UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`DISH Network L.L.C.,
`Petitioner
`
`vs.
`
`TQ Delta, LLC
`
`———————
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 8,238,412
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`TABLE OF CONTENTS
`PETITIONER’S EXHIBIT LIST ......................................................................... iv 
`
`I. MANDATORY NOTICES ............................................................................. 1 
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ............................................................................ 1 
`
`Related Matters ...................................................................................... 1 
`
`Lead and Back-up Counsel and Service Information ........................... 2 
`
`II. GROUNDS FOR STANDING ........................................................................ 3 
`
`III. REQUESTED RELIEF ................................................................................... 3 
`
`IV. REASONS FOR THE REQUESTED RELIEF .............................................. 3 
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Summary of the ’412 Patent .................................................................. 3 
`
`Prosecution History ............................................................................... 5 
`
`Priority Date .......................................................................................... 5 
`
`Summary of the Petition ........................................................................ 6 
`
`Note Regarding Page Citations ............................................................. 7 
`
`V.
`
`IDENTIFICATION OF CHALLENGES AND CLAIM CONSTRUCTION 7 
`
`A.
`
`B.
`
`C.
`
`D.
`
`Challenged Claims ................................................................................ 7 
`
`Statutory Grounds for Challenges ......................................................... 7 
`
`Level of Ordinary Skill in the Art ......................................................... 8 
`
`Claim Construction ............................................................................... 8 
`
`VI.
`
`IDENTIFICATION OF HOW THE CONSTRUED CLAIMS ARE
`UNPATENTABLE ........................................................................................ 10 
`
`A.
`
`Summary of the Prior Art .................................................................... 10 
`
`1.
`
`Summary of Milbrandt .............................................................. 10 
`
`
`
`ii
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`2.
`
`3.
`
`Summary of Hwang .................................................................. 11 
`
`Summary of ANSI T1.413 ........................................................ 12 
`
`B.
`
`Reasons to Combine ............................................................................ 12 
`
`1.
`
`2.
`
`Reasons to Combine Milbrandt with Hwang ............................ 12 
`
`Reasons to Combine Milbrandt/Hwang with ANSI T1.413 ..... 15 
`
`C.
`
`Challenge #1: Claims 1-8, 13, 14, 19, and 20 are rendered obvious
`under 35 U.S.C. § 103 by Milbrandt in view of Hwang and ANSI
`T1.413 .................................................................................................. 19 
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 1 ...................................................................................... 19 
`
`Claim 3 ...................................................................................... 28 
`
`Claim 5 ...................................................................................... 33 
`
`Claim 7 ...................................................................................... 35 
`
`Claim 13 .................................................................................... 37 
`
`Claim 14 .................................................................................... 46 
`
`Claim 19 .................................................................................... 49 
`
`Claim 20 .................................................................................... 51 
`
`Claims 2, 4, 6, and 8 ................................................................. 53 
`
`VII. CONCLUSION .............................................................................................. 55 
`
`VIII. CERTIFICATE OF WORD COUNT .......... Error! Bookmark not defined. 
`
`
`
`iii
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`PETITIONER’S EXHIBIT LIST
`
`May 6, 2016
`
`1001 U.S. Patent No. 8,238,412 to Krinsky et al.
`
`1002 Prosecution File History of U.S. 8,432,956
`
`1003 Prosecution File History of U.S. 8,238,412
`
`1004 Prosecution File History of U.S. 7,835,430
`
`1005 Prosecution File History of U.S. 7,570,686
`
`1006 Prosecution File History of U.S. 6,658,052
`
`1007 U.S. Provisional Application No. 60/224,308
`
`1008 U.S. Provisional Application No. 60/174,865
`
`1009 Declaration of Dr. Sayfe Kiaei Under 37 C.F.R. § 1.68
`
`1010 Curriculum Vitae of Dr. Sayfe Kiaei
`
`1011 U.S. Patent No. 6,636,603 to Milbrandt
`
`1012 U.S. Patent No. 6,891,803 to Chang et al.
