us to. 0V
`Trials
`571-272-7822
`
`Paper 18
`Entered: May 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE 2
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`2WIRE, INC.,
`Petitioner,
`
`V.
`
`TQ DELTA LLC,
`Patent Owner.
`
`Case IPR2015-00242
`
`Patent 8,218,610 B2
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`’
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review '
`37 C.F.R. §~42.108
`
`DISH
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`

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`IPR2015-00242
`
`Patent 8,218,610 B2
`
`Petitioner 2Wire, Inc. filed a Petition (Paper 2, “Pet.”) to institute an
`
`inter partes review of claims 1, 6, 7, and 31 of U.S. Patent No. 8,218,610 B2
`
`(Ex. 1001, “the- ’610 patent”) pursuant to 35 U.S.C. §§ 311-19. Patent
`
`Owner TQ Delta LLC filed a Preliminary‘ Response (Paper 11, “Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314. Pursuant to 35 U.S.C.
`§ 314(a), the Director may not authorize an inter partes review ‘unless the
`
`information in the petition and preliminary response “shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`
`we have decided not to institute an inter partes review.
`
`I. BACKGROUND
`
`‘ A. The ’610 Patent
`
`The ’610 patent pertains to multicarrier communications systems,
`
`such as digital subscriber line (DSL) systems using discrete multitone
`modulation (DMT), where a transmitter communicates over a
`
`communication channel by modulating “[c]arrier signals (carriers) or
`
`sub-channels spaced within a usable frequency band of the communication
`
`channel.” Ex. 1001, col. 1, 11. 32-38. In such a system, the phase and
`
`amplitude of the modulated carrier signals typically “can be considered
`
`random” because they “result from the modulation of an arbitrary sequence
`
`of input data bits comprising the transmitted information.” Id. at col. 1,
`
`11. 47-51. In some situations, however, the phases of the modulated carriers
`
`may combine to produce a spike in the transmitted signal, which increases
`
`the peak-to-average power ratio (PAR) of the signal, i.e., the “ratio of the
`
`instantaneous peak value (i.e., maximum magnitude) of a signal parameter
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`Patent 8,218,610 B2
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`(e.g., voltage, current, phase, frequency, power) to the time-averaged value
`
`of the signal parameter.” Id. at col. 1, l. 59—col. 2, l. 24. According to the
`
`’61O patent, PAR is an important consideration in designing a DMT
`
`communication system because an increased PAR can result in high power
`
`consumption or clipping of the transmission signal. Id. at col. 2, 11. 7-26.
`
`Therefore, there was a need in the art for a system that can “effectively
`
`scramble the phase of the modulated carrier signals in order to provide a low
`
`PAR for the transmission signal.” Id. at col. 2, ll._27——29.
`Figure 1 of the ’610 patent is reproduced below.
`
`Figure 1 above depicts transceiver 10 communicating transmission signal 38
`
`over communication channel 18 (e. g., a pair of twisted wires of a telephone
`
`line) to remote transceiver 14. Id. at col. 3, 11. 24-49. Quadrature amplitude
`
`modulation (QAM) encoder 42 maps input serial data bit stream 54 in the
`
`time domain into parallel QAM symbols 58 in the frequency domain. Id. at
`
`col. 3, 11. 62-67. Modulator 46 modulates each carrier signal with a different
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`QAM symbol 58 so that the signals have the phase and amplitude associated
`
`with the respective QAM symbol 58 (and input serial bit stream 54). Id. at
`
`col. 4, ll. 9-21. Phase scrambler 66 in modulator 46 calculates a phase shift
`for each carrier signal and combines the calculated phase shift with the
`
`phase characteristic of the respective carrier signal. Id. at col. 4, l. 47—col. 5,
`
`l. 3, col. 6, 11. 40-53. Phase scrambler 66 calculates the phase shift for a
`
`carrier signal by (1) determining one or more values “independently of the
`
`QAM symbols 58, and, therefore, independently of the bit value(s)
`
`modulated onto the carrier signal,” and (2) solving a “predetermined
`
`equation” using the value associated with the carrier signal. Id. at col. 4,
`
`11. 47-52, 63-66. For example, the value for a carrier signal may be
`
`“derived from one or more predefined parameters, such as a pseudo-random
`
`number generator.” Id. at col. 4, 11. 52-57. According to the ’610 patent, the
`
`use of a value determined independently of the input bit values results in a
`
`lower PAR for the transmission signal. Id. at col. 2, l. 33—col. 3, l. 2.
