`
` 
`
` 
`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. IPR2016-01009
`Patent No. 8,238,412
`_____________
`
`
`PATENT OWNER’S RESPONSE UNDER 37 CFR §42.120
`
`
`
`
`
` 
`
`
`
`

`

` 
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`SUMMARY OF THE ’412 PATENT ............................................................. 4
`
` 
`
`I.
`
`II.
`
`III. CLAIM CONSTRUCTION ............................................................................ 7
`
`IV. PETITIONER HAS NOT SHOWN UNPATENTABILITY BASED ON
`THE SINGLE GROUND INSTITUTED ...................................................... 10
`
`A. The Asserted References Do Not Render Obvious
`Transmitting/Receiving a Test Message Comprising “Power
`Level Per Subchannel Information” (Claims 9-12, 21) ......................... 13
`
`1. Milbrandt’s Power Spectrum Density And Attenuation Are
`Wholly Different From the Claimed Parameter ............................... 14
`
`2. Petitioner Did Not Present A Back-Up Obviousness
`Argument For Transmitting PLPSC Information in Milbrandt
`Instead of PSD Per Sub-Frequency Information .............................. 20
`
`B. The Asserted References Do Not Render Obvious
`Transmitting/Receiving a Test Message Comprising “Power
`Level Per Subchannel Information . . . Based on a Reverb
`Signal” (Claims 10, 12) ......................................................................... 21
`
`1. ANSI T1.413 Does Not Disclose The Claimed Parameter .............. 22
`
`2. Petitioner’s Obviousness Arguments For Transmitting PSD
`Based on Reverb Are Technologically Meritless ............................. 23
`
`C. The Asserted References Do Not Render Obvious
`Transmitting/Receiving a Message Comprising “Signal to
`Noise Ratio Per Subchannel During Showtime Information”
`(Claim 15) .............................................................................................. 25
`
`1. None of the References Disclose Measuring Noise or Signal
`to Noise Ratio “Per Subchannel” ..................................................... 25
`
`2. None of the References Disclose Measuring Noise or Signal
`to Noise Ratio “During Showtime Information” .............................. 26
`
` 
`
`i
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`3. ANSI T1.413’s “Signal to Noise Ratio Margin” is Not the
`Claimed “Signal to Noise Ratio” ...................................................... 28
`
`4. Petitioner’s Obviousness Arguments for Transmitting or
`Receiving “Signal to Noise Ratio During Showtime
`Information” In a Test Message Are Technologically and
`Legally Erroneous ............................................................................. 29
`
`D. The Asserted References Do Not Render Obvious
`Transmitting/Receiving a Test Message Comprising “Idle
`Channel Noise” (Claims 16-18)—Petitioner’s Theory Violates
`Several Legal Tenets .............................................................................. 32
`
`1. Milbrandt Teaches Away From Using Chang’s “Circuitry”
`For Measuring Background Noise .................................................... 33
`
`2. Petitioner Did Not Establish a Reasonable Expectation of
`Success in Just Using Chang’s Overall “Concept” of
`Measuring Background Noise in Some Other Manner .................... 40
`
`3. Incorporating Chang’s Background Noise Measurement
`Would Have Improperly Changed Milbrandt’s Fundamental
`Principle of Operation ....................................................................... 43
`
`4. Adding Any Method of Measuring Background Noise to
`Milbrandt Would Have Been Redundant and Unnecessary ............. 46
`
`V. NO WEIGHT SHOULD BE GIVEN TO THE UNQUALIFIED
`CONCLUSORY OPINIONS OF PETITIONER’S EXPERT ...................... 50
`
`VI. CONCLUSION .............................................................................................. 52
`
`CERTIFICATE OF WORD COUNT ...................................................................... 53
`
`
`
`ii
`
`
`
` 
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`EXHIBIT LIST
`
`Declaration of Douglas Chrissan, PhD for Inter Partes Review
`Nos. IPR2016-01006, -01007, -01008, -01009
`
`Hargrave’s Communications Dictionary (2001) at pp. 404, 485
`
`U.S. Pat. Pub. No. 20050190826
`
`Webster’s Unabridged Dictionary of the English Language (1989
`ed.) at p. 1217
`
`Transcript of 2/8/17 Deposition of Sayfe Kiaei
`
`ITU-T G.992.1 (6/99) Series G: Transmission Systems and
`Media, Digital Systems and Networks – Asymmetric Digital
`Subscriber Line (ADSL) Transceivers
`
`
`
`
`
`iii
`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`
`
` 
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
` 
`I.