`
`1013 U.S. Patent No. 6,590,893 to Hwang et al.
`
`1014 ANSI T1.413-1995 Standard
`
`1015 Charles K. Summers, ADSL STANDARDS, IMPLEMENTATION, AND
`ARCHITECTURE (CRC Press 1999) (selected pages)
`
`1016 Walter Goralski, ADSL AND DSL TECHNOLOGIES (McGraw-Hill 1998)
`(selected pages)
`1017 Harry Newton, Newton’s Telecom Dictionary, 16th Ed. (2000)
`(selected pages)
`
`
`
`iv
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`1018 Valerie Illingworth and John Daintith, THE FACTS ON FILE DICTIONARY
`OF COMPUTER SCIENCE (Market House Books 2001) (selected pages)
`
`1019 Thomas Starr, John M. Cioffi, Peter J. Silverman, Understanding
`Digital Subscriber Line Technology, (Prentice Hall 1999) (selected
`pages)
`
`1020 Andrew S. Tanenbaum, COMPUTER NETWORKS (Prentice Hall 1996)
`(selected pages)
`
`1021 B. P. Lathi, Modern Digital and Analog Communication Systems
`(Oxford University Press 1998) (selected pages)
`
`1022 Behzad Razavi, RF MICROELECTRONICS (Prentice Hall 1997) (selected
`pages)
`
`1023 Declaration of David Bader
`
`
`
`v
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`I. MANDATORY NOTICES
`A. Real Party-in-Interest
`Petitioner DISH Network L.L.C., along with DISH DBS Corporation and
`
`DISH Network Corporation are the real parties-in-interest.
`
`B. Related Matters
`To the best knowledge of the Petitioner, U.S. Patent No. 8,238,412 (“the
`
`’412 Patent”) is involved in the following litigations:
`
`Court Filed
`Number
`1-15-cv-00611 DED
`Jul. 17, 2015
`
`Name
`TQ Delta LLC v. Comcast Cable
`Comms. LLC
`TQ Delta LLC v. CoxCom
`TQ Delta LLC v. DIRECTV
`TQ Delta LLC v. DISH
`TQ Delta LLC v. Time Warner Cable
`TQ Delta LLC v Verizon Comms., Inc.
`Adtran Inc v. TQ Delta LLC
`TQ Delta LLC v. ADTRAN
`ADTRAN v. TQ Delta, LLC
`TQ Delta, LLC v. ZyXEL Comms.
`Corp.
`TQ Delta, LLC v. Pace Americas, LLC 1-13-cv-01835 DED
`TQ Delta LLC v. Zhone Techs. Inc.
`1-13-cv-01836 DED
`
`1-15-cv-00612 DED
`1-15-cv-00613 DED
`1-15-cv-00614 DED
`1-15-cv-00615 DED
`1-15-cv-00616 DED
`1-15-cv-00121 DED
`1-14-cv-00954 DED
`5-14-cv-01381 ALND
`1-13-cv-02013 DED
`
`Jul. 17, 2015
`Jul. 17, 2015
`Jul. 17, 2015
`Jul. 17, 2015
`Jul. 17, 2015
`Feb. 3, 2015
`Jul. 17, 2014
`Jul. 17, 2014
`Dec. 9, 2013
`
`Nov. 4, 2013
`Nov. 4, 2013
`
`The ’412 Patent and related U.S. Patent Nos. 8,432,956 (“the ’956 Patent”)
`
`and 7,835,430 (“the’430 Patent”) are involved in the following related matters:
`
`Name
`Petition for Inter Partes Review of the
`’430 Patent by ARRIS Group, Inc.
`
`Court Filed
`Number
`IPR2016-00428 PTAB
`Jan. 2, 2016
`
`
`
`1
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`Petition for Inter Partes Review of the
`’956 Patent by ARRIS Group, Inc.
`Petition for Inter Partes Review of the
`’412 Patent by ARRIS Group, Inc.