`Transceiver 10 combines all of the carrier signals to form the transmission
`
`signal that is sent to remote transceiver 14. Id. at col. 8, 11. 13-18.
`
`B. Illustrative Claim
`
`Claim 1 of the ’610 patent recites:
`
`1. A method, in a first transceiver that uses a plurality of
`carrier signals for receiving a bit stream that was transmitted by
`a second transceiver, wherein each carrier signal has a phase
`characteristic associated with the bit stream,
`the method
`
`comprising:
`
`_
`
`receiving the bit stream from the second transceiver,
`wherein:
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`is associated with a value
`each carrier signal
`determined independently of any bit value of the bit
`stream carried by that respective carrier signal, the value
`associated with each carrier signal determined by a
`pseudo-random number generator,
`
`a phase shifi for each carrier signal is at least based
`
`on:
`
`the value associated with that carrier signal, and
`
`the combining of a phase for each carrier signal
`with the phase characteristic of that respective _carrier
`signal
`so as
`to substantially scramble
`the phase
`characteristics of the plurality of carrier signals, and
`
`corresponding to the
`signals
`multiple carrier
`plurality of phase shifted and scrambled carrier signals
`are used by the first transceiver to demodulate a same bit
`value of the received bit stream; and
`
`wherein:
`
`the first and second transceivers communicate over
`
`one or more of a pair of twisted wires of a telephone
`subscriber line and fiber optic, and
`
`the first and second transceivers transport video.
`
`C. The Prior Art
`
`Petitioner relies on the following prior art:
`
`U.S. Patent No. 5,694,415,
`
`issued Dec.
`
`2,
`
`1997
`
`(Ex. 1009, “Suzuki ’415”);
`
`U.S. Patent No. 5,903,614,
`(Ex. 1003, “Suzuki ’614”);
`
`issued May 11,
`
`1999
`
`U.S. Patent No. 6,301,268 B1,
`issued Oct. 9, 2001 (Ex. 1004, “Laroia”);
`
`filed Mar. 10, 1998,
`
`U.S. Patent No. 6,781,951 B1, filed Oct. 22, -1999, issued
`Aug. 24, 2004 (Ex. 1008, “Fifield”);
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`IPR2015-00242
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`Patent 8,218,610 B2
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`TR-004,
`REPORT
`TECHNICAL
`ANSI
`MIGRATION 1997 (Ex. 1014, “TR-004”); and
`
`NETWORK
`
`ANSI T1.413-1998, DRAFT AMERICAN NATIONAL
`STANDARD FOR
`TELECOMMUNICATIONS, NETWORK ‘AND
`CUSTOMER INSTALLATION INTERFACES—ASYMMETRIC DIGITAL
`SUBSCRIBER LINE (ADSL)
`‘METALLIC INTERFACE
`(John
`Bingham & Frank Van der Putten, eds., 1998) (Ex. 1006,
`“T1.413”).
`
`D. The Asserted Grounds
`
`Petitioner challenges claims 1, 6, 7, and 31 of the ’610 patent on the
`
`following grounds:
`
`'
`
`T1413, Laroia, Suzuki ’415,
`and TR-004
`
`35 U.S.C.1§ 103(a)
`
`T1.413, Fifield, Suzuki ’415,
`and TR-004
`
`35 U.S.C. § 103(a)
`
`T1.413, Suzuki ’614,
`Suzuki ’415, and TR-004
`
`35 U.S.C. § 103(a)
`I
`
`E. Claim Interpretation
`
`The Board interprets claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs,
`
`LLC, 778 F.3d 1271, 1278-82 (Fed. Cir. 2015). Petitioner argues that no
`
`terms in claims 1, 6, 7, and 31 require interpretation. Pet. 14. Patent Owner
`
`A proposes interpretations for two phrases: “a value determined independently
`
`of any bit value” and “multiple carrier signals corresponding to the plurality
`
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`of phase shifted and scrambled carrier signals are used by the first
`
`'
`
`transceiver to demodulate a same bit value of the received bit stream.”
`
`Prelim. Resp. 10-16. After reviewing the parties’ papers, we determine that
`
`no claim terms require express interpretation for purposes of this Decision.
`
`11. DISCUSSION
`
`A. Obviousness Based on 17,413, Laroia, Suzuki ’4I5, and TR-004
`
`Petitioner contends that claims 1, 6, 7, and 31 are unpatentable over
`
`T1.413, Laroia, Suzuki ’415, and TR-004 under 35 U.S.C. § 103(a). Pet.
