`
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`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
`_____________
`
`CISCO, INC.
`Petitioner
`
`v.
`
`TQ DELTA, LLC
`Patent Owner
`_____________
`
`
`Case No. IPR2016-01008
`Patent No. 8,238,412
`_____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`SUMMARY OF THE ’412 PATENT ............................................................. 8
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`
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`I.
`
`II.
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`III. CLAIM CONSTRUCTION ............................................................................ 9
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`IV. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO THE
`SINGLE GROUND RAISED BY PETITIONER—ALLEGED
`OVIOUSNESS UNDER 35 U.S.C. §103 BY MILBRANDT IN VIEW OF
`HWANG AND ANSI T1.413 ......................................................................... 9
`
`A. Petitioner Has Not Established a Reasonable Likelihood That
`Claims 1, 3, 5, 7, 19, or 20 Would Have Been Obvious ....................... 12
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`1. The Combination of Milbrandt, Hwang, and ANSI T1.413
`Would Still Fail to Disclose a Test Message Comprising “An
`Array Representing Power Level Per Subchannel
`Information” ...................................................................................... 12
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`2. Petitioner Has Not Shown That a Test Message Comprising
`“An Array Representing Power Level Per Subchannel
`Information” Would Have Been Obvious From Milbrandt,
`Hwang, and ANSI T1.413 ................................................................ 12
`
`3. The Combination of Milbrandt, Hwang, and ANSI T1.413
`Would Still Fail to Disclose a Test Message “Wherein Bits in
`the Message Are Modulated Onto DMT Symbols Using
`Quadrature Amplitude Modulation (QAM) With More Than 1
`bit Per Sub Channel” ........................................................................ 17
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`4. Petitioner Has Not Shown That a Test Message “Wherein Bits
`in the Message Are Modulated Onto DMT Symbols Using
`Quadrature Amplitude Modulation (QAM) With More Than 1
`bit Per Sub Channel” Would Have Been Obvious From
`Milbrandt, Hwang, and ANSI T1.413 .............................................. 20
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`B. Petitioner Has Not Established a Reasonable Likelihood That
`Claims 2, 4, 6, and 8 Would Have Been Obvious ................................. 24
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`i
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`Patent Owner’s Preliminary Response
`IPR2016-01008
`1. The Combination of Milbrandt, Hwang, and ANSI T1.413
`Fails to Satisfy the Claims for the Same Reasons As
`Independent Claims 1, 3, 5, and 7 .................................................... 24
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`2. The Combination of Milbrandt, Hwang, and ANSI T1.413
`Would Also Still Fail to Disclose a Test Message Comprising
`“Power Level Per Subchannel Information . . . Based on a
`Reverb Signal” .................................................................................. 25
`
`3. Petitioner Has Not Shown That a Test Message Comprising
`“Power Level Per Subchannel Information . . . Based on a
`Reverb Signal” Would Have Been Obvious From Milbrandt,
`Hwang, and ANSI T1.413 ................................................................ 27
`
`C. Petitioner Has Not Established a Reasonable Likelihood That
`Claims 13, 14 Would Have Been Obvious ............................................ 32
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`1. The Combination of Milbrandt, Hwang, and ANSI T1.413
`Would Still Fail to Disclose a Test Message Comprising “An
`Array Representing Signal to Noise Ratio Per Subchannel
`During Showtime Information” ........................................................ 32
`
`2. Petitioner Has Not Shown That a Test Message Comprising
`“An Array Representing Signal to Noise Ratio Per Subchannel
`During Showtime Information” Would Have Been Obvious
`From Milbrandt, Hwang, and ANSI T1.413 .................................... 36
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`3. The Combination of Milbrandt, Hwang, and ANSI T1.413
`Would Still Fail to Disclose or Render Obvious a Test
`Message “Wherein Bits in the Message Are Modulated Onto
`DMT Symbols Using Quadrature Amplitude Modulation
`(QAM) With More Than 1 Bit Per Subchannel” .............................. 40
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`V.
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`CONCLUSION .............................................................................................. 41
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`CERTIFICATE OF WORD COUNT ...................................................................... 43
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`I.
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`INTRODUCTION
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`Patent Owner TQ Delta, LLC (“Patent Owner”) submits this preliminary
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`response to the Petition filed by Cisco, Inc. (“Cisco” or “Petitioner”) requesting
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`inter partes review of claims 1-8, 13, 14, 19, and 20 of U.S. Pat. No. 8,238,412
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`(“the ’412 patent”).