`Petition for Inter Partes Review of the
`’430 Patent by Cisco Systems, Inc.
`Petition for Inter Partes Review of the
`’956 Patent by Cisco Systems, Inc.
`Petition for Inter Partes Review of the
`’412 Patent by Cisco Systems, Inc.
`Petition for Inter Partes Review of the
`’412 Patent by Cisco Systems, Inc.
`
`IPR2016-00429 PTAB
`
`Jan. 3, 2016
`
`IPR2016-00430 PTAB
`
`Jan. 3, 2016
`
`IPR2016-1006
`
`PTAB May 6, 2016
`
`IPR2016-1007
`
`PTAB May 6, 2016
`
`IPR2016-1008
`
`PTAB May 6, 2016
`
`IPR2016-1009
`
`PTAB May 6, 2016
`
`Concurrent with the filing of this Petition, Petitioner is also filing an IPR
`
`Petition for the related ’430 Patent.
`
`C. Lead and Back-up Counsel and Service Information
`
`LEAD COUNSEL
`Heidi L. Keefe (Reg. No. 40,673) / hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`BACK-UP COUNSEL
`Stephen McBride (pro hac vice to be filed) / smcbride@cooley.com
`Dish-TQDelta@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (703) 456-8100
`
`
`
`2
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`
`II. GROUNDS FOR STANDING
`Petitioner certifies that it is not estopped or barred from requesting inter
`
`partes review of the ‘412 Patent because this petition is accompanied by a motion
`
`for joinder. The one-year time bar of 35 U.S.C. §315(b) does not apply to a
`
`request for joinder. 35 U.S.C. § 315(b) (final sentence) (“[t]he time limitation set
`
`forth in the preceding sentence shall not apply to a request for joinder under
`
`subsection (c)”); 37 C.F.R. § 42.122(b).
`
`III. REQUESTED RELIEF
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-8, 13, 14, 19, and 20 of
`
`the ’412 Patent, and cancel these claims as unpatentable.
`
`IV. REASONS FOR THE REQUESTED RELIEF
`As explained below and in the declaration of Dr. Sayfe Kiaei, the concepts
`
`described and claimed in the ’412 Patent were not novel. This Petition and Dr.
`
`Kiaei’s declaration explain where each element is found in the prior art and why
`
`the claims would have been obvious to a person of ordinary skill in the art prior to
`
`the earliest effective priority date.
`
`Summary of the ’412 Patent
`
`A.
`The ’412 Patent describes exchanging diagnostic and test information
`
`between transceivers over a digital subscriber line. Ex. 1001, 1:59-65. The
`
`
`
`3
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`diagnostic and test information are exchanged using multiple carriers with a higher
`
`order quadrature amplitude modulation scheme with more than 1 bit per carrier.
`
`Id., 3:52-56. The information includes power level per subchannel information,
`
`idle channel noise information, and signal to noise ratio information. Id., 6:2-12;
`
`Ex. 1009, p.12-14.
`
`Fig. 1 of the ’412 Patent illustrates a functional block diagram of an
`
`exemplary communication system capable of the claimed techniques.
`
`
`
`Ex. 1001, Fig. 1.
`
`Claims 1, 3, 5, 7, 13, 14, 19, and 20 are each independent claims. Claim 1 is
`
`generally representative:
`
`1. A transceiver capable of transmitting test information over a
`communication
`channel using multicarrier modulation
`comprising:
`
`
`
`4
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`a transmitter portion capable of transmitting a message, wherein the
`message comprises one or more data variables that represent the
`test information, wherein bits in the message are modulated
`onto DMT symbols using Quadrature Amplitude Modulation
`(QAM) with more than 1 bit per subchannel and wherein at
`least one data variable of the one or more data variables
`comprises an array representing power level per subchannel
`information.
`Ex. 1001, 8:45-56.
`
`Prosecution History
`
`B.
