throbber
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.,
`Petitioners,
`
`v.
`
`TQ DELTA, LLC
`Patent Owner
`_____________
`
`Case No. IPR2016-010211
`Patent No. 8,718,158
`_____________
`
`PATENT OWNER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`1 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.
`
`
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`
`
`
`I. 
`
`II. 
`
`III. 
`
`INTRODUCTION ........................................................................................... 1 
`
`THE PANEL’S CONSTRUCTION OF “SCRAMBLING THE
`PHASE CHARACTERISTICS OF THE CARRIER SIGNALS” IS
`OVERBROAD ................................................................................................ 2 
`A. 
`There Is Universal Agreement That Scrambling Phases As
`Claimed Reduces PAR .......................................................................... 3 
`The FWD’s Construction Includes Situations in Which PAR Is
`Not Reduced .......................................................................................... 5 
`
`B. 
`
`STOPLER DOES NOT DISCLOSE “SCRAMBLING THE PHASE
`CHARACTERISTICS OF THE CARRIER SIGNALS” ................................ 6 
`A. 
`Stopler’s “Phase Scrambling” Must Be Compatible with Single-
`Carrier CDMA ....................................................................................... 6 
`There Is No Way to Reduce PAR in a Single-Carrier System by
`Phase Scrambling As Claimed .............................................................. 7 
`
`B. 
`
`IV.  THE FWD IS PREDICATED ON MISAPPREHENDED
`ASSUMPTIONS AND OVERLOOKED TESTIMONY ............................... 8 
`
`V. 
`
`THE FWD MISAPPREHENDS THAT SHIVELY DOES NOT
`HAVE AN “INCREASED” OR “HIGH” PAR BECAUSE OF THE
`ENORMOUS REDUCTION IN TRANSMISSION POWER ...................... 12 
`
`VI.  CONCLUSION .............................................................................................. 15 
`
`
`
`i
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.71(d), TQ Delta, LLC (“Patent Owner”) requests
`
`rehearing of the Panel’s final written decision (“FWD”), Paper 44. The FWD is
`
`based on an overbroad construction of “scrambling the phase characteristics of the
`
`carrier signals” that misapprehends or overlooks the specification of the ’158
`
`patent, Patent Owner’s discussion, and the statements of Petitioners, including their
`
`own expert. Furthermore, given a proper construction of “scrambling the phase
`
`characteristics of the carrier signals,” the FWD misapprehends or overlooks that
`
`Stopler’s2 alleged phase scrambling is different than what is claimed. The FWD
`
`also mistakenly concludes, based on a misapprehension of the record, that one of
`
`skill in the art would have (1) considered Shively’s3 PAR without the frame of
`
`reference of its clipping rate and (2) considered Shively to have a “high” or
`
`“increased” PAR. But the relative terms “high” or “increased” PAR lack meaning
`
`without a frame of reference.
`
`
`2 U.S. Patent No. 6,625,219 B1; issued Sept. 23, 2003 (Ex. 1012) (“Stopler”).
`
`3 U.S. Patent No. 6,144,696 B1; issued Nov. 9, 2000 (Ex. 1011) (“Shively”).
`
`
`
`1
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`II. THE PANEL’S CONSTRUCTION OF “SCRAMBLING THE PHASE
`CHARACTERISTICS OF THE CARRIER SIGNALS” IS
`OVERBROAD
`
`Patent Owner asserted that this term (and the similar term “scramble … a
`
`plurality of carrier phases”) should be construed to mean “adjusting the phases of a
`
`plurality of carriers in a single multicarrier symbol by pseudo-randomly varying
`
`amounts.” POR, Paper 15 at 14. Petitioners, on the other hand, argued that it
`
`needs no construction, “since [Stopler] uses the same ‘phase scrambling’
`
`terminology to describe pseudo-random phase changes.” Reply, Paper 20 at 7.
`
`The FWD, however, diverged from both of these approaches and construed
`
`the term to mean “adjusting the phases of a plurality of carriers in a single
`
`multicarrier symbol.” FWD, Paper 44 at 11. But this cannot be a proper
`
`construction of this term because it leaves open the possibility that all of the phases
`
`within a single multicarrier symbol are adjusted by a single (i.e., same) amount.