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`This is the second IPR Petition filed against the ’412 patent (a third IPR
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`against the ’412 patent was also filed by Petitioner Cisco, for which a separate
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`patent owner’s preliminary response is being submitted). The first petition, filed in
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`IPR2016-00430 by Arris Group, Inc. (a party similarly situated with Cisco as a
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`supplier of products accused of infringement in the related litigation identified in
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`the Petition), was recently denied institution by the Board. (See IPR2016-00430 at
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`Paper 9, Decision Denying Institution.) In that decision, the Board found that
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`Arris had (1) failed to show that the asserted prior art disclosed all limitations of
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`the claims of the ’412 patent, and/or (2) failed to provide sufficient rationale to
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`support alleged obviousness. (See id.)
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`Now, Cisco is attempting a second bite at the apple of attacking the ’412
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`patent, but using different prior art references than those asserted by Arris. This
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`second Petition, however, is deficient for similar reasons. Here, Petitioner Cisco
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`raises a single Ground of alleged unpatentability for obviousness—but one relying
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`on a combination of three new references. Each of the asserted prior art references,
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`however, differs significantly from the inventions claimed by the ’412 patent. At
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`least several claim limitations are missing from each of the asserted prior art
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`references—Petitioner’s claims that most of the limitations are purportedly found
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`in a primary reference (Milbrandt) are facially incorrect. Petitioner, moreover,
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`unsuccessfully attempts to cobble together various discrete features from the
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`multiple different prior art references based on circular or conclusory reasoning, or
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`reasoning based on additional incorrect facts.
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`At this stage, the Board can decline instituting trial on the single proposed
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`obviousness Ground because the Petition is deficient for several reasons.
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`Claims 1-8, 19, 20: First, Petitioner’s asserted obviousness combination
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`still fails to disclose several limitations of independent claims 1, 3, 5, 7, 19, and 20
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`of the ’412 patent (as well as dependent claims 2, 4, 6 and 8). None of the
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`references discloses at least (a) “a [transmitter/receiver] portion capable of
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`[transmitting/receiving] a message, wherein the message comprises one or more
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`data variables that represent the test information . . . wherein at least one data
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`variable of the one or more data variables comprises an array representing power
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`level per subchannel information,” or “[transmitting/receiving] a message,
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`wherein the message comprises one or more data variables that represent the test
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`information . . . wherein at least one data variable of the one or more data
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`variables comprises an array representing power level
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` per subchannel
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`2
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`information” or (b) “wherein bits in the message were modulated onto DMT
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`symbols using Quadrature Amplitude Modulation (QAM) with more than 1 bit per
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`subchannel.” For each of these limitations, Petitioner either mischaracterizes
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`features of the prior art patents or makes unsupported assumptions.
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`For example, Petitioner
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`incorrectly asserts
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`that Milbrandt discloses
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`measuring “power level per subchannel information,” because Milbrandt’s “sub-
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`frequencies” were allegedly the same thing as the claimed “subchannels.” (See
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`infra at § IV.A.1.) But Petitioner offers nothing more than bald attorney argument
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`and the conclusory “say-so” of its expert in this regard (who merely repeats
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`verbatim the allegation in the Petition). In fact, Milbrandt expressly explains that
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`its “sub-frequencies” are each an “independent channel.” (See id.) Petitioner does
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`not cite to Hwang or ANSI T1.413 for this limitation of claims 1, 3, 5, and 7. (See
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`id.) Nor does Petitioner allege that, if absent from Milbrandt, the ability to
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`transmit or receive “power level per subchannel information” would have been
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`obvious in view of Hwang or ANSI T1.413. (See id. at § IV.A.2.)
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`Similarly, Petitioner points to disclosure in the references of transmitting or
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`receiving primary Internet traffic using DMT/QAM, but does not cite to anywhere
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`that any of the references expressly discloses transmitting or receiving a test
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`message in particular using DMT/QAM. At least Milbrandt discloses, however,
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`that just because primary Internet traffic is transmitted using DMT/QAM does not
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`mean that a test message necessarily is or needs to be transmitted that way (i.e.,
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`Milbrandt discloses transmitting test messages using the non-DMT V.90 protocol).