`The ’412 Patent was filed on May 13, 2010, with a preliminary amendment
`
`canceling the original claims and presenting new claims 44-64. Ex. 1003, p.808. A
`
`second preliminary amendment added new claims 56-66. In the first Office Action,
`
`the Examiner rejected the claims for nonstatutory double patenting over U.S.
`
`Patent Nos. 7,835,430 and 7,889,784. Id., p.89-104. Following a terminal
`
`disclaimer (id. at 73-83), the Examiner issued a Notice of Allowance for claims 44-
`
`64, without providing a statement of reasons for allowance. Id., p.60-66. The ’412
`
`Patent issued on August 7, 2012.
`
`Priority Date
`
`C.
`The ’412 Patent claims priority to two provisional applications, but the
`
`claims are not entitled to the benefit of either. Provisional Application No.
`
`60/224,308 was filed on August 10, 2000, and names as inventors Murat Belge,
`
`Michael A. Tzannes, and Halil Padir. Ex. 1007, p.1, 3. None of these individuals is
`
`
`
`5
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`named as an inventor on the ’412 Patent. Because there is no overlap of
`
`inventorship, the ’412 Patent is not entitled to the benefit of the filing date of the
`
`‘308 Application. 35 U.S.C. § 119(e)(1); MPEP 211.01(a).
`
`Provisional Application No. 60/174,865 was filed on January 7, 2000, and
`
`describes “bits that are modulated by using 1 bit per DMT symbol modulation.”
`
`Ex. 1008 at 5. The application, however, does not describe using Quadrature
`
`Amplitude Modulation (QAM) with more than 1 bit per subchannel or an array
`
`representing power level per subchannel information, as required by the claims of
`
`the ’412 Patent. Accordingly, the ’412 Patent is not entitled to the benefit of the
`
`filing date of the ’865 Application. 35 U.S.C. § 119(e)(1); MPEP 211.05.
`
`Summary of the Petition
`
`D.
`Testing a communication line for its ability to support digital subscriber line
`
`(DSL) services, and exchanging test information, were not new as of the ’412
`
`Patent’s effective filing date in 2001. Specifically, the prior art recognized that a
`
`DSL communication link needed to measure the transmission characteristics of the
`
`telephone line over which it operates. Since DSL is a multicarrier communication
`
`technology, and since the transmission characteristics can vary significantly over
`
`the different carrier frequencies available, the prior art also recognized that the
`
`measurements should include separately measuring the noise and power of each
`
`carrier frequency. DSL standards had also adopted the transmission of data using
`
`
`
`6
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`quadrature amplitude modulation (QAM) with more than 1 bit per subchannel.
`
`Because the ‘412 Patent’s claims use the prior-art communication technology to
`
`exchange information gathered using prior-art line measurements, the claims are
`
`unpatentable and should be canceled.
`
`E. Note Regarding Page Citations
`For exhibits that include suitable page numbers in their original publication,
`
`Petitioner’s citations are to those original page numbers and not to the page
`
`numbers added for compliance with 37 C.F.R. § 42.63(d)(2)(ii).
`
`V.
`
`IDENTIFICATION OF CHALLENGES AND CLAIM
`CONSTRUCTION
`A. Challenged Claims
`Claims 1-8, 13, 14, 19, and 20 of the ’412 Patent are challenged in this
`
`Petition.
`
`B.
`Statutory Grounds for Challenges
`Challenge #1: Claims 1-8, 13, 14, 19, and 20 are obvious under 35 U.S.C. §
`
`103(a) over U.S. Patent No. 6,636,603 to Milbrandt (“Milbrandt,” Ex. 1011) in
`
`view of U.S. Patent No. 6,590,893 to Hwang et al. (“Hwang,” Ex. 1013), and
`
`further in view of American National Standards Institute (ANSI) T1.413-1995
`
`Standard, entitled “Network and Customer Installation Interfaces—Asymmetric
`
`Digital Subscriber Line (ADSL) Metallic Interface,” (“ANSI T1.413,” Ex. 1014).
`
`Ex. 1009, p.47.
