Paper 18
`Entered: May 29, 2015
`
`I T
`
`rials@usgto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK" OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`2WIRE, INC.,
`
`Petitioner,
`
`'
`
`V.
`
`TQ DELTA LLC,
`- Patent Owner.
`
`Case IPR2015.-00239
`
`Patent 7,471,721 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
`
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`IPR2015—00239
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`Patent 7,471,721 B2
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`Petitioner 2Wire, Inc. filed a Petition (Paper 2, “Pet.”) to institute an
`
`inter partes review of claim 1 of U.S. Patent No. 7,471,721 B2 (Ex. 1001,
`
`, “the ’721 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
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`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
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`claims challenged in the petition.” For the reasons that follow, we have
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`decided not to institute an inter partes review.
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`I. BACKGROUND
`
`A. The ’72]iPatent
`
`The ’721 patent pertains to multicarrier communications systems,
`
`such as digital subscriber line (DSL) systems using discrete multitone
`
`modulation (DMT), where a transmitter communicates over a
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`communication channel by modulating “[c]arrier signals (carriers) or
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`sub—channels spaced within a usable frequency band of the communication
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`channel.-” Ex. 1001, col. 1, 11. 25-31. In such a system, the phase and
`
`amplitude of the modulated carrier signals typically “can be considered
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`random” because they “result from the modulation of an arbitrary sequence
`
`of input data bits comprising the transmitted information.” Id. at col. 1,
`
`11. 40-44. 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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`IPR2015—0O239
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`Patent 7,471,721 "B2
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`(e.g., voltage, current, phase, frequency, power) to the time-averaged value
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`of the signal parameter.” Id. at col. 1, l. 52-col. 2, 1. 17. According to the
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`’721 patent, PAR is an important consideration in designing a DMT
`
`communication system because an increased PAR can result in high power
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`consumption or clipping of the transmission signal. Id. at col. 1, 1. 67—col. 2,
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`l. 19. Therefore, there was a need in the art for a system that can
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`“effectively scramble the phase of the modulated carrier signals in order to
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`provide a low PAR for the transmission signal.” Id. at col. 2, 11. 20-22.
`
`- Figure 1 of the ’721 patent is reproduced below.
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`Figure 1 above depicts transceiver 10 communicating transmission signal 38
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`over communication channel 18 (e.g., a pair of twisted wires of a telephone
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`line) to remote transceiver 14. Id. at col. 3, 11. 18-43. Quadrature amplitude
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`modulation (QAM) encoder 42 maps input serial data bit stream 54 in the
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`time domain into parallel QAM symbols 58 in the frequency domain. Id. at
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`col. 3, 11. 56-61. Modulator 46 modulates each carrier signal with a different
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`IPR2015-00239
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`QAM symbol 58 so that the signals have the phase and amplitude associated
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`with the respective QAM symbol 58 (and input serial bit stream 54). Id. at
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`col. 4, 11. 3-15. Phase scrambler 66 in modulator 46 calculates a phase shifi
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`for each carrier signal and combines the calculated phase shifi with the
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`phase characteristic of the respective carrier signal. Id. at col. 4, 11. 41-64,
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`col. 6, 11. 35-49. Phase scrambler 66 calculates the phase shift for a carrier
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`signal by (1) determining one or more values “independently of the QAM
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`symbols 58, and, therefore, independently of the bit value(s) modulated onto
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`the carrier signal,” and (2) solving a “predetermined equation” using the
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`value associated with the carrier signal. Id. at col. 4, ll. 41-46, 57-60. For
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`example, the value for a carrier signal may be “derived from one or more
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`predefined parameters, such as a pseudo-random number generator.” Id. at
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`col. 4, ll. 46-51. According to the ’721 patent, the use of a value determined
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`independently of the input bit values results in a lower PAR for the
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`transmission signal. Id. at col. 2, 11. 26-62. Transceiver 10 combines all of
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`the carrier signals to form the transmission signal that is sent to remote
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`transceiver 14. Id. at col. 8, 11. 18-23.