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`(See infra at § IV.A.3.) And each of Petitioner’s proposed obviousness reasons for
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`transmitting a test message via DMT/QAM are illogical, conclusory, or circular
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`(e.g., illogically alleging without evidentiary support that transmitting a test
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`message via DMT/QAM would increase system “efficiency” by increasing
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`throughput, or circularly alleging that it would have been obvious to transmit the
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`test message via DMT/QAM so that the test message is transmitted via
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`DMT/QAM). (See infra at § IV.A.4.)
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`Claims 2, 4, 6, 8: Petitioner’s obviousness allegations regarding dependent
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`claims 2, 4, 6, and 8 fail as an initial matter for the same reasons as independent
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`claims 1, 3, 5, and 7 (See infra at § IV.B.1.) But in addition, Milbrandt, Hwang,
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`and ANSI T1.413 also fail to disclose or render obvious an additional limitation
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`required by each of these claims—transmitting a test message comprising “power
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`level per subchannel information . . . based on a Reverb signal.”
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`Petitioner acknowledges that Milbrandt does not satisfy this additional
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`limitation of claims 2, 4, 6, and 8—to the contrary, the power spectrum density
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`information in Milbrandt that Petitioner relies on for claims 1, 3, 5, and 7 is not
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`based on a Reverb signal (and in any event it is again not “power level per
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`subchannel information”). (See infra at § IV.B.2.) Therefore, Petitioner turns to
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`ANSI T1.413 for its disclosure of measuring power spectrum density information
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`based on Reverb. But the power spectrum density information in ANSI T1.413 is
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`also not “power level per subchannel information” under the ’412 patent—
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`Petitioner does not even allege that it is. (See id.) Nor does Petitioner cite to any
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`disclosure in ANSI T1.413 that the power spectrum density information is
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`transmitted—to the contrary, ANSI T1.413 discloses that power spectrum density
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`is not transmitted as part of a test message, but rather is merely calculated at a
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`central office modem. (See id.)
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`Further, Petitioner also again provides no rational, supported reason for
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`substituting Milbrandt’s non-Reverb power spectrum density information with that
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`disclosed in ANSI T1.413. Each of Petitioner’s proffered reasons for doing so is
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`either (1) based on facially wrong factual allegations (e.g., that the Reverb signal
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`used in ANSI T1.413 for measuring power spectrum density also allows for
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`adjusting gain or equilization, or that measuring power spectrum density based on
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`Reverb is necessary for Milbrandt to comply with ANSI T1.413 because ANSI
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`T1.413 describes related aspects of DMT), (2) circular (e.g., that adding ANSI
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`T1.413’s Reverb-based power spectrum density information to Milbrandt would
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`allow Milbrandt to transmit Reverb-based power spectrum density information), or
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`(3) duplicative of Milbrandt’s already-existing capabilities. (See infra at § IV.B.3.)
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`Claims 13, 14: Lastly, Petitioner also fails to show that claims 13 and 14
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`would have been obvious in view of Milbrandt, Hwang, and ANSI T1.413. None
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`of the references discloses transmitting a test message comprising “an array
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`representing Signal to Noise ratio per subchannel during Showtime information.”
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`Nor would the combination of references have rendered this limitation obvious.
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`For example, Petitioner points to disclosure in Milbrandt of measuring and
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`transmitting “noise” (not signal to noise ratio), and only on a per channel (not per
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`subchannel) basis. (See infra at § IV.D.1.) But Milbrandt discloses that its
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`“noise” information is measured and transmitted not “during Showtime,” but rather
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`during “modem training.” (See id.) And Milbrandt discloses that, rather than
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`being transmitted from a subscriber modem to a central office modem, “signal to
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`noise ratio” is instead calculated at the central office by a system management
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`server. (See id.) Similarly, while Petitioner points to ANSI T1.413’s disclosure of
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`measuring signal to noise ratio margin, Petitioner has not shown that ANSI
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`T1.413’s signal-to-noise ratio margin is the same thing as signal-to-noise ratio, nor
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`that it is determined on a per subchannel, rather than per channel, basis. (See id.)
