`
` 
`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
`_____________
`
`DISH NETWORK, LLC
`Petitioner
`
`v.
`
`TQ DELTA, LLC
`Patent Owner
`_____________
`
`
`Case No. IPR2016-01470
`Patent No. 8,611,404
`_____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`SUMMARY OF THE ’404 PATENT ............................................................. 7
`
` 
`
`I.
`
`II.
`
`III. CLAIM CONSTRUCTION ............................................................................ 8
`
`IV. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO
`THE SINGLE GROUND RAISED BY PETITIONER—ALLEGED
`OVIOUSNESS OF CLAIMS 6, 11, 16, and 20 UNDER 35 U.S.C.
`§103 BY BOWIE, VAZIELEGHEM, AND ADSL 1995 ............................... 9
`
`A. The Asserted References Each Provide Very Different (or No)
`Low Power Mode Capabilities and Very Different Methods of
`Restoring Full Power Mode ................................................................... 10
`
`B. Petitioner Fails to Show That The Combination of References
`Discloses Each Element of the Claims .................................................. 12
`
`C. Petitioner Has Not Met its Burden of Showing a Reason to
`Combine Separate Features from the References in the Manner
`Claimed .................................................................................................. 16
`
`1. The Asserted Obviousness Rationales in the Petition Are
`Either Premised on Incorrect Facts, Wholly Conclusory, or
`Consist of Circular Hindsight ........................................................... 18
`
`(a) Petitioner provides no supported reason for modifying
`Bowie to store ADSL 1995’s alleged data parameters
`during low power mode ............................................................ 18
`
`(b) Petitioner provides no supported reason for modifying
`Bowie
`to
`receive Vanzieleghem’s synchronization
`signals ........................................................................................ 26
`
`for Any Reasonable
`2. Petitioner Provides No Support
`Expectation of Success ..................................................................... 32
`
`V.
`
`CONCLUSION .............................................................................................. 36
`
`CERTIFICATE OF WORD COUNT ...................................................................... 38
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`Patent Owner’s Preliminary Response
`IPR2016-01470
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` 
`I.
`
`INTRODUCTION
`
`Patent Owner TQ Delta, LLC (“Patent Owner”) submits this preliminary
`
`response to the Petition filed by Dish, Inc. (“Petitioner”) requesting inter partes
`
`review of claims 6, 11, 16, and 20 of U.S. Pat. No. 8,611,404 (“the ’404 patent”).
`
`This is the second IPR petition filed against the ’404 patent. The first
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`petition, filed in IPR2016-01160 by Arris Group, Inc. (a party similarly situated
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`with Petitioner as a supplier of products accused of infringement in the related
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`litigation identified in the Petition), is awaiting a decision regarding institution. In
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`that petition, Arris challenged at least the same four claims as here. Arris also did
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`so by asserting the same three prior art references (albeit the provisional patent
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`application version of one reference rather than the EP publication, although Patent
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`Owner does not dispute any relevant distinction). Patent Owner submitted a
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`Preliminary Response to Arris’ petition, explaining how it consisted of merely
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`cobbling together unrelated concepts from the three different references, based on
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`only illogical and conclusory rationales. See IPR2016-01160 at Paper 7.
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`This second Petition against the ’404 patent is deficient for similar reasons.
`
`Here, Petitioner raises a single Ground of alleged unpatentability for obviousness.
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`Each of the asserted prior art references, however, differs significantly from the
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`inventions claimed by the ’404 patent. At least two claim elements are missing
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`from each of the asserted prior art references. Petitioner’s attempt to manufacture
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`IPR2016-01470
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`those elements from the prior art—by splitting them up into separate words (to
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`ignore the actual invention) and then tacking together unrelated features from the
`
`prior art—cannot show obviousness. Moreover, Petitioner fails to provide any
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`non-conclusory, non-hindsight reasons for combining or modifying the references.