`
`26-33. Petitioner relies on T1.413 and Laroia for the limitations recited in
`
`the preamble of independent claims 1 and 311 (eg, first and second
`
`transceivers, carrier signals), relies on T1.413 alone for the step of
`
`“receiving the bit stream from the second transceiver,” and relies on “T1 .413
`
`in combination with Laroia and Suzuki ’41S” for the limitations of “each
`
`carrier signal [being] associated with a value determined independently of
`
`any bit value of the bit stream carried by that respective carrier signal,” a
`
`phase shift based on the value associated with the carrier signal, and
`
`scrambling the phase characteristics of the carrier signals. Id. at 26-28.
`
`Petitioner further cites T1.413 and Laroia for the limitation of using the
`
`multiple carrier signals to demodulate the “same bit value of the received bit
`
`stream,” cites T1.413 for the limitations of communication over a “pair of
`
`twisted wires of a telephone subscriber line and fiber optic” and transporting
`
`video, and cites T1.413»and TR-O04 for the limitation of using the
`
`1 Claims land 31 are .identical but for the recitation in claim 1 that the first
`and second transceivers “transport video,” whereas claim 31 recites that they
`“are used for intemet access.”
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`transceivers for intemet access. Id. at 28-29. Petitioner provides a claim
`
`chart citing various portions of T1 .413, Laroia, and Suzuki ’415, and states
`
`that the claim chart is supported by the Declaration of Krista S. Jacobsen,
`
`Ph.D. Id. at 26, 30-33 (citing Ex. 1002 111] 162-242, App. B1).
`
`We are not persuaded that Petitioner has established a reasonable
`
`likelihood of prevailing on its asserted ground based on T1.413, Laroia,
`
`Suzuki ’415, and TR-004. “Section 103(a) forbids issuance of a patent when
`‘the differences between the subject matter sought to be patented and the
`
`prior art are such that the subject matter as a whole would have been obvious
`
`at the time the invention was made to a person having ordinary skill in the
`
`art to which said subject matter pertains.”’ KSR Int 7 Co. v. Teleflex Inc. ,
`
`550 U.S. 398, 405 (2007). A patent claim, however, “is not proved obvious
`
`merely by demonstrating that each of its elements was, independently,
`
`known in the prior art.” Id. at 418. “Rather, 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).
`For an obviousness analysis, “it can be important to identify a reason that
`
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does.” KSR,
`‘CC
`
`550 US. at 418. Further, an assertion. of obviousness
`
`cannot be sustained
`
`by mere conclusory statements; instead, there must be some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.’” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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`Petitioner does not explain sufficiently in the Petition why a person of
`
`ordinary skill in the art would have had reason to combine the teachings of
`
`T1 .413, Laroia, Suzuki ’415, and TR-004 to achieve the methods of claims
`
`1, 6, 7, and 31, for three reasons.
`
`First, with respect to Laroia, Petitioner argues as follows:
`
`It would have been obvious to combine the network
`
`them with the
`structures disclosed in Tl.413 to implement
`‘multicarrier modulation and transmission systems disclosed in
`. Laroia. As would have been appreciated by a person having
`ordinary skill
`in the art at the time of the alleged invention,
`T1.413 is the standard for ADSL [asymmetric digital subscriber
`line], which describes operations performed by ADSL
`transceivers (referred to as the ATU-C and ATU-R).
`
`'
`
`Pet. 28-29 (citations omitted). Petitioner’s statement that it “would have
`
`been obvious” to implement “the network structures” disclosed in T1.413
`
`with “the multicarrier modulation and transmission systems” of Laroia is
`
`conclusory and does not demonstrate a reason to combine. See KSR, 550
`
`U.S. at 417-18; Unigene, 655 F.3d at 1360; In re Chaganti, 554 F. App’x
`
`917, 922 (Fed. Cir. 2014) (“It is not enough to say that there would have
`
`been a reason to combine two references because to do so would ‘have been
`
`obvious to one of ordinary skill.’ Such circular reasoning is not sufficient
`
`. ——more is needed to sustain an obviousness rejection.” (citation omitted)).
`
`Petitioner’s other statement also is unpersuasive. The fact that T1.413 was a
`
`standard for ADSL does not explain sufficiently why a person of ordinary
`
`skill in the art would have combined its teachings with features of Laroia’s
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`particular system, such as assigning a multiplier via random assignment, as
`
`Petitioner contends.2 See Pet. 27, 30-31.