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`Further, Petitioner can provide no reason, supported by evidence and logical
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`underpinnings, for transmitting signal to noise information during Showtime
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`information in a test message. (See infra at § IV.C.3.) The only reason Petitioner
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`alleges is to comply “in accordance” with ANSI T1.413’s standard because ANSI
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`T1.413 “both Milbrandt and Hwang describe ADSL communication systems and
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`ANSI T1.413 defines the ADSL communication standard” and because “Milbrandt
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`specifically describes ‘using ADSL techniques that comply with ANSI Standard
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`T1.413.’” (See id.) But again, ANSI T1.413 does not in fact transmit signal to
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`noise ratio per subchannel information. (See id.) In fact, Milbrandt states that it
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`already complies with ANSI T1.413. (See id.)
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`Accordingly, Petitioner has not carried its burden of showing that any of
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`claims 1-8, 13, 14, 19, and 20 are unpatentable. Petitioner has failed to show that
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`any combination of printed publication prior art references expressly or inherently
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`discloses every element of the claims. With respect to several claim elements,
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`Petitioner relies on bare assumptions regarding teachings of the prior art, based on
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`incorrect readings of the references. And by failing to provide reasoned
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`underpinnings for alleged obviousness, Petitioner has attempted to flip the burden
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`to the Patent Owner to affirmatively prove patentability. But the burden of proving
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`unpatentability of the challenged claims always rests with the Petitioner and, thus,
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`it was incumbent upon Petitioner to factually support one or more sufficient
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`reasons to combine. Because Petitioner did not meet its burdens of proof, the
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`Board should decline to institute inter partes review of the ’412 patent.
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`Should the Board institute review, however, Patent Owner reserves the right
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`to provide further technical evidence and expert testimony as to why Petitioner’s
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`proposed combinations do not make sense from a technological standpoint.
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`Among other things, Patent Owner reserves the right to further explain how the
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`cited references are incompatible or would be rendered inoperable or unsuitable for
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`their intended purposes, why the prior art teaches away from the combinations, and
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`why a person of ordinary skill in the art would have reasons not to make the
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`combinations.
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`II.
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`SUMMARY OF THE ’412 PATENT
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`The ’412 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 ’412 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 has used the inventions of the ’412
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`8
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`patent in its products.
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`III. CLAIM CONSTRUCTION
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`Petitioner has proposed constructions for the following terms: “during
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`Showtime,” “array,” and “transceiver.” (See Pet. at pp. -.) Notably, however, in
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`ruling on the prior petition challenging the ’412 patent, the Board did not find it
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`necessary to construe any of these claim terms. (See IPR2016-00430, Paper 9
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`(Decision Denying Institution).)
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`Patent Owner respectfully submits that nothing in the present Petition
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`requires a different approach at this stage. That is because none of Petitioner’s
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`proposed constructions are necessary in deciding whether or not to institute trial.
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`See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
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`(claim terms need only be construed “to the extent necessary to resolve the
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`controversy”). Rather, for the reasons discussed below, even under the claim
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`constructions proposed by Petitioner, the prior art does not render any claims of the
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`’412 patent obvious.
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`IV. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO THE
`SINGLE GROUND RAISED BY PETITIONER—ALLEGED
`OVIOUSNESS UNDER 35 U.S.C. §103 BY MILBRANDT IN VIEW
`OF HWANG AND ANSI T1.413
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`As explained in detail below, the Petition should be denied because it fails
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`to establish a reasonable likelihood that the challenged claims are unpatentable.
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`The Petition proposes only one ground against the ’412 patent, asserting
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`obviousness in view of a combination of three different references:
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`Patent Owner’s Preliminary Response
`IPR2016-01008
`Ground 1. Unpatentability of claims 1-8, 13, 14, 19, 20 under 35
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`
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`U.S.C. § 103(a) over U.S. Patent No. 6,636,603 to Milbrandt (“Milbrandt”), in view
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`of U.S. Pat. No. 6,590,893 to Hwang et al. (“Hwang”) and American Nat. Standards
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`Inst. (ANSI) T1.413-1995 Standard, entitled “Network and Customer Installation
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`Interfaces—Asymmetric Digital Subscriber Line (ADSL) Metallic Interface”
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`(“ANSI T1.413”).
