, Verizon Services Corp., and ARRIS Group, Inc., who filed a
`Petition in IPR2017-00420, have been joined in this proceeding.
`
`
`
`
`
`
`
`
`Petitioner’s Reply, IPR2016-01006
`
`TABLE OF CONTENTS
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`PETITIONER’S EXHIBIT LIST .............................................................................. 3
`
`I.
`
`Introduction ........................................................................................................ 6
`
`II. Milbrandt in Combination With Chang Renders Obvious Frequency
`Domain “Idle Channel Noise Information” ...................................................... 8
`
`A. Milbrandt does not “teach away” from Chang .......................................... 8
`
`1.
`
`Physical incorporation is not required .............................................. 9
`
`2. Milbrandt does not teach away from Chang’s measuring of idle
`channel/background noise ............................................................... 10
`
`B. A POSITA would have had a reasonable expectation of success in
`combining the teachings of Chang with Milbrandt ................................. 13
`
`C. The teachings of Chang do not change Milbrandt’s principle of
`operation .................................................................................................. 16
`
`D. There are numerous distinct reasons to combine the teachings of
`Milbrandt and Chang ............................................................................... 18
`
`1. Assessing system interactions is a benefit ...................................... 18
`
`2. Remedial measures - addressing power spikes is a benefit ............ 20
`
`3. Remedial measures - adjusting power/gain on adjacent lines is a
`benefit .............................................................................................. 22
`
`III. TQ Delta’s Attack on Dr. Kiaei Has No Merit ................................................ 23
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`IV. Conclusion ....................................................................................................... 23
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`
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`2
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`Petitioner’s Reply, IPR2016-01006
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`PETITIONER’S UPDATED EXHIBIT LIST
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`June 8, 2017
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`1001 U.S. Patent No. 7,835,430 to Krinsky et al.
`
`1002 Prosecution File History of U.S. 8,432,956
`
`1003 Prosecution File History of U.S. 8,238,412
`
`1004 Prosecution File History of U.S. 7,835,430
`
`1005 Prosecution File History of U.S. 7,570,686
`
`1006 Prosecution File History of U.S. 6,658,052
`
`1007 U.S. Provisional Application No. 60/224,308
`
`1008 U.S. Provisional Application No. 60/174,865
`
`1009 Declaration of Dr. Sayfe Kiaei Under 37 C.F.R. § 1.68
`
`1010 Curriculum Vitae of Dr. Sayfe Kiaei
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`1011 U.S. Patent No. 6,636,603 to Milbrandt
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`1012 U.S. Patent No. 6,891,803 to Chang et al.
`
`1013 U.S. Patent No. 6,590,893 to Hwang et al.
`
`1014 ANSI T1.413-1995 Standard
`
`1015 Charles K. Summers, ADSL STANDARDS, IMPLEMENTATION, AND
`ARCHITECTURE (CRC Press 1999) (selected pages)
`
`1016 Walter Goralski, ADSL AND DSL TECHNOLOGIES (McGraw-Hill 1998)
`(selected pages)
`
`3
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`
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`
`
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`
`
`Petitioner’s Reply, IPR2016-01006
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`1017 Harry Newton, NEWTON’S TELECOM DICTIONARY, 16th Ed. (2000)
`(selected pages)
`
`1018 Valerie Illingworth and John Daintith, THE FACTS ON FILE
`DICTIONARY OF COMPUTER SCIENCE (Market House Books 2001)
`(selected pages)
`
`1019 Thomas Starr, John M. Cioffi, Peter J. Silverman, UNDERSTANDING
`DIGITAL SUBSCRIBER LINE TECHNOLOGY, (Prentice Hall 1999)
`(selected pages)
`
`1020 Andrew S. Tanenbaum, COMPUTER NETWORKS (Prentice Hall 1996)
`(selected pages)
`
`1021 B. P. Lathi, Modern Digital and Analog Communication Systems
`(Oxford University Press 1998) (selected pages)
`
`1022 Behzad Razavi, RF MICROELECTRONICS (Prentice Hall 1997) (selected
`pages)
`
`1023 Declaration of David Bader
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`1100 Second Declaration of Dr. Sayfe Kiaei Under 37 C.F.R. § 1.68
`
`1101 George Abe, RESIDENTIAL BROADBAND (Cisco Press, Second Edition
`2000) (selected pages)
`
`1102 Martin Rowe, ADSL Testing Moves Out of the Lab (April 1, 1999)
`
`1103 Declaration of Robert Short
`
`1104 U.S. 6,625,219
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`1105 U.S. 7,292,627
`
`1106 Douglas Chrissan, Uni-DSL: One DSL for Universal Service, White
`Paper (June 2004)
`
`4
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`
`
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`
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`1107 U.S. 6,374,288
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`
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`Petitioner’s Reply, IPR2016-01006
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`1108 Ata Elahi, Network Communications Technology (Delmar Thomson
`Learning 2001) (selected pages)
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`1109 FCC Filing for Alcatel Model 1000 ADSL Modem, 1999
`
`1110 Deposition Transcript of Douglas Chrissan
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`1111 Second Declaration of David Bader
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`5
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`
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`I.