`
`Second, with respect to Suzuki ’415,’Petitioner argues that “[i]t would
`
`have been obvious to one of ordinary skill in the art to combine the
`teachings of T1.413iand Laroia with Suzuki ’415, because Suzuki ’415
`
`supplies a method for generating the random numbers disclosed in Laroia.”
`
`Id. at 27. The mere fact that Suzuki ’415 discloses “a method” (i.e., one
`
`particular way) of generating random numbers does not establish a sufficient
`
`reason why an ordinarily skilled artisan would have looked to Suzuki ’415’s '
`
`method of random number generation (as opposed to any other, for
`
`instance), when contemplating modifying the combination of T1 .413 and
`
`' Laroia. Accordingly, Petitioner has not set forth, in the Petition, a rationale
`
`for combining the random number calculations of Suzuki ’415 with T1.413
`
`and Laroia in reaching a conclusion of obviousness.
`
`Third, even assuming that Petitioner had provided a sufficient
`
`rationale to combine T1.413, Laroia, and Suzuki ’415, Petitioner has not
`
`provided any reason to combine the teachings of those references with
`
`TR-O04. Petitioner’s asserted ground is based on the combination of all four
`
`references, but the only mention of TR-O04 in the asserted ground is that,
`
`2 Petitioner also argues, in asserting that its three asserted grounds are not
`redundant to each other, that “Laroia teaches that [its] technique is
`applicable in an ADSL system, such as that of the ADSL standard known as
`T1.413.” Pet. 24. To the extent Petitioner may contend that this is a reason
`for combining the teachings of Laroia and T1 .413, we note that mere
`suggestion that a technique is applicable in an ADSL system, including that
`disclosed in T1.413, does not explain sufficiently why or how a person of
`ordinary skill in the art would have considered combining them. Petitioner
`s also does not point to where Laroia allegedly teaches that its technique can
`be applied in an ADSL system. See id.
`
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`with respect to claim 31, “TR-004 filrther discusses ADSL network
`
`migration options including standardized ADSL that uses DMT .
`
`.
`
`. and that
`
`accesses the intemet.” Id. at 29. Petitioner does not identify any reason why
`
`a person of ordinaiy skill in the art would have combined any teachings of
`
`TR-004 with those of the other cited references, or explain what specific
`
`features from TR-004 would be combined. Accordingly, Petitioner has not
`
`provided, in the Petition, sufiicient explanation of a reason to combine the
`
`various teachings of the prior art. See 37 C.F.R. § 42.104(b)(4)—(5); Prelim.
`
`Resp. 25-29.
`
`We recognize that the Declaration of Dr. Jacobsen (Ex. 1002) includes
`
`additional discussion regarding the combination of T1 .413, Laroia, Suzuki
`
`’415, and TR-004. See, e.g., Ex. 1002 1111 201-06, 235-42. That analysis,
`
`'
`
`however, is not discussed adequately in the Petition itself, as Petitioner only
`
`includes blanket citations to eighty-two paragraphs and a thirty-three—page I
`
`appendix of the Declaration. See Pet. 26-29 (citing Ex. 1002 111] 161-242,
`
`App. B1). A petition seeking inter partes review must identify “[h]ow the
`
`construed claim is unpatentable under the statutory grounds identified” and
`
`“where each element of the claim is found in the prior art,” and must explain
`
`the “relevance of the evidence to the challenge raised,” because the Board
`
`may “give no weight to the evidence where a party has failed to state its
`
`relevance or to identify specific portions of the evidence that support the
`
`challenge.” 37 C.F.R. § 42.104(b)(4)—(5); see also 37 C.F.R. § 42.22(a)(2)
`
`(a petition must include a “full statement of the reasons for the relief
`
`requested, including a detailed explanation of the significance of the
`
`evidence”). Dr. Jacobsen’s analysis is not reflected in the Petition itself, and
`
`cannot be incorporated in the Petition by reference. See 37 C.F.R.