`
`B. Challenged Claim
`
`Claim 1 of the ’72l patent recites:
`
`1. In a multicarrier modulation system including a first
`transceiver in communication with a second transceiver using a
`transmission signal having a plurality of carrier signals for
`modulating an input bit stream, each carrier signal having a
`phase characteristic associated with the input bit stream, a
`method for scrambling the phase characteristics of the carrier
`signals comprising:
`A
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`IPR20l5—O0239
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`Patent 7,471,721 B2
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`associating each carrier signal with a value determined,
`independently of any input bit value carried by that carrier
`signal;
`
`computing a phase shift for each carrier signal based on
`the value associated with that carrier signal; and
`
`combining the phase shifi computed for each carrier
`signal with the phase characteristic of that carrier signal so as to
`substantially scramble the phase characteristics of the plurality
`of carrier signals.
`
`C.‘ The Prior Art
`
`Petitioner relies on the following prior art:
`
`Alleged admitted prior art in the Specification of the ’721
`patent at col. 1, 11. 25-39, col. 3, 11. 18-29, and Fig. 1 (Ex. 1001,
`“Admitted Prior Art”) (described at page 20 of the Petition);
`
`U.S. Patent No. 5,694,415,
`(Ex. 1009, “Suzuki ’415”);
`
`issued Dec.
`
`2,
`
`1997
`
`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, “Fifielcl”); and
`
`ANSI T1.413-1998, DRAFT AMERICAN NATIONAL
`STANDARD FOR
`TELECOMMUNICATIONS, NETWORK AND
`CUSTOMER INSTALLATION INTERFACES—ASYMMETRIC DIGITAL
`
`(John
`SUBSCRIBER LINE (ADSL) METALLIC INTERFACE
`Bingham .& Frank Van der Putten, eds., 1998) (Ex. 1006,
`“T1.413”).
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`IPR2015-00239
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`Patent 7,471,721 B2
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`D. The Asserted Grounds
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`Petitioner challenges claim 1 of the ’721 patent on the following
`
`grounds: 1
`
`\-2
`>
`5
`’
`‘Suzuki ?{si4, Suzuki 3413,51" 3
`and Admitted Prior Art
`
`7
`
`’5\
`3
`.
`35 U.S.C. § 103(a)
`1
`
`Laroia, T1.4l3 and
`Admitted Prior Art
`
`35 U.S.C. § 103(a)
`
`Fifield and Suzuki ’415
`
`35 U.S.C. § 103(a)
`
`E. I Claim Interpretation
`The Board interprets claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
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`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 duozzo Speed Techs,
`
`LLC, 778 F.3d 1271, 1278-82 (Fed. C_ir. 2015). Petitioner argues that no
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`terms in claim 1 require interpretation. Pet. 18. Patent Owner proposes an
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`interpretation for “a Value determined independently of any input bit value.”
`
`Prelim. Resp. 9-12. After reviewing the parties’ papers, we determine that
`
`no claim terms require express interpretation for purposes of this Decision.
`
`1 Petitioner states that it “requests cancellation of claim 1 of the ’721 patent
`as unpatentable under 35 U.S.C. §§ 102(b) and 103,” but does not include
`any ground under 35 U.S.C. § 102(b) in its Petition. See Pet. 16-17.
`
`6
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`IPR2015—OO239
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`Patent 7,471,721 B2
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`II. DISCUSSION
`
`A. Obviousness Based on Suzuki ’6I4, Suzuki ’415, and
`Admitted Prior Art
`
`Petitioner contends that claim 1 is unpatentable over Suzuki -’ 614,
`
`Suzuki ’415, and Admitted Prior Art under 35 U.S.C. § 103(a). Pet. 30-38.
`
`Petitioner relies on Suzuki ’614 for the limitations recited in the preamble of
`
`claim 1 (e.g., first and second transceivers, transmission signal having
`carrier signals) and.“Suzuki ’614 in combination with Suzuki ’41S” for the
`
`three steps of the recited method. Id. at 30-33. Petitioner provides a claim
`chart citing various portions of Suzuki ’614 and Suzuki ’4l5, and states that
`the claim chart is supported by the Declaration of Krista S. Jacobsen, Ph.D.
`
`Id. at 30, 34-38 (citing Ex. 1002 111] 158-93, App. A1). Petitioner also
`
`argues that “[t]o the extent that some claimed aspect of the transceiver or
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`multicarrier modulation is considered missing in Suzuki ’614 and Suzuki
`
`’415, it would have been obvious from the Admitted Prior Art in order to
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`implement the multicarrier modulation and transmission disclosed in Suzuki
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`’614,” citing in particular the ’721 patent’s discussion of multicarrier
`
`transceivers using DMT modulation. Id. at 33 (citing Ex. 1002 ‘W 189-93).