`
`The FWD misapprehends or overlooks that, under any proper construction, there
`
`must at a minimum be varying amounts by which the phases are adjusted within a
`
`single multicarrier symbol (i.e., from carrier-to-carrier) such that PAR is reduced.
`
`Under the construction set forth in the FWD, the claim term would still be met
`
`where the phases of a plurality of carriers in a single multicarrier signal are
`
`adjusted even if each of the phases of the plurality of carriers in the single
`
`
`
`2
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`multicarrier symbol are adjusted by the same amount. Such uniform adjustment,
`
`however, would not result in the recited “scrambling” where phase adjustment
`
`varies among carriers—and therefore would not reduce PAR.
`
`A. There Is Universal Agreement That Scrambling Phases As
`Claimed Reduces PAR
`
`As both Patent Owner and Petitioners explained, the claimed “scrambling”
`
`must lower PAR. Patent Owner’s discussion on this point is clear, unrefuted, and
`
`fully supported by the ’158 patent. See, e.g., POR, Paper 15 at 16 (“As the ’158
`
`patent explains, PAR in the transmission signal is reduced by adjusting the carrier
`
`phases within a single DMT symbol. See [Ex. 1001] at 6:32–53. If the carrier
`
`phases were only adjusted from one symbol to the next, PAR would not be
`
`reduced. See Ex. 2003 at ¶¶ 41–42.”); Ex. 2003 (Short Decl.) at ¶ 42; Ex. 1001 at
`
`6:32–53.
`
`Petitioners’ arguments showed that they agree that the claims required
`
`adjusting phases of the individual carriers. For example, Petitioners alleged:
`
`A POSITA would have known that one way to reduce PAR is to
`scramble phases of individual carriers.
`
`Reply, Paper 20 at 12.4 As another example of Petitioners’ agreement:
`
`
`4 Patent Owner disagrees and contests Petitioners’ conclusions and untimely
`
`
`
`3
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`
`Second, it would have been obvious to a POSITA to employ Stopler’s
`phase scrambling techniques in Shively’s transmitter. Since Shively’s
`use of redundant data transmissions could negatively impact the
`transmitter’s PAR, it would have been obvious to randomize the
`carrier phases using Stopler’s techniques in order to reduce Shively’s
`PAR.
`
`Thus, Stopler renders obvious “a method for scrambling the phase
`characteristics of the carrier signals.”
`
`Ex. 1009 (Tellado Decl.) at p. 45. Yet another example is Petitioners’ section
`
`heading: “IV. Stopler’s phase scrambler reduces PAR because it scrambles phases
`
`of individual QAM symbols.” Reply, Paper 20 at 16.
`
`Even the FWD acknowledges that the claimed phase scrambling reduces
`
`PAR.5 See FWD, Paper 44 at 28 (“The known technique is identified as phase
`
`scrambling. Pet. 15 (citing Ex. 1009, 29). The similar device is Shively’s modem.
`
`Pet. 17. And the improvement to it is the same as in Stopler—to reduce PAR. Pet.
`
`16 (citing Ex. 1009, 29).”); id. at 32 (“In addition, Dr. Tellado testified that a
`
`submission of evidence, but agrees that the claimed phase-scrambling must reduce
`
`PAR.
`
`5 Patent Owner does not agree with the conclusions of the FWD, but notes only
`
`that PAR reduction using phase scrambling is discussed and not refuted.
`
`
`
`4
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`person having ordinary skill in the art would have recognized that the purpose of
`
`Stopler’s phase scrambler to randomize data symbols would be to reduce PAR of
`
`transmitted signals….”); id. at 34–35 (“Accordingly, a drive to reduce equipment
`
`costs would have motivated a person having ordinary skill in the art to include
`
`Stopler’s phase scrambler into Shively’s transmitter to reduce PAR.”).
`
`Thus, all parties and the Panel are in agreement that phase scrambling
`
`reduces PAR. And, of course, if PAR is not reduced, then there can be no phase
`
`scrambling.
`
`B.