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`]IPR2015-00242
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`§ 42.6(a)(3) (“Arguments must not be incorporated by reference from one
`
`document into another document.”); Cisco Sys., Inc. v. C-Cation Techs.,
`
`LLC, Case [PR2014-00454, slip op. at 7-10 (PTAB Aug. 29, 2014) (Paper
`
`12) (informative) (noting that “[o]ne purpose of the prohibition against
`
`incorporation by reference is to eliminate abuses” of the page limits
`
`established for the parties’ substantive papers, and that citing “large portions
`
`of another document, without sufficient explanation of those portions,
`
`amounts to incorporation by reference”). Consequently, we do not consider
`
`information presented in the Declaration but not discussed sufficiently in the
`
`Petition.
`
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`on its assertion that claims 1, 6, 7, and 31 are unpatentable over T1.413",
`
`Laroia, Suzuki ’4l5, and TR-O04.
`
`B. Obviousness Based on TJ.413, Fifield, Suzuki ’415, and TR—004
`
`Petitioner’s asserted ground of unpatentability based on_T1.413,
`
`Fifield, Suzuki ’41'5, and TR-004 under 35 U.S.C. § 103(a) suffers from the
`
`same deficiency as its ground based on T1.413, Laroia, Suzuki ’415, and
`
`TR-004. See supra Section II.A; Prelim. Resp. 35-36. Petitioner relies on
`T1.413 and Fifield for the limitations recited in the preambles of
`
`independent claims 1 and 31 (e.g., first and second transceivers, carrier
`
`signals) and the step of “receiving the bit stream from the second
`
`transceiver,” and relies on “T1.413, in combination with Fifield and Suzuki
`’415,’’ for the limitations of “each carrier signal [being] associated with a
`
`‘ value determined independently of any bit value of the bit stream carried by
`
`that respective carrier signal,” a phase shift based on the value associated
`
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`with the carrier signal, scrambling the phase characteristics of the carrier
`
`signals, using the multiple carrier signals to demodulate the “same bit value
`
`of the received bit stream,” and transporting video. Pet. 34-35. Petitioner
`
`further cites T1.413 for the limitation of communication over a “pair of
`
`twisted wires of a telephone subscriber line and fiber optic,” and cites
`
`‘ T1.413 and TR-004 for the limitation of using the transceivers for internet
`
`access. Id. at 35-36. Petitioner includes a claim chart and cites eighty
`
`paragraphs and a thirty-four-page appendix of Dr. Jacobsen’s Declaration.
`
`Id. at 33, 36-40 (citing Ex. 1002 ‘[H[ 243-323, App. C1).
`
`Petitioner merely alleges that the challenged claims would have been
`
`“obvious” in View of the four prior art references, and describes how the
`
`references allegedly teach various aspects of the claims. See id. at 33-36.
`
`Petitioner does not identify in the Petition any reason why an ordinarily
`
`skilled artisan would have had reason to combine the teachings of the
`
`various references, and Petitioner cannot rely on the more detailed analysis
`
`of Dr. Jacobsen, as that analysis is not discussed or reflected in the
`
`arguments made in the Petition itself. See id.; KSR, 550 U.S. at 417—l8;
`
`Unigene, 655 F.3d at 1360; Chaganti, 554 F. App’x at 922. Also, the
`
`discussion of TR-004 in the Petition is identical to that for the asserted
`
`ground based on T1.413, Laroia, Suzuki ’4l5, and TR"-004, and is
`
`insufficient for the same reasons. See Pet. 29, 36; supra Section II.A.
`
`Petitioner has not shown sufficiently a reason‘ to combine the teachings of
`
`T1.413 with those of Fifield, Suzuki ’415, and TR-004, or explained
`
`sufficiently what aspects of the references would be combined.
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`Accordingly, Petitioner has not demonstrated a reasonable likelihood
`
`of prevailing on its assertion that claims 1, 6, 7, and 31 are unpatentable over
`
`T1.413,Fif1eld, Suzuki ’41s, and TR-O04.
`
`C. Obviousness Based on TI.413, Suzuki ’6I4, Suzuki ’4I5, and TR—004
`
`Petitioner’s asserted ground of unpatentability based on T1.413,
`
`Suzuki ’614, Suzuki ’415, and TR-004 under 35 U.S.C. § 103(a) is deficient
`as well. See Prelim. Resp. 41-42. Similar to its other asserted grounds,
`
`Petitioner relies on Tl.413 and Suzuki ’614 for the limitations recited in the
`
`preambles of independent claims 1 and 31 (e.g., first and second
`
`transceivers, carrier signals), relies on T1.413 alone for the step of
`
`“receiving the bit stream from the second transceiver,” and relies on “T1 .413
`
`in combination with Suzuki ’614 and Suzuki ’415” for the limitations of
`
`“each carrier signal [being] associated with a value determined
`
`independently of any bit value of the bit stream carried by that respective
`
`carrier signal,” a phase shift based on the value associated with the carrier
`
`signal, and scrambling the phase characteristics-of the carrier signals. Pet.