`
`INTRODUCTION
`
`The Board has instituted inter partes review of claims 9-12, 15-18, and 21 of
`
`U.S. Pat. No. 8,238,412 (“the ’412 patent”) based on a single Ground—Petitioner’s
`
`allegations of obviousness in view of a combination of Milbrandt, Chang, Hwang,
`
`and ANSI T1.413. Patent Owner, however, respectfully submits that for purposes
`
`of institution the Board accepted as true numerous unsupported factual statements
`
`by Petitioner’s expert that are demonstrably incorrect. Indeed, based on his
`
`testimony at his deposition, Petitioner’s expert
`
`(Dr. Sayfe Kiaei)
`
`is
`
`unknowledgeable and unqualified regarding the technical issues in this proceeding.
`
`Patent Owner provides in this Response additional detail, technical explanations
`
`from its own qualified expert (Dr. Douglas Chrissan), and further legal support to
`
`clarify the deficiencies in the Petition. In addition, the Board overlooked or
`
`misapprehended several arguments set forth in the Preliminary Patent Owner
`
`Response—Patent Owner provides additional detail and support on those points.
`
`First, Petitioner has not shown that it would have been obvious in a
`
`multicarrier transceiver (such as a DSL modem) to transmit or receive a test
`
`message having “an array representing power level per subchannel information”
`
`(“PLPSC”), as required by claims 9-12 and 21. None of the asserted references
`
`disclose anything
`
`that represents PLPSC—Petitioner
`
`incorrectly points
`
`to
`
`measured parameters in the references that convey very different information
`
` 
`
`1
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`(namely, Milbrandt’s “power spectrum density” per “sub-frequency” and
`
`“attenuation” per “sub-frequency”). Moreover, Petitioner has not filled in this
`
`missing limitation via a sufficient obviousness argument—Petitioner does not even
`
`allege that it would have been obvious to transmit or receive PLPSC itself, much
`
`less provide a reason why one of ordinary skill in the art would have done so.
`
`Second, Petitioner has not shown that it would have been obvious to more
`
`specifically
`
`transmit or receive PLPSC
`
`information wherein
`
`the PLPSC
`
`information is “based on a Reverb signal,” as required by dependent claims 10 and
`
`12. What Petitioner points to in the references for this element—ANSI T1.413’s
`
`measurement of total (or aggregate) power—is not representative of “power level
`
`per subchannel” information. And Petitioner’s rationales for why it allegedly
`
`would have been obvious to transmit this parameter between modems rely on
`
`technological and factual errors.
`
`Third, Petitioner has not shown that it would have been obvious to transmit
`
`or receive in a test message “signal to noise ratio [“SNR”] per subchannel during
`
`Showtime information,” as required by claim 15. Contrary to Petitioner’s incorrect
`
`characterizations, none of the references disclose transmitting/receiving SNR, or
`
`measuring any SNR or other noise information, “during Showtime.” And once
`
`again, Petitioner’s rationales for adding that ability to modems rest on
`
`technologically meritless theories.
`
` 
`
`2
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`Fourth, Petitioner has not shown that it would have been obvious to
`
`transmit or receive in a test message “frequency domain received idle channel
`
`noise,” as required by claims 16-18. Patent Owner raised four reasons in its
`
`Preliminary Response why adding Chang’s method of measuring background noise
`
`to Milbrandt would not have been obvious. These include that:
`
`(a) Milbrandt teaches away from using Chang’s only disclosed “circuitry”
`
`for measuring background noise (Petitioner only alleged that it would have
`
`purportedly been obvious to use Chang’s “circuitry” in Milbrandt);
`
`(b) Petitioner had not alleged any other way of just combining Chang’s
`
`overall concept of measuring background noise into Milbrandt, and if Petitioner
`
`had done so it had not proven a reasonable expectation of success in doing so;
`
`(c) Incorporating Chang’s background noise measurement (which required
`
`isolating a telephone line at one end and stopping all signals) would have
`
`improperly changed Milbrandt’s fundamental principle of operation; and
`
`(d) Regardless of the manner in which background noise is measured,
`
`adding that capability to Milbrandt would have been redundant and unnecessary.
