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`
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`Filed on behalf of TQ Delta, LLC
`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CISCO SYSTEMS, INC., DISH NETWORK, LLC,
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS, INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP, INC.,
`Petitioner,
`v.
`TQ DELTA, LLC
`Patent Owner
`_____________
`Case No. IPR2016-01020 (Patent No. 9,014,243)1
`Case No. IPR2016-01021 (Patent No. 8,718,158)2
`_____________
`PATENT OWNER’S MOTION FOR DISCOVERY FILED
`UNDER 37 C.F.R. § 42.51(b)
`
`
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00254, and Comcast
`Cable Communications, L.L.C., Cox Communications, Inc., Time Warner Cable
`Enterprises L.L.C., Verizon Services Corp., and ARRIS Group, Inc., who filed a
`Petition in IPR2017-00418, have been joined in this proceeding.
`
` DISH Network, L.L.C., who filed a Petition in IPR2017-00255, and Comcast
`Cable Communications, L.L.C., Cox Communications, Inc., Time Warner Cable
`Enterprises L.L.C., Verizon Services Corp., and ARRIS Group, Inc., who filed a
`Petition in IPR2017-00417, have been joined in this proceeding.
`
` 2
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`
`Patent Owner requests that the Board issue an order compelling Petitioner to
`
`serve, within two business days, the documents identified in Ex. 2015.
`
`The Patent Owner Response, and supporting expert declaration of Dr. Short,
`
`demonstrated that a POSITA would not recognize Shively’s transmitter as
`
`suffering from a problematic increase in peak-to-average power ratio (“PAR”) and,
`
`thus, there is no basis for Petitioner’s asserted motivation to combine Shively with
`
`Stopler. Petitioner’s Reply, based on the testimony of Dr. Tellado, contends that
`
`Dr. Short’s analysis of Shively is wrong. Dr. Tellado’s testimony relied on two
`
`Matlab simulations—an “18,000 foot” simulation (see Ex. 2013 at 45:23–47:18)3
`
`and a “12,000 foot” simulation (see Ex. 1026 at ¶¶ 43-52). Petitioner only served
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`Patent Owner records for the 12,000 foot simulation. Undoubtedly, Petitioner
`
`withheld the 18,000 foot simulation because it would support Dr. Short and be
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`inconsistent with Petitioner’s obviousness challenge.
`
`Because Petitioner’s expert relied on the 18,000 foot simulation, and it is
`
`inconsistent with Petitioner’s assertions, records of the 18,000 foot simulation are
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`discoverable under 37 C.F.R. § 42.51(b)(1) or 37 C.F.R. § 42.51(b)(2).
`
`I.
`
`BACKGROUND OF THE CASE
`
`The Board instituted this IPR in reliance on Petitioner’s assertions that
`
`
`3 For this jointly captioned brief, all citations are to IPR2016-01020.
`
`1
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`
`“Shively’s transmitter would suffer from an increased peak-to-average
`
`power ratio[,]” and “that a [POSITA] ‘would have sought out an approach to
`
`reduce the [(peak-to-average power ratio)] PAR of Shively’s transmitter’ and
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`‘Stopler provides a solution for reducing the PAR of a multicarrier transmitter.’”
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`Paper 7 at 11–12. The purported problem of increased PAR is the sole motivation
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`proffered by Petitioner to combine Shively and Stopler. Paper 2 at 15
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`(“Combining Stopler’s phase scrambler into Shively’s transmitter would have been
`
`a relatively simple and obvious solution to reduce Shively’s PAR.”).
`
`Patent Owner Response: Patent Owner, relying on Dr. Short’s declaration,
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`rebutted Petitioner’s bald conclusion that “the PAR of Shively’s transmitter”
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`presented a problem that a POSITA would seek to remedy. Paper 12 at 48. Dr.
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`Short explained “why any arguable ‘increase’ in PAR due to Shively’s ‘spreading’
`
`scheme is trivial in view of Shively’s drastic reduction in transmission signal
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`power (which virtually eliminates clipping).” Id. (citing Ex. 2003 at ¶¶ 61–67).
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`Dr. Short analyzed an 18,000 foot loop because Shively is expressly directed
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`to “long loop systems, where the length of cable … is at least 18,000 feet.” Ex.
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`2003 at ¶ 44 (citing Shively at 9:63–10:2 and 11:11–12)). Dr. Short explained that
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`multicarrier systems are designed to accommodate significant PAR, and increased
`
`PAR is problematic only if it causes clipping at rate greater than allowed by the
`
`2
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`relevant communication standard. Ex. 2003 at ¶¶ 23–32. He explained that per
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`Shively’s teachings “more than half of the carrier cannot be used at all.” Id. at ¶ 58.
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`Dr. Short continued, “While Shively’s ‘spreading’ idea will cause a small uptick in
`
`clipping probability, any increase is negated many times over by the enormous
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`reduction in clipping achieved by reducing signal power by more than half” (id. at
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`¶ 63) and concluded that Shively does not cause a PAR problem . Id. at ¶¶ 62–67.
