Trials@uspto.gov
`571.272.7822
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` Paper No. 7
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`Filed: November 4, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01020
`Patent 9,014,243 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571.272.7822
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` Paper No. 7
`
`Filed: November 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01020
`Patent 9,014,243 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-01020
`Patent 9,014,243 B2
`
`
`I.
`
`INTRODUCTION
`
`Cisco Systems, Inc. (“Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1‒25 of U.S. Patent No. 9,014,243 B2 (Ex. 1001,
`
`“the ’243 patent”). Paper 2 (“Pet.”). TQ Delta, LLC (“Patent Owner”) filed
`
`a corrected Preliminary Response. Paper 6 (“Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes
`
`review may not be instituted “unless . . . there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” After considering the Petition, the Preliminary
`
`Response, and associated evidence, we conclude that Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in showing the
`
`unpatentability of claims 1‒25 of the ’243 patent. Thus, we authorize
`
`institution of an inter partes review of claims 1‒25 of the ’243 patent.
`
`A. Related Proceedings
`
`
`
`Petitioner indicates that the ’243 patent is the subject of several
`
`proceedings. See Pet. 1.
`
`B. The ʼ243 Patent (Ex. 1001)
`
`
`
`The ’243 patent discloses multicarrier communication systems that
`
`lower the peak-to-average power ratio (PAR) of transmitted signals.
`
`Ex. 1001, 1:26‒29. A value is associated with each carrier signal, and a
`
`phase shift is computed for each carrier signal based on the value associated
`
`with that carrier signal. Id. at 2:36‒40. The computed phase shift value is
`
`combined with the phase characteristic of that carrier signal to substantially
`
`scramble the phase characteristics of the carrier signals. Id. at 2:40‒43.
`
`Figure 1 illustrates the multicarrier communication system and is reproduced
`
`below:
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`2
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`IPR2016-01020
`Patent 9,014,243 B2
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`Figure 1 illustrates the multicarrier communication system, digital
`
`subscriber line (DSL) communication system 2 includes discrete multitoned
`
`(DMT) transceiver 10 communicating with remote transceiver 14 over
`
`communication channel 18 using transmission signal 38 having a plurality of
`
`carrier signals. Id. at 3:25‒29. DMT transceiver 10 includes DMT
`
`transmitter 22 and DMT receiver 26. Id. at 3:29‒30. Remote transceiver
`
`also includes transmitter 30 and receiver 34. Id. at 3:30‒32. DMT
`
`transmitter 22 transmits signals over communication channel 8 to receiver
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`34. Id. at 3:38‒41.
`
`DMT transmitter 22 includes quadrature amplitude modulation
`
`(QAM) encoder 42, modulator 46, bit allocation table (BAT) 44, and phase
`
`scrambler 66. QAM encoder 42 has a single input for receiving serial data
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`3
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`IPR2016-01020
`Patent 9,014,243 B2
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`bit stream 54 and multiple parallel outputs to transmit QAM symbols 58
`
`generated by QAM encoder 42 from bit stream 54.
`
`Modulator 46 provides DMT modulation functionality and transforms
`
`QAM symbols 58 into DMT symbols 70. Id. at 4:10‒13. Modulator 46
`
`modulates each carrier signal with a different QAM symbol 58, and,
`
`therefore, this modulation results in carrier signals having phase and
`
`amplitude characteristics based on QAM symbol 58. Id. at 4:13‒16.
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`Modulator 46 also includes phase scrambler 66 that combines a phase shift
`
`computed for each QAM-modulated carrier signal with the phase
`
`characteristics of that carrier signal. Id. at 4:29‒32.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1‒25 of the ’243 patent. Pet. 8–52.