`
`In instituting review, the Board found that Patent Owner’s arguments in this
`
`regard were “merely based on attorney argument” and did not “set forth any expert
`
`testimony to substantiate Patent Owner’s” arguments. (Paper 8, Institution
`
`Decision at 28-29.) Patent Owner provides that expert testimony here, as well as
`
` 
`
`3
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`other evidence (including admissions by Petitioner’s own expert), to fully prove-up
`
`each of these deficiencies in Petitioner’s obviousness theory.
`
`Accordingly, Petitioner fails to show unpatentability of the challenged
`
`claims for numerous independent reasons. Petitioner cannot rely on the Board to
`
`fill in the gaps or defects in its Petition, or to infer or read into the Petition
`
`arguments that Petitioner did not make. See, e.g., In re Magnum Oil Tools Int'l,
`
`Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (The Board is not “free to adopt
`
`arguments on behalf of petitioners that could have been, but were not, raised by the
`
`petitioner during an IPR. Instead, the Board must base its decision on arguments
`
`that were advanced by a party, and to which the opposing party was given a chance
`
`to respond.”). Nor can Petitioner fix the deficiencies and failures of proof in the
`
`Petition at a later stage by offering new arguments or new evidence. See
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
`
`(Fed. Cir. 2016) (“the expedited nature of IPRs bring with it an obligation for
`
`petitioners to make their case in their petition to institute”).
`
`II.
`
`SUMMARY OF THE ’412 PATENT
`
`The ’412 patent is directed to communicating specific diagnostic and test
`
`information concerning a multicarrier communication channel between
`
`multicarrier transceivers within a multicarrier communication network, digital
`
`subscriber line (DSL) network, for example. In the case of a DSL network, the
`
` 
`
`4
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`transceivers correspond to a customer modem (remote transceiver) and a central
`
`office modem (near transceiver). The test and diagnostic information may be
`
`transmitted by the remote transceiver and received by the near transceiver. The
`
`test and diagnostic information may be used to characterize the multicarrier
`
`communication channel between the two transceivers. (See Ex. 1001, ’412 patent
`
`at Abstract.) The ’412 patent recognizes that in prior art systems, analyzing the
`
`condition of the communication channel required a technician to visit the remote
`
`transceiver, i.e. a truck roll. (See Ex. 1001, 1:36-37.) The ’412 patent recognizes
`
`that truck rolls are expensive and time consuming. (id.) The claims require the
`
`communication of specific test and diagnostic parameters by the remote
`
`transceiver to the near transceiver. The information received may be used to
`
`analyze the communication channel without requiring a truck roll to the remote
`
`transceiver. (See Ex. 1001, 2:26-38.)
`
`In particular, claims 9-12 and 21 of the ‘412 patent require transmitting
`
`and/or
`
`receiving
`
`information
`
`representing “power
`
`level per subchannel
`
`information.” The power level per subchannel information represents the power
`
`level measured by the remote transceiver at the different subchannels of the
`
`multicarrier communication channel. The power level per subchannel information
`
`may be used to identify subchannels that are experiencing excessive attenuation.
`
`(See Ex. 2001, Chrissan Decl. at ¶17.)
`
` 
`
`5
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`Separately, claim 15 of the ‘412 patent require transmitting and/or receiving
`
`information representing “Signal to Noise ratio per subchannel during Showtime
`
`information.” This information may be used, for example, to analyze link
`
`condition to identify service degradation as system deployment grows with the
`
`addition of new communication links (e.g., from adding new customers) that
`
`create increased crosstalk. (See Ex. 2001, Chrissan Decl. at ¶ 20.)
`
`Yet further, claims 16-18 require transmitting and/or receiving information
`
`representing “frequency domain received idle channel noise.” The frequency
`
`domain idle channel noise information corresponds to the idle channel noise
`
`measured by the remote transceiver at different subchannels. (See Ex. 2001,
`
`Chrissan Decl. at ¶ 21.) The frequency domain idle channel noise information
`
`“allows characterization across the subchannels of the multicarrier communication
`
`channel used by the multicarrier transceiver. Because this information is generated
`
`by an already-installed transceiver and may be communicated to a more convenient
`
`location (i.e., a near-end transceiver), again, the need for a service technician visit
`
`may be eliminated.” (Id.) Also, because the frequency domain idle channel noise
`
`information is representative of the idle channel noise measured by the remote
`
`transceiver for subchannels of the multicarrier communication channel, “the result
`
`is that the near-end transceiver, a monitoring system and/or a technician may
`
`identify subchannels that are experiencing excessive background noise, impulse
`
` 
`
`6
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`noise or crosstalk.” (Id.)