`
`The FWD’s Construction Includes Situations in Which PAR Is
`Not Reduced
`
`The construction in the FWD of “scrambling the phase characteristics of the
`
`carrier signals” (and the similar term “scramble … a plurality of carrier phases”) is
`
`overbroad because it includes scenarios in which PAR is not reduced. For
`
`example, if all of the carriers in a single multicarrier symbol are rotated by the
`
`same amount, then PAR would not be reduced. That is because the phases would
`
`not be “scrambled” in any sense. Instead, when undesirably aligned carrier phases
`
`in a single multicarrier symbol are rotated by the same amount, they will still align
`
`by the same undesirable amount. The FWD overlooks or misapprehends that,
`
`without phase variance from carrier-to-carrier within a single multicarrier symbol,
`
`there can be no reduction in PAR according to the claims and the invention of the
`
`
`
`5
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`’158 patent, and therefore no phase scrambling as claimed. See, e.g., Petition,
`
`Paper 2 at 15, and Ex. 1009 (Tellado Decl.) at ¶ 64 (“Having phase-aligned
`
`subcarriers causes a high peak-to-average power ratio (PAR), since all of the
`
`subcarriers add up coherently at the same time.”); POR, Paper 15 at 49 (“[O]ut of
`
`all the evidence in this inter partes review, only the inventor of the ’158 patent
`
`recognized the problem of high PAR due to phase-aligned carriers.”); Reply, Paper
`
`20 at 20 (“Such non-random, structured data increases the likelihood for phases of
`
`carriers to align, thereby increasing PAR. CSCO-1009, ¶59.”).
`
`III. STOPLER DOES NOT DISCLOSE “SCRAMBLING THE PHASE
`CHARACTERISTICS OF THE CARRIER SIGNALS”
`A.
`
`Stopler’s “Phase Scrambling” Must Be Compatible with Single-
`Carrier CDMA
`
`There is no disagreement that Stopler’s “phase scrambling” must be
`
`compatible with single-carrier CDMA. POR, Paper 15 at 34 (“So, plainly,
`
`Stopler’s phase scrambling idea must be compatible with single-carrier CDMA.”);
`
`Reply, Paper 20 at 18 (“Stopler contemplates that the phase scrambler could be
`
`used with either a DMT or CDMA modulator.”) (emphasis in original); FWD,
`
`Paper 44 at 15 (“The output from the QAM mapper 82 is provided to a modulator
`
`(not shown) which implements the particular signal modulation desired, e.g.,
`
`VCMT, CDMA, etc.”). Nor could there be any reasonable disagreement based on
`
`the disclosure of Stopler. See, e.g., Stopler, Ex. 1012 at FIG. 5 (Reference numeral
`6
`
`
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`82—“QAM Mapper and Phase Scrambler”); id. at 12: 55–57 (“The output from the
`
`QAM mapper 82 is provided to a modulator (not shown) which implements the
`
`particular signal modulation desired, e.g., VCMT, CDMA, etc.”); id. at 16:4–31
`
`(“25. A method of arranging and transmitting data in a CDMA system…31. The
`
`method of claim 24, wherein…said method includes the step of phase
`
`scrambling….”).
`
`B.
`
`There Is No Way to Reduce PAR in a Single-Carrier System by
`Phase Scrambling As Claimed
`A single carrier system, such as CDMA, transmits only one carrier for each
`
`symbol period. There is only one phase associated with that single carrier. POR,
`
`Paper 15 at 36. Consequently, the FWD overlooks or misapprehends that is
`
`impossible to impose any phase variance between carriers since there is only one
`
`carrier. Id. at 37 (“It is nonsensical to scramble phases within a [single-carrier]
`
`symbol because there is only one phase in each symbol.”). Even if the single phase
`
`of that single carrier is rotated, such rotation would not reduce PAR. This is
`
`because there is no plurality of carriers and respective phases in the first place that
`
`could align to cause an undesirably high PAR. Compare Reply, Paper 20 at 20
`
`(“Such non-random, structured data increases the likelihood for phases of carriers
`
`to align, thereby increasing PAR. CSCO-1009, ¶59.”) (emphasis added).
`
`
`
`7
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`
`Because Stopler operates with single-carrier CDMA, Stopler’s “phase
`
`scrambling,” does not and cannot reduce PAR. Single-carrier CDMA does not
`
`have a plurality of carriers which can align. Therefore, the FWD misapprehended
`
`or overlooked that Stopler’s “phase scrambling” is different, and must have a
`
`different purpose than the claimed phase scrambling because Stopler’s “phase
`
`scrambling” is applied to a single carrier, and cannot reduce PAR.