`
`Claims 1, 7, 13, and 20 are independent claims. Claims 2‒6 depend from
`
`independent claim 1, claims 8‒12 depend from independent claim 7, claims
`
`14‒19 depend directly or indirectly from independent claim 13, and claims
`
`21‒25 depend from independent claim 20. Claim 1 is illustrative of the
`
`claims at issue and is reproduced below:
`
`1. A method, in a multicarrier communications transceiver
`comprising a bit scrambler followed by a phase scrambler,
`comprising:
`scrambling, using the bit scrambler, a plurality of input
`bits to generate a plurality of scrambled output bits, wherein at
`least one scrambled output bit is different than a corresponding
`input bit;
`scrambling, using the phase scrambler, a plurality of
`carrier phases associated with the plurality of scrambled output
`bits;
`
`transmitting at least one scrambled output bit on a first
`carrier; and
`
`
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`4
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`IPR2016-01020
`Patent 9,014,243 B2
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`transmitting the at least one scrambled output bit on a
`second carrier.
`
`Ex. 1001, 10:58‒11:4.
`
`D. The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth proposed grounds
`
`of unpatentability of claims 1‒25 of the ’243 patent under 35 U.S.C.
`
`§ 103(a) as follows (see Pet. 8–52):1
`
`References
`
`Shively2 and Stopler3
`Shively, Stopler, and
`Gerszberg4
`
`
`
`Claims
`Challenged
`
`1‒3, 7‒9, 13‒16, and 20‒22
`
`4‒6, 10‒12, 17‒19, and 23‒25
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v.
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`Lee, 136 S. Ct. 2131, 2142–46 (2016). Under the broadest reasonable
`
`construction standard, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`
`
`1 Petitioner supports its challenge with the Declaration of Jose Tellado, PhD.
`(Ex. 1009).
`2 U.S. Patent No. 6,144,696; issued Nov. 7, 2000 (Ex. 1011) (“Shively”).
`3 U.S. Patent No. 6,625,219 B1; issued Sept. 23, 2003 (Ex. 1012)
`(“Stopler”).
`4 U.S. Patent No. 6,424,646 B1; issued July 23, 2002 (Ex. 1013)
`(“Gerszberg”).
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`5
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`Patent 9,014,243 B2
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`context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007).
`
`1. “Multicarrier”
`
`Petitioner argues that the ’243 patent specification describes the term
`
`“conventional multicarrier communications system” as using a “combination
`
`of multiple carriers.” Pet. 8 (quoting Ex. 1001, 1:33‒47). Accordingly,
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`Petitioner argues that the term “multicarrier” should be construed to
`
`encompass “multiple carriers.” Patent Owner argues that “[i]t is not
`
`necessary at this stage of the proceedings to construe any claim terms.”
`
`Prelim. Resp. 11‒12. On this record, we determine it is not necessary to
`
`construe this term for the purposes of this decision.
`
`2. “Transceiver”
`
`Petitioner argues that the’243 patent specification describes that “[t]he
`
`DMT transceiver 10 includes a DMT transmitter 22 and a DMT receiver
`
`26.” Pet. 8 (quoting Ex. 1001, 3:25‒37). Petitioner argues that the ’243
`
`patent specification also describes a “transceiver” as a wireless modem, and
`
`a technical dictionary defines a “transceiver” as “any device that transmits
`
`and receives.” Id. at 8‒9 (citing Ex. 1001, 3:38‒50; Ex. 1014, 709).
`
`Accordingly, Petitioner argues that a “transceiver” should be construed to
`
`mean “a ‘device, such as a modem, with a transmitter and a receiver.’” Id.
`
`(citing Ex. 1009, 21). Patent Owner argues that “[i]t is not necessary at this
`
`stage of the proceedings to construe any claim terms.” Prelim. Resp. 11‒12.
`
`We are persuaded by Petitioner, and, on this record, we interpret
`
`“transceiver” to mean “a device, such as a modem, with a transmitter and
`
`receiver.”