`
`Introduction
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`
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`Petitioner’s Reply, IPR2016-01006
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`TQ Delta does not dispute that all of the substantive limitations of claims 1-6
`
`(the “Challenged Claims”) are taught by the prior art. The only issue in dispute is
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`whether it would have been obvious to modify Milbrandt’s system—which already
`
`measures noise—to also measure frequency domain “idle channel noise
`
`information,” as taught by Chang. TQ makes several arguments on this issue, each
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`of which fails as discussed below.
`
`First, TQ Delta argues that Milbrandt teaches away from physically
`
`incorporating Chang’s “circuitry” and service technician visit, referred to as a
`
`“truck roll.” The Petition, however, plainly states that it “does not require,
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`physical incorporation of elements” from Chang. Pet., 19. But, even if physical
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`incorporation was required, Chang’s “circuitry” can be incorporated in Milbrandt
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`without a “truck roll,” and Milbrandt does not teach away from a “truck roll” in
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`any case.
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`Second, TQ Delta takes the position (unsupported by its declarant) that the
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`combination of Milbrandt and Chang would not have provided a reasonable
`
`expectation of success in measuring idle channel/background noise without a
`
`“truck roll.” But, Milbrandt already measured total noise in its ADSL system
`
`without a truck roll. And TQ Delta’s expert concedes that measuring idle
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`channel/background noise without a truck roll was well known: “I would agree
`
`6
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`
`
`
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`that … measuring idle channel noise information -- as I said, it's not explicitly
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`Petitioner’s Reply, IPR2016-01006
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`
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`described in the '430 patent [which does not use a truck roll]-- it was known by
`
`those of skill in the art at the time.” Ex-1110, 136:4-9.
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`Third, TQ Delta argues that the proposed modification changes Milbrandt’s
`
`fundamental principle of operation because, allegedly, when idle
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`channel/background noise is measured Milbrandt’s modem cannot transmit
`
`information. However, TQ Delta never considers that modems frequently have
`
`idle periods when no data is transmitted during which idle channel/background
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`noise measurement can take place and that signal transmission can continue
`
`thereafter.
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`Fourth, TQ Delta argues that Milbrandt alone achieved the same benefits as
`
`the combination, by using total noise measured during operation, rather than
`
`measuring idle channel/background noise as taught by Chang. The Petition,
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`supported by Dr. Kiaei’s declaration, demonstrates that it would have been obvious
`
`to a POSITA to combine Milbrandt with Chang to obtain frequency domain “idle
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`channel noise information.” Milbrandt discloses measuring total noise in its ADSL
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`system during operation. Chang provides the teaching of measuring frequency
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`domain idle channel/background noise, which provides information different than
`
`total noise measurements. As explained in the Petition, the combination of
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`Milbrandt and Chang would have been obvious—indeed, recognizably
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`7
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`
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`advantageous—to a POSITA since it achieves the distinct benefits of “assessing
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`Petitioner’s Reply, IPR2016-01006
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`
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`system interactions” and “taking remedial measures,” which cannot be obtained
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`solely with Milbrandt’s total noise measurement.