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`Petitioner also provides no support that persons of ordinary skill in the art would
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`have reasonably expected its proposed modifications would work. At this stage,
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`the Board can decline instituting trial because the Petition is deficient for the
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`following reasons:
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`References Fail to Disclose All Claim Limitations. First, Petitioner’s
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`asserted obviousness combination still fails to disclose at least two limitations
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`required by each of claims 6, 11, 16, and 20. Petitioner has not shown that any of
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`the references discloses an apparatus operable to “[store/storing], in a low power
`
`mode, at least one parameter associated with the full power mode operation
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`wherein the at least one parameter comprises at least one of a fine gain parameter
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`and a bit allocation parameter,” or operable to “[exit/exiting] from the low power
`
`[mode] and [restore/restoring] the full power mode by using the at least one
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`parameter and without needing to reinitialize the transceiver.”
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`Petitioner ignores that the full text of the claims requires intertwined
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`concepts in both of these limitations. For example, Petitioner does not identify any
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`disclosure or teaching in the references of storing a fine gain parameter or bit
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`IPR2016-01470
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`allocation parameter while in low power mode. Rather, Petitioner improperly
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`splits this claim element up into individual words. Petitioner first points to alleged
`
`disclosure in U.S. Pat. No. 5,956,323 (“Bowie”) of a transceiver with a low power
`
`mode, which allegedly stores during that low power mode “loop characteristics”
`
`(i.e., information about the transmission line itself). (See infra at § IV.B.)
`
`Separately, Petitioner points to the 1995 ANSI T1.413 Standard (“ADSL 1995”),
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`which Petitioner concedes does not disclose any low power mode at all, much less
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`any ability to store any parameters in a low power mode. (See id.) Petitioner just
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`alleges that ADSL 1995 discloses the existence of fine gain and bit allocation
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`parameters in general (parameters regarding the information to be transmitted), in
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`an entirely different context. (See id.) Petitioner’s argument is akin to asserting
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`that the first telephone was just an obvious combination of the concepts of
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`electrical wires and sound waves—ignoring necessary teaching or disclosure of
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`intertwining those two concepts.
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`Similarly, Petitioner has not shown that any of the references disclose using
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`stored fine gain or bit allocation parameters to restore full power mode from a low
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`power mode. Petitioner just points to Bowie’s disclosure of using its very different
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`stored “loop characteristics” to allegedly restore full power from a low power
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`mode, and again also points to ADSL 1995’s disclosure of the existence of fine
`
`gain and bit allocation parameters in a different context. Petitioner does not show
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`IPR2016-01470
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`that any of the references discloses the specific, discrete concept of restoring full
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`power mode from low power mode, using stored fine gain or bit allocation
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`parameters.
`
`Obviousness Rationales Are Conclusory and Unsupported. Second,
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`even if Petitioner could cut and paste together all of the limitations of the claims
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`from disparate features in the asserted references, the Petition also fails because
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`Petitioner provides no reasons, supported by evidence and logical underpinnings,
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`for why a person of ordinary skill in the would have made the alleged
`
`combinations or modifications. (See infra at § IV.C.1.)
`
`With respect to the claim requirements of storing, in a low power mode, fine
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`gain or bit allocation parameters, and then using that parameter to restore full
`
`power mode, Petitioner primarily alleges that it would have been obvious to
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`modify Bowie to provide these features simply to comply with the 1995 ADSL
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`standard. (See Pet. at 39-40, 44-45.) But Petitioner’s argument in this regard is
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`nonsensical and a red-herring. Petitioner only points to the 1995 ADSL standard’s
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`disclosure of “exchanging” (not storing) “initialization” information. As Petitioner
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`admits, the 1995 ADSL standard nowhere discloses storing fine gain or bit
`
`allocation parameters while in a low power mode—and it certainly does not
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`disclose that doing so is required for compliance with the standard. (See id.)
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`Indeed, the 1995 ADSL does not even disclose a low power mode at all. (See id.)
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`IPR2016-01470
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`Petitioner’s real argument, therefore, appears to be simply a bare statement in the
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`Petition that it would have been “predictable” to store fine gain or bit allocation
`
`parameters in low power mode, in order to reduce “the time needed to determine
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`loop transmission characteristics.” (See id. at 40.) But Petitioner provides no
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`support or explanation for its claim of predictability. Nor does Petitioner points to
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`any reason—other than hindsight knowledge of the ‘404 patent—for why a person
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`of ordinary skill in the art would have believed that storing the specific claimed
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`parameters in particular would have reduced the time to restore full power mode.