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`Initially, as discussed in more detail below, the cited references do not,
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`individually or collectively, disclose, teach, or suggest all of the elements of claims
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`1-8, 13, 14, 19, or 20. Where none of the references disclose an element of the
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`claims, inter partes review for obviousness cannot be instituted. See Customplay,
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`LLC v. Clearplay, Inc., IPR2013-00484, Paper 29 at p. 12 (P.T.A.B. Nov. 5, 2014)
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`(claims not unpatentable where none of the asserted prior art references disclosed a
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`claim element); Du Pont v. Monsanto Tech., LLC, IPR2014-00334, Paper 16 at p. 8
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`(P.T.A.B. July 11, 2014) (denying institution where none of the asserted prior art
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`disclosed a claim element).
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`Additionally, the Petition fails to provide a sufficient rationale or reason why
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`the separate references would have been combined to arrive at the claimed
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`inventions. “An obviousness analysis requires more than simply showing that each
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`limitation is found in the prior art.” Jacobs Corp. v. Genesis III, Inc., IPR2014-
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`01267, Paper 12 at p. 8 (P.T.A.B. January 22, 2015). “Petitioner must also show
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`‘whether there was an apparent reason to combine the known elements in the
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`fashion claimed by the patent at issue.’” Id. “Petitioner must set forth sufficient
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`articulated reasoning with rational underpinning
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`to support
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`its proposed
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`obviousness ground.” SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-
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`00581, Paper 15 at p. 12 (P.T.A.B. December 30, 2013) (emphasis added).
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`Assuming arguendo, that the cited references did, in combination, disclose all
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`elements of claims 1-6, the Petition has failed to sufficiently “address this latter,
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`‘reason to combine’ portion of the obviousness analysis.” Jacobs Corp. v. Genesis
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`III, Inc., IPR2014-01267, Paper 12 at p. 8 (P.T.A.B. January 22, 2015).
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`The deficiencies of the Petition cannot be saved by mere citations to portions
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`of the Kiaei Declaration. See 37 C.F.R. § 42.22(a)(2) (Petition must contain a “full
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`statement of the reasons for the relief requested, including a detailed explanation of
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`the significance of the evidence”). A Petition cannot simply incorporate by
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`reference a more detailed expert declaration. See 37 C.F.R. § 42.6(a)(3)
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`(prohibiting arguments in a supporting document from being incorporated by
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`reference into a petition); see also Oxford Nanopore Tech. Ltd. v. University of
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`Washington, IPR2014-00512, Paper 12 (P.T.A.B. Sept. 15, 2014) (denying
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`institution; “[E]ssentially none of the discussion in the cited paragraphs of the
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`Branton Declaration, allegedly explaining why an ordinary artisan would have
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`combined Akeson with Butler, Wong, or Faller, appears in the Petition. We
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`decline to import the extensive discussion regarding obviousness from the
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`declarations of Petitioner's experts into the Petition . . . .”) (emphasis added).
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`For the foregoing reasons and as further discussed below, the Petition fails
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`to establish a prima facie case of obviousness on any ground. Accordingly, the
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`Petition does not establish a reasonable likelihood that the challenged claims are
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`unpatentable, and the Board should therefore not institute an inter partes review.
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`A.
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`Petitioner Has Not Established a Reasonable Likelihood That
`Claims 1, 3, 5, 7, 19, or 20 Would Have Been Obvious
`
`1.
`
`The Combination of Milbrandt, Hwang, and ANSI T1.413
`Would Still Fail to Disclose a Test Message Comprising “An
`Array Representing Power Level Per Subchannel
`Information”
`
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`Petitioner’s Ground 1 first and foremost fails with respect to claims 1, 3, 5,
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`7, 19, or 20 because the combination of alleged prior art references would still fail
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`to disclose at least one element required by each of those claims—transmitting or
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`receiving test information over a communication channel, where the test
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`information includes “an array representing power level per subchannel
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`information.” (See Ex. 1001, ’412 patent at claims 1, 3, 5, 7, 19, 20.)
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`Petitioner alleges
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`that Milbrandt discloses measuring “attenuation”
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`information and transmitting “power spectrum density,” which Petitioner asserts is
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`“representative” of “power level per subchannel information.” (See Pet. at p. 23.)
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`Petitioner does not point to Hwang at all for disclosure of this limitation. (See id.
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`at pp. 23-27.) And Petitioner only points to ANSI T1.413 for its alleged disclosure
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`of transmitting information via an “array.” (See id. at pp. 23-27.) But Petitioner’s
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`strained arguments ignore a crucial fact—Milbrandt’s attenuation and power
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`spectrum density are not measured “per subchannel” as required by the claims.