`
`We are not persuaded that Petitioner has established areasonable
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`likelihood of prevailing on its asserted ground based on Suzuki ’614, Suzuki
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`’415, and Admitted Prior Art. “Section l03(a) forbids issuance of a patent
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`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 ’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 405 (2007). A patent claim, however, “is not proved
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`IPR2015-00239 ‘
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`obvious merely by demonstrating that each of its elements was,
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`independently, known in the prior art.” Id. at 418. “Rather, obviousness
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`requires the additional showing that a person of ordinary skill at the time of
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`the invention would haveselected and combined those prior art elements in
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`the normal course of research and development to yield the claimed
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`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
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`field to combine the elements in the way the claimed new invention does.”
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`KSR, 550 U.S. at 418. Further, an assertion of obviousness “‘cannot be
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`sustained by mere conclusory statements; instead, there must be some
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`articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness.’” Id. (citing In re Kahn, 441 F .3d 977, 988 (Fed.
`
`Cir. 2006)).
`
`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
`
`Suzuki ’6 14, Suzuki ’415, and Admitted Prior Art to achieve the method of
`
`claim 1. Petitioner merely alleges that the claim would have been “obvious”
`
`in view of the three items of prior art, and describes how Suzuki ’614 and
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`Suzuki ’415 allegedly teach various aspects of the claims. See Pet. 30-33.
`
`For example, with respect to the step of “associating each carrier signal with
`
`a value determined independently of any input bit value carried by that
`
`carrier signal,” Petitioner acknowledges that Suzuki ’614 does not “describe
`
`in detail” how the reference generates random phase shift data for each
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`subcarrier, and argues that Suzuki ’4l5 teaches the generation of M-bit
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`random numbers, which, according to Petitioner, are “determined
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`IPR2015-00239
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`independently of any input bit value” because they are random. Id. at 30-32
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`(citing Ex. 1009, col. 1, 11. 52-55, col. 3, 1]. 25-30). Petitioner, however,
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`does not identify in the Petition any reason why an ordinarily skilled artisan
`
`would have incorporated the phase shift calculations of Suzuki ’415 into the
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`system of Suzuki ’614. The mere fact that Suzuki ’614 does not explain its
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`random phase shift data “in detail” does not mean that a person of ordinary
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`skill in the art would have looked to the particular calculations of Suzuki
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`’415. See id. at 31. Indeed, as Patent Owner correctly points out, Suzuki
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`’6l4 only discloses the end result of phase shifts, without any detail as to
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`how the phase shifts are calculated. See Prelim. Resp. 15-16; Ex. 1003, col.
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`6, l. 36-col. 7, l. 18, Fig. 6. Accordingly, Petitioner has not set forth, in the
`
`Petition, a rationale for combining the calculations of Suzuki ’415 with
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`Suzuki ’6 14 in reaching a conclusion of obviousness.
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`Likewise, Petitioner does not explain sufficiently why a person of
`
`ordinary skill in the art would have had reason to combine any Admitted
`
`Prior Art teachings with those of Suzuki ’614 and Suzuki ’415. See Pet. 33.
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`Petitioner merely states that to the extent any aspect of the claimed
`
`modulation is not taught by Suzuki ’614 and Suzuki ’415, it “would have
`
`been obvious from the Admitted Prior Art.” Id. Accordingly, Petitioner has
`
`not provided, in the Petition, sufficient explanation of a reason to_ combine
`
`the various teachings of the prior art. See 37 C.F.R. § 42.l04(b)(4)—(5);
`
`Prelim. Resp. 18-21.
`
`A We recognize that the Declaration of Dr. Jacobsen (Ex. 1002) includes
`
`additional discussion regarding the combination of Suzuki ’614, Suzuki
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`’4l 5, and Admitted Prior Art. See, e. g., Ex. 1002 1111 189-93. That analysis,
`
`however, is not discussed adequately in the Petition itself, as Petitioner only
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`IPR2015-00239
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`Patent 7,471,721 B2
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`includes blanket citations to thirty-six paragraphs and an eight-page
`
`appendix of the Declaration. See Pet. 30-33 (citing Ex. 1002 111] 158-93,
`
`App. A1). A petition seeking inter partes review must identify “[h]ow the
`constnied 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.