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`Similarly, each of the claims also requires that the apparatus be operable to
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`“[receive/receiving], in the low power mode, a synchronization signal.” Petitioner
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`circularly alleges only that it would have been obvious to add Vanzieleghem’s
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`alleged low-power synchronization signals to Bowie so that Bowie has signals to
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`maintain low-power synchronization. (See infra at § IV.C.1(b).) Petitioner,
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`however, provides no support—just conclusory assumptions—that Bowie even
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`needed synchronization or would benefit from a synchronization signal to begin
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`with. Indeed, Petitioner later argues that Bowie alone already discloses the last
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`element of the claims—the ability to “exit from the low power mode and restore
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`the full power mode . . . without needing to reinitialize the transceiver.” (See Pet.
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`at 43-44.) Namely, Petitioner argues that Bowie is able to resume full power mode
`
`without any further “handshaking” exchange of information. (See id.) But
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`IPR2016-01470
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`Petitioner cannot have it both ways. Either Bowie is able to restore transmission
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`without needing a further exchange of information (and thus already is able to
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`restore full power mode without a synchronization signal, making adding one
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`superfluous) or else Bowie fails to disclose the claimed ability to “restore the full
`
`power mode . . . without needing to reinitialize the transceiver.”
`
`References Are Not Combinable. Third, the Petition also fails to establish
`
`any reasonable expectation of success in combining different bits and pieces from
`
`Bowie, ADSL 1995, and Vanzieleghem. In fact, combining them would change
`
`the fundamental principle of operation of Bowie and/or the proposed combination
`
`would render Bowie inoperable for its intended use. As discussed in detail below,
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`Bowie and Vanzieleghem in particular operate in very different ways—Bowie’s
`
`low power mode comprises shutting down all signal processing, data transmit, and
`
`data receive circuitry (other than a limited resume signal detector). (See infra at §
`
`IV.C.2.) Vanzieleghem, in contrast, discloses a system that can reduce power
`
`depending on the kind of data it is receiving (effective data or idle data). (See id.)
`
`These are two mutually exclusive methods of implementing a low power mode.
`
`(See id.) Trying to shoe-horn Vanzieleghem’s synchronization signal into Bowie,
`
`for example, would run contrary to Bowie’s fundamental principle of operation
`
`and would in fact not even work in Bowie. (See id.)
`
`Accordingly, Petitioner has not carried its burden of showing that any of
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`Patent Owner’s Preliminary Response
`IPR2016-01470
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`claims 6, 11, 16, or 20 are unpatentable. Petitioner has failed to show that any
`
`combination of prior art references expressly or inherently discloses every element
`
`of the claims. With respect to several claim elements, Petitioner relies on
`
`mischaracterizations of the references. And by failing to provide reasoned
`
`underpinnings for alleged obviousness, Petitioner has attempted to flip the burden
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`to the Patent Owner to affirmatively prove patentability. But the burden of proving
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`unpatentability of the challenged claims always rests with the Petitioner without
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`any burden-shifting. See, e.g., Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016
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`U.S. App. LEXIS 13461 (Fed. Cir. July 25, 2016). Should the Board institute
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`review, however, Patent Owner reserves the right to provide further technical
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`evidence and expert testimony as to why Petitioner’s proposed combinations
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`would not have been obvious and/or would not satisfy the elements of the claims.
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`II.
`
`SUMMARY OF THE ’404 PATENT
`
`The ’404 patent is one of a series of patents by the named inventors
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`covering inventions that are applicable to digital subscriber line (“DSL”) and other
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`communications technologies. DSL is a technology that provides high-speed
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`broadband access over the wires of a telephone network.
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`The inventors were and are substantial contributors of core technology to
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`DSL standards on behalf of TQ Delta and its predecessor in interest, Aware, Inc., a
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`world-leading innovator and provider of DSL technologies. Some of the core
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`technologies developed by Aware, including the inventions of the ’404 Patent,
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`have been adopted for use in other communications systems, such as Multimedia
`
`over Coax (“MoCA”), which is used for high-speed communication of content
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`over coaxial cables within a home. Petitioner has used the inventions of the ’404
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`patent in its products.