`
`
`
`7
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`Milbrandt was filed on July 30, 1999, and Hwang was filed on April 7,
`
`1999. Both references are prior art at least under § 102(e). ANSI T1.413 was
`
`approved on August 18, 1995, published shortly thereafter, and is prior art under
`
`§ 102(b). Ex. 1009, pp. 33-34; Ex. 1023, ¶ 2. Also, the additional evidentiary
`
`references relied upon by Dr. Kiaei in his declaration were also publicly available.
`
`See, e.g., Ex. 1023 at ¶¶ 3-9.
`
`C. Level of Ordinary Skill in the Art
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, the person of ordinary skill
`
`in the art is someone knowledgeable concerning multicarrier communications.
`
`That person would have (i) a Master’s degree in Electrical and/or Computer
`
`Engineering, or equivalent training, and (ii) approximately five years of experience
`
`working in multicarrier telecommunications. Ex. 1009, p.15-16. Lack of work
`
`experience can be remedied by additional education, and vice versa. Id. at 15.
`
`D. Claim Construction1
`This Petition analyzes the claims consistent with their broadest reasonable
`
`interpretation in light of the specification. See 37 C.F.R. § 42.100(b). Claim terms
`
`not discussed below are to be given their broadest reasonable interpretation, as
`
`1 1 It is noted that there are other relevant terms that are discussed by Dr. Kiaei in
`his declaration at Ex. 1009, p.25-29.
`
`
`
`8
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`understood by one of ordinary skill in the art consistent with the disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`“during Showtime” (claim 15): The term “during Showtime” is described in
`
`the specification as “during showtime, e.g., the normal steady state transmission
`
`mode, or the like.” Ex. 1001, 3:32-34. Showtime is a term of art used in ADSL
`
`ANSI-T1.413 communication standards. Ex. 1009, p.22. After a communication
`
`link is tested, “each modem notifies its peer that it is ready to enter normal
`
`communications, known in the standard as ‘showtime.’” Ex. 1019, p.379; see also
`
`Ex. 1014, p.108. Consistent with the specification’s description and with its special
`
`meaning as a term of art, and for the purposes of this proceeding, a POSITA would
`
`have understood that the broadest reasonable interpretation of “during Showtime”
`
`includes “during normal communications of an ANSI T1.413-compliant device.”
`
`Ex. 1009, p.22.
`
`“array” (claims 9-12, 15-18, 21): The ‘412 Patent uses this term according
`
`to its ordinary meaning. See Ex. 1001, 4:42-45. Contemporary dictionaries define
`
`“array” to mean an “ordered collection of identical structures” (Ex. 1017, p.71) or
`
`a “collection of data items . . . [that are] arranged in a particular order or pattern
`
`and are all of the same type.” Ex. 1018, p. 9. Consistent with the specification’s
`
`description and for the purposes of this proceeding, a POSITA would have
`
`
`
`9
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`understood that the broadest reasonable interpretation of “array” includes “an
`
`ordered collection of multiple data items of the same type.” Ex. 1009, p. 22-23.
`
`“transceiver” (claims 9-12, 15-18, 21): The word “transceiver” is a
`
`combination of the words transmitter and receiver. Ex. 1009, p.24. The ‘412 Patent
`
`“refer[s] to the transceivers generically as modems.” Ex. 1001, 1:59-65. Consistent
`
`with the specification’s description and for the purposes of this proceeding, a
`
`POSITA would have understood that the broadest reasonable interpretation of
`
`“transceiver” includes “a device, such as a modem, with a transmitter and
`
`receiver.” Ex. 1009, p.24-25; Ex. 1017, p.913.
`
`VI.
`
`IDENTIFICATION OF HOW THE CONSTRUED CLAIMS ARE
`UNPATENTABLE
`
`Claims 1-8, 13, 14, 19, and 20 of the ’412 Patent are obvious under 35
`
`U.S.C. § 103(a) over Milbrandt, Hwang, and ANSI T1.413. Ex. 1009, p. 47.