`
`II. Milbrandt in Combination With Chang Renders Obvious Frequency
`Domain “Idle Channel Noise Information”
`
`TQ Delta does not dispute that Chang teaches frequency domain received
`
`“idle channel noise information” 2 or that the other claim limitations are taught by
`
`Milbrandt, Hwang, and ANSI T1.413. Resp., 7-8. And TQ Delta’s expert
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`declarant, Dr. Chrissan, concedes that all the limitations were well known before
`
`the ‘430 patent. See e.g., Ex-1110, 39:7-11; 56:12-14; 57:1-5; 67:8-13; 70:3-9;
`
`73:6-22; and 135:9-136:9.
`
`Nevertheless, TQ Delta presents four meritless arguments that it would not
`
`have been obvious to combine the teachings of Chang and Milbrandt.
`
`A. Milbrandt does not “teach away” from Chang
`
`TQ Delta argues that “Milbrandt teaches away from using Chang’s type of
`
`‘circuitry’ for measuring background noise.” Resp., 8-9. According to TQ Delta,
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`“Milbrandt specifically taught away (i.e., criticized and disparaged) any circuitry
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`that required a technician visit and ‘truck roll’—which was the only type of
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`circuitry disclosed in Chang.” Resp., 2. TQ Delta’s argument fails for numerous
`
`
`2 The construction of “idle channel noise information” is not in dispute. See Ex.
`2001, ¶30 (“there is no dispute over the dispositive aspects of this construction.”)
`
`8
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`
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`
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`reasons—any one of which is fatal—including that the combination does not
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`Petitioner’s Reply, IPR2016-01006
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`
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`require the use of Chang’s “circuitry” or “truck roll,” and even if it did, Milbrandt
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`does not “teach away” from the combination. Ex-1100, ¶¶69-70.
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`1.
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`Physical incorporation is not required
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`TQ Delta’s “teaching away” argument, foremost, fails because the Petition
`
`does not require the physical incorporation of Chang’s elements for measuring idle
`
`channel/background noise. The Board already rejected this argument, noting that
`
`“Patent Owner appears to contend that Petitioner is proposing a total incorporation
`
`of all technicalities from Chang into Milbrandt, which would necessitate a ‘truck
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`roll.’ The record evidence suggests otherwise.” Paper 7, 21 n.6.
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`As Cisco explained in its Petition, the “combination permits, but does not
`
`require, physical incorporation of elements” from Chang.” Pet., 19; see also, Ex-
`
`1009, ¶98 (“It is worth noting that I do not suggest that physical incorporation of
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`Chang’s test circuitry into Milbrandt’s modems is required; however, it is
`
`permitted in the proposed combination.”) The Petition further emphasized that
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`“[i]t would have been obvious to a person of ordinary skill in the art at the time to
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`combine the teachings of Chang with those of Milbrandt.” Pet., 17; Ex-1009, p.99.
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`This language plainly looks to the teachings and does not require a physical
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`incorporation of elements from Chang into Milbrandt.3 Ex-1100, ¶¶71-74.
`
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`3 As discussed below in Section II.B, a POSITA would have been able to
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`9
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`Petitioner’s Reply, IPR2016-01006
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`Cisco’s position is supported by applicable law, which recognizes that the
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`test for obviousness considers what the combined teachings of the references
`
`would have suggested to a POSITA, not whether one reference may be bodily
`
`incorporated into the structure of another reference. In re Mouttet, 686 F.3d 1322,
`
`1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from
`
`multiple references does not require an actual, physical substitution of elements.”);
`
`see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); In re Keller, 642
`
`F.2d 413, 425 (Fed. Cir. 1981); and In re Nievelt, 482 F.2d 965, 179 USPQ 224,
`
`226 (CCPA 1973) (“Combining the teachings of references does not involve an
`
`ability to combine their specific structures.”).
