`By: Peter J. McAndrews
`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
`_____________
`
`CISCO SYSTEMS, INC. and ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`Case IPR2016-010071
`Patent No. 8,432,956 B2
`_____________
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATION
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`
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`1 ARRIS Group, Inc., who filed a Petition in IPR2017-00422, has been joined in
`this proceeding.
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`
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
`
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`Patent Owner TQ Delta, LLC (“Patent Owner”) submits this motion for
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`observation regarding cross-examination of Dr. Sayfe Kiaei a reply declarant for
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`Petitioners. Patent Owner submits the following Observation based on Dr. Kiaei’s
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`testimony taken on June 26, 2017.
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`Observation #1: In Ex. 2011, on page 45, line 10 to page 46, line 16, with
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`reference to claim 1 of the ‘956 patent, Dr. Kiaei testified that “the communication
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`channel is a channel within a much broader frequency band. And it could be
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`subchannel that -- subchannel or the broader frequency band. It could be a
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`subchannel of a much broader frequency band that this subchannel of that broader
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`frequency band is used for communication channel, specifically for the rest of the
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`patent that claimed that it discussed it.” This testimony is relevant to Dr. Kiaei’s
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`declaration testimony that “[a] carrier may be another term for a sub-channel when
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`the sub-channel’s frequency is modified to carry information” (Ex. 1009 at ¶ 69)
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`and “a sub-channel has its own frequency.” See Ex. 1009 at ¶ 67. The testimony
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`is relevant because it undermines the credibility of Dr. Kiaei’s declaration
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`testimony concerning the claimed “subchannel” recited in the ‘956 patent claims
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`and
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`the accuracy of Dr. Kaiei declaration
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`testimony
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`that Milbrandt’s
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`“subfrequency” is the claimed “subchannel.”
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`Observation #2: In Ex. 2011, on page 31, lines. 11-12, Dr. Kiaei testified
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`that “subbands and carriers in OFDM are -- and ADSL -- and ADSL are the same.”
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`Separately, on page 20, lines 21-22, Dr. Kiaei testified that subbands and carriers
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`are not the same. (“Q. Is 4 kilohertz the spacing between carriers? A. We’re not
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`talking about carriers here right now. We're talking about 256 subbands.”) The
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`testimony is relevant because Dr. Kaiei contradicts himself and this contradiction
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`goes to the credibility of his declaration testimony relating to the claimed
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`subchannel. See Ex. 1100 at ¶¶ 6, 8 and 9.
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`Observation #3: In Ex. 2011, on page 91, line 1 to page 92, line 19, with
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`reference to “annotated figure on pg. 13 of” his reply declaration, Ex. 1100, Dr.
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`Kiaei testified, inter alia, that Petitioner’s definition of subchannel “is a broad
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`definition of a subchannel” and that the definition would include “all the
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`frequencies in that red box” of the figure or “a portion actually from 30 hertz to
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`11.04 kilohertz or other portions of frequencies. . . .” This is relevant to Dr.
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`Kiaei’s declaration testimony concerning his understanding of “sub-channel” in the
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`context of the ‘956 patent that “[a]channel may be divided into multiple sub-
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`channels, where each sub-channel has its own frequency. For example, the
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`broadband communications channel of the ‘956 patent is formed by multiple
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`carriers. . . .” Ex. 1009 at ¶ 58. This testimony is relevant because it goes to Dr.
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`Kiaei’s claim construction analysis of the claimed “subchannel” and application of
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`the construction to the claimed “subchannel” and Milbrandt’s (Ex. 1011) sub-
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`frequency. Further, this testimony is relevant because it contradicts Dr. Kiaei’s
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`declaration testimony and goes to the credibility and accuracy of his declaration
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`testimony equating Milbrandt’s “sub-frequency” with the claimed “sub-channel.”
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`Observation #4: In Ex. 2011, at page 84, lines 8-19, in response to a
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`question if a subchannel is associated with a frequency, Dr. Kiaei responded that a
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`frequency band is associated with a subchannel. This is relevant to Dr. Kiaei’s
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`declaration testimony that “[a] carrier may be another term for a sub-channel when
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`the sub-channel’s frequency is modified to carry information” (Ex. 1009 at ¶ 69)
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`and “a sub-channel has its own frequency.” See Ex. 1009 at ¶ 67. This testimony
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`is also relevant because it undermines Dr. Kiaei’s credibility.