`
`A.
`
`Summary of the Prior Art
`1.
`Milbrandt describes technology that allows a digital subscriber line (DSL)
`
`Summary of Milbrandt
`
`service provider to test the telephone lines used to deliver service to its customers.
`
`Milbrandt’s system collects measurements of “line noise” and other characteristics
`
`using devices located at the customers’ premises. Ex. 1011, Abstract. The noise
`
`measurements and other information are transmitted from the customers’ premises
`
`to the service provider’s central office over the same telephone lines used to
`
`
`
`10
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`provide DSL service. Id., 11:38-53. Milbrandt describes using the collected
`
`measurements for various purposes, including determining a transmit power level
`
`for the modems providing DSL services and estimating the data rate capacity of the
`
`subscriber lines. Id., Abstract, 3:17-24, 10:18-24; Ex. 1009, p.30.
`
`Milbrandt further describes how DSL services can provide for high speed
`
`data transmission and Internet access. Id., 1:30-39. The communication
`
`components in Milbrandt’s network use “ADSL [asymmetric DSL] techniques that
`
`comply with ANSI Standard T1.413, such as discrete multi tone (DMT)
`
`modulation” to transmit and receive messages. Id., 9:33-34; Ex. 1009, p.30-31.
`
`Summary of Hwang
`
`2.
`Hwang similarly describes a “network using discrete multi-tone (DMT)
`
`technology.” Ex. 1013, 4:58-59. More specifically, Hwang describes “higher-rate
`
`digital subscriber line communication schemes capable of utilizing twisted pair
`
`wiring from an office or other terminal node of a telephone network to the
`
`subscriber premises.” Id., 2:23-27. Like Milbrandt, Hwang employs ADSL
`
`techniques, and Hwang explains that ADSL uses discrete multi-tone (DMT)
`
`technology to divide the available frequency range into 256 distinct carriers, or
`
`tones. Id., 3:3-5; Ex. 1011, 9:31-34. Within each carrier, data is encoded using
`
`quadrature amplitude modulation (QAM) signals. Ex. 1013, 3:1-3. These
`
`techniques provide “effective high-speed data communications over twisted pair
`
`
`
`11
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,238,412
`
`wiring between customer premises and corresponding network-side units, for
`
`example located at a central office of the telephone network.” Id., 3:15-19; Ex.
`
`1009, p.32-33.
`
`Summary of ANSI T1.413
`
`3.
`ANSI T1.413 defines the standard electrical characteristics and signals used
`
`in ADSL communications. Ex. 1014, Abstract. It also specifies the minimum
`
`requirements for equipment implementing ADSL. Id.; Ex. 1009, p.34. Among the
`
`features of ADSL is the encoding to data into discrete multitone (DMT) symbols.
`
`Ex. 1014, p.23-34. Within each DMT subchannel, an ADSL transmitter encodes a
`
`variable number of bits of data using a constellation encoder. Id., p.43-45. The
`
`constellation encoder of ANSI T1.413 performs quadrature amplitude modulation
`
`(QAM). Ex. 1009, p.34; Ex. 1016, p.188.
`
`B. Reasons to Combine
`1.
`Reasons to Combine Milbrandt with Hwang
`Milbrandt describes communicating via digital subscriber line (DSL)
`
`techniques, including Asymmetrical Digital Subscriber Line (ADSL). Ex. 1011,
`
`9:31-34. Hwang is similarly directed toward DSL communications to provide data
`
`services using a subscriber’s existing twisted-pair copper telephone wiring. Ex.
`
`1013, 2:30-36. Hwang further describes the data modulation techniques employed
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`by ADSL modems. As Hwang explains, “ADSL services utilize[] discrete multi-
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`tone (DMT) technology.” Id., 2:66-67. Hwang provides additional details about
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`ADSL services, beyond those expressly disclosed in Milbrandt, by explaining that
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`multitone (DMT) symbols are modulated using quadrature amplitude modulation
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`(QAM). Id., 2:67-3:3. This modulation technique allows up to 15 bits of data to be
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`transmitted with each symbol. Id., 3:11-12; Ex. 1009, pp.40-41.