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`III. CLAIM CONSTRUCTION
`
`Petitioner has proposed constructions for the following terms: “low power
`
`mode” (claims 6, 11, 16), “fine gain parameter” (claims 6, 11, 16), and
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`“transceiver” (claim 6). (See Pet. at 10-11.)
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`Patent Owner submits, however, that no construction of these terms is
`
`required. As illustrated in the arguments below, construction of these terms is not
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`necessary in deciding whether or not to institute trial. See Wellman, Inc. v.
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`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (claim terms need only
`
`be construed “to the extent necessary to resolve the controversy”); EDMIT Indus.,
`
`Inc. v. Smartdoor Holdings, Inc., IPR2015-00013, Paper 31 (P.T.A.B. March 29,
`
`2016) (although Petitioner proposed constructions, Board agreed with Patent
`
`Owner that no constructions were necessary; “we determine that it is not necessary
`
`to construe explicitly any claim terms for purposes of this inter partes
`
`proceeding.”). Even under Petitioner’s proposed constructions, Petitioner has not
`
`shown that the prior art renders any claims of the ’404 patent obvious.
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`Patent Owner’s Preliminary Response
`IPR2016-01470
`IV. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO THE
`SINGLE GROUND RAISED BY PETITIONER—ALLEGED
`OVIOUSNESS OF CLAIMS 6, 11, 16, and 20 UNDER 35 U.S.C. §103
`BY BOWIE, VAZIELEGHEM, AND ADSL 1995
`
`As explained in detail below, the Petition should be denied because it fails
`
`to establish a reasonable likelihood that the challenged claims are unpatentable.
`
`The Petition proposes only one ground against the ’404 patent, asserting
`
`obviousness in view of a combination of three different references:
`
`
`
`Ground 1. Unpatentability of claims 6, 11, 16, and 20 under 35 U.S.C.
`
`§ 103(a) over U.S. Patent No. 5,956,323 to Bowie (“Bowie”), in view of American
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`Nat. Standards Inst. (ANSI) T1.413-1995 Standard, entitled “Network and Customer
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`Installation Interfaces—Asymmetric Digital Subscriber Line (ADSL) Metallic
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`Interface” (“ADSL 1995”) and European Patent Publication No. EP 0883269 to
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`Vanzieleghem (“Vanzieleghem”)
`
`The cited references do not, however, individually or collectively, disclose,
`
`teach, or suggest all of the elements of any of the foregoing claims. Additionally, the
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`Petition also fails to provide sufficient, non-conclusory rationales or reasons for why the
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`separate references would be combined or modified. Further, the Petition fails to
`
`provide any analysis or explanation regarding any alleged reasonable expectation of
`
`success in combining or modifying the references. For at least these and the
`
`following reasons, the Petition fails to establish alleged obviousness.
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`Patent Owner’s Preliminary Response
`IPR2016-01470
`A. The Asserted References Each Provide Very Different (or No)
`Low Power Mode Capabilities and Very Different Methods of
`Restoring Full Power Mode
`
`The three Ground 1 references disclose very different systems having very
`
`different functionalities. As shown below, Bowie discloses an ADSL unit 100 that
`
`includes signal processing electronics 111, modulated data transmit circuitry 112,
`
`modulated data receive circuitry 113, and a resume signal detector 115.
`
`
`
`(Ex. 1004, Bowie at Fig. 1.)
`
`
`
`When Bowie’s ADSL unit 100 receives a shut down signal, the unit 100
`
`enters a low power mode in which the signal processing electronics 111,
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`modulated data transmit circuitry 112, and modulated data receive circuitry 113 all
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`shut down. (See id. at 5:25-28.) The resume signal detector 115 remains
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`operational in order to receive a resume signal. (See id. at 5:48-55.) The unit 100
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`returns to full power after receiving a resume signal. (See id. at 5:60-62.) Bowie
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`does not disclose that the unit 100 is capable of receiving a synchronization signal
`
`when in the low power mode. Bowie also does not disclose that the unit 100 stores
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`a fine gain parameter or a bit allocation parameter when in the low power mode.