`
`IV. THE FWD IS PREDICATED ON MISAPPREHENDED
`ASSUMPTIONS AND OVERLOOKED TESTIMONY
`
`The logic in the FWD is based on several incorrect assumptions. In
`
`particular, it states:
`
`Thus, Patent Owner’s diagram shows only that a single-carrier
`embodiment of Stopler would transmit one phase-scrambled QAM
`symbol at a time. It does not show that QAM Mapper and Phase
`Scrambler 82 phase scrambles a DMT symbol—i.e., rotates, by the
`same amount, the phase of a plurality of QAM symbols. This is
`consistent with the cross-examination testimony of Patent Owner’s
`expert, Dr. Short, who admitted that Stopler does not describe phase
`scrambling DMT symbols. Pet. Reply 17–18 (citing Ex. 1027, 60:11–
`14). Thus, Patent Owner’s own diagram is consistent with
`Petitioner’s position that Stopler phase scrambles individual QAM
`symbols, and Patent Owner identifies nothing in Stopler to suggest
`that, in an alternative embodiment with a multicarrier modulator,
`QAM Mapper and Phase Scrambler 82 do not supply a plurality of
`
`
`
`8
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`
`phase-scrambled QAM symbols for modulation onto the plurality of
`carriers in the, e.g., DMT symbol.
`
`FWD, Paper 44 at 25–26 (emphasis in original).
`
`There are several inaccuracies in this section of the FWD. First, a DMT
`
`symbol cannot be phase scrambled as that term is used in the claims by having its
`
`component QAM symbols rotated by the same amount. As discussed in § II.B,
`
`supra, there must be variance of phase adjustment between symbols for there to be
`
`phase scrambling as claimed.
`
`Second, the FWD overlooked or misapprehended Dr. Short’s testimony. He
`
`never admitted that Stopler does not describe phase scrambling DMT symbols, as
`
`interpreted in the FWD (“i.e., rotates by the same amount, the phase of a plurality
`
`of QAM symbols.”). Instead, he was very clear that Stopler’s phase scrambler is
`
`applied to a DMT symbol “as a whole” or “all at once.” See Ex. 1027 at 60:11–
`
`61:5. He clearly meant by this that the same phase adjustment is applied to all of
`
`the QAM symbols in a single DMT symbol. Any conclusion to the contrary is a
`
`misapprehension of Dr. Short’s testimony and also overlooks other testimony of
`
`Dr. Short where he explained that Stopler adjusts each QAM symbol by the same
`
`amount within a DMT symbol, but that amount changes over time from DMT
`
`symbol to DMT symbol (or, in a single carrier system, from over time from QAM
`
`
`
`9
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`symbol to QAM symbol). See, e.g., Ex. 2003 at ¶ 90 (cited in the POR, Paper 15 at
`
`44) (“The sensible interpretation of Stopler’s statement is that all of the carriers
`
`within a [DMT] symbol are rotated by the same phase shift with the phase shift
`
`changing from [DMT] symbol to [DMT] symbol, but NOT [QAM symbol] to
`
`[QAM symbol]. Instead, the only simplifying way to execute Stopler’s directive is
`
`to rotate the phases of each [QAM symbol] by the same amount.”).
`
`Third, the FWD overlooks or misapprehends Patent Owner’s explanation of
`
`why Stopler would be understood by one of skill in the art to describe adjusting the
`
`phases of the carriers (i.e., QAM symbols) over time from one DMT symbol to the
`
`next, and not by varying amounts within one DMT symbol. In particular, Patent
`
`Owner explained that “[a]ccording to a second narrowband-noise-reducing
`
`technique, Stopler addresses narrowband noise at the frequency of an overhead
`
`pilot carrier by scrambling the phase of the pilot carrier over time from one DMT
`
`symbol to the next, i.e. by inter-symbol phase scrambling.” POR, Paper 15 at 39
`
`(citing Ex. 2003 at ¶ 82) (emphasis in original). The FWD, however, conflated this
`
`argument with a discussion about multiple pilot tones and apparently
`
`misunderstood Patent Owner’s argument to be that Stopler only applied scrambling
`
`to pilot tones or overhead tones. Instead, Patent Owner’s argument is that Stopler
`
`explicitly describes narrowband noise as a problem (in contrast with Stopler’s lack
`
`
`
`10
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`of any discussion of PAR), and randomizing the phases of carriers over time from
`
`one DMT symbol to the next was a known solution to narrowband noise.