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`A person of ordinary skill in the art would have found it obvious to combine
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`the teachings of Milbrandt and Hwang because Hwang provides additional details
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`of ADSL communication technology. Ex. 1009, p.41. Because Milbrandt and
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`Hwang describe different aspects of the same ADSL communication technology, a
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`person of ordinary skill in the art would have found it obvious to refer to all of
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`their teachings in implementing an ADSL communication system for the purpose
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`of obtaining a more complete understanding. Id.
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`Accordingly, it would have been obvious to a person of ordinary skill in the
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`art at the time to utilize up to 15 bits for each subchannel, as Hwang teaches, in the
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`communication system of Milbrandt, for the purpose of transmitting more data on
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`each subchannel. Ex. 1009, p.41. Also, it would have been obvious to transmit
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`Milbrandt’s message (including the subscriber line information) by modulating bits
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`onto DMT symbols using QAM with up to 15 bits of data for each subchannel,
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`because it would allow for utilization of the communications channel already
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`established, which uses up to 15 bits of data for each subchannel, and allow for
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`transmitting more data on each subchannel. Id., pp. 41-42. Doing so would have
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`resulted in a system that is overall more efficient and has higher throughput. Id.,
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`p.42. A person of ordinary skill would have understood that transmitting data at a
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`higher throughput would have practical implications such as improving service for
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`customers and making the system as whole commercially desirable in the
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`marketplace. Id.
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`In short, the combination of Hwang with Milbrandt is nothing more than
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`applying Hwang’s known technique (i.e., using up to 15 bits per subchannel) to the
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`DSL system of Milbrandt that uses DMT/QAM, for the purpose of yielding
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`predictable results (e.g., transmitting data more efficiently, increasing throughput,
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`improving service for customers, and making the system as whole commercially
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`desirable in the marketplace.) Ex. 1009, p.42; See, e.g., Dystar Textilfarben GmbH
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`& Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, (Fed. Cir. 2006)
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`(“Indeed, we have repeatedly held that an implicit motivation to combine exists not
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`only when a suggestion may be gleaned from the prior art as a whole, but when the
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`‘improvement’ is technology-independent and the combination of references
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`results in a product or process that is more desirable, for example because it is
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`stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.
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`Because the desire to enhance commercial opportunities by improving a product or
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`process is universal—and even common-sensical—we have held that there exists
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`in these situations a motivation to combine prior art references even absent any
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`hint of suggestion in the references themselves.”).
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`Reasons to Combine Milbrandt/Hwang with ANSI T1.413
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`2.
`A person of ordinary skill in the art would have found it obvious to combine
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`the teachings of Milbrandt and Hwang with the teachings of ANSI T1.413 because
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`both Milbrandt and Hwang describe ADSL communication systems, and ANSI
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`T1.413 defines the ADSL communication standard. Ex. 1009, pp.42-43. Because
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`Milbrandt and Hwang implement the technology standardized by ANSI T1.413, a
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`person of ordinary skill in the art would have referred to the ANSI T1.413
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`document for additional details about how the ADSL communication equipment
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`should function in accordance with the standard. Id.
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`Additionally, Milbrandt specifically describes “using ADSL techniques that
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`comply with ANSI Standard T1.413.” Ex. 1011, 9:33-34. Hwang similarly refer to
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`details of the ADSL standard set by ANSI. Ex. 1013, 3:5. These explicit references
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`in Milbrandt and Hwang would have directed the skilled artisan to combine those
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`teachings with the teachings of ANSI T1.413. Ex. 1009, p.43.
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`Accordingly, a person of ordinary skill in the art would have utilized the
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`teachings of ANSI T1.413, in the communication system represented by the
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`combination of Milbrandt and Hwang for the purpose making its devices and
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`system compliant with the ANSI T1.413—which Milbrandt explicitly references as
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`a desirable feature. Ex. 1009, p.43.