`
`Rather, Bowie discloses storing “characteristics of the loop” (e.g., “the loop length,
`
`wire gauge, wire composition, and other factors” of the loop 220)—in other words,
`
`information about the transmission line itself. (See id. at 5:1-24.) Bowie does not
`
`disclose storing any information regarding the data to be transmitted during low
`
`power mode, such as bit allocation parameters or fine gain parameters. (See id.)
`
`The system taught in Vanzieleghem operates differently. Vanzieleghem
`
`discloses a transmitter that reduces power dissipation depending on the type of
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`input data it is being asked to transmit. The input data may be either effective data
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`or idle data. (See Ex. 1005 at 5:33-35.) When effective data is to be transmitted,
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`the transmitter uses all of its carriers (e.g., 256 carriers) to send the data – along
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`with a synchronization symbol – to a receiver. (See id. at 5:66-6:15.) When the
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`transmitter has only idle data to transmit, it reduces power dissipation by
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`transmitting a reduced number of carriers. (See id. at 6:30-41.) If the set of
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`carriers is reduced to a single carrier, the pilot tone is chosen to maintain frequency
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`synchronization with a receiver. See id. Vanzieleghem does not disclose storing in
`
`a low power mode any parameters associated with the full power operation, much
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`less any parameters regarding the data to be transmitted such as bit allocation or
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`fine gain parameters.
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`ADSL 1995, meanwhile, presents the electrical characteristics of ASDL
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`signals appearing at a network interface and the requirements for transmission
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`between a network and customer installation. (Ex. 1006 at 1.) ADSL 1995 does
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`not discuss operation in a low power mode at all. (See id., passim.) Nor does
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`ADSL 1995 disclose storing, in a lower power mode, any parameters regarding the
`
`data to be transmitted, such as fine gain or bit allocation parameters.
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`B.
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`Petitioner Fails to Show That The Combination of References
`Discloses Each Element of the Claims
`
`Where none of the asserted prior art references, alone or in combination,
`
`disclose an element of the claims, inter partes review for obviousness cannot be
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`instituted. See, e.g., Umicore v. UChicago Argonne, LLC, IPR2016-00253
`
`(P.T.A.B. March 14, 2016) (“Because Ohzuku and Numata relate only to single-
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`phase materials, even combining these references with the general knowledge of a
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`POSA would not make claims 1, 8, or 9 of the '143 Patent obvious because none of
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`the references disclose a structurally integrated two-component material.”); Arista
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`Networks, Inc. v. Cisco Systems, Inc., IPR2016-00244 (P.T.A.B. March 3, 2016)
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`(“[N]one of the references asserted by the Petitioner, either alone or in
`
`combination, teach or suggest all of the elements of the challenged independent
`
`claims. As explained below, none of the references ever teach or suggest any
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`conversion of CLI output messages that are generated based on executing a CLI
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`command requested by an XML-formatted input command, which both challenged
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`independent claims 1 and 6 require.”).
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`In analyzing alleged obviousness, claims must be compared “as a whole”
`
`against the prior art—discrete claim elements cannot be broken down and then
`
`pieced together by picking and choosing disparate disclosure from references. See
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`Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (Fed.
`
`Cir. 2005) (obviousness must be analyzed against the claim “as a whole”; “Without
`
`this important requirement, an obviousness assessment might successfully break an
`
`invention into its component parts, then find a prior art reference corresponding to
`
`each component.”); Ex parte Wong, Appeal 2013-010048 (P.T.A.B. March 2,
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`2016) (“The Examiner, improperly, picks disparate pieces of the Fell and Von
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`Kaenel references while using Appellant’s claim as a road map and filling in the
`
`gaps with the knowledge of one of ordinary skill in the art.”).
`
`Here, each of the claims requires (a) “[store/storing], in a low power mode,
`
`at least one parameter associated with the full power mode operation wherein the
`
`at least one parameter comprises at least one of a fine gain parameter and a bit
`
`allocation parameter,” and (b) “[exit/exiting] from the low power mode and
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`[restore/restoring] the full power mode by using the at least one parameter and
`
`without needing to reinitialize the transceiver.” (Ex. 1001, claims 6, 11, 16, 20)
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`Petitioner, however, fails to show that any of Bowie, ADSL 1995, or
`
`Vanzieleghem discloses either of these discrete limitations.