`
`Therefore, Cisco’s combination does not require physical incorporation of
`
`elements. Ex-1100, ¶75.
`
`2. Milbrandt does not teach away from Chang’s measuring of
`idle channel/background noise
`
`According to TQ Delta, “Milbrandt specifically and expressly teaches away
`
`from using a method or circuitry like Chang’s for measuring background noise.”
`
`Resp., 14. In support of this position, TQ Delta argues that “Milbrandt discloses
`
`and teaches a method of determining and controlling the power of modems,
`
`including measuring noise, remotely and without any need for a ‘truck roll.’” Id.,
`
`
`implement Chang’s teaching of measuring idle channel/background noise in
`Milbrandt’s ADSL system, with a reasonable expectation of success.
`
`10
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`
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`12. This argument fails for at least three reasons. Ex-1100, ¶76.
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`
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`Petitioner’s Reply, IPR2016-01006
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`First, TQ Delta’s teaching away argument fails because incorporating
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`Chang’s “circuitry” in Milbrandt does not, in itself, require a “truck roll.” Rather,
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`Chang simply described its noise measurement circuitry in the context of a
`
`handheld tool designed for field technicians. Once the circuitry is included in
`
`Milbrandt’s modem, it will perform its idle channel/background noise
`
`measurements without the need for a handheld test set and irrespective of whether
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`there is a truck parked outside the subscriber’s premises. Ex-1100, ¶77.
`
`Setting aside that Milbrandt does not teach away from using circuitry that
`
`could require a truck roll, Milbrandt also does not discredit, discourage, or criticize
`
`measuring idle channel/background noise—the actual teaching in Chang that is
`
`relied upon in the combination. Ex-1100, ¶79.
`
`Second, although Milbrandt generally prefers not to send a technician to a
`
`remote site because of cost (Milbrandt 2:14-16), Milbrandt nevertheless describes
`
`embodiments that include a truck roll. Milbrandt, 10:12-15 (“perform[ing] a
`
`‘truck roll’—the dispatch of a service technician to activate a modem 42 or to
`
`configure a subscriber line 16—prior to determining data rates.”). As Cisco’s
`
`expert Dr. Kiaei explains, “nothing in Milbrandt excludes sending a technician to a
`
`remote site” and a POSITA would have understood that “using a truck roll falls
`
`squarely within the bounds of Milbrandt’s invention.” Ex-1100, ¶78.
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`11
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`Petitioner’s Reply, IPR2016-01006
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`Accordingly, Milbrandt’s disclosure does not, as a matter of law, qualify as a
`
`“teaching away.” In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) (“A known
`
`or obvious composition does not become patentable simply because it has been
`
`described as somewhat inferior to some other product for the same use.”); In re
`
`Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004) (“[t]he prior
`
`art’s mere disclosure of more than one alternative does not constitute a teaching
`
`away from any of these alternatives because such disclosure does not criticize,
`
`discredit, or otherwise discourage the solution claimed….”)
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`Third, TQ Delta’s teaching away argument fails because it is based on the
`
`testimony of an expert who did not use the proper legal standards. Specifically,
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`when TQ Delta’s expert, Dr. Chrissan, was cross examined about his
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`understanding of “teaching away,” he revealed that he did not understand the
`
`applicable legal principles at all:
`
`Q. If the '430 patent embodiments were to include a truckroll,
`then the ‘430 patent wouldn't teach away from a truckroll,
`right?
`A. Without reviewing the patent in detail I would say that if
`every embodiment described by the ‘430 patent included a
`truckroll, then I would not be able to say in any way that the
`‘430 excluded a truckroll.
`
`Ex-1110, 138:4-11. Apparently, to Dr. Chrissan, for a reference to not teach away
`
`12
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`
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`from using a specific element, every embodiment must include that element, which
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`Petitioner’s Reply, IPR2016-01006
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`
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`is legally incorrect. Since Dr. Chrissan has a fundamental lack of understanding on
`
`what it means to “teach away,” his testimony on this issue is entitled to no weight.