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`Observation #5: In Ex. 2011, on page 31, lines 1-12, Dr. Kiaei agreed that
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`the Elahi reference (Petitioner’s Ex. 1108 at pages 108 and 109) recites that
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`“[e]ach subfrequency is an independent channel[]”and that “ADSL uses DMT
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`encoding to divide the bandwidth of the channel into multiple subchannels,” and he
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`further testified that he understands Elahi’s subfrequency “to be the subfrequency
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`mentioned in Milbrandt[.]” This testimony is relevant to Dr. Kiaei’s declaration
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`testimony at Ex. 1009 at ¶ 59 regarding his understanding that “Milbrandt’s ‘sub-
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`frequency’” “correspond[s] to the ‘subchannel’ in the ‘956 patent.” Dr. Kiaei’s
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`testimony that Elahi and Milbrandt’s subfrequency is a channel and that “ADSL
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`uses DMT encoding to divide the bandwidth of the channel into multiple
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`subchannels” is relevant because it is inconsistent with Dr. Kiaei’s declaration
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`testimony that Milbrandt’s sub-frequency is the claimed “subchannel.” This is
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`relevant because it undermines the credibility and accuracy of Dr. Kiaei’s
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`declaration testimony relied upon in the institution decision (Paper 8 at p. 15) that
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`“Milbrandt’s ‘sub-frequency’” “correspond[s] to the ‘subchannel’ in the ’956
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`patent.”
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`Observation #6: In Ex. 2011, on page 104, line 19 to page 111, line 24, Dr.
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`Kiaei testified that the single value for Transmit Power Spectrum Density (“PSD”)
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`communicated in a message in the ANSI T1.413 standard (Ex. 1014 at p. 101)
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`could be a single value for the entire upstream or downstream channel, rather than
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`separate values per subchannel. See, e.g. Ex. 2011, page 106, lines 4-8 (“Q. Okay.
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`But that’s [3-bit value] for the entire upstream or downstream channel? THE
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`WITNESS: That’s for the portion of the upstream or downstream channel. It could
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`be, but I need to look at it carefully.”); Ex. 2011, page 111, lines 13-18 (“Q. So in
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`your opinion, these 3-bit – this 3-bit value does not represent the PSD for the entire
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`upstream or downstream channel? THE WITNESS: That’s not what I said.”) Dr.
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`Kiaei further testified that it is this PSD value that is calculated based on a
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`REVERB signal. Ex. 2011, page 116, lines 3-5. This is relevant because it
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`contradicts Dr. Kiaei’s declaration testimony that ANSI T1.413 measures “power
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`level per subchannel values based on a Reverb signal” and that the transmitted
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`PSD in ANSI T1.413 “includes individual values for each of sub-carriers.” See
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`Ex. 1100 at ¶34.
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`Observation #7: In Ex. 2011, at page 111, line 4 to page 112, line 14, with
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`reference to the ANSI T1.413 standard (Exhibit 1014) at pages 95-100 and in
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`response to a question whether “the result of that calculation [set forth in 12.4.3] is
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`reported back in these three bits of C-MSGS1,” Dr. Kiaei testified that “I presume
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`so, but I don’t have an opinion on it right now looking at it unless I read the whole
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`-- the whole section and see what it’s trying to do.” Dr. Kiaei further testified that
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`he hasn’t spent a lot of time analyzing that section of Ex. 1014. See id., (“Q. Is this
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`3-bit value based on a -- on the C-REVERB signal? . . . THE WITNESS: Again, I
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`haven’t spent a lot of time on this. What it says is that ‘shall report the level of C-
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`REVERB’ based on the calculation on page 95 on what it's trying to do there. I will
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`-- I can look at it, more details of it, and give you an answer, if you like.”). This is
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`relevant to Dr. Kiaei’s declaration testimony that “[b]ecause Milbrandt, Chang and
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`Hwang implement the technology standardized by ANSI T1.413, a POSITA would
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`have referred to the ANSI T1.413 document for additional details about how the
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`ADSL communication equipment should function in accordance with the standard”
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`(Ex. 1009 at ¶ 106) and that “a POSITA would have measured PSD per sub-
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`frequency in Milbrandt’s ADSL system based on Reverb to also comply with
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`ANSI T1.413, which is a goal of Milbrandt (Ex. 1100 at ¶ 40). The testimony is
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`relevant because it undermines Dr. Kiaei’s credibility and the accuracy of his
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`declaration testimony that “PSD per sub-frequency in Milbrandt’s ADSL system
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`based on Reverb” is for the individual subchannels of the communication channel.
