,us to. ov
`Trials
`Tel: 571-272-7822
`
`Paper 18
`Entered: May 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`’2WIRE, INC.,
`Petitioner,
`
`V.
`
`TQ DELTA, LLC,
`Patent Owner.
`
`Case IPR2015-00241
`
`Patent 8,073,041 B1
`
`Before KALYAN K. DESHPANDE, IUSTIN T. ARBES, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`DISH
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`Exhibit 1005 Pae 1
`
`DISH
`Exhibit 1005 Page 1
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`
`Trials
`Tel: 571-272-7822
`
`Paper 18
`Entered: May 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`’2WIRE, INC.,
`Petitioner,
`
`V.
`
`TQ DELTA, LLC,
`Patent Owner.
`
`Case IPR2015-00241
`
`Patent 8,073,041 B1
`
`Before KALYAN K. DESHPANDE, IUSTIN T. ARBES, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`DISH
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`Exhibit 1005 Pae 1
`
`DISH
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`
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`IPR20l5-00241
`
`Patent 8,073,041 B1
`
`1.
`
`INTRODUCTION
`
`Petitioner 2Wire, Inc., Inc. filed a Petition (Paper 2, “Pet.”) requesting
`
`an inter partes review of claims 1 and 14 of U.S. Patent No. 8,073,041 B1
`
`(Ex. 1001, “the ’041 patent”) pursuant to 35 U.S.C. §§ 311-319. Patent
`
`Owner TQ Delta, LLC filed a Preliminary Response (Paper 11, “Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
`
`an inter partes review may not be instituted “unless .
`
`.
`
`. there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” After considering the Petition, and
`
`associated evidence, we conclude that Petitioner has not demonstrated a
`
`reasonable likelihood that it would prevail in showing unpatentability of all
`the challenged claims. For the reasonslthat follow, we deny institution of an
`inter partes review of claims 1 and 14 of the ’041 patent.
`H
`I
`
`11. BACKGROUND '
`
`A. Related Proceedings
`
`The parties state that the ’O41 patent has been asserted in TQ Delta
`LLC 2Wire Inc., Case No. 1:13-cv-0l835—RGA (D. Del.); TQ Delta LLC
`
`v. Zhone Technologies, Inc., Case No. 1:13-cv-0l836—RGA (D. Del.); TQ
`
`Delta LLC v. ZyXEL Communications Inc. et al., Case No. 1:13-cv-02013— _
`
`RGA (D. Del.); TQ ‘Delta, LLC v. ADTRAN, Inc., Case No. 1:14-cv-00954-
`RGA (D. Del.); and ADTRAN, Inc. v. TQ Delta LLC, Case No. 5:l4-cv-
`
`. 01381 (N.D. Ala.). Pet. 1; Paper 13, 2.
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`IPR2015-00241
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`Patent 8,073,041 B1
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`B. The ’041 Patent
`
`The ’04l patent pertains to communications systems using
`
`multicarrier modulation, 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. 29-34. 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. 44-48.. 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
`
`(e.g., voltage, current, phase, frequency, power) to the time-averaged value
`
`of the signal parameter.” Id. at col. 1, 1. 55-col. 2, 1. 22. According to the _
`
`’041 patent, PAR is an important consideration in designing a DMTI
`communication system because an increased PAR can result in high power
`
`consumption or clipping of the transmission signal. Id. at col. 2, 11. 8-27.
`
`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, 11. 28-30.
`
`A Figure 1 of the ’041 patent is reproduced below.
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`Figure 1 above depicts transceiver 10 communicating transmission signals
`
`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. 25-50. 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 QAM symbol 58 so that the signals have the phase and
`
`amplitude associated with the respective QAM symbol 58 (and input serial
`
`A bit stream 54). Id. at col. 4, 11. 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, 1. 47—col. 5, l. 3, col. 6, 11. 40-52. 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
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`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, 11.447-52, 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. 53-55. According to the ’041
`
`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. 31-col. 3,
`
`l. 2, col. 6, 11. 46-53. 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. 16-22.