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`Therefore even if Chang’s elements were physically incorporated into
`
`Milbrandt (which is not required), the combination would still be proper since
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`Milbrandt already contemplates a truck roll. Ex-1100, ¶80.
`
`B. A POSITA would have had a reasonable expectation of success in
`combining the teachings of Chang with Milbrandt
`
`TQ Delta further argues that even if “Chang’s overall concept of measuring
`
`background noise [was brought into] Milbrandt, without using Chang’s physical
`
`equipment, then Petitioner’s failed to show any reasonable expectation of success.”
`
`(emphasis in original). Resp., 16-17. According to TQ Delta, Cisco did not show
`
`that there would have been a reasonable expectation of success because, allegedly,
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`Cisco did not provide evidence that a POSITA would have known how to
`
`“measure background noise [in] Milbrandt without a technician visit and
`
`truckroll.” Id., 19. This is wrong.
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`As explained in the Petition, which is supported by Dr. Kiaei’s declaration,
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`the combination with Chang would have been “nothing more than applying []
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`Chang’s known technique (i.e., measuring background noise in a DSL system) to
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`the DSL system of Milbrandt [which already measured total noise without a truck
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`roll], to yield predictable results.” Pet., 14, 17; Ex-1009, ¶97. Cisco’s Petition also
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`13
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`states that a POSITA would have been motivated to combine Chang and Milbrandt
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`Petitioner’s Reply, IPR2016-01006
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`
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`for several reasons, e.g., assessing system interactions, taking remedial measures,
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`maximizing throughput and reliability, improving service to customers, and also
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`making the system as a whole commercially desirable in the marketplace. Pet., 17.
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`These passages reflect Cisco’s position that a POSITA would have had a
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`reasonable expectation of successfully combining Chang and Milbrandt (i.e., with
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`predictable results that would permit the POSITA to improve on existing systems).
`
`Indeed, the testimony of both sides’ experts demonstrate that it was within
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`the technical ability of POSITAs to implement Chang’s overall concept of
`
`measuring idle channel/background noise in Milbrandt’s ADSL system, with a
`
`reasonable expectation of success. Both experts agree that a POSITA would have
`
`known how to measure idle channel/background noise in an ADSL system, such as
`
`Milbrandt’s, without a “truck roll.” TQ Delta’s declarant, Dr. Chrissan, testified
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`that (1) “the embodiments of the ‘430 do not require a truckroll” and (2) that
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`“measuring idle channel noise information [as in the ’430 patent] was known by
`
`those of skill in the art at the time.” Ex-1110, 136:4-137:9. Similarly, Cisco’s
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`expert, Dr. Kiaei, testified that “[p]ersons of skill as of 1999 would have
`
`understood how to apply Chang’s teachings of measuring idle channel noise to
`
`Milbrandt’s ADSL system, without a physical incorporation of Chang’s elements
`
`or a ‘truck roll’ and have a reasonable expectation of success in so doing.” Ex-
`
`14
`
`
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`
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`1100, ¶73. Dr. Kiaei further testified that he “personally measured idle channel
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`Petitioner’s Reply, IPR2016-01006
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`
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`noise in ADSL systems, as of 1999, in connection with [his] work. This was
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`performed without a truck roll.” Id. In short, both experts agree that it was known,
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`before the time of invention, how to measure idle channel/background noise in
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`ADSL systems, such as Milbrandt’s, without a “truck roll.”
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`Notably, TQ Delta makes no effort to explain why a POSITA would not
`
`have a reasonable expectation of success in measuring idle channel/background
`
`noise in Milbrandt’s ADSL system, which already measures total noise without a
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`truck roll. And TQ Delta’s “reasonable expectation of success” argument is not
`
`supported by the testimony of its expert. See Resp., 16-19 (which does not cite to
`
`the testimony of Dr. Chrissan for this proposition). Nevertheless, as noted above,
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`Dr. Chrissan agrees that measuring idle channel/background noise without a truck
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`roll in ADSL systems “was known by those of skill in the art at the time.” Ex-
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`1110, 136:4-9; Ex-1100, ¶74.