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`Rather than measuring attenuation or power spectrum density on a
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`subchannel basis, Milbrandt
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`instead discloses measuring
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`those and other
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`“subscriber line information” for each channel of a frequency spectrum. (See Ex.
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`1011, Milbrandt at 11:10-15 (“During modem training, an ADSL modem 60
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`employing DMT modulation technology may collect subscriber line information
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`28 used to determine attenuation information and noise information for each
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`channel of the data frequency spectrum for a particular subscriber line 16.”),
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`11:19-24 (“Modem 42 measures 20 the received signal power spectrum density, Sf'
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`of the received data signal for each downlink channel and communicates this and
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`other subscriber line information 28 to modem 60.”) If a modem is unable to
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`establish a connection over the entire frequency spectrum, the modem can connect
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`over one or more “sub-frequencies” and measure the operating characteristics over
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`those “sub-frequencies.” (See id. at 11:39-45.) But contrary to Petitioner’s
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`mischaracterization, those sub-frequencies in Milbrandt are not the same thing as
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`the ’412patent’s “subchannels.” Rather, Milbrandt itself explains that those “sub-
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`frequencies” over which a connection is established are still each a separate
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`“channel.” (See Ex. 1011, 11:4–5 (“Each sub-frequency is an independent channel
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`and supports transmission of its own stream of data signals.”).) Again, Milbrandt
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`discloses only measuring attenuation and power spectrum density for each
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`“channel”—not “sub-channel.” (See supra.)
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`Petitioner nevertheless alleges, without discussing this disclosure in
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`Milbrandt, that “Milbrandt’s disclosure of ‘sub-frequencies,’ over which the
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`connection between modem 60 and 42 is established, would have been understood
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`to be ‘subchannels.’” (Pet. at p. 23.) But beyond being demonstrably wrong in
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`this regard for the reasons discussed, Petitioner cites to nothing in the Petition for
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`this conclusory statement, making it unsupported attorney argument. See, e.g.,
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`VSR Indus. v. Cole Kepro Intern., LLC, Case IPR2015-00182, Paper 33 (P.T.A.B.
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`April 28, 2016) (“Petitioner argues that ‘adding a bracket to solidify a horizontal
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`support is a well-known practice in cabinet making that would be obvious’ to a
`
`skilled artisan. However, as Patent Owner points out, Petitioner does not cite any
`
`evidence in the record to support this attorney argument.”)
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`While Petitioner’s expert does also allege in his declaration that “a person of
`
`ordinary skill would have recognized that . . . Milbrandt’s ‘sub-frequency’ . . .
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`correspond[s] to the ‘subchannel’ in the ‘412 patent,” neither that statement nor
`
`that page or paragraph of Dr. Kiaei’s declaration are cited anywhere in the Petition.
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`(See Pet. at p. 23; see also Ex. 1009, Kiaei Decl. at ¶ 68.) And in any event, Dr.
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`Patent Owner’s Preliminary Response
`IPR2016-01008
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`Kiaei’s’ incorrect statement is also merely conclusory and backed-up by no support
`
`or explanation for why Milbrandt’s sub-frequencies that are each “independent
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`channels” somehow comprise “sub-channels”—he does nothing more than repeat
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`the argument in the Petition and provides nothing more than his bare (and
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`demonstrably incorrect) say-so. See Wowza Media Sys., LLC v. Adobe Sys., Inc.,
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`IPR2013-00054, Paper 16 at p. 4 (July 13, 2013) (“Expert testimony that does not
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`disclose the underlying facts or data on which the opinion is based is entitled to
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`little or no weight.”); Green Cross Corp. v. Shire Human Genetic Therapies, Inc.,
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`Case IPR2016-00258, Paper 12 (P.T.A.B. March 9, 2016) (“On the contrary,
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`Green Cross's Petition relies entirely on conclusory attorney argument and
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`unsubstantiated expert assertions. Indeed, with respect to several key issues, Green
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`Cross's expert, Dr. Sands, does not identify any underlying facts, data, or other
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`evidence on which he is relying and, in turn, Green Cross relies entirely on Dr.