`
`B. Obviousness of Claims 1‒3, 7‒9, 13‒16, and 20‒22 over
`
`
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`6
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`Patent 9,014,243 B2
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`Shively and Stopler
`
`Petitioner contends that claims 1‒3, 7‒9, 13‒16, and 20‒22 of the
`
`’243 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
`
`Shively and Stopler. Pet. 10–42. For the reasons discussed below, the
`
`evidence, on this record, indicates there is a reasonable likelihood that
`
`Petitioner would prevail in showing that claims 1‒3, 7‒9, 13‒16, and 20‒22
`
`of the ’243 patent are unpatentable under 35 U.S.C. § 103(a) as obvious.
`
`1. Shively (Ex. 1011)
`
`Shively discloses discrete multitoned transmission (DMT) of data by
`
`digital subscriber loop (DSL) modems and the allocation of bits to the
`
`discrete multitones. Ex. 1011, 1:5‒8. Bit allocation is performed to
`
`optimize throughput within aggregate power and power spectral density
`
`mask limits. Id. at 4:17‒19. The system includes a transmitting modem and
`
`a receiving modem connected by a cable having four twisted pairs of
`
`conductors. Id. at 9:63‒65. The modems include a source encoder, a
`
`channel decoder, and a digital modulator to take in and transmit data from a
`
`data source. Id. at 10:9‒12. The modems also include a digital
`
`demodulator, a channel decoder, and a source decoder to receive the data
`
`and supply it to a data sink. Id. at 10:12‒14. The source encoder
`
`compresses data, applies the compressed data to the channel decoder, which
`
`performs error correction. Id. at 10:15‒19. The error corrected data is
`
`applied to the digital modulator, which acts as the interface with the
`
`communication channel. Id. at 10:15‒22. The digital demodulator
`
`constructs a data stream from the modulated signal and applies it to the
`
`channel decoder, which performs error correction, and then applies the
`
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`IPR2016-01020
`Patent 9,014,243 B2
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`corrected data to the source decoder, which decompresses the data. Id. at
`
`10:22‒26.
`
`In the QAM multitoned modulation, the spectrum is broken into
`
`multiple sub-bands or QAM channels. Id. at 10:27‒29. The digital
`
`modulator generates N QAM signal tones, one for each QAM channel. Id.
`
`at 10:29‒30. The serial stream is segmented into N frames, each having
`
`allocated to it ki bits of data. Id. at 10:30‒31. The multi-carrier modulator
`
`generates N QAM tones, one for each channel, at the same symbol rate but
`
`with a respective constellation for each channel. Id. at 10:35‒37.
`
`2. Stopler (Ex. 1012)
`
`Stopler discloses a method and apparatus for encoding/framing a data
`
`stream of multitoned modulated signals to improve impulse burst immunity.
`
`Ex. 1012, 1:8‒11. The encoding/framing scheme allows efficient operation
`
`in multipoint to point channels affected by ingress and impulsive
`
`interference. Id. at 5:11‒14. Two dimensional interleaving is performed,
`
`with one dimension being time and the other dimension being frequency
`
`(tones or sub-channels). Id. at 5:18‒20. Stopler further discloses a
`
`diagonalization scheme, where data packets are spread over time in a
`
`diagonal fashion, such that an impulse noise affects more than one user’s
`
`packets, with the effect on each being reduced. Id. at 5:64‒67.
`
`3. Analysis
`
`The evidence set forth by Petitioner indicates there is a reasonable
`
`likelihood that Petitioner will prevail in showing that claims 1‒3, 7‒9, 13‒
`
`16, and 20‒22 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`
`Shively and Stopler. Pet. 10–42.