`
`III. CLAIM CONSTRUCTION
`
`In its Institution Decision, the Board adopted Petitioner’s proposed
`
`constructions. In particular, the Board construed the terms “during Showtime,”
`
`“array,” and “transceiver.” (See Paper 8, Institution Decision at 6-9.)
`
`At least Petitioner’s proposed construction for the term “during Showtime”
`
`is incorrect as a technical matter. It also appears to be a blatant attempt by
`
`Petitioner to obtain a beneficial claim construction that it can point to in future
`
`District Court proceedings to support alleged noninfringement. Specifically,
`
`Petitioner proposed that “during Showtime” should be construed as “during normal
`
`communications of an ANSI T1.413 compliant device.” (Pet. at 14.) There are
`
`two things wrong with this construction, however.
`
`First, it is well accepted in the art that “during Showtime” does not include
`
`any modem initialization or modem training. (See Ex. 2001, Chrissan Decl. at ¶
`
`31.) Petitioner’s own expert, Dr. Kiaei, even agreed in his declaration that
`
`“Showtime” is a term of art that is “used to refer to the mode that follows the
`
`completion of initialization and handshake . . . .” (Ex. 1009, Kiaei Decl. at ¶ 52.)
`
`Petitioner’s proposed construction does not take into account this aspect of the
`
`term “Showtime” and, thus, could be incorrectly understood to cover modem
`
`initialization and training.
`
` 
`
`7
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`Second, neither the phrase “during Showtime” nor the claims of the ’412
`
`patent are limited to an “ANSI T1.413 compliant device.” Petitioner cites to only
`
`the opinion of Dr. Kiaei in this regard. (See Pet. at 14, citing Ex. 1009, Kiaei Decl.
`
`at p. 22.) Dr. Kiaei, however, admitted at his deposition that he simply has no
`
`knowledge or experience with multicarrier communications other than with respect
`
`to ANSI T1.413 compliant devices, and he had no idea if “Showtime” was a
`
`concept used in communication protocols other than ANSI T1.413. (See Ex. 2005,
`
`Kiaei Dep. Tr. at 65:13-66:15, 71:19-72:12.) In fact, however, “Showtime” is term
`
`that is used consistently in connection with many different communications
`
`protocols to refer to a state of communications reached after initialization and
`
`training. (See Ex. 2001, Chrissan Decl. at ¶ 31; see also Ex. 2005, ITU-T G.992.1
`
`(“Showtime” is a “state of either ATU-C or ATU-R reached after all initialization
`
`and training is completed.”)). And the challenged ‘412 patent claims recite a
`
`transceiver “capable of transmitting test information over a communication
`
`channel using multicarrier modulation”—not just an ANSI T1.413 compliant
`
`transceiver. (See Ex. 1001, ’412 patent at claims.) Dr. Kiaei showed at his
`
`deposition that he was importing the example of an ANSI T1.413 compliant device
`
`from the ‘412 specification into the claims. (See Ex. 2005, Kiaei Dep. Tr. at
`
`67:10-18, 68:7-11, 68:18-69:15, 70:21-72:6.)
`
`Accordingly, the phrase “during Showtime” in the ’412 patent should be
`
` 
`
`8
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`construed to mean: during normal data communication that occurs after
`
`initialization. (See supra; see also Ex. 2001, Chrissan Decl. at ¶ 31.)
`
`With respect to other claim terms, the Board construed the term “array,” as
`
`“an ordered collection of multiple data items of the same type.” (Id. at 7.)
`
`“Transceiver” was construed as “a device, such as a modem, with a transmitter and
`
`receiver.” (Id. at 7.) Neither of these constructions, however, is dispositive of any
`
`of Petitioner’s or Patent Owner’s arguments. Patent Owner respectfully submits,
`
`therefore, that no constructions should be necessary. See Wellman, Inc. v. Eastman
`
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (claim terms should only be
`
`construed “to the extent necessary to resolve the controversy”). By doing so,
`
`Patent Owner does not concede to any of Petitioner’s proposed constructions or
`
`agree that they are correct.
`
`At least one other claim term, however, requires construction at this point.