`
`41-43. Petitioner further cites T1 .413 for the limitations of using the
`
`multiple carrier signals to demodulate the “same bit value of the received bit
`
`stream,’
`
`’3 communication over a “pair of twisted wires of a telephone
`
`subscriber line and fiber optic,” and transporting video, and cites T1.413 and
`
`TR-004 for the limitation of using the transceivers for intemet access. Id. at
`
`43-45. Petitioner includes a claim chart and cites ninety-nine paragraphs
`
`3 Petitioner also cites Laroia for the “same bit value” limitation. Pet. 43.
`
`Because the asserted ground is based only on T1.413, Suzuki ’614, Suzuki
`’415, and TR-00.4, however, we presume that the citation of Laroia was a
`typographical error.
`
`DISH
`
`Exhibit 1004 Pae 14
`
`DISH
`Exhibit 1004 Page 14
`
`

`
`IPR2015-00242
`
`Patent 8,218,610 B2
`
`and a thirty-four-page appendix of Dr. Jacobsen’s Declaration. Id. at 41,
`14549 (citing Ex. 1002 11'“ 324-422, App. A1).
`
`Again, Petitioner merely alleges that the claims would have been
`
`“obvious,” without explaining in the Petition any reason why a person of '
`
`ordinary skill in the art would have combined the teachings of the four prior
`
`art references. See id. at 41-45. For example, with respect to the limitation
`
`of “each carrier signal [being] associated with a value determined
`
`independently of any bit value of the bit stream carried by that respective
`
`carrier signal,” Petitioner acknowledges that Suzuki ’614 does not “describe
`
`the details” of how the reference generates random phase shift data for each
`
`subcarrier, and argues that Suzuki ’41 5 teaches the generation of M-bit
`
`random numbers, which, according to Petitioner, are “determined
`
`independently of any bit value” because they are random. Id. at 42—43
`
`(citing Ex. 1009, col. 1, 11. 52-55, col. 3, 11. 25—30). Petitioner then makes
`
`the conclusory statement that “[i]t would be obvious to one of ordinary skill
`
`in the art to combine the teachings of Suzuki ’614 and Suzuki ’415 with the
`
`network of T1 .41 3,” without identifying in_the Petition any reason why an
`
`ordinarily skilled artisan would have thought to do so. See id. The mere fact
`
`that Suzuki ’614 does not describe the “details” of its random phase shift
`
`data does not mean that a person of ordinary skill in the art would have
`
`looked to the particular calculations of Suzuki ’415. See id. Indeed, as
`
`Patent Owner correctly points out, Sumki ’614 only discloses the end result
`ofphase shifts, without any detail as to how the phase shifts are calculated.
`See Prelim. Resp. 38-40; Ex. 1003, col. 6, l. 36—col. 7,1. 18, Fig. 6.
`
`I
`
`Accordingly, Petitioner has not set forth a rationale for combining the
`
`DISH
`
`Exhibit 1004 Pae 15
`
`DISH
`Exhibit 1004 Page 15
`
`

`
`IPR2015—00242
`
`Patent 8,218,610 B2
`
`calculations of Suzuki ’415 with T1.413, Suzuki ’614, and TR-004 in
`
`reaching a conclusion of obviousness.
`In addition, Petitioner cannot rely on the more detailed analysis of
`
`Dr. Jacobsen that is not discussed sufficiently in the Petition, and
`
`Petitioner’s assertions regarding TR-O04, which are identical to those it
`makes for the other grounds addressed above, are inadequate. See Pet. 29,
`
`36, 41-45; KSR, 550 U.S. at 417-18; Unigene, 655, F.3d at 1360; Chaganti,
`
`554 F. App’x at 922; supra Sections II.A, II.B. Petitioner has not shown
`sufficiently a reason to combine the teachings ofT1 .413 with those of
`Suzuki ’614, Suzuki ’415, and TR-004, or explained sufficiently what
`
`aspects of the references would be combined. Accordingly, Petitioner has
`not demonstrated a reasonable likelihood of prevailing on its assertion that
`claims 1, 6, 7, and 31 are unpatentable over T1.413, Suzuki ”6l4, Suzuki
`
`’415, and TR—004.