`
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`For example, the claim 1 preamble recites “[a] method, in a
`
`multicarrier communications transceiver comprising a bit scrambler
`
`followed by a phase scrambler.” Petitioner argues that the combination of
`
`Shively and Stopler disclose the preamble. Pet. 15‒19. Petitioner argues
`
`that Shively discloses a “method for transmission in a multitone
`
`communication system,” and Shively teaches the use of modems to transmit
`
`and receive communications. Id. at 15‒16 (quoting Ex. 1011, 3:28‒29;
`
`citing 9:42, 9:63‒64, Fig. 2). Petitioner argues that Stopler discloses that
`
`“[m]ultitone modulation is a signal transmission scheme which uses a
`
`number of narrow-band carriers positioned at different frequencies, all
`
`transmitting simultaneously in parallel” and “[o]ne type of multitone
`
`transmission scheme is discrete multitone.” Id. at 16‒17 (quoting Ex. 1012,
`
`1:42‒49, 1:50‒58; citing Ex. 1009, 31‒32) (emphasis omitted). Petitioner
`
`further argues that Stopler discloses a transmitter that includes two
`
`scramblers, a bit scrambler and a phase scrambler. Id. at 18 (citing Ex.
`
`1012, 9:34‒37, Fig. 5; Ex. 1009, 33‒34).
`
`Claim 1 further recites “scrambling, using the bit scrambler, a
`
`plurality of input bits to generate a plurality of scrambled output bits.”
`
`Petitioner argues that Stopler discloses that “data output by the interleaver
`
`54 is rearranged into a serial bit stream (MSB first) and then scrambled in
`
`scrambler 56, which is used to randomize the coded and interleaved data.”
`
`Id. at 19 (quoting Ex. 1012, 9:34‒48) (emphasis omitted). Petitioner argues
`
`that a person with ordinary skill in the art would have recognized that
`
`“Stopler’s generating a randomizing sequence that is XORed with an input
`
`bit stream constitutes ‘scrambling . . . a plurality of input bits.’” Id. (citing
`
`Ex. 1009, 35).
`
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`9
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`Patent 9,014,243 B2
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`Claim 1 also recites “wherein at least one scrambled output bit is
`
`different than a corresponding input bit.” Petitioner argues that Stopler
`
`discloses that “the bits of the serial bit stream are ‘scrambled in scrambler
`
`56’ to ‘randomize’ the data.” Id. at 20 (citing Ex. 1012, 9:34‒47). Petitioner
`
`argues that a person with ordinary skill would have recognized that “the
`
`XOR operation would result in at least one input bit to be changed when the
`
`corresponding bit in the randomizing sequence has a value of 1.” Id. at 21
`
`(citing Ex. 1009, 37).
`
`Claim 1 additionally recites “scrambling, using the phase scrambler, a
`
`plurality of carrier phases.” Petitioner argues that Stopler discloses that “the
`
`phase scrambler applies ‘a phase scrambling sequence’ to ‘data in the form
`
`of m-tuples which are to be mapped into QAM symbols.’” Id. at 21 (quoting
`
`Ex. 1012, 12:20‒28). Petitioner argues that Stopler discloses that “the phase
`
`scrambled symbol are provided to a modulator that performs signal
`
`modulation.” Id. at 21‒22 (citing Ex. 1012, 12:55‒57, Fig. 5; Ex. 1009, 39‒
`
`40). Petitioner further argues that both Shively and Stopler disclose
`
`“transmitting information by modulating multiple carrier frequencies.” Id. at
`
`22 (citing Ex. 1011, 8:3‒13; Ex. 1012, 1:42‒49, 1:50‒61; Ex. 1009, 40).
`
`Claim 1 further recites “a plurality of carrier phases associated with
`
`the plurality of scrambled output bits.” Petitioner argues that the
`
`combination of Shively and Stopler discloses that “the plurality of carrier
`
`phases are based on the symbols provided to the modulator” and Stopler
`
`further discloses “the symbols are mapped from m-tuple data . . . [where] the
`
`m-tuple data provided to QAM mapper and phase scrambler 82 are formed
`
`by processing the data output by the big scrambler 56 on an ‘upper level’
`
`
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`10
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`IPR2016-01020
`Patent 9,014,243 B2
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`and a ‘lower level.’” Id. at 23 (citing Ex. 1012, 9:48‒55, 10:1‒7, 10:40‒
`
`11:50, 11:51‒54, 12:20‒22, Fig. 5; Ex. 1009, 42‒43).
`
`Claim 1 also recites “transmitting at least one scrambled output bit on
`
`a first carrier” and “transmitting the at least one scrambled output bit on a
`
`second carrier.” Petitioner argues that Shively discloses determining “a
`
`respective carrier modulated to transmit one bit in each of a plurality of
`
`multitone subchannels of the channel” and “modulating a first set of
`
`respective carriers to represent respective unique portions of the data stream
`
`in at least a subset of those of the multitone subchannels.” Id. at 24‒25
`
`(quoting Ex. 1011, 8:3‒6, 8:5‒13). Petitioner further argues that Stopler
`
`discloses “transmitting data bits by modulating the data bits on carriers using
`
`quadrature amplitude modulation (QAM) and multitoned (multicarrier)
`
`modulation.” Id. at 25 (citing Ex. 1012, 1:42‒49, 12:20‒28). Petitioner
`
`explains that it would have been obvious to a person with ordinary skill in
`
`the art “to employ the techniques of Shively and Stopler to transmit at least
`
`one scrambled output bit that is provided to the modulator.” Id. (citing Ex.
`
`1009, 49). Petitioner further argues that Shively discloses transmitting a
`
`portion of data on multiple carriers, and, therefore, meets the “second
`
`carrier” claim limitation. Id. at 26‒27.
`
`Petitioner argues that “[i]t would have been obvious for a POSITA to
`
`combine Shively and Stopler because the combination is merely a use of a
`
`known technique to improve a similar device, method or product in the same
`
`way.” Id. at 13 (citing Ex. 1009, 26). Petitioner explains that a person of
`
`ordinary skill in the art would have recognized that “by transmitting
`
`redundant data on multiple carriers, Shively’s transmitter would suffer from
`
`an increased peak-to-average power ratio” because “the overall transmitted
`
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`signal in a multicarrier system is essentially the sum of its multiple carriers.”
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`Id. (citing Ex. 1009, 26). Petitioner asserts that a person of ordinary skill in
`
`the art “would have sought out an approach to reduce the [(peak-to-average
`
`power ratio)] PAR of Shively’s transmitter” and “Stopler provides a solution
`
`for reducing the PAR of a multicarrier transmitter.” Id. at 14 (citing
`
`Ex. 1009, 27). Petitioner argues that Stopler discloses “a phase scrambler
`
`[that] can be employed to randomize the phase of the individual subcarriers”
`
`(Id. at 14 (quoting Ex. 1011, 12:24‒28)) and “[a] POSITA would have
`
`recognized that by randomizing the phase of each subcarrier, Stopler
`
`provides a technique that allows two subcarriers in Shively’s system to
`
`transmit the same bits, but without those two subcarriers having the same
`
`phase.” Id. at 14. Petitioner explains that “[s]ince the two subcarriers are
`
`out-of-phase with one another, the subcarriers will not add up coherently at
`
`the same time,” thereby reducing the peak-to-average power ratio (PAR) in
`
`Shively’s system. Id. at 14‒15. Accordingly, Petitioner argues that
`
`“[c]ombining Stopler’s phase scrambler into Shively’s transmitter would
`
`have been a relatively simple and obvious solution to reduce Shively’s
`
`PAR.” Id. at 15 (citing Ex. 1009, 28).
`
`Patent Owner argues that “no review should be instituted because
`
`Petitioner has not provided a sufficient rationale to combine Shively and
`
`Stopler.” Prelim. Resp. 12. Specifically, Patent Owner argues (1) Shively
`
`does not suffer from an increased peak-to-average power ratio (PAR), (2)
`
`Shively only uses a small number of carriers and therefore would not suffer
`
`from a PAR problem, (3) Stopler is ambiguous as to what it teaches, and (4)
`
`Petitioner’s rationale for combining Shively and Stopler suffers from
`
`hindsight bias. Id. at 12‒20.