`
`What Petitioner does is improperly split these discrete claim limitations into
`
`smaller pieces in order to distance the claimed invention of the ‘404 from its
`
`individual words. First, Petitioner points to Bowie just for alleged disclosure of
`
`“[store/storing], in a low power mode, at least one parameter associated with the
`
`full power mode operation.” (Pet. at 33-35, 51, 53.) In particular, Petitioner cites
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`to Bowie’s alleged disclosure of a modem having a low power mode. (See Pet. at
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`33-34, citing Ex. 1004, Bowie at 5:18-25, 5:60-66, 7:23-26, 8:8-9, 8:22-25.)
`
`According
`
`to Petitioner, Bowie discloses storing “loop characteristics”
`
`information, and then using that stored loop characteristics information to enable
`
`data transmission to resume more quickly by “reducing the time needed to
`
`determine loop transmission characteristics.” (See id.) This “loop characteristics”
`
`information in Bowie is as an initial matter not “associated with the full power
`
`mode operation”—rather it is limited to information related to the actual
`
`transmission line itself (i.e., information that is independent of full power or low
`
`power mode) such as “loop length, wire gauge, wire composition, and other
`
`factors.” (See Ex. 1004, Bowie at 5:1-24.) But moreover, Petitioner points to
`
`nothing in Bowie that discloses storing the claimed bit allocation parameters or
`
`fine gain parameters, or any sort of information related to the data to be
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`transmitted. (See Pet. at 33-35.) Nor does Petitioner point to anything in Bowie
`
`disclosing the use of such stored information related to the data to be transmitted in
`
`order to restore full power more quickly. (See id.)
`
`Petitioner then separately points to ADSL 1995 for alleged disclosure of “at
`
`least one of a fine gain parameter and a bit allocation parameter.” (See Pet. at 35-
`
`37, 51, 53.)1 However, all Petitioner can do is simply point to disclosure in ADSL
`
`1995, in a vacuum, to allege that the mere existence of bit allocation and fine gain
`
`parameters were known in a completely different context. (See Pet. at 36 (alleging
`
`that ADSL discloses communicating, in full power mode, the “the number of bits
`
`and relative power levels to be used on each DMT sub-carrier”).) Assuming,
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`arguendo, that what Petitioner cites in ADSL 1995 even constitute “bit allocation
`
`parameters” or “fine gain parameters” in the first place, Petitioner does not allege
`
`that they are ever stored on a transceiver. (See id.) Petitioner certainly can point to
`
`                                                            
`1  Petitioner does not allege that Vanzieleghem discloses either the Storing
`
`Limitation or Restoring Full Power Limitation. Although Petitioner alleges that
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`Vanzieleghem also discloses a modem having a low power mode, Petitioner does
`
`not allege that Vanzieleghem discloses storing any parameters or other information
`
`at all to aid in restoring full power mode, much less bit allocation or fine gain
`
`parameters. (See, e.g., Pet. at 33-40.)
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`Patent Owner’s Preliminary Response
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`no disclosure in ADSL 1995 of storing the alleged bit allocation parameters or fine
`
`gain parameters during a low power mode (again, ADSL 1995 discloses no low
`
`power mode). (See id.)
`
`In other words, Petitioner cannot show that any of the Ground 1 references
`
`disclose storing bit allocation or fine gain parameters during a low power mode, or
`
`using such parameters to restore full power mode. So Petitioner misleadingly
`
`breaks up these discrete limitations into smaller sub-parts and makes a different
`
`invalidity argument with respect to each sub-part. Petitioner’s effort to break up
`
`the claim limitations, however, is improper. The “at least one parameter [that]
`
`comprises at least one of a fine gain parameter and a bit allocation parameter”
`
`must be the same “at least one parameter” that is “store[d], in low power mode.”
`
`Thus, those two requirements related to the “at least one parameter” are not
`
`discrete limitations and cannot be separated into disparate references for purposes
`
`of an invalidity analysis. See Umicore, IPR2016-00253 (P.T.A.B. March 14,
`
`2016); Arista, IPR2016-00244 (P.T.A.B. March 3, 2016).
`
`C.