`
`We conclude that Petitioner has not demonstrated a reasonable
`
`D. Conclusion
`
`likelihood that at least one of the challenged claims of the ’610 patent is
`
`unpatentable based on the asserted grounds. Therefore, we do not institute
`
`an inter partes review on any of the asserted grounds as to any of the
`
`challenged claims.
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’610 patent.
`
`DISH
`
`Exhibit 1004 Pae 16
`
`DISH
`Exhibit 1004 Page 16
`
`

`
`IPR201S-00242’
`
`Patent 8,218,610 B2
`
`PETITIONER:
`
`Jennifer A. Albert
`
`Eleanor M. Yost
`
`GOODWIN PROCTER LLP
`
`J albert@goodwinprocter.com
`eyost@goodwinprocter.com
`
`PATENT OWNER:
`
`Peter J. McAndrews
`
`Thomas J. Wimbiscus
`
`Christopher M. Scharff
`MCANDREWS HELD & MALLOY, LTD.
`
`pmcandrews@mcandrews-ip.com
`wimbiscus@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`DISH
`
`Exhibit 1004 Pae 17
`
`DISH
`Exhibit 1004 Page 17
`
`

`
`Case 1:15—cv—OO121-RGA Document 42 Filed 03/13/15 Page 1 of 4 Page|D #: 1558
`A0 120 (Rev. 08/10
`
`T0:
`
`Mai] Stop 3
`Director of the U.S. Patent and Trademark Office
`P.0. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1 116 you are hereby advised that a eoun action has been
`filed in the US. District Court
`Transferred to Delaware from Alabama
`on the following
`
`[:I Trademarks or
`DOCKET NO,
`15-cv-121-RGA
`PLAINTIFF
`
`MPatents. _( I: the patent action involves 35 USIC. § 292.):
`DATF. FILED
`U.S. DISTRICT COURT
`7/17/2014
`Transferred to Delaware from Alabama
`DEFENDANT
`
`ADTRAN. Inc,
`
`TQ Delta, LLC
`
`PATENT OR
`DATE OF PATENT
`TRADEMARK N0.
`OR TRADEMARK
`1 See Attachment #1 —
`
`HOLDER OF PATENT OR TRADEMARK
`
`_-—— I
`
`DATE INCLUDED
`
`3/13/2015
`PATENT OR
`TRADEMARK NO
`I See Attachment #2
`
`n the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`|:I Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`Z Answer
`
`I] Cross Bill
`
`[:| Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy l—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy -‘I-—Case file copy
`
`DISH
`
`Exhibit 1004 Pae 18
`
`DISH
`Exhibit 1004 Page 18
`
`

`
`Case 1:l5—cv—00121—RGA Document 42 Filed 03/13/15 Page 2 of 4 Page|D #: 1559
`
`Attachment #1
`
`Patent or Trademark No.
`
`Date of Patent or Trademark
`
`Holder of Patent or Trademark
`
`1.U.
`
`2.U.
`
`5. 7,453,881 B2
`
`11/18/2008
`
`5. 7,809,028 B2
`
`10/05/2010
`
`3.U. S. 7,978,706 B2
`
`4.U.S. 8,422,511 B2
`
`5.U. 5. 6,445,730 B1
`
`6.U.S. 7,292,627 B2
`
`7/12/2011
`
`4/16/2013
`
`9/03/2002
`
`11/6/2007
`
`7.U.
`
`8.U.
`
`S. 7,451,379 B2
`
`11/11/2008
`
`S. 7,471,721 B2
`
`12/30/2008
`
`9.U.5. 7,570,686 B2
`
`8/4/2009
`
`10. U.S. 7,831,890 B2
`
`11/09/2010
`
`11. U.S. 7,835,430 B2
`
`11/16/2010
`
`12. U.S. 7,836,381 B1
`
`1 1/16/2010
`
`13. u.s. 7,344,332 B2
`
`14.
`
`u.s. 7339,7234 B2
`
`11/30/2010
`
`2/15/2011
`
`15. U.S. 7,925,958 B2
`
`04/12/2011
`
`16.
`
`17.