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`Id.
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`Observation #8: In Ex. 2011, page 50, lines 8-15, with reference to the
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`claim term “during Showtime,” Dr. Kiaei testified, inter alia, that “some of the
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`initialization . . . is being done while data is being transmitted.” That testimony is
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`relevant to Dr. Kaiei’s testimony during his first deposition where he testified that
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`“Showtime is after the initialization with the first modem is turned on” (Ex. 2005
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`at 56:22-24) and his declaration testimony at Ex. 1009 at ¶ 52 (“Showtime is used
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`to describe the mode where the remote and the central office DSL modems can
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`conduct normal communications over the access network.”) The testimony is
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`relevant because it undermines Dr. Kiaei’s credibility and the accuracy of his
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`opinion that Milbrandt discloses measuring Signal to Noise ratio per subchannel
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`during Showtime information.
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`Observation #9: In Ex. 2011 at page 62, lines 19 to page 63, line 18, in
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`response to a line of questions regarding whether Milbrandt’s modem determined
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`test and diagnostic information like attenuation “during operation” or “during
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`Showtime,” Dr. Kiaei testified that he did not have an opinion on that topic. This
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`testimony is relevant because it contradicts Dr. Kiaei’s declaration testimony that
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`“it would have been obvious to a POSITA that the noise measurements gathered by
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`Milbrandt’s modem 42 are obtained ‘during Showtime’ as claimed.” Ex. 1009 at
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`pages 83-84. The testimony is relevant because it undermines the credibility and
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`accuracy of Dr. Kaiei’s declaration opinions.
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`Observation #10: In Ex. 2011 at pages 15, lines 2-10, Dr. Kiaei testified
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`that “in general, a person with a background in mathematics and statistics would,
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`and having a background in other areas” would qualify as a person of ordinary skill
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`in the art. This testimony is relevant to Dr. Kiaei declaration testimony that “the
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`level of a POSITA needed to have the capability of understanding multicarrier
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`communications and engineering principles applicable to the ‘412 patent is (i) a
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`Master’s degree in Electrical and/or Computer Engineering, or equivalent training,
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`and
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`(ii) approximately
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`five years of experience working
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`in digital
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`telecommunications. Lack of work experience can be remedied by additional
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`education, and vice versa. Such academic and industry experience would be
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`necessary to appreciate what was obvious and/or anticipated in the industry and
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`what a POSITA would have thought and understood at the time.” Ex.1009 at ¶ 36.
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`This testimony is relevant to Dr. Kaiei credibility and Dr. Kaiei’s obviousness
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`analysis, specifically, evaluation of the patents and the pertinent art.
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`Observation #11: In Ex. 2011 at page 88, lines 18-19, Dr. Kiaei agreed that
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`the ‘956 patent specification does not equate channel and subchannel as
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`interchangeable concepts. (“Q. Does it say channel is subchannel? A. Doesn’t
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`necessarily say that either[.]”). And at page 86, lines 11-13, Dr. Kiaei testified that
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`“the “’956 patent describes the collection of these subchannels into an effectively
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`broadband communication channel, which is either an upstream or downstream
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`channel[.]” This testimony is relevant because it undermines the credibility and
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`accuracy of Dr. Kiaei’s declaration testimony relied upon in the institution decision
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`(Paper 8 at p. 15) that “Milbrandt’s ‘sub-frequency’” “correspond[s] to the
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`‘subchannel’ in the ‘956 patent.”
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`Observation #12: In Ex. 2011 at page 45, line 10 to page 46, line 16, Dr.