`
`Petitioner Has Not Met its Burden of Showing a Reason to
`Combine Separate Features from the References in the Manner
`Claimed  
`
`Even if Petitioner had shown that all of the elements of the challenged
`
`claims could be satisfied by piecing together and modifying Bowie, ADSL 1995,
`
`and Vanzieleghem, is well established that an invention “composed of several
`
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`Patent Owner’s Preliminary Response
`IPR2016-01470
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`elements is not proved obvious merely by demonstrating that each of its elements
`
`was, independently, known in the prior art.” KSR Int'l Co. v. Teleflex Inc., 550
`
`U.S. 398, 418-19 (2007). Rather, “[o]n a fundamental level, the creation of new
`
`compositions and products based on combining elements from different sources
`
`has long been a basis for patentable inventions.” DDR Holdings, LLC v.
`
`Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014) (emphasis added). See
`
`also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (“[I]nventions in
`
`most, if not all, instances rely upon building blocks long since uncovered, and
`
`claimed discoveries almost of necessity will be combinations of what, in some
`
`sense, is already known.”) (emphasis added).
`
`Therefore, to guard against improper hindsight or conclusory allegations, an
`
`obviousness showing must include “whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue,” and an
`
`analysis of such an apparent reason “should be made explicit”; obviousness
`
`grounds “cannot be sustained by mere conclusory statements.” KSR Int'l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 415-418 (2007) (emphasis added). Put another way,
`
`“obviousness requires the additional showing that a person of ordinary skill at the
`
`time of the invention would have selected and combined those prior art elements in
`
`the normal course of research and development to yield the claimed invention.”
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). The
`
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`Patent Owner’s Preliminary Response
`IPR2016-01470
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`only purported obviousness reasoning or rationales provided in the Petition,
`
`however, wholly fail in this regard.
`
`1.
`
`The Asserted Obviousness Rationales in the Petition Are
`Either Premised on Incorrect Facts, Wholly Conclusory, or
`Consist of Circular Hindsight
`
`(a) Petitioner provides no
`for
`reason
`supported
`modifying Bowie to store ADSL 1995’s alleged data
`parameters during low power mode 
` 
`Petitioner provides no reason supported by rational underpinnings to
`
`combine the asserted references to provide the claimed “[store/storing], in a low
`
`power mode, at least one parameter associated with the full power mode operation
`
`wherein the at least one parameter comprises at least one of a fine gain parameter
`
`and a bit allocation parameter.” Rather, Petitioner’s only asserted reasons for
`
`modifying Bowie to store bit allocation or fine gain parameters during low power
`
`mode, and use those stored parameters to restore full power mode, are based on
`
`smoke and mirror arguments, conclusory statements, or mere hindsight.
`
`Petitioner’s primary argument is that it would have allegedly been obvious
`
`to “combine the bit allocation and fine gain parameter disclosures in the 1995
`
`ADSL Standard with Bowie” because Bowie “must comply with ADSL standards
`
`to function properly.” (Pet. at 39.) Similarly, Petitioner argues that Bowie
`
`“implemented” the 1995 ADSL standard because Bowie discloses that it can use a
`
`Motorola CopperGold chip set, which Petitioner alleges employed the 1995 ADSL
`
` 
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`Patent Owner’s Preliminary Response
`IPR2016-01470
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`standard. (See id. at 40.) But Petitioner’s argument in this regard is based on a
`
`fundamental mischaracterization and distortion of ADSL 1995.
`
`As Petitioner concedes, ADSL 1995 does not disclose or involve in any way
`
`storing bit allocation or fine gain parameters during a low power mode. (See Pet.
`
`at 33-36; Ex. 1006, ADSL 1995 at passim.) Indeed, Petitioner does not even allege
`
`that ADSL 1995 discloses a low power mode at all. (See id.) Therefore,
`
`Petitioner’s implication that a person of ordinary skill in the art would need to store
`
`ADSL’s “C-B&G and R-B&G” parameters during low power mode, in order to
`
`“comply” with the ADSL 1995 standard, is wholly false.
`
`What ADSL 1995 does disclose is only “exchanges” or “communication” of
`
`information (including the C-B&G and R-B&G parameters) between a transceiver
`
`and receiver during full power mode—a wholly different function than storing
`
`information on a transceiver during a low power mode and using that stored
`
`information to restore full power. (See P