`
`U.S. 7,978,753 B2
`
`07/12/2011
`
`U.S. 7,979,778 B2
`
`07/12/2011
`
`18. U.S. 8,073,041 B1
`
`12/6/2011
`
`19. U.S. 8,090,008 B2
`
`1/3/2012
`
`20. U.S. 8,218,610 B2
`
`7/10/201i
`
`21. U.S. 8,238,412 B2
`
`o3/o7/2012
`
`22. U.S. 8,276,048 B2
`
`1 09/25/2012
`
`23. U.S. 8,355,427 B2
`
`1/15/2013
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TO. Delta, LLC
`
`TQ Delta, LLC
`
`TO. Delta, LLC
`
`TQ Delta, LLC
`
`DISH
`
`Exhibit 1004 Pae 19
`
`DISH
`Exhibit 1004 Page 19
`
`

`
`Case 1:15—cv—O0121—RGA Document 42 Filed 03/13/15 Page 3 of 4 PageID #: 1560
`
`. U.S. 8,432,956 B2
`
`4/30/2013
`
`. U.S. 8,437,382 B2
`
`5/7/2013
`
`. U.S. 8,462,835 B2
`
`6/11/2013
`
`. U.S. 8,495,473 B2
`
`7/23/2013
`
`. u.s. 8,516,337 B2
`
`08/20/2013
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`I TQ Delta, LLC
`4 TQ Delta, LLC
`‘ TQ Delta, LLC
`
`DISH
`
`Exhibit 1004 Pae 20
`
`DISH
`Exhibit 1004 Page 20
`
`

`
`Case 1:15—cv—00121—RGA Document 42 Filed 03/13/15 Page 4 of 4 Page|D #: 1561
`Attachment #2
`
`PATENT OR
`
`DATE OF PATENT
`
`ORTRADEMARK
`
`‘
`
`DISH
`
`Exhibit 1004 Pae 21
`
`DISH
`Exhibit 1004 Page 21
`
`

`
`Case 1:14—cv—00954-UNA Document 3 Filed 07/17/14 Page 1 of 2 PageID #1 592
`A0 120 (Rev. 08/I0
`
`TO‘
`'
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S,C. § 290 and/or I5 U.S.C. § lll6 you are hereby advised that a court action has been
`filed in the US. District Conn
`District Of Delaware
`on the following
`[:1 Trademarks or
`MPatenIs. 7
`( U the patent octioE invoFves
`U.S.C. § E92.):V
`DOCKET NO.
`DATE FILED
`U.S. DISTRICT COURT
`7/18/2014
`
`District of Delaware
`
`PLAINTIFF
`
`TQ Delta, LLC
`
`DEFENDANT
`
`ADTRAN, Inc.
`
`PATENT OR
`TRADEMARK N0.
`
`DATE OF PATENT
`OR TRADEMARK
`
`‘
`F
`9
`IIOLDER OF PATENT OR TRADEMARK
`
`W
`
`2
`
`3
`
`DATE INCLUDED
`
`INCLUDED BY
`
`I:| Amcndmcnl
`[(’)’:TfR‘i\FDi’EAIJ/3!:
`TR’*:gg;:TRiRNO
`I —
`
`I:| Answer
`E] Cross Bill
`D Other Pleading
`HOLDER or PATENT OR TRADEMARK
`
`In the above—entitled case, the following decision has been rendered orjudgemcnt issued:
`DECISION/JUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy l—-Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding paIent(s), mail this copy to Director Copy 4—Case file copy
`
`DISH
`
`Exhibit 1004 Pae 22
`
`DISH
`Exhibit 1004 Page 22
`
`

`
`Case 1:14—cv-00954-UNA Document 3 Filed 07/17/14 Page 2 of 2 PagelD #: 593
`
`PATENT OR
`TRADEMARK NO.
`
`
`
`US 8,090,008 B2
`US 8,073,041 B1
`US 7,292,627 B2
`US 7,471,721 B2
`US 8,218,610 B2
`US 8,355,427 B2
`US 7,453,881 B2
`US 7,809,028 B2
`US 7,978,706 B2
`0 US 8,422,511 B2
`1
`US 7,889,784 B2
`12
`US 7,835,430 B2
`3
`US 7,570,686 B2
`4 US 8,238,412 B2
`5
`US 8,432,956 B2
`16
`US 7,451,379 B2
`17 US 8,516,337 B2
`18
`US 7,979,778 B2
`19 US 7,925,958 B2
`20 US 8,462,835 B2
`21
`US 8,594,162 B2
`
`2 US 7,978,753 B2
`23
`US 6,445,730 B1
`4
`US 8,611,404 B2
`US 8,437,382 B2
`US 7,836,381 B1
`6
`27 US