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`Moreover, in asserting that a POSITA would not have had a reasonable
`
`expectation of success in measuring idle channel/background noise in an ADSL
`
`system without a truck roll, TQ Delta ignores that the ’430 patent itself does not
`
`provide this teaching. Ex-1110, 136:4-9 (Dr. Chrissan admitting that “measuring
`
`idle channel noise information [is] not explicitly described in the ’430 patent.”);
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`Ex-1100, ¶74. The fact that the inventors of the ’430 patent did not address how to
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`15
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`measure idle channel noise without a truck roll in an ADSL system is evidence that
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`Petitioner’s Reply, IPR2016-01006
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`
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`they regarded this technique as well known in the art. See Hybritech Inc. v.
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`Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) (“a patent need not
`
`teach, and preferably omits, what is well known in the art.”)
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`Therefore, since it is undisputed that it was known how to predictably apply
`
`Chang’s general teachings of measuring idle channel/background noise in ADSL
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`systems, TQ Delta is incorrect that there would not be a reasonable expectation of
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`success in measuring idle channel/background noise in Milbrandt’s ADSL system.
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`Ex-1100, ¶75.
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`C. The teachings of Chang do not change Milbrandt’s principle of
`operation
`
`TQ Delta also makes an argument that somehow “Petitioners’ proposed
`
`modification to Milbrandt to add Chang’s background noise measurement would
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`have improperly changed the fundamental principle of operation of Milbrandt.”
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`Resp., 19-20. According to TQ Delta, “[w]hen Chang terminates the line in order
`
`to measure background noise, no signals can be transmitted,” and therefore Chang
`
`is, allegedly, incompatible because “[t]he whole purpose of Milbrandt is to transfer
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`that information about the customer modem, over the transmission line itself, to the
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`central office modem.” Id., 20-21. This argument is incorrect on the technology.
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`Ex-1100, ¶81.
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`Although, like most ADSL systems, Milbrandt seeks to transfer information
`
`16
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`about the subscriber modem to the central office modem, it does not require that
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`Petitioner’s Reply, IPR2016-01006
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`
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`communication occur all of the time. Ex-1100, ¶82. A POSITA would have
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`understood that idle channel/background noise measurement can be performed
`
`either during initialization or during periods when the modem is idle, with the
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`measured information transmitted afterwards. Id. Dr. Kiaei also provided
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`evidence that POSITAs had the ability to measure frequency domain idle
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`channel/background noise on a tone-by-tone basis, while transmitting signals on
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`other tones. Id.; Ex-1102, 3. (“In an idle channel noise test. Alcatel’s system
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`measures the noise levels that an ADSL transmitter puts out if it has an idle
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`channel (a tone not in use).”)4
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`Accordingly, TQ Delta has failed to show that the modification renders
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`Milbrandt inoperable or changes its principle of operation. In re Gordon, 733 F.2d
`
`900, 221 USPQ 1125 (Fed. Cir. 1984); In re Ratti, 270 F.2d 810, 813, 123 USPQ
`
`349, 352 (CCPA 1959) (“combination of references would require a substantial
`
`reconstruction and redesign of the elements shown in [the primary reference] as
`
`
`4 Petitioner’s evidence introduced in this Reply is responsive to arguments raised in
`TQ Delta’s Patent Owner Response and therefore proper. See 37 C.F.R. §
`42.23(b); Rules of Practice for Trials before the Patent Trial and Appeal Board, 77
`Fed. Reg. 48,612, 48,620 (Aug. 14, 2014); Genzyme Therapeutic Prods. Ltd. v
`BioMarin Pharm. Inc., 825 F.3d 1360 (Fed. Cir. 2016) (“The court has made clear
`that the Board may consider a prior art reference to show the state of the art at the
`time of the invention regardless of whether that reference was cited in the Board’s
`institution decision.” ).