`
`§ 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 IPR2014-00454, slip op. at 7-10 (PTAB Aug. 29, 2014) (Paper
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`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
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`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 claim 1 is unpatentable over Suzuki ’614, Suzuki ’415,
`
`and Admitted Prior Art.
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`IPR2015-00239
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`Patent 7,471,721 B2
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`B. Obviousness Based on Laroia, T1413, and Admitted Prior Art
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`Petitioner’s asserted ground of unpatentability based on Laroia,
`
`T1.413, and Admitted Prior Art 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. 28. Petitioner
`relies on Laroia for the majority of the limitations of claim 1, citing ,
`
`twenty paragraphs and a five-page appendix of Dr. Jacobsen’s Declaration.
`
`See Pet. 39-44 (citing Ex. 1002 111] 194-213, App. B1). With respect to
`
`T1.413, Petitioner argues as follows:
`
`In addition, 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 M
`in Laroia. Laroia in combination with the T1.413 standard
`
`teach a multicarrier modulation transceiver, a multicarrier
`
`transceiver in a DSL system.
`
`Id. at 39-40 (citations omitted). Thus, the only argument in the Petition as
`
`to why a person of ordinary skill in the art would have had reason to
`
`combine the teachings of T1 .413 with those of Laroia is that it “would have
`
`been obvious” to combine the references. Such conclusory statements are
`
`insufficient. See KSR, 550 U.S. at 417-18; Unigene, 655 F.3d at 1360; In re
`
`Chagariti, 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)). Nor can Petitioner 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. 39-44. Further, it is unclear
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`what “network structures” in T1.413 Petitioner is relying on for the asserted
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`IPR2015—00239
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`combination, as Petitioner cites four figures and four pages of the lengthy
`
`standard document without pointing out any specific features. See id. at 39,
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`42 (citing Ex. 1006, 10-13, Figs. 2-5). Petitioner has not shown sufficiently
`
`a reason to combine the teachings of Laroia and T1.413 orexplained
`
`sufficiently what aspects of the references would be combined.
`
`Finally, although the asserted ground is based on the combination of
`
`Laroia, T1.413, and Admitted Prior Art, Petitioner does not cite anything
`
`from the Admitted Prior Art in its analysis. See id. at 17, 39-44. Thus,
`
`Petitioner also has not shown sufficiently a reason to combine with respect
`
`to the Admitted Prior Art.
`
`Accordingly, Petitioner has not demonstrated a reasonable likelihood
`
`of prevailing on its assertion that claim 1 is unpatentable over Laroia,
`
`T1.413, and Admitted Prior Art.
`
`C. Obviousness Based on Fifield and Suzuki ’41_5
`
`V Petitioner’s asserted ground of unpatentability based on Fifield and
`
`Suzuki ’415 under 35 U.S.C. § 103(a) is deficient as well. See Prelim. Resp.
`30. Similar to its ground based on Suzuki ’614, Suzuki ’415, and Admitted
`
`Prior Art, Petitioner relies on Fifield for the limitations recited in the
`
`preamble of claim 1 (e.g., first and second transceivers, transmission signal
`
`A
`
`having carrier signals), relies on “Fifield, in combination with Suzuki ’415,”
`for the three steps of the recited method, and cites twenty-five paragraphs
`
`and a nine-page appendix of Dr. Jacobsen’s Declaration. Pet. 45-51 (citing .
`
`Ex. 1002 111] 24l——3 8, App. C1). In particular, Petitioner cites Suzuki ’415’s
`
`random number generation for the limitation of a “value determined
`
`independently of any input bitvalue.” Id. at 46. Petitioner argues that
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`IPR20l 5-00239
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`“[i]t would have been obvious to combine this disclosure of Suzuki ’415
`
`with Fifield in order to provide Fifield with a way of randomizing the phase
`
`shifts of its carriers,” and that “[c]ombining Fifreld with Suzuki ’415’s way
`
`of randomizing initial phase data of carriers will result in the ‘substantial
`
`scrambling’ described” in the Petition. Id. at 46-47. These statements,
`however, merely state the result ofthe asserted combination, i.e., Fifield’s __
`basic components performing the random number calculations described in
`Suzuki“ ’415. They do not explain why a person of ordinary skill in the art
`
`would have considered making the combination. See KSR, 550 U.S. at
`
`417-18; Unigene, 655 F.3d at 1360; Chaganti, 554 F. App’x at 922.