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`Sands' say-so.”) (emphasis added); Kinetic Techs., Inc. v. Skyworks Sols., Inc.,
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`IPR2014-00529, Paper 8, at 15 (P.T.A.B. Sept. 23, 2014) (“Merely repeating an
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`argument from the Petition in the declaration of a proposed expert does not give
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`that argument enhanced probative value.”).
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`2.
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`Petitioner Has Not Shown That a Test Message Comprising
`“An Array Representing Power Level Per Subchannel
`Information” Would Have Been Obvious From Milbrandt,
`Hwang, and ANSI T1.413
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`The Petition also fails to demonstrate likely unpatentability because it does
`15
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`Patent Owner’s Preliminary Response
`IPR2016-01008
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`not “set forth sufficient articulated reasoning with rational underpinning to support
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`its proposed obviousness ground.” SAS Institute, Inc. v. Complementsoft, LLC,
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`IPR2013-00581, Paper 15 at p. 12. Here, Petitioner has not established that if
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`absent in Milbrandt, it would have been obvious to add to Milbrandt the ability to
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`transmit “power level per subchannel information.”
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`Such an obviousness argument is simply not found in the Petition. Sections
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`[1.4], [3.4], [5.4], [7.4], [19.4], and [20.4] of the Petition each allege that the entire
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`limitation “wherein at least one data variable of the one or more data variables
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`comprises an array representing power level per subchannel information” would
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`have been obvious in view of the combination of Milbrandt and ANSI T1.413.
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`(See Pet. at pp. 23-27, 33, 35, 37, 50, 52.) But Petitioner relies solely on Milbrandt
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`for alleged disclosure of “transmitting power level per subchannel information.”
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`(See id.) For this limitation of claims 1, 3, 5, and 7, Petitioner points to ANSI
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`T1.413 only for alleged obviousness of transmitting data in an “array.” (See id.)
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`The Petition also has a separate section titled “Reasons to Combine
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`Milbrandt/Hwang with ANSI T1.413.” (See Pet. at pp. 14-18.) But the only
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`specific disclosure in ANSI T1.413 that Petitioner point to for combining with
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`Milbrandt/Hwang do not apply here. Namely, Petitioner points to ANSI T1.413’s
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`specific disclosure of: (a) allegedly providing a “signal to noise ratio (SNR) to the
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`central office on demand for the purpose of system testing” (relevant to claims 13
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`16
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`Patent Owner’s Preliminary Response
`IPR2016-01008
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`and 14), (b) ANSI T1.413’s alleged disclosure of determining “a power level per
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`sub-carrier based on a REVERB signal received from the central office modem”
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`(relevant to claims 2, 4, 6, and 8), and (c) ANSI T1.413’s disclosure of modems
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`transmitting “in an orderly manner an array indexed by the sub-carrier number i to
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`the upstream central office modem” (relevant to the requirement of an “array” in
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`claims 1, 3, 5, 7, 19, and 20). (See Pet. at pp. 15-19.)
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`Accordingly, if the Board agrees that Milbrandt does not itself disclose
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`transmitting “power level per subchannel information,” it must find that Petitioner
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`has not established obviousness of claims 1, 3, 5, 7, 19, or 20.
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`3.
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`The Combination of Milbrandt, Hwang, and ANSI T1.413
`Would Still Fail to Disclose a Test Message “Wherein Bits in
`the Message Are Modulated Onto DMT Symbols Using
`Quadrature Amplitude Modulation (QAM) With More Than 1
`bit Per Sub Channel”
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`Ground 1 also fails with respect to claims 1, 3, 5, 7, 19, and 20 because the
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`combination of alleged prior art references would still fail to disclose another
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`element required by each of those claims—transmitting or receiving a test message
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`“wherein bits in the message are modulated onto DMT symbols using Quadrature
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`Amplitude Modulation (QAM) with more than 1 bit per subchannel,” as variously
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`recited in each of the claims. Petitioner misleadingly splits this element into three
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`separate elements to address its requirements individually (e.g., transmitting
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`something, compiling test information, and modulating bits in a message using
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`Patent Owner’s Preliminary Response
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`QAM), but Petitioner never shows that the combination of Milbrandt, Chang,
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`Hwang, and ANSI T1.413 reference would satisfy the whole claimed concept—
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`transmitting a message comprising test information via DMT using QAM with
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`more than 1 bit per subchannel. Nor does Petitioner ever explain how pr
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