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`17
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`
`
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`well as a change in the basic principle under which the [primary reference]
`
`Petitioner’s Reply, IPR2016-01006
`
`
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`construction was designed to operate.”)
`
`Therefore, measuring idle channel/background noise provides no
`
`impediment to the operation of Milbrandt’s ADSL modem and requires no change
`
`in Milbrandt’s basic principle of operation. Ex-1100, ¶83.
`
`D. There are numerous distinct reasons to combine the teachings of
`Milbrandt and Chang
`
`Lastly, TQ Delta argues that there is no motivation to combine the teachings
`
`of Milbrandt and Chang, because allegedly “Milbrandt was already able to do all
`
`of the same things that Petitioners claim would have been beneficial by using total
`
`noise measurements rather than background noise.” Resp., 22. TQ Delta’s
`
`portrayal of the different benefits enumerated in the Petition is distorted, and the
`
`supposed capability in Milbrandt to achieve the same benefits based on total noise
`
`measurement is factually unsupported. Ex-1100, ¶84.
`
`1.
`
`Assessing system interactions is a benefit
`
`TQ Delta distorts Cisco’s articulated benefit and asserts that “Petitioners’
`
`arguments… really boil down to allegedly ‘assessing interactions’ in order to (1)
`
`determine the existence of background noise….” Resp.,23. TQ Delta has it exactly
`
`backwards—the idle channel/background noise is measured in order to obtain the
`
`benefit of assessing system interactions.
`
`As explained in the Petition “[t]hose of skill in the art would have
`
`18
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`
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`recognized…that it is also important to measure and evaluate the noise present on
`
`Petitioner’s Reply, IPR2016-01006
`
`
`
`the subscriber [line] when the subchannel is not in operation, since these
`
`measurements represent system noise not associated with signals transmitted on
`
`the channel.” Ex-1009, p. 33; Pet., 14. As further explained in the Petition,
`
`evaluating the noise present on the subscriber line when the subchannel is not in
`
`operation allows for obtaining the benefit of “assessing system interactions.” Pet.,
`
`17. This furthers an objective of the ANSI T1.413 standard, which Milbrandt
`
`mentions in its disclosure. Ex-1009, ¶95; Ex-1014, 87 (“ADSL transceivers shall
`
`determine certain relevant attributes of the connecting channel and establish
`
`transmission and processing characteristics suitable to that channel.”) Assessing
`
`system interactions based on idle channel/background noise allows for directly
`
`determining whether the subscriber line/channel is suitable for ADSL
`
`communication. Ex-1100, ¶87. TQ Delta’s declarant, Dr. Chrissan, agreed that
`
`this is a benefit of measuring idle channel/background noise. Ex-1110, 134:8-15
`
`(“Q. Why would one measure idle channel noise? A. For example, if one wanted
`
`to characterize the noise in the channel. Q. Would idle channel noise be helpful in
`
`assessing whether a line is suitable for ADSL communications? A. I believe that
`
`that's a potential use.”) Ex-1100, ¶¶85-86.
`
`TQ Delta provides no explanation to support its argument that Milbrandt’s
`
`total noise information (which confounds system component noise and the noise
`
`19
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`
`
`
`
`from the transmitting modem) is suitable for assessing system interactions. Only
`
`Petitioner’s Reply, IPR2016-01006
`
`
`
`an idle channel/background noise measurement is well-suited for this purpose. Ex-
`
`1100, ¶¶87-88. As such, TQ Delta’s assertion that “Milbrandt was already able to
`
`do all of the same things that Petitioners claim would have been beneficial by
`
`using total noise measurements rather than background noise” is incorrect. Id.
`
`To illustrate the difference, if Milbrandt’s total noise measurement indicates
`
`abnormally high noise, it would be unknown whether the abnormally high noise is
`
`from system components or from the modem transmitting on that line. Ex-1100,
`
`¶89. On the other hand, if an assessment based on idle channel/background noise
`
`measurements has already determined that the background noise is within an
`
`acceptable range and suitable for ADSL communication, then it would be highly
`
`probable that the abnormally high total noise is due to a malfunctioning transceiver
`
`of the modem transmitting on that line. Id.