`Petitioner’s conclusory statements and citations to Dr. Jacobsen’s
`
`Declaration, without meaningful argument or explanation, are insufficient to
`
`meet its burden. Accordingly, Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its assertion that claim 1 is unpatentable over
`
`Fifield and Suzuki ’415.
`
`D. Conclusion
`
`We conclude that Petitioner has not demonstrated a reasonable
`
`likelihood that at least one of the challenged claims of the ’721 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.‘
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`IPR201 5-00239
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`Patent 7,471,721 B2
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`III. ORDER
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`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of I
`
`the ’721 patent.
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`IPR2015-00239
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`Patent 7,471,721 B2
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`PETITIONER:
`
`Jennifer A. Albert
`
`Eleanor M. Yost
`
`GOODWINPROCTER LLP
`
`Jalbert_@goodwinprocter.com
`eyost@g0odwinprocter.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-igcom
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`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:
`
`Mail Stop 3
`Director of the U.S. Patent and Trademark Office
`P.O. 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. § lll6 you are hereby advised that a coun action has been
`filed in the U.S. District Court
`Transferred to Delaware from Alabama
`on the following
`
`[I Trademarks or
`DOCKET NO,
`15-ev-121-RGA
`PLAINTIFF
`
`MPatenL<. _( I: the patent action involves 35 USIC. § 292.):
`DATF, FILED
`U.S. DlS'l‘RlC'l' COURT
`7/17/2014
`Transferred to Delaware from Alabama
`DEFENDANT
`
`ADTRAN. Inc.
`
`TQ Delta, LLC
`
`PATENT OR
`DATE OF PATENT
`TRADEMARK NO.
`OR TRADEMARK
`1 See Attachment #1 —
`
`HOLDER OF PATENT OR TRADEMARK
`
`_-—— I
`
`DATE INCLUDED
`
`3/1 3/2015
`
`TRig£‘§/TRgRNO
`I See Attachment #2
`
`n the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`E] Amendment
`
`Z Answer
`
`I] Cross Bill
`
`C] Other Pleading
`
`%’}T§R‘:FD‘;’{E§l:
`
`HOLDER or PATENT on TRADEMARK
`
`In the abovegentitled 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 patcnt(s), mail this copy to Director Copy 4-——Case file copy
`
`DISH
`
`Exhibit 1005 Page 16
`
`DISH
`Exhibit 1005 Page 16
`
`

`
`Case 1:15—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
`
`S. 7,809,028 B2
`
`10/05/2010
`
`3.U. S. 7,978,706 B2
`
`4.U.S. 8,422,511 B2
`
`5.U. 5. 5,445,730 B1
`
`6.U.S. 7,292,627 B2
`
`7/12/2011
`
`4/16/2013
`
`9/03/2002
`
`11/6/2007
`
`7.U.
`
`8.U.
`
`5. 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
`
`11/16/2010
`
`13. u.s. 7,844,882 B2
`
`14.
`
`us. 7§89,734 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
`
`7/10/2012
`
`21. u.s. 8,238,412 B2
`
`08/07/2012
`
`22. U.S. 8,276,048 B2
`
`3 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
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`DISH
`
`Exhibit 1005 Page 17
`
`DISH
`Exhibit 1005 Page 17
`
`

`
`Case 1:15—cv—O0121—RGA Document 42 Filed 03/13/15 Page 3 of 4 PagelD #: 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.5. 8,516,337 B2
`
`O8/20/2013
`
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`I TQ Delta, LLC
`4 TQ Delta, LLC
`‘ TQ Delta, LLC
`
`DISH
`
`Exhibit 1005 Page 18
`
`DISH
`Exhibit 1005 Page 18
`
`

`
`Case 1:15—cv—O0121—RGA Document 42 Filed 03/13/15 Page 4 of 4 PageID #: 1561
`Attachment #2
`
`PATENT OR
`
`DATE OF PATENT
`
`DISH
`
`Exhibit 1005 Page 19
`
`DISH
`Exhibit 1005 Page 19
`
`

`
`Case 1:14—cv—O0954-UNA Document 3 Filed 07/17/14 Page 1 of 2 PageID #1 592
`A0 120 (Rev. 08/10
`
`TO:
`
`Mail Stop 8
`Director oflhe U.S. Patent and Trademark Office
`1’.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEIVIARK
`
`In Compliance with 35 U.S,C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`District Of Delaware
`on the following
`D Trademarks or
`[Z Patents. I ( E] the patent oction invoTves
`U.S.C. § é92.):V
`DOCKET NO.