`
`Although Petitioner did not propose a construction for “subchannel” (a term that
`
`appears in all challenged claims), the Board in its Institution decision cited certain
`
`of Petitioner’s arguments that misapplied this term. Specifically, Petitioner
`
`incorrectly argued that Milbrandt’s “sub-frequency” (i.e., a wide band of
`
`frequencies) is the same thing as the claimed “subchannel.” (See infra at §IV.A.1;
`
`see also Paper 8, Institution Decision at 16, 19.) The ’412 patent claims, however,
`
`recite a “subchannel” in the context of a “communication channel using
`
` 
`
`9
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`multicarrier modulation.” (See Ex. 1001 at claims.) Specifically, communication
`
`between ADSL transceivers “is accomplished by modulating the data to be
`
`transmitted onto a multiplicity of discrete frequency carriers which are summed
`
`together and then transmitted over the subscriber loop. Individually, the carriers
`
`form discrete, non-overlapping communication subchannels of limited bandwidth.”
`
`(Ex. 1001, ’412 patent, 1:44-45 (emphasis added).) The ‘412 patent explains that
`
`“[c]ollectively, the carriers form what is effectively a broadband communications
`
`channel.” (Id. at 1:45-47.) As such, in light of the claims and the specification, the
`
`term “subchannel” recited in the claims refers to a “carrier of a multicarrier
`
`communication channel.” See PPC Broadband, Inc. v. Corning Optical Commc'ns
`
`RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (“[T]he broadest reasonable
`
`interpretation must be reasonable in light of the claims and specification.”)
`
`IV. PETITIONER HAS NOT SHOWN UNPATENTABILITY BASED ON
`THE SINGLE GROUND INSTITUTED
`
`The Petition proposed one ground against the ’412 patent, based on a
`
`combination of four different prior art references. The Board granted review
`
`based on this ground, specifically:
`
`
`
`Ground 1. Unpatentability of claims 9-12, 15-18, 21 under 35 U.S.C. §
`
`103(a) over U.S. Patent No. 6,636,603 to Milbrandt (“Milbrandt”), in view of U.S.
`
`Pat. No. 6,891,803 to Chang et al. (“Chang”), U.S. Pat. No. 6,590,893 to Hwang et
`
`al. (“Hwang”), and American National Standards Institute (ANSI) T1.413-1995
`10
`
` 
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`Standard, entitled “Network and Customer Installation Interfaces—Asymmetric
`
`Digital Subscriber Line (ADSL) Metallic Interface” (“ANSI T1.413”).
`
`Patent Owner respectfully submits that Petitioner has not carried its burden
`
`of proving that claims 9-12, 15-18, 21 are unpatentable. Petitioner has first of all
`
`not met its burden of establishing that the four asserted references can be pieced
`
`together to satisfy all of the elements of the challenged claims—the Board relied
`
`on several demonstrably incorrect factual/technical mischaracterizations by
`
`Petitioner in this regard. Second, even if the references had separately disclosed all
`
`elements of the challenged claims, Petitioner has not met its burden that it would
`
`have been obvious to mix-and-match those elements—Petitioner’s purported
`
`reasons for doing so are conclusory, based on incorrect assumptions, and violate
`
`several basic tenets of controlling Federal Circuit law on obviousness.
`
`Specifically, independent claim 9 of the ’412 patent recites:
`
`9. A non-transitory computer-readable information storage media having stored thereon
`instructions that, if executed, cause a transceiver to perform a method comprising:
`transmitting a message, wherein the message comprises one or more data variables
`that represent the test information, wherein bits in the message are modulated onto
`DMT symbols using Quadrature Amplitude Modulation (QAM) with more than 1
`bit per subchannel and wherein at least one data variable of the one or more data
`variables comprises an array representing power level per subchannel
`information.
`
`(See Ex. 1001, ’412 patent at claim 1.) Claims 11 and 21 are similar, varying only in
`
`reciting receiving such a test message rather than transmitting one (claim 11), or both
`
`transmitting and receiving the test message. (See id. at claims 11, 21.)
`
` 
`
`11
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`
`
`Dependent claims 10 and 12 adds an additional limitation and reads as follows:
`
`2. The media of claim [9/11], wherein the power level per subchannel information is
`based on a Reverb signal.
`
`(Id. at claim 2.)