`
`Fourth, the FWD misapprehends that it is not Patent Owner’s burden to
`
`identify somewhere in Stopler that suggests that, “in an alternative embodiment
`
`with a multicarrier modulator, QAM Mapper and Phase Scrambler 82 do not
`
`supply a plurality of phase-scrambled QAM symbols for modulation onto the
`
`plurality of carriers in the, e.g., DMT symbol.” Instead, it is Petitioners’ burden to
`
`explain and prove what Stopler does necessarily disclose, and not Patent Owner’s
`
`burden to explain what Stopler does not disclose. See In re Magnum Oil Tools,
`
`Intl., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“In an inter partes review, the burden
`
`of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of
`
`the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”)
`
`(quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015)). And Petitioners have not satisfied their burden. Furthermore,
`
`Patent Owner was never given an opportunity to respond by filing a sur-reply to
`
`Petitioners’ newly-introduced argument about scrambling QAM symbols vs. DMT
`
`symbols. 6/22/2017 Order, Paper 24 at 2.
`
`In addition to the inaccuracies in the above-quoted language of the FWD, the
`
`following arguments were repeated from Petitioners’ Reply, and Patent Owner was
`
`
`
`11
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`denied an opportunity to respond. For example, the Reply argued for the first time
`
`that “Stopler does not describe phase scrambling DMT symbols.” Petitioners’
`
`Reply, Paper 20 at 17. As another example, the Reply also alleged for the first
`
`time that “the straightforward reading of Stopler—as applying the phase scrambler
`
`to individual QAM symbols—is the only possible reading that is logically and
`
`technically coherent.” Id. at 18. Again, Patent Owner was denied the opportunity
`
`to file a sur-reply. 6/22/2017 Order, Paper 24 at 2.
`
`V. THE FWD MISAPPREHENDS THAT SHIVELY DOES NOT HAVE
`AN “INCREASED” OR “HIGH” PAR BECAUSE OF THE
`ENORMOUS REDUCTION IN TRANSMISSION POWER
`
`The FWD either misapprehended or overlooked Patent Owner’s argument
`
`and supporting expert testimony when it stated:
`
`There is no dispute that transmitting the same data on multiple carriers
`increases PAR (Pet. Reply 10 (citing PO Resp. 6–7; Ex. 2003 (Short
`Decl.) ¶ 22)) or that Shively’s technique, specifically, will increase
`PAR (PO Resp. 28 (“Shively’s ‘spreading’ technique will contribute a
`small uptick in clipping probability.”).
`
`FWD, Paper 44 at 31. This statement, however, is not supported by the record.
`
`Patent Owner absolutely did dispute that Shively exhibits an “increased” (or
`
`
`
`12
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`“high”) PAR.6 Contrary to the FWD’s selective excerpt of the POR, Patent Owner
`
`actually stated:
`
`While Shively’s “spreading” technique will contribute a small uptick
`in clipping probability, any increase would be negated by the
`enormous reduction in clipping probability achieved by reducing
`signal power by more than half. Based on worst-case assumptions
`regarding Shively’s spreading technique, the clipping probability for
`both normal and power-boost modes is virtually zero.
`
`POR, Paper 12 at 28–29 (emphasis added); see also Ex. 2003 at ¶ 63.
`
`
`6 Notably, the FWD concludes that the probability of clipping is irrelevant to
`
`Petitioner’s stated reason to combine. See FWD, Paper 44 at 30 (stating that “We
`
`need not determine the exact probability of clipping in Shively’s proposed system
`
`because, even assuming Patent Owner’s analysis is accurate, it does not rebut
`
`Petitioner’s reason to combine. Petitioner does not allege that Shively’s proposed
`
`system causes clipping, or that a person of ordinary skill in the art would have been
`
`motivated to reduce PAR only if it caused clipping. Instead, Petitioner alleges that
`
`Shively’s proposed system would have an “increased” or “high” PAR: . . . .”).