`DATE FILED
`U.S. DISTRICT COURT
`7/18/2014
`
`District of Delaware
`
`PLAINTIFF
`
`TQ Delta, LLC
`
`DEFENDANT
`
`ADTRAN, Inc.
`
`PATENT OR
`DATE OF PATENT
`TRADEMARK NO.
`OR TRADEMARK
`I See —W
`
`'714
`
`3
`
`‘
`‘
`9
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO‘
`
`|:] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`I:l Answer
`
`I] Cross Bill
`.
`HOLDER OF PATENT OR TRADEMARK
`
`C] Other Pleading
`
`In the above—entitIecl case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy 1-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 4—Case file copy
`
`DISH
`
`Exhibit 1005 Page 20
`
`DISH
`Exhibit 1005 Page 20
`
`

`
`Case 1:14-cv-00954-UNA Document 3 Filed 07/17/14 Page 2 of 2 PagelD #: 593
`
`PATENT OR
`TRADEMARK NO.
`
` °.\lo\U1-h'vJ‘\)’_‘
`
`r—l>—I>-—-4>—l
`
`-&'~»Jl\>'-
`
`C:(‘
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1/3/2012
`12/6/2011
`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
`
`TQ Dena, LLC
`TQ Delta, LLC
`TQ Dena, LLC
`TQ Dena, LLC
`T Dena, LLC
`TQ Delta, LLC
`TQ Dena, 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 Dena, LLC
`TQ Dena, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`DISH
`
`Exhibit 1005 Page 21
`
`L s 8,090,008 132
`US 8,073,041 131
`US 7,292,627 132
`Ls 7,471,721 B2
`Us 8,218,610 132
`L's 8,355,427 132
`US 7,453,881 132
`1
`US 7,809,028 132
`Ls 7,978,706 132
`10 Us 8,422,511 B2
`US 7,889,784 132
`s 7,835,430 B2
`L s 7,570,686 132
`s 8,238,412 B2
`L s 8,432,956 B2
`—-1- ONll‘
`Ls 7,451,379 132
`1
`17 Ls 8,516,337 B2
`18 Ls 7,979,778 132
`19 US 7,925,958 B2
`s 8,462,835 132
`Us 8,594,162 132
`s 7,978,753 132
`ON
`s 6,445,730 B1
`3
`24 Us 8,611,404 132
`25
`‘s 8,437,382 B2
`26 Us 7,836,381 131
`27
`US 7,844,882 132
`28 Us 8,276,048 B2
`29 Us 8,495,473 132
`30 Ls 8,607,126131
`31
`Ls 7,831,890 132
`32
`L5 8,625,660 132
`
`— I
`
`l\) ._
`N
`
`
`
`DISH
`Exhibit 1005 Page 21
`
`

`
`Birch, Melvin (Akima)
`
`From:
`Sent:
`To:
`Subject:
`
`ded,nefrep|y@ded.uscourts.gov
`Wednesday, November 20, 2013 4:56 PM
`ded4ecf@ded.uscourts.gov
`Activity in Case 1:13—cv~O1835—RGA TQ Delta LLC v. Pace Americas Inc.
`Patent/Trademark Report to Commissioner
`
`This is an automatic e—mail message generated by the CM/ECF system. Please DO NOT RESPOND to
`this e—mail because the mail box is unattended.
`***NOTE TO PUBLIC ACCESS USERS*** Judicial Conference of the United States policy permits
`attorneys of record and parties in a case (including pro se litigants) to receive one free electronic copy of
`all documents filed electronically, if receipt is required by law or directed by the filer. PACER access fees
`apply to all other users. To avoid later charges, download a copy of each document during this first
`viewing. However, if the referenced document is a transcript, the free copy and 30 page limit do not
`apply.