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`For example, with respect to noise information, ANSI T1.413 teaches that
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`the subscriber modem determines and provides a signal to noise ratio (SNR) to the
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`central office modem on demand for the purpose of system testing to thereby
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`improve signal quality and reliability. Ex. 1014, p.103. It would have been obvious
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`to a person of ordinary skill in the art to have Milbrandt’s subscriber modem to
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`determine and transmit to the central office modem its SNR on demand (as ANSI
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`T1.413 teaches), because it would facilitate system testing, improve signal quality
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`and reliability, and allow for Milbrandt’s system to comply with the ANSI T1.413
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`standard. Ex. 1009, pp.43-44.
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`As another example, ANSI T1.413 teaches that the subscriber modem
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`determines a power level per sub-carrier based on a REVERB signal received from
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`the central office modem. Ex. 1014, p.87, 94-95. It would have been obvious to a
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`person of ordinary skill in the art to have Milbrandt’s subscriber modem determine
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`its power level based on a REVERB signal (as ANSI T1.413 teaches), because
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`determining the power level per sub-carrier would allow the subscriber modem of
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`Milbrandt to adjust its gains to appropriate levels, allow the subscriber modem to
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`send back upstream to the central office modem the power levels to be used on
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`each DMT sub-carrier, and make Milbrandt’s system compliant with the ANSI
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`T1.413 standard. Ex. 1009, p.44.
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`Making Milbrandt’s system compliant with the ANSI T1.413 standard
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`would be desirable because it would allow for interoperability with other devices
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`that are ANSI T1.413 standard compliant, make the overall system more robust
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`since it has been developed through an accredited consensus process represented
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`by the ANSI T1.413 standard, and also make the system as whole commercially
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`desirable in the marketplace. Ex. 1009, p.44.
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`Along with looking to the ANSI T1.413 standard for its specific
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`requirements to be standard compliant, a person of ordinary skill in the art would
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`have looked to ANSI T1.413 to gain a better understanding of how
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`communications are performed in general. Ex. 1009, p.45. In one instance, with
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`respect to communications, ANSI T1.413 teaches that the modems transmit in an
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`orderly manner an array indexed by the sub-carrier number i to the upstream
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`central office modem. Ex. 1014, p.107, 110.
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`A person of ordinary skill in the art would have recognized and it would
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`have been obvious to transmit information pertaining to sub-carrier frequencies as
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`an array (as ANSI T1.413 teaches), because it would have allowed for the
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`information to be transmitted in an ordered manner and allow the receiving modem
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`to receive and access the information on a per sub-carrier basis, without the need
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`for additional processing or reordering of the received information. Ex. 1009, p.45.
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`A skilled artisan would have recognized that such an approach would minimize
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`CPU utilization and provide an overall more efficient and organized
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`communication approach. Id.
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`In short, the combination of ANSI T1.413 with the system represented by
`
`the combination of Milbrandt and Hwang is nothing more than applying the ANSI
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`T1.413’s known techniques (i.e., using a standardized approach and transmitting
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`data in array format on a per sub-carrier basis) to the DSL system of Milbrandt that
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`seeks to comply to the ANSI T1.413 standard, for the purpose of yielding
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`predictable results (e.g., facilitating system testing, improving signal reliability,
`
`allowing for gain adjustments to an appropriate level, allowing the subscriber
`
`modem to send back upstream to the central office modem the power levels to be
`
`used on each DMT sub-carrier, allowing for interoperability with other devices that
`
`are standard compliant, minimizing CPU utilization, providing an overall more
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`efficient and organized communication approach, making the system more robust,
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`and making the system as whole commercially desirable in the marketplace.) Ex.
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`1009, pp.45-46; See e.g., Dystar Textilfarben GmbH & Co. Deutschland KG v.
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`C.H. Patrick, 464 F.3d 1356, 1368, (Fed. Cir. 2006).
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