`
`And yet, the FWD’s assertion that there is purportedly no dispute about what
`
`constitutes “increased” PAR cites to Dr. Short’s discussion of clipping probability.
`
`
`
`13
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`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`
`The FWD misapprehends or overlooks Patent Owner’s rigorous analysis that
`
`there is no PAR problem presented by Shively. See FWD, Paper 44 at 29 (“Patent
`
`Owner also argues that because Shively does not disclose a problem with PAR,
`
`one having ordinary skill in the art would have had no reason to look for a solution.
`
`PO Resp. 50–51. We are not persuaded by these arguments.”). Instead, the FWD
`
`characterizes Shively as having a “high” or “increased” PAR. FWD, Paper 44 at
`
`30. The words “high” and “increased,” however, are meaningless without a frame
`
`of reference. “High” with respect to what? “Increased” by how much and/or with
`
`respect to what reference? The FWD does not say. But, the level of PAR is only
`
`relevant to the extent it high enough or increased enough to cause a “problem” and
`
`motivate one to attempt to lower it. See POR, Paper 15 at 7–11; Ex. 2003 at ¶¶ 23–
`
`32. The FWD overlooked that one of skill in the art would need a frame of
`
`reference, and that the relevant frame of reference is clipping probability.
`
`The FWD further misapprehends or overlooks that Petitioners fail to name
`
`even one other PAR problem besides “clipping.” The FWD cites Petitioners’
`
`Reply and states that “‘numerous problems’ other than clipping ‘would have
`
`motivated a [person of ordinary skill in the art] to look for ways to reduce the PAR
`
`of Shively’s technique.’ Pet. Reply 36.” FWD, Paper 44 at 31. Yet Petitioners
`
`(and the FWD) do not disclose even one of these “numerous” other problems.
`
`
`
`14
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`Reply, Paper 20 at 36. Instead, the FWD correctly observes that “equipment
`
`designed to handle a higher PAR can be larger, more expensive, and more power
`
`hungry than equipment designed to handle a lower PAR.” FWD, Paper 44 at 31.
`
`This statement, however, is confirmation that the only PAR problem in this case
`
`relates to clipping. There are no other problems, much less “numerous”
`
`unidentified ones. As Dr. Short testified: “One way to reduce clipping is to use
`
`transceiver components that have larger dynamic ranges. Such components,
`
`however, can be expensive and may consume a relatively large amount of power.
`
`Increasing the dynamic ranges of the components, therefore, can be impractical.”
`
`Ex. 2003 at ¶ 26 (emphasis added); see also POR, Paper 15 at 9. Petitioners did
`
`not present any evidence for the illogical argument that a person having ordinary
`
`skill in the art would have been motivated by a desire to avoid the need for more
`
`expensive or power-hungry equipment when Shively’s technique would not create
`
`such a need because it does not increase clipping.
`
`VI. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests rehearing of
`
`the FWD, and reconsideration and reversal of the findings of unpatentability for
`
`claims 1–30 of the ’158 patent.
`
`
`
`
`
`15
`
`
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`
`Respectfully submitted,
`
`Dated: November 27, 2017
`
`
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Office: (312) 775-8000
`Fax: (312) 775-8100
`pmcandrews@mcandrews-ip.com
`
`
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`16
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`
`attached PATENT OWNER’S MOTION FOR RECONSIDERATION are
`
`being served via electronic mail on this 27th day of November, 2017 to the
`
`following:
`
`Lead Counsel
`David L. McCombs
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Tel. 214-651-5533
`Fax 214-200-0853
`david.mccombs.ipr@haynesboone.com
`
`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
`
`
`
`
`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
`
`
`
`
`17
`
`

`

`IPR2016-01021
`Patent Owner’s Request For Rehearing Pursuant To 37 C.F.R. § 42.71(d)
`U.S. Patent No. 8,718,158
`
`John M. Baird
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`Fax 202-776-7801
`JMBaird@duanemorris.com
`
`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`Fax 202-776-7801
`CJTyson@duanemorris.com
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McANDREWS, HELD & MALLOY,
`LTD.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Telephone: (312) 775-8000
`
`
`
`
`
`Dated: November 27, 2017
`
`
`
`
`
`18
`
`

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