`
`Petitioner’s Reply: Petitioner defended its flawed and conclusory
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`obviousness rationale by disparaging Dr. Short’s analysis of an 18,000 foot loop
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`and claiming that Dr. Short’s “results are unreliable.” Paper 17 at 31. Petitioner
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`and Dr. Tellado assert that quantifying the increase in PAR “would have called for
`
`running numerical simulations.” Paper 17 at 34; Ex. 1026 at ¶ 43. “In order to
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`quantify the increase in PAR, [Dr. Tellado] designed and wrote a simulation of an
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`ADSL transmitter that calculates the clipping probability of a DMT symbol for
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`different values of PAR under different simulation conditions.” Ex. 1026 at ¶ 43.
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`Nevertheless, despite that (1) Shively is directed to “long loop systems … of the
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`order 18,000 feet or more,” (2) Dr. Short analyzed an 18,000 foot loop, and (3) Dr.
`
`Tellado and Petitioner assert that quantifying any PAR problem with Shively
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`called for a simulation, Petitioner only served Patent Owner with code for a 12,000
`
`foot simulation (Ex. 1034) and the results (Graph 2 of Ex. 1026 at ¶ 48).
`
`3
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`
`Cross-examination: Dr. Tellado testified that he performed a simulation on
`
`an 18,000 foot loop. Ex. 2013 at 45:23–47:18. Further, when asked what he had
`
`determined from it, Dr. Tellado answered: “That Dr. Short’s approximation of a
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`Gaussian approximation was poor. It was worse than – than Dr. Short said.” Id. at
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`46:24–47:1.
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`Existence of records of the 18,000 foot simulation: Petitioner does not
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`deny that it has or at least had the 18,000 foot simulation code and results. When
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`asked by the Panel whether “there [is] a simulation or some information Dr.
`
`Tellado performed that has not been provided to Patent Owner,” Cisco’s counsel
`
`provided only a self-serving non-answer: “[W]e don’t believe that there is anything
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`Dr. Tellado has relied on for his analysis that’s not been provided to the Patent
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`Owner.” Ex. 2016 at 20:4–13. Dr. Tellado was also evasive about the 18,000 foot
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`simulation code and results, saying he did not “recall” whether he saved them or
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`shared them with anyone (Ex. 2013 at 57:1–25) and refusing to state whether the
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`results supported Dr. Short (id. at 53:25–56:21, 64:11–18, and 111:14–114:16).
`
`II. THE 18,000 FOOT SIMULATION IS “ROUTINE DISCOVERY”
`A.
`Petitioner and Its Expert Relied on the 18,000 Foot Simulation
`Dr. Tellado testified that he ran an 18,000 foot simulation. Ex. 2013 at
`
`45:23–47:11. Importantly, Petitioner and Dr. Tellado asserted that a POSITA
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`would have to do a simulation to quantify whether a PAR problem is created on a
`
`4
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`given loop. Paper 17 at 34; Ex. 1026 at ¶ 43. Thus, pursuant to Petitioner and Dr.
`
`Tellado’s own assertions, they necessarily relied on the 18,000 foot simulation to
`
`disparage Dr. Short’s opinions. Id. at 46:22–47:8; see also Ex. 1026 at ¶ 16. Any
`
`contention by Petitioner that Dr. Tellado’s second declaration does not refer to the
`
`18,000 foot simulation—and that therefore it is not an exhibit cited in a paper or in
`
`testimony—is irrelevant. By relying upon the 18,000 foot simulation to disparage
`
`Dr. Short’s opinion, Petitioner “utilized information [resulting from the simulation]
`
`as an exhibit, regardless of whether Petitioner called it an exhibit.” Lumentum
`
`Holdings, Inc. et al. v. Capella Photonics, Inc., IPR2015-00731, Paper 32 at 3
`
`(PTAB Feb. 5, 2016). Accordingly, the Board should order Petitioner to produce
`
`all records of its 18,000 foot simulation under 37 CFR § 42.51(b)(1)(i).
`
`18,000 Ft. Simulation Is Inconsistent With Petitioner’s Assertions
`
`B.
`In the Reply, Petitioner asserts that Dr. Tellado created and ran a simulation
`
`to determine whether “Shively’s transmitter would suffer from an increased peak-
`
`to-average power ratio” as alleged in the Petition. Paper 17 at 31–34; Paper 2 at
`
`14. Notably, this simulation was created only after Patent Owner demonstrated
`
`that a POSITA would not recognize Shively to disclose a transmitter that would
`
`suffer from a problematic increased in PAR. Patent Owner’s expert analyzed an
`
`18,000 foot loop because Shively is expressly directed to loops “of the order
`
`5
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`18,000 feet or more.” Ex. 1011 at 9:65–66. Common sense dictates that Petitioner
`
`would submit evidence regarding the 18,000 foot simulation as rebuttal if it was
`
`consistent with Petitioner’s assertions. Instead, Petitioner submitted irrelevant and
`
`improperly new evidence regarding a 12,000 foot simulation. The only
`
`conceivable reason Petitioner withheld the 18,000 foot simulation is that it is
`
`inconsistent with Petitioner’s allegations that Dr. Short is wrong and Shively does
`
`have a PAR problem. Accordingly, records of the 18,000 foot simulation should
`
`be produced under 37 CFR § 42.51(b)(1)(iii).
`
`III. 18,000 FT. SIMULATION IS “ADDITIONAL DISCOVERY”
`The requested discovery should be ordered because it “is in the interests of
`
`justice.” Kingston Tech. Co., Inc. v. Catr Co., Ltd., IPR2015-00149, Paper 24 at 2,
`
`(PTAB June 10, 2015). Further, each of the Garmin factors favors this discovery.
`
`Garmin Factor 1: There is more than a chance that the discovery will be
`
`useful because it will show whether Dr. Tellado’s assertedly necessary simulation
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`supports or negates Petitioner’s contention that a POSITA would recognize
`
`Shively as suffering from a problematic increase in PAR. See Corning Inc. v. DSM
`
`IP Assets B.V., IPR2013-00044, Paper 25 at 4 (P.T.A.B. Jun. 21, 2013) (ordering
`
`production of testing documents and the underlying data for the test results).
`
`Garmin Factor 2: Patent Owner is not seeking Petitioner’s litigation
`
`6
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`positions, nor has Petitioner made such an assertion.
`
`Garmin Factor 3: Patent Owner has no ability to generate equivalent
`
`information by other means. Patent Owner should be allowed to use Dr. Tellado’s
`
`simulation against Petitioner as this is the most powerful evidence for which it
`
`cannot deny admissibility or accuracy. Further, although Patent Owner has done
`
`its own 18,000 foot simulation and confirmed that Dr. Short was correct, it has no
`
`meaningful ability to get that information into the record given the Board’s denial
`
`of Patent Owner’s request for a surreply. When shown this simulation code (Ex.
`
`2010) and results (Ex. 2011) during cross-exam, Dr. Tellado refused to testify
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`regarding its accuracy (Ex. 2013 at 108:7–111:12), although through leading
`
`redirect questions he mistakenly concluded it had errors (he did not realize that the
`
`code in Ex. 2010 was used to generate the Ex. 2011 graph line only for Scenario 5
`
`(18,000 ft. simulation) and not Scenarios 1–3 and 4 (12,000 ft. simulation)).
`
`Garmin Factor 4: Instructions for the discovery are easily understandable
`
`because the scope is narrow and straightforward: Petitioner is being asked to
`
`provide each unique copy of the 18,000 foot simulation code and results.
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`Garmin Factor 5: The requests are not overly burdensome to answer
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`because the scope is narrow and straightforward, and the documents are
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`presumptively in the possession of Petitioner, its expert and/or its IPR counsel.
`
`7
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McAndrews, Held, & Malloy, Ltd.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`
`Dated: July 14, 2017
`
`
`
`
`
`
`CUSTOMER NUMBER: 23446
`
`
`
`8
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the foregoing PATENT OWNER’S
`
`MOTION FOR DISCOVERY UNDER 37 C.F.R. § 42.51(B)(1) AND 37 C.F.R.
`
`§ 42.51(B)(2) was served on July 14, 2017 in its entirety electronically on:
`
`Lead Counsel
`David L. McCombs
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Tel. 214-651-5533
`Fax 214-200-0853
`david.mccombs.ipr@haynesboone.com
`
`Heidi L. Keefe
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., Suite 700
`Washington, DC 20004
`Tel. 650-843-5001
`Fax 650-849-7400
`hkeefe@cooley.com
`Dish-TQDelta@cooley.com
`zpatdcdocketing@cooley.com
`
`John M. Baird
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`
`Back-up Counsel
`Theodore M. Foster
`Tel. 972-739-8649
`Russell Emerson
`Tel. 214-651-5328
`Jamie H. McDole
`Tel. 972-651-5121
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Fax 972-692-9156
`ipr.theo.foster@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`jamie.mcdole@haynesboone.com
`
`Stephen McBride
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., Suite 700
`Washington, DC 20004
`Tel. 650-843-5001
`Fax 650-849-7400
`smcbride@cooley.com
`
`
`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`
`9
`
`
`
`IPR2016-01020 and IPR2016-01021
`Patent Owner’s Motion For Discovery Filed Under 37 C.F.R. § 42.51(b)
`U.S. Patent Nos. 9,014,243 and 8,718,158
`
`Tel. 202-776-7819
`Fax 202-776-7801
`JMBaird@duanemorris.com
`
`
`Date: July 14, 2017
`
`Tel. 202-776-7819
`Fax 202-776-7801
`CJTyson@duanemorris.com
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`
`
`
`10
`
`
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