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`Kiaei, in response to a question if a POSITA would interchange “channel” and
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`“subchannel” in the challenged claims, testified that it depends on the “content and
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`application” of the specification. This is relevant to Dr. Kiaei’s declaration
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`testimony criticizing Dr. Chrissan’s definition of subchannel, which does not
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`interchange the two. See Ex. 1100 at ¶ 10. This testimony is relevant because it
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`undermines the credibility and accuracy of Dr. Kiaei’s declaration testimony that
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`Dr. Chrissan’s construction for “subchannel” is “confusing and circular.” Id.
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`Observation #13: In Ex. 2011, page 173, line 24 to 174, line 10, on redirect,
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`Dr. Kiaei testified as follows: “Q. And in the context of the ‘956 patent, are
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`subchannels always carriers? A. In the context of ‘956, no, they’re not. Q. So it in
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`context of the ‘956 patent, when is a subchannel a carrier? A. A subchannel which
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`are non-overlapping of limited bandwidth are the carriers as outlined in the ‘956
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`patent.” In Ex. 2011, page 180, lines 11-13, Dr. Kiaei further testified that in the
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`context of the ‘956 patent: “Q. Can you have overlapping subchannels in DSL? A.
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`No.” This testimony is relevant because Dr. Kiaei’s redirect testimony contradicts
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`his direct testimony, and it undermines the credibility of Dr. Kiaei and his general
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`understanding of the claimed “subchannels” and “channel.”
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`Observation #14: In Ex. 2011, Dr. Kiaei testified that “a POSITA will
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`know that [] V.90 occupies that frequency band from 0 to 4 kilohertz which is a
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`subfrequency” (page 98 at lines 2-4) and “that the V.90 protocol uses a voice
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`frequency spectrum which is in fact a subfrequency of the overall frequency
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`spectrum. So what I’m talking about in here is that overall frequency spectrum – a
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`portion of that is a subfrequency that the V.90 uses that” (page 98, lines 18-23).
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`Separately, with reference to the figure at p. 13 of Dr. Kiaei’s declaration
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`testimony (Ex. 1100), he testified that ADSL is allocated a “portion of the
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`frequency spectrum” from 25 kilohertz to 1.1 MHz. Ex. 2011, 90:2-19 (“Q. Is that
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`a portion of the frequency spectrum? A. That is a frequency spectrum that is
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`allocated for ADSL from -- in this particular figure. Q. Yes. A. From 25 kilohertz
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`to 1.5 -- 1.1 megahertz. Q. So it’s a portion of the frequency spectrum? . . . Q. Is it
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`a portion of the frequency spectrum? A. You’re talking very general terminology
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`here. This ADSL frequency covers 25 kilohertz to 11.04 kilohertz. That’s what I
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`would call it.”). This testimony is relevant because it contradicts Dr. Kaiei’s
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`contention that Milbrandt’s subfrequency is the claimed “subchannel.” This
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`testimony is also relevant to Dr. Kiaei’s disagreement with Dr. Chrissan’s
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`declaration testimony that “[b]ased on Milbrandt’s use of the term ‘sub-frequency,’
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`one of ordinary skill in the art would conclude that the term refers to the upstream
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`or downstream frequency bands in ADSL or to the frequency bands used for
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`communication protocols other than ADSL (such as VDSL, SDSL or the voice
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`spectrum protocols such as V.90.).” Ex. 2001 at ¶ 40.
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`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McANDREWS, HELD & MALLOY,
`LTD.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`
`
`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
`
`Dated: July 5, 2017
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`Patent Owner’s Motion for Observation
`IPR2016-01007
`Patent No. 8,432,956
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing Patent
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`Owner’s Motion for Observation was served on July 5, 2017, via email to
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`counsel for Petitioners at the following:
`
`Lead Counsel
`David L. McCombs
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Tel. 214-651-5533
`Fax 214-200-0853
`david.mccombs.ipr@haynesboone.com
`
`John M. Baird
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`Fax 202-776-7801
`JMBaird@duanemorris.com
`
`
`
`MCANDREWS, HELD & MALLOY
`
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`Date: July 5, 2017
`
`Back-up Counsel
`Theodore M. Foster
`Tel. 972-739-8649
`Gregory P. Huh
`Tel. 972-739-6939
`Russell Emerson
`Tel. 214-651-5328
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Fax 972-692-9156
`ipr.theo.foster@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`Fax 202-776-7801
`CJTyson@duanemorris.com
`
`
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`
`
`
`
`
`
`