`
`C. Challenged Claims ofthe '04] Patent
`
`Independent claims 1 and 14 of the ’041 patent recite:
`
`1.
`A method, in a first multicarrier transceiver that
`uses a plurality of carrier signals for receiving a bit
`stream, wherein each carrier signal has a phase
`characteristic associated with the bit stream, the method
`
`comprising:
`receiving the bit stream, wherein:
`each carrier signal is associated with a value
`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 shift for each carrier signal is based on:
`the value associated with that carrier
`
`signal, and
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`Patent 8,073,041 B1
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`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
`T
`multiple carrier signals corresponding to the
`plurality of phase shifted and scrambled carrier signals
`are used by the first multicarrier transceiver to
`demodulate a same bit value of the received bit stream.
`
`14. A multicarrier system including a first transceiver
`that uses a plurality of carrier signals for receiving a bit
`stream, wherein each carrier signal has a phase
`characteristic associated with the bit stream, the
`transceiver capable of receiving the bit stream, wherein:
`each carrier signal is associated with a value
`- 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 shift for each carrier signal is based on:
`the value associated with that respective
`carrier signal, and
`the combining of a phase shift 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,
`multiple carrier signals corresponding to the
`plurality of phase shifted and scrambled carrier signals
`are used by the first multicarrier transceiver to
`demodulate a same input bit value of the received bit x
`stream.
`
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`IPR20l5-00241
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`Patent 8,073,041 B1 .
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`Ex. 1001, col. 10,1. 58-001. 11,1. 11; col. ll, 1. 42—col. 12,1. 16.
`
`D. The Asserted Grounds
`
`Petitioner asserts that the challenged claims of the ’O41 patent are
`
`unpatentable for the following specific grounds (Pet. 14-15):
`
`iSuzuki’614, Suzuki ’4l5, and
`Admitted Prior An’
`
`d
`
`k"415,
`L
`°, s
`an
`“Z” ‘
`T‘1‘f:,"li‘35
`Fifield, Suzuki ’415, and
`Admitted Prior Art
`
`35 U.S.C.§ 103(a)
`
`35 U.S.C.§ 103(a)
`
`1andl4
`”
`land 14
`
`1 U.S. Patent No. 5,903,614, issued May 11, 1999 (Ex. 1003, “Suzuki
`’614”).
`2 U.S. Patent NO. 5,694,415, issued Dec. 2, 1997 (Ex. 1009, “Suzuki ’415”).
`3 Alleged admitted prior art in the Specification of the ’O41 patent at col. 1,
`11. 29-43, 49-54, 57-64, col. 3, 11. 24-36, and Fig. 1 (Ex- 1001, “Admitted
`Prior Art”).-
`4 U.S. Patent No. 6,301,268 B1, filed Mar. 10, 1998, issued Oct. 9, 2001
`(Ex. 1004, “Laroi’a”).
`5 U.S. Patent NO. 6,781,951 B1, filed Oct. 22, 1999, issued Aug. 24, 2004
`(Ex. 1008, “Fifield”),
`6 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”).
`.
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`IPR20 1 5-00241
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`Patent 8,073,041 B1
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`III. ANALYSIS
`
`A. Claim Interpretation
`
`We determine the meaning of the claims as the first step of our
`
`analysis. _In an inter partes review, we interpret claims of an unexpired
`patent using the broadest reasonable construction. 37 C.F.R. §'42.l00(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). If an inventor acts as his or her own lexicographer, the definition
`
`must be set forth in the specification with reasonable clarity, deliberateness,
`
`and precision. Renishaw PLC v. Marposs Societa ’ per Aziorti, 158 F.3d
`1243, 1249 (Fed. Cir. 1998). Claim terms generally are given their ordinary
`
`and customary meaning, as would be understood by one of ordinary skill in
`
`the art in the context of the entire disclosure. See In re Translogic Tech.,
`
`Inc., 504 F.3d1249, 1257 (Fed. Cir. 2007).
`
`Petitioner argues that the terms in claims 1 and 14 do not require
`interpretation. Pet. 15-16. Patent Owner proposes interpretations for two
`
`1
`
`limitations: “a value determined independently of any bit value” and
`
`“multiple carrier signals corresponding to the plurality of phase shifted and
`
`scrambled carrier signals are used by the first multicarrier transceiver to
`
`demodulate a same bit value of the received bit stream.” Prelim. Resp. 9-
`16. After reviewing the parties’ papers, we find that no express claim
`
`constructions are required for purposes of this Decision.
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`B. Obviousness based on Suzuki ’614, Suzuki ’415, and Admitted Prior Art
`
`Petitioner contends that claims 1 and 14 are unpatentable over Suzuki
`
`’614, Suzuki ’415, and Admitted Prior Art under 35 U.S.C. § 103(a). Pet.
`
`27—38. Petitioner relies on Suzuki ’614 and Suzuki ’415 for the limitations ~
`
`recited in claims 1 and 14.
`
`Id. at 33-38. Petitioner provides a claim chart
`
`citing various portions of Suzuki ’6144and Suzuki ’415, and states that the
`claim chart is supported by the Declaration of Krista S. Jacobsen, Ph.D. Id.
`
`at 27, 31-35 (citing Ex_. 1002 ‘M 158—220, App. A1).
`
`We are not persuaded that Petitioner has established a reasonable
`
`likelihood of prevailing on its asserted ground based on Suzuki ’614, Suzuki
`
`’415, and Admitted Prior Art. “Section 103(a) forbids issuance of a patent
`
`when ‘the differences between the subject matter sought to be patentedand
`
`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 401. “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
`
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`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, 550 U.S. at 418. Further,an assertion of obviousness “‘cannot be
`
`sustained by mere conclusory statements; instead, there must be some I
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of ob,viousness.”’ Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006)).
`
`Petitioner argues that the Suzuki ’6l4 with Suzuki ’4l5 references
`
`teach various aspects of the challenged claims. Pet. 27-31. For example,
`
`with respect to the limitation of “each carrier signal .
`
`.
`
`. associated with a
`
`value determined independently of any bit value of the bit stream carried by
`
`that respective carrier signal” in claim 1, Petitioner acknowledges that
`
`Suzuki ’614 does not“‘describe the details” of how the reference generates
`
`random phase shift data for each subcarrier, arguing that Suzuki ’4l5
`
`teaches the generation of M-bit random numbers, which are “determined
`
`independently of any bit value” according to Petitioner because they are
`
`random. Id. at 29-30 (citing Ex. 1009, col. 1, 11. 52—55, col. 3, 11. 25—30, col.
`
`4, 11. 22-34).
`
`With respect to combining these references, Petitioner argues as
`
`follows:
`
`It would have been obvious to combine Suzuki ’6l4 with
`
`Suzuki ’415 in order to produce the subject matter of Claim 1.
`For example,
`it would have been obvious to compute the
`random phases disclosed in Suzuki
`’6l4 in the manner
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`disclosed in Suzuki ’415 in order to produce the random phase
`shifts used in Suzuki ’614.
`
`1d. at 31 (citations omitted).
`
`Petitioner’s first statement that it “would have been obvious” to
`
`combine Suzuki ’614 with Suzuki ’415 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)
`
`(stating that “[i]t 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 second
`
`statement also is insufficient, as it merely states the result of the asserted
`
`combination, i.e., the basic components of Suzuki ’614 performing the
`
`random number calculations described in Suzuki ’415.
`
`Petitioner has not provided articulated reasoning with some rational
`
`underpinning to support its contentions that a person of ordinary skill in the
`
`art would have had reason to combine the teachings of Suzuki ’614, Suzuki
`
`’4 1 5, and Admitted Prior Art to achieve the method of claim 1 or system of
`
`claim 14. Petitioner does not offer any rationale to combine the basic
`
`components of Suzuki ’614 to perform the calculations of Suzuki ’415.
`
`Furthermore, Petitioner does not explain why an ordinarily skilled artisan
`
`would have incorporated the phase shift calculations of Suzuki ’415 into the
`system ofSuzuki ’614. The mere fact that Suzuki ’614 does not describe the
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`“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 Pet. 28-29. Indeed, as Patent Owner correctly points out,
`
`Suzuki ’614 only discloses the end result of phase shifts, without any detail
`
`as to how the phase shifts are calculated. See Prelim. Resp. 19-20; Ex.
`
`1003, col. 6, 1. 36—col. 7, l. 18, Fig. 6. Accordingly, we find that Petitioner
`has not set forth an articulated rationale for combining the calculations of
`
`Suzuki ’4l5 with Suzuki ’614 in reaching a conclusion of obviousness.
`
`Petitioner also fails to set forth an articulated rationale for combining
`
`the Admitted Prior Art with the teachings of Suzuki ’6l_4 and Suzuki ’4l5.
`
`See Pet. 27. Petitioner’s asserted ground is based on the combination of
`
`Suzuki ’614, Suzuki ’4l5, and Admitted Prior Art, but Petitioner’s claim
`
`charts and analysis does not specifically cite the Admitted Prior Art in its
`
`analysis, or identify any rationale to combine any Admitted Prior Art
`
`teachings with those of the other cited references. See id. at 27-38.
`
`Petitioner merely offers conclusory statements on combining the prior art
`references, stating‘ that: “[t]o the extent that some claimed aspect of the
`
`transceiver or multicarrier modulation is considered missing in Suzuki ’614
`
`and Suzuki ’415, it would have been obvious from the Admitted Prior Art in
`order to implement the multicarrier modulation and transmission disclosed
`
`in Suzuki ’6l4.” Pet. 31-32 (citations omitted). Accordingly, Petitioner
`
`has not provided, in the Petition, sufficient explanation of an_ articulated
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`reason to combine the various teachings of the prior art. See 37 C.F.R.
`
`§ 2.104(b)(4)—(5); see Prelim. Resp. 23-25.
`
`We recognize that the Declaration of Dr. Jacobsen (Ex. 1002) includes
`
`additional discussion regarding the combination of Suzuki ’614, Suzuki
`
`’415, and Admitted Prior Art. See, e.g., Ex. 1002 111] 199-203. That
`
`analysis, however, is not discussed adequately in the Petition itself, as
`
`Petitioner relies on blanket citations to 62 paragraphs and a 27—page
`
`appendix of the Declaration. See Pet. 27-30 (citing Ex. 1002 111] 158-220,
`
`Appendix A1). 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. §442.22(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 of the combination of prior art is not
`
`reflected in the Petition itself, and cannot be incorporated in the Petition by
`reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated
`
`by reference from one document into another documentf’); Cisco Sys., Inc.
`
`v. C-Cation Techs., LLC, Case IPR2014-00454, slip op. at 7-10 (PTAB
`
`Aug. 29, 2014) (Paper 12) (informative) (noting that “[o]ne purpose of the
`
`13
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`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 and 14 are unpatentable over Suzuki ’614,
`
`Suzuki ’415, and Admitted Prior Art.
`
`C. Obviousness Based on Laroia, Suzuki ’415, and TI.413
`
`Petitioner’s asserted ground of unpatentability based on Laroia,
`
`Suzuki ’415, and Tl.413 under 35 U.S.C. § 103(a) suffers from the same
`
`deficiency as its ground based on Suzuki ’614, Suzuki ’415, and Admitted
`
`Prior Art. See supra Section II.A; Prelim. Resp. 31-32. Petitioner relies on
`
`Laroia, Suzuki ’415, and T1.413 for the limitations recited in claims 1 and
`
`14, specifically relying on Laroia for the multicarrier transceiver as well as
`
`the “value associated with [a] carrier signal” and “combining” steps of each
`
`claim. Pet. 39-47. Petitioner relies on Laroia in combination with Suzuki
`
`’415 for the remaining steps recited in each claim, citing 57 paragraphs and
`
`a 19-page appendix of Dr. Jacobsen’s Declaration. Pet. 39-47 (citing Ex.
`
`1002 111] 221-278, App. B1). Again, Petitioner argues that the claims would
`
`have been “obvious” in View of the three prior art references, but does not
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`identify in the Petition any reason why an ordinarily skilled artisan would
`
`have combined the teachings of Laroia and Suzuki ’415. See id. at 36-39.
`
`With respect to T1.413, Petitioner argues that “it would have been
`
`obvious to combine the network structures disclosed in T1.413 to implement
`them with the multicarrier modulation and transmission systems disclosed in
`
`Laroia. [Ex. 1002] Jacobsen Decl., 111] 254-257.” Pet. 41. As Patent Owner
`
`notes, Petitioner fails to offer any rationale for the combination of
`
`Suzuki ’4l 5 with Laroia and T1.413. Prelim. Resp. 31; Pet. 41. In addition,
`
`Petitioner’s conclusory statements 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 Pet. 39-47; KSR, 550 U.S. at
`417-18; Unigene, 655 F.3d at 1360;.Chaganti, 554 F. App’x at 922.
`
`Further, it is unclear what “network structures” in T1.413 Petitioner is
`
`relying’ on for the asserted combination, as Petitioner cites four figures and
`four pages of the lengthy standard documentlwithout pointing out any _
`
`specific features. See Pet. 42, 44 (citing Ex. 1006, 10-13, Figs. 2-5).
`
`2 Petitioner has not shown sufficiently an articulated reason with rational
`
`underpinnings to support combining the teachings of T1 .413 with those of
`
`Laroia and Suzuki ’4 1 5 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 and 14 are unpatentable over
`
`Laroia, Suzuki ’415, and T1.413.
`
`DISH
`
`Exhibit 1005 Pae 15
`
`DISH
`Exhibit 1005 Page 15
`
`
`
`IPR2015-00241
`
`Patent 8,073,041 B]
`
`D. Obviousness Based on Fzfield, Suzuki '4Ii5, and Admitted Prior Art
`
`Petitioner’s asserted ground of unpatentability based on Fifield,
`
`Suzuki ’415, and Admitted Prior Art under 35 U.S.C. § l03(a) suffers from
`
`the same deficiencies discussed above. See Prelim. Resp. 34-36. Similar to
`
`the ground based on Suzuki ’6l4, Suzuki ’415,'and Admitted Prior Art,
`
`Petitioner relies on Fifield for the limitations recited in the preambles of
`
`claims 1 and 14 (e.g., transceiver, carrier signals), relies on “Fifield,
`combined with Suzuki ’415,” for the remaining limitations recited in the
`
`claims, relies on “Fifield alone or in combination with Suzuki ’415, T1.4137
`or the Admitted Prior Art,” for the limitation of “multiple carrier signals
`
`corresponding to the scrambled carrier signals are used by the first
`
`multicarrier transceiver to demodulate a same bit value” and cites 52
`
`paragraphs and a 26-page appendix of Dr. Jacobsen’s Declaration. Pet. 48-
`
`56 (citing Ex. 1002 111] 279-331, App. C1).
`
`7 Petitioner also argues that “it would have been obvious for multiple
`carriers to be used by the DMT transceiver of Fifield combined with Suzuki
`’4 15 to demodulate a same bit value of a received bit stream, as T1.413
`teaches that such multiple carriers may be used for backup transmissions of
`a same bitstream,” and that claim 14 would have been obvious in view of
`“Fifield, in combination with Suzuki ’415 and the Admitted Prior Art or
`T1.413.” Pet. 48-50. We presume that the citations to T1.413 were
`typographical errors, as the asserted ground is based only on Fifield, Suzuki
`’415, and Admitted Prior Art. See id. at 15, 48.
`
`DISH
`
`Exhibit 1005 Pae 16
`
`DISH
`Exhibit 1005 Page 16
`
`
`
`[PR2015-00241
`
`Patent 8,073,041 B1
`
`Petitioner fails to demonstrate a rationale to combine Fifield, Suzuki
`
`’4l5, and Admitted Prior Art. Pet. 48-56; Prelim. Resp. 34. Indeed, the
`
`word “obvious” is used only in conclusory statements that the claims are
`
`“rendered obvious” with citation to the Jacobsen Declaration. Pet. ‘48, 50.
`
`Petitioner cannot rely on the more detailed analysis of Dr. Jacobsen, which
`
`is not discussed sufficiently in the Petition. Accordingly, Petitioner has not
`demonstrated a reasonable likelihood of prevailing on its assertion that
`
`claims 1 and 14 are unpatentable over Fifield, Suzuki ’415, and Admitted
`
`Prior Art.
`
`IV. CONCLUSION
`
`For the foregoing reasons, we conclude that Petitioner has not
`
`demonstrated a reasonable likelihood that at least one of the challenged
`
`claims of the ’041 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.
`
`V. "ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’041 patent.
`
`DISH
`
`Exhibit 1005 Pae 17
`
`DISH
`Exhibit 1005 Page 17
`
`
`
`IPR20145-00241
`Patent 8,073,041 B1
`
`PETITIONER:
`
`Jennifer A. Albert
`
`Eleanor M. Yost
`GOODWIN PROCTER LLP
`
`jalbert@goodwinprocter.com
`eyost@,goodwinprocter. com
`
`PATENT OWNER:
`
`Peter J. McAndrews
`
`Thomas J. Wimbiscus
`
`Christopher M. Scharff
`MCANDREWS HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ig.com
`wimbiscus@mcandrews-ip.com
`cscharff@mcandrews-ig.com
`
`DISH
`
`Exhibit 1005 Pae 18
`
`DISH
`Exhibit 1005 Page 18
`
`
`
`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 1005 Pae 19
`
`DISH
`Exhibit 1005 Page 19
`
`
`
`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 1005 Pae 20
`
`DISH
`Exhibit 1005 Page 20
`
`
`
`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 1005 Pae 21
`
`DISH
`Exhibit 1005 Page 21
`
`
`
`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 1005 Pae 22
`
`DISH
`Exhibit 1005 Page 22
`
`
`
`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 1005 Pae 23
`
`DISH
`Exhibit 1005 Page 23
`
`
`
`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 7,844,882 B2
`US 8,276,048 B2
`29 US 8,495,473 B2
`
`0
`US 8,607,126 B1
`31
`US 7,831,890 B2
`32
`US 8,625,660 B2
`
`LII
`
`DATE OF PATENT
`OR TRADEMARK
`1/3/2012
`12/6/201 1
`1 1/6/2007
`12/30/2008
`7/10/2012
`1/15/2013
`
`11/18/2008
`10/5/2010
`7/12/2011
`4/16/2013
`2/15/2011
`11/16/2010
`8/4/2009
`8/7/2012
`4/30/2013
`11/11/2008
`8/20/2013
`7/12/2011
`4/12/2011
`6/11/2013
`11/26/2013
`7/12/2011
`9/3/2002
`12/17/2013
`5/7/2013
`11/16/2010
`11/30/2010
`9/25/2012
`7/23/2013
`12/10/2013
`11/9/2010
`1/7/2014
`
`HOLDER OF PATENT OR TRADEMARK
`
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`T 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
`
`'l'Q Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`DISH
`
`Exhibit 1005 Pae 24
`
`DISH
`Exhibit 1005 Page 24
`
`
`
`Birch, Melvin (Akima)
`
`From:
`Sent:
`To:
`Subject:
`
`ded,nefrep|y@ded.uscourts.gov
`Wednesday, November 20, 2013 4:56 PM
`ded_ecf@ded.uscourts.gov
`Activity in Case 1:13—cv~O183S—RGA TQ Delta LLC v. Pace Americas Inc.
`Patent/Trademark Report to Commissioner
`
`This is an automatic e—mail
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