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`On this record, we are not persuaded by Patent Owner’s arguments
`
`because Patent Owner’s arguments do not rebut the arguments set forth by
`
`Petitioner, based on evidence of record. Specifically, Patent Owner set forth
`
`attorney argument in substitution for evidence. Petitioner explains, through
`
`the testimony of Dr. Tellado, that a person with ordinary skill in the art
`
`would have recognized that the combination of Shively and Stopler is
`
`nothing more than the use of a known technique to improve a similar device,
`
`method or product. Pet. 13 (citing Ex. 1009, 26). Dr. Tellado further
`
`explains that a person with ordinary skill in the art would have recognized
`
`that Shively would suffer from increased PAR. Id. Patent Owner’s
`
`arguments regarding Shively’s lack of increased PAR and Stopler’s
`
`ambiguity are not persuasive because they are tantamount to attorney
`
`arguments not based on any evidence of record. Furthermore, Dr. Tellado
`
`discloses that the knowledge of the advantages and benefits of the
`
`combination were known at the time of the invention, and, accordingly, we
`
`are not persuaded that Petitioner’s rationale for combining Shively and
`
`Stopler is based on impermissible hindsight. See Pet. 13‒15; Ex. 1009, 26‒
`
`28.
`
`C. Obviousness of Claims 4‒6, 10‒12, 17‒19, and 23‒25 over
`Shively, Stopler, and Gerszberg
`
`Petitioner contends that claims 4‒6, 10‒12, 17‒19, and 23‒25 of the
`
`’243 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
`
`Shively, Stopler, and Gerszberg. Pet. 42–52. For the reasons discussed
`
`below, the evidence, on this record, indicates there is a reasonable likelihood
`
`that Petitioner would prevail in showing that claims 4‒6, 10‒12, 17‒19, and
`
`23‒25 of the ’243 patent are unpatentable under 35 U.S.C. § 103(a) as
`
`obvious.
`
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`13
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`1. Gerszberg (Ex. 1013)
`
`Gerszberg discloses a telephone network interface unit typically
`
`disposed on the outside of a home or small business. Ex. 1013, 1:6‒9. An
`
`intelligent services director (ISD) is placed near a customer’s premises for
`
`multiplexing and coordinating many digital services on to a single twisted-
`
`pair line. Id. at 2:12‒23. A facilities management platform (FMP) is placed
`
`in the local telephone network’s central office for routing data to an
`
`appropriate interexchange company network. Id. A network server platform
`
`(NSP) is coupled to the FMP. Id.
`
`2. Analysis
`
`The evidence set forth by Petitioner indicates there is a reasonable
`
`likelihood that Petitioner will prevail in showing that claims 4‒6, 10‒12, 17‒
`
`19, and 23‒25 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`
`Shively and Stopler. Pet. 42–52.
`
`For example, the claim 4 recites “[t]he method of claim 1, wherein the
`
`transceiver is a wireless transceiver,” claim 5 recites “[t]he method of claim
`
`1, wherein the transceiver is operable for high speed internet access,” and
`
`claim 6 recites “[t]he method of claim 1, wherein the transceiver is operable
`
`to transport video.” Petitioner argues that, as discussed above, the
`
`combination of Shively and Stopler renders claim 1 obvious. See Section
`
`II.B.3. Petitioner further argues that Gerszberg discloses the additional
`
`limitations of claims 4‒6. Pet. 47‒49. Petitioner explains that Gerszberg
`
`discloses a “transceiver [that] is ‘coupled to a central office [] via a twisted-
`
`pair wire, hybrid fiber interconnection, wireless and/or other customer
`
`connection.” Id. at 48 (quoting Ex. 1013, 2:67‒3:9) (emphasis omitted).
`
`Petitioner also argues that Gerszberg discloses “‘[h]igh-speed access to the
`
`
`
`14
`
`
`
`IPR2016-01020
`Patent 9,014,243 B2
`
`Internet’ and the ‘ability to offer ultra fast Internet access.’” Id. (quoting Ex.