`
`
`
`Claim 15 recites a different transmitted/received parameter. Claim 15 recites:
`
`15. One or more non-transitory computer-readable information storage media having
`stored thereon instructions that, if executed, cause a communications system for DSL
`service to perform a method comprising:
`transmitting a message from a first transceiver, wherein the message comprises one
`or more data variables that represent the test information, wherein bits in the
`message are modulated onto DMT symbols using Quadrature Amplitude
`Modulation (QAM) with more than 1 bit per sub channel and wherein at least one
`data variable of the one or more data variables comprises an array representing
`Signal to Noise ratio per sub channel during Showtime information; and
`receiving the message at a second transceiver, wherein the message comprises the
`one or more data variables that represent the test information, wherein the bits in
`the message were modulated onto the DMT symbols using Quadrature Amplitude
`Modulation (QAM) with more than 1 bit per sub channel and wherein the at least
`one data variable of the one or more data variables comprises the array representing
`Signal to Noise ratio per sub channel during Showtime information. 
`(Id. at claim 15.)
`
`Claims 16-18 recite yet another different transmitted/received parameter. Claim
`
`16, for example, recites:
`
`16. A communications system for DSL service comprising
`a first DSL transceiver capable of transmitting test information
`over a communication channel using multicarrier modulation and a second DSL
`transceiver capable of receiving the test information over the communication
`channel using multicarrier modulation comprising:
`a transmitter portion capable of transmitting a message, wherein the message
`comprises one or more data variables that represent the test information,
`wherein bits in the message are modulated onto DMT symbols using
`
` 
`
`12
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`Quadrature Amplitude Modulation (QAM) with more than 1 bit per sub
`channel and wherein at least one data variable of the one or more data
`variables comprises an array representing frequency domain received idle
`channel noise information; and
`a receiver portion capable of receiving the message, wherein the message
`comprises the one or more data variables that represent the test information,
`wherein the bits in the message were modulated onto the DMT symbols
`using Quadrature Amplitude Modulation (QAM) with more than 1 bit per
`subchannel and wherein at least one data variable of the one or more data
`variables comprises the array representing frequency domain received idle
`channel noise information.
`
`(See id. at claim 16.)
`
`For the reasons discussed below, Petitioner has not shown that a combination of
`
`Milbrandt, Chang, Hwang, and ANSI T1.413 would have rendered obvious transmitting
`
`or receiving a test message comprising (A) “power level per subchannel information”
`
`(claims 9, 11, 21), (B) “power level per subchannel information [] based on a Reverb
`
`signal” (claims 10, 12), (C) “signal to noise ratio per subchannel during Showtime
`
`information” (claim 15), or (D) “frequency domain received idle channel noise
`
`information” (claims 16-18).
`
`A. The Asserted References Do Not Render Obvious
`Transmitting/Receiving a Test Message Comprising “Power Level
`Per Subchannel Information” (Claims 9-12, 21)
`
`Petitioner’s Ground 1 first fails with respect to claims 9-12 and 21 because
`
`the combination of references fails to disclose or render obvious transmitting or
`
`receiving test information over a communication channel, where the test
`
` 
`
`13
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`information includes “an array representing power level per subchannel
`
`information.” (See Ex. 1001, ’412 patent at claims 9-12, 21.)
`
`1. Milbrandt’s Power Spectrum Density And Attenuation Are
`Wholly Different From the Claimed Parameter
`
`Petitioner only points to Milbrandt for disclosure of this claim limitation.
`
`Namely, Petitioner alleges that Milbrandt discloses determining “power spectrum
`
`density,” which Petitioner asserts is “representative” of “power level per
`
`subchannel information.” (See Pet. at 34.) Additionally, Petitioner alleges that
`
`Milbrandt discloses transmitting “attenuation” information, which Petitioner
`
`asserts is “related” to the “power spectrum density” that Milbrandt had determined
`
`(and therefore also allegedly “representative” of “power level per subchannel
`
`information.” (See id. at 34-35.) But in fact, Milbrandt’s PSD and attenuation
`
`parameters are not the same thing as or “representative” of the claimed PLPSC
`
`information, for three reasons.
`
`First, Milbrandt does not disclose any information on a “per subchannel”
`
`basis. Petitioner points to where Milbrandt discloses determining “power spectrum
`
`density for a received signal at ‘one or more sub-frequencies over which the
`
`connection between modem 60 and 42 is established.” (Pet. at 34, citing Ex.
`
`1011, Milbrandt at 11:38-45.) Petitioner also points to where Milbrandt discloses
`
`transmitting “attenuation information per sub-frequency.” (Id. at 34-35, citing Ex.