`
`Therefore, measuring idle channel/background noise, as Chang teaches,
`
`provides the distinct benefit of assessing system interactions which cannot be
`
`readily obtained with Milbrandt’s total noise measurement. Ex-1100, ¶90.
`
`2.
`
`Remedial measures - addressing power spikes is a benefit
`
`TQ Delta further argues that taking action to remedy power spikes is not a
`
`motivation to combine because, allegedly, “Chang [cannot] somehow []
`
`differentiate between these different sources of background noise or pinpoint
`
`20
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`
`
`
`
`which one is the cause of background noise.” Resp., 23. TQ Delta, however, fails
`
`Petitioner’s Reply, IPR2016-01006
`
`
`
`to appreciate that measuring idle channel/background noise allows for ruling out a
`
`transmitting modem as the possible noise source. This allows for more efficiently
`
`pinpointing and minimizing the power spike noise in the system. Ex-1100, ¶91.
`
`This was described in the Petition which explained that “[t]hose of skill in
`
`the art would recognize that all of these common noise sources [e.g., power
`
`spikes] are independent of the data signals transmitted on a subscriber line, and
`
`therefore, they are most readily and directly measured when there are no data
`
`signals on the line.” Pet., 15. As further explained in the Petition, this
`
`understanding allows for “taking remedial measures to minimize system
`
`interactions.” Pet., 16; Ex-1009, ¶96. In contrast, one using Milbrandt’s total noise
`
`measurement would find it more difficult to pinpoint and remedy power spike
`
`noise source in the system. As Dr. Kiaei explains, “in Milbrandt’s system, noise
`
`from power spikes would be harder to identify in the total noise measurement
`
`(which confounds system component noise with the noise from the transmitting
`
`modem) and it would be more difficult to pinpoint the source since there are more
`
`potential noise sources.” Ex-1100, ¶92.
`
`Thus, another distinct benefit for modifying Milbrandt to measure idle
`
`channel/background noise is to facilitate efficiently taking remedial actions that
`
`minimize power spikes from system components. Ex-1100, ¶93.
`
`21
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`Petitioner’s Reply, IPR2016-01006
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`3.
`
`Remedial measures - adjusting power/gain on adjacent lines
`is a benefit
`
`TQ Delta finally argues that adjusting the power, or gain, of adjacent
`
`modems is not a motivation because “Milbrandt…already discloses measuring
`
`noise during operation and adjusting the power or gain as a remedial measure.”
`
`Resp., 24. TQ Delta’s argument again ignores that idle channel/background noise
`
`provides information different than total noise measurement. See, e.g., Ex-1110,
`
`133:12-22 (“Q. And if you measure the noise when the channel is idle; that is,
`
`when the transmitter is off, you're going to obtain information different from
`
`measuring noise when the modem is transmitting, right? A. It's possible.”). As Dr.
`
`Kiaei explained, noise from adjacent system components is “most readily and
`
`directly measured when there are no data signals on the line.” Ex-1009, ¶91. He
`
`further explained that “[b]y directly measuring the background noise on each
`
`telephone line before and after changing the transmit power level, an assessment
`
`can be made as to whether, and to what extent, changing the transmit power level
`
`impacted the potential service quality on adjacent lines.” Ex-1009, ¶94. In
`
`contrast, Milbrandt’s total noise measurement (which also includes noise from the
`
`transmitting modem) is less capable of providing information to understand noise
`
`from adjacent lines to thereby adjust power and gains. In sum, measuring idle
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`channel/background noise allows Milbrandt to better ensure that line noise does
`
`not “degrade the services provided to other subscribers.” Ex-1011, 17:64-65; Ex-
`
`22
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`
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`1100, ¶¶94-95.
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`
`
`Petit
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