`
`1013, 7:44–60, 8:16‒24). Petitioner additionally argues that Gerszberg
`
`discloses “transporting ‘video’ and providing ‘[i]nteractive video
`
`teleconferencing.’” Id.at 49 (quoting Ex. 1013, 8:16‒36, 10:63‒11:3).
`
`Petitioner further argues that a person with ordinary skill in the art
`
`would have combined Gerszberg with Shively/Stopler “because Shively
`
`explicitly refers to Gerszberg and incorporates Gerszberg by reference.” Id.
`
`at 43–44 (citing Ex. 1011, 18:7‒9; Ex. 1013, 16:52‒53; Ex. 1009, 69;
`
`Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed.
`
`Cir. 2001) (holding “[w]hen a document is ‘incorporated by reference’ into a
`
`host document, such as a patent, the referenced document becomes
`
`effectively part of the host document as if it were explicitly contained
`
`therein.”)). Petitioner alternatively argues that “it would have been obvious
`
`to combine the teachings of Gerszberg with Shively and Stopler because the
`
`combination is merely the use of a known technique to improve a similar
`
`device, method or product in the same way.” Id. at 44 (citing Ex. 1009, 69).
`
`Petitioner explains that both Shively and Stopler “describe transmitting data
`
`using DSL and multitone communication technologies” and a person with
`
`ordinary skill in the art would have recognized that DSL “was intended to
`
`provide data services such as high-speed internet and video to telephone
`
`subscribers.” Id. (citing Ex. 1011, 1:5‒8; Ex. 1012, 1:50‒61, 90:37‒41,
`
`12:21‒24, 12:55‒57; Ex. 1009, 69). Petitioner argues that it was known that
`
`“Service Systems” that are offered by DSL technologies include “Internet
`
`access,” “Interactive video,” and “Videoconferenc[ing].” Id. at 44‒45
`
`(citing Ex. 1015, 100, 102, 104, Fig. 1). Accordingly, Petitioner argues that
`
`the “known technique for providing Internet and video services, as disclosed
`
`
`
`15
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`
`
`IPR2016-01020
`Patent 9,014,243 B2
`
`by Gerszberg, would be applied to the combination of Shively and Stopler to
`
`provide the advantage of addressing the market need for such services.” Id.
`
`at 46 (citing Ex. 1013, 7:44‒60, 8:16‒36, 10:63‒11:3).
`
`Patent Owner argues that this ground relies on Shively and Stopler
`
`and “no review should be instituted because Petitioner has not provided a
`
`sufficient rationale to combine Shively and Stopler.” Prelim. Resp. 12. We
`
`have already address this argument above, and, for the same reasons
`
`discussed above, are not persuaded. See Section II.B.3.
`
`D. Conclusion
`
`For the foregoing reasons, we are persuaded that Petitioner has met its
`
`burden of showing a reasonable likelihood that claims 1‒25 of the ’243
`
`patent are unpatentable.
`
`
`
`III. ORDER
`
`After due consideration of the record before us, and for the foregoing
`
`reasons, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to the following grounds:
`
`1. claims 1‒3, 7‒9, 13‒16, and 20‒22 of the ’243 patent as
`
`unpatentable under 35 U.S.C. § 103(a) over Shively and Stopler;
`
`2. claims 4‒6, 10‒12, 17‒19, and 23‒25 of the ’243 patent as
`
`unpatentable under 35 U.S.C. § 103(a) over Shively, Stopler, and
`
`Gerszberg;
`
`FURTHER ORDERED that no other grounds are instituted; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ʼ243 patent is hereby instituted commencing on the
`
`
`
`16
`
`
`
`IPR2016-01020
`Patent 9,014,243 B2
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial.
`
`
`
`
`
`For PETITIONER:
`
`David L. McCombs
`Theodore M. Foster
`Gregory P. Huh
`HAYNES & BOONE, LLP
`David.mccombs.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`Andrew Karp
`MCANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`akarp@mcandrews-ip.com
`
`
`
`
`
`17
`
`
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