`
`1011, Milbrandt at 12:14-31.) For each of these parameters, Petitioner alleges that
`
` 
`
`14
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`“Milbrandt’s disclosure of ‘sub-frequencies’ . . . would have been understood to be
`
`‘subchannels.’” (Id.) But Petitioner relies on the conclusory say-so of its expert,
`
`Dr. Kiaei, in this regard. (See id., citing Ex. 1009, Kiaei Decl. at p. 113.) The
`
`Board should not credit Dr. Kiaei’s conclusory representations. See 37 C.F.R. §
`
`42.65(a); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)
`
`(explaining that “the Board has broad discretion” to weigh declarations and
`
`“conclude that the lack of factual corroboration warrants discounting the opinions
`
`expressed”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir.
`
`1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence
`
`requires the fact finder to credit the unsupported assertions of an expert witness.”);
`
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir.
`
`1985) (“Lack of factual support for expert opinion going to factual determinations .
`
`. . may render the testimony of little probative value . . . .”). And it turns out that
`
`Dr. Kiaei’s conclusion is incorrect.
`
`As explained in detail by Patent Owner’s expert (Dr. Chrissan), Milbrandt’s
`
`“sub-frequency” is demonstrably not the same thing as a “subchannel” under the
`
`’412 patent. (See Ex. 2001, Chrissan Decl. at ¶¶ 37-46.) The ’412 patent’s
`
`“subchannels” are the smallest division of the data transmission in a multicarrier
`
`communication system that uses DMT modulation. (See Ex. 1001, 1:39-48
`
`(“Individually,
`
`the carriers form discrete, non-overlapping communication
`
` 
`
`15
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`subchannels of limited bandwidth. Collectively, the carriers form what is
`
`effectively a broadband communication channel.”). For example, ADSL1 has 256
`
`subchannels, while ADSL2+ has 512 subchannels and VDSL2 has 4096
`
`subchannels. (See Ex. 2001, Chrissan Decl. at ¶ 38.) This concept of DMT
`
`subchannels in ADSL is illustrated below:
`
`
`
`
`
`For example, the ADSL frequency spectrum is divided into the voice spectrum
`
`(“POTS” or “plain old telephone service”), “guard bands” to prevent interference,
`
`an upstream band, and a downstream band. (See id. at ¶ 39) Within those
`
`upstream and downstream bands are individual “subchannels” that carry data. (See
`
`id. at ¶¶ 38-39.)
`
`Milbrandt, on the other hand, clearly does not use the term “sub-frequency”
`
`to refer to a multicarrier “subchannel.” (See Ex. 2001, Chrissan Decl. at ¶¶ 40-45.)
`
`For example, Milbrandt itself precisely uses the terms “sub-frequency” and “sub-
`
`channel” to refer to different things. (See id. at ¶ 40.) Milbrandt refers to dividing
`16
`
` 
`
`

`

`Patent Owner’s Response
`IPR2016-01009
`
`the ADSL spectrum into “sub-frequencies” for downstream and upstream
`
`transmission (i.e., large bands of frequencies), but refers to “sub-channels” when
`
`discussing DMT multicarrier units. (See id.; see also Ex. 1011, Milbrandt at 11:2-
`
`9.) Moreover, Milbrandt uses the term “sub-frequency” in multiple instances
`
`where it is flatly impossible that it could mean “sub-channel.” (See Ex. 2001,
`
`Chrissan Decl. at ¶ 41.) For example, Milbrandt refers to transmitting “over a sub-
`
`frequency in the voice frequency spectrum using the V.90 communication
`
`protocol.” (Ex. 1011, Milbrandt at 11:35-36.) The V.90 protocol is not a
`
`multicarrier communication protocol and does not have any subchannels. (See Ex.
`
`2001, Chrissan Decl. at ¶ 41.) The core concept of “multicarrier” communications,
`
`however, requires multiple subchannels (which may also be referred to as
`
`“carriers”) to transmit data. (See id. at ¶ 32.) Because Milbrandt uses the term
`
`“sub-frequency to refer to the frequency spectrum of communication protocols that
`
`are not necessarily multicarrier, V.90 for example, Milbrandt’s sub-frequency
`
`cannot be the same as the claimed “subchannel” of a multicarrier communication
`
`channel. Additionally, Milbrandt discloses computing power spectrum density and
`
`attenuation information for each sub-frequency in a chart. (See Ex. 1011,
`
`Milbrandt at Fig. 3,