`
`U.S. District Court
`
`District of Delaware
`
`Notice of Electronic Filing
`
`The following transaction was entered by Faman, Brian on 11/20/2013 at 4:56 PM EST and filed on 11/20/2013
`Case Name:
`TQ Delta LLC V. Pace Americas Inc.
`Case Number:
`l:13—cv—01835—RGA
`Filer:
`
`Document Number: 1
`
`Docket Text:
`Report to the Commissioner of Patents and Trademarks for PatentlTrademark Number(s) 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 7,978,706 B2; US 8,422,511 B2; US 7,889,784 B2; US
`7,835,430 B2; US 7,570,686 B2; US 8,238,412 B2; US 8,432,956 B2; US 7,451,379 B2; US
`8,516,337 B2; US 7,979,778 B2; US 7,925,958 B2; US 8,462,835 B2; US 7,836,381 B1; US
`7,844,882 B2; US 8,276,048 B2; US 8,495,473 B2; US 7,831,890 B2; . (Farnan, Brian)
`
`1:13-cv-01835-RGA Notice has been electronically mailed to:
`
`Brian E. Farnan
`
`bfarnan@farnan1aw.c0m, tfaman@farnan1aw.com
`
`Michael J. Farnan mfarnangagfamanlawcom, tfaman@farnan1aw.com
`
`1:13-cv-01835-RGA Filer will deliver document by other means to:
`
`The following document(s) are associated with this transaction:
`
`DISH
`
`Exhibit 1005 Page 22
`
`DISH
`Exhibit 1005 Page 22
`
`

`
`ded_nefrep|y@ded.uscourts.gov
`Wednesday, November 20, 2013 5:07 PM
`ded_ecf@ded.uscourts.gov
`Activity in Case 1:13—cv—01836-RGA TQ Delta LLC v. Zhone Technologies Inc.
`Patent/Trademark Report to Commissioner
`
`This is an automatic e-mail message generated by the CM/ECF system. Please DO NOT RESPOND to
`this e-mail because the mail box is unattended.
`***NOTE TO PUBLIC ACCESS USERS*** Judicial Conference of the United States policy permits
`attorneys of record and parties ina case (including pro se litigants) to receive one free electronic copy of
`all documents filed electronically, if receipt is required by law or directed by the filer. PACER access fees
`apply to all other users. To avoid later charges, download a copy of each document during this first
`viewing. However, if the referenced document is a transcript, the free copy and 30 page limit do not
`apply.
`
`U.S. District Court
`
`District of Delaware
`
`Notice of Electronic Filing
`
`The following transaction was entered by Faman, Brian on 11/20/2013 at 5:07 PM EST and filed on 11/20/2013
`Case Name:
`TQ Delta LLC v. Zhone Technologies Inc.
`Case Number:
`1:13—cv—01836-RGA
`Filer:
`
`Document Number: 1
`
`Docket Text:
`Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 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; US 8,422,511 B2; US
`7,796,705 B2; US 7,889,784 B2; US 7,835,430 B2; US 7,570,686 B2; US 8,238,412 B2; US
`8,432,956 B2; US 7,451,379 B2; US 8,516,337 B2; US 7,979,778 B2; US 7,925,958 B2; US
`8,462,835 B2; US 7,978,753 B2; US 6,445,730 B1; US 8,437,382 B2; US 7,836,381 B1; US
`7,844,882 B2; US 8,276,048 B2; US 8,495,473 B2; US 7,831,890 B2; US 8,335,956 B2; US
`8,468,411 B2; US 8,407,546 B2 . (Farnan, Brian)
`
`1:13-cv-01836-RGA Notice has been electronically mailed to:
`
`Brian E. Faman
`
`bfarnan@faman1aw.com, tfarnan@,faInan1aw.com
`
`Michael J. Faman
`
`rnfa.rnan@farnanlaw.c0m, tfaman(:c__1),famanlaw.com
`
`1:13-cv-01836-RGA Filer will deliver document by other means to:
`
`DISH
`
`Exhibit 1005 Page 23
`
`DISH
`Exhibit 1005 Page 23
`
`

`
`Case 1:13-cv—O2013—UNA Document 3 Filed 12/09/13 Page 1 of 2 Page|D #2 504
`A0120 Rev 08/10)
`
`TO:
`
`Mai] stop 3
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATE