`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`ARRIS Group, Inc.,
`
`Petitioner
`
`vs.
`
`TQ Delta, LLC
`Patent Owner
`
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 8,432,956
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ......................................................................... iv 
`
`I.  MANDATORY NOTICES ............................................................................... 1 
`
`A.  Real Party-in-Interest ................................................................................. 1 
`
`B.  Related Matters .......................................................................................... 1 
`
`C.  Lead and Back-up Counsel and Service Information ............................... 2 
`
`D.  Note Regarding Page Citations ................................................................. 3 
`
`II.  GROUNDS FOR STANDING .......................................................................... 3 
`
`III.  REQUESTED RELIEF ..................................................................................... 3 
`
`IV.  REASONS FOR THE REQUESTED RELIEF ................................................ 3 
`
`A.  Summary of the ’956 Patent ...................................................................... 4 
`
`B.  Prosecution History ................................................................................... 5 
`
`C.  Priority Date .............................................................................................. 6 
`
`D.  Summary of the Petition ............................................................................ 7 
`
`V. 
`
`IDENTIFICATION OF CHALLENGES AND CLAIM
`CONSTRUCTION ............................................................................................ 8 
`
`A.  Challenged Claims ..................................................................................... 8 
`
`B.  Statutory Grounds for Challenges ............................................................. 8 
`
`C.  Level of Ordinary Skill in the Art ............................................................. 8 
`
`D.  Claim Construction .................................................................................... 9 
`
`VI.  IDENTIFICATION OF HOW THE CONSTRUED CLAIMS ARE
`UNPATENTABLE .......................................................................................... 11 
`
`ii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`A.  Summary of the Prior Art ........................................................................ 11 
`
`1. 
`
`2. 
`
`3. 
`
`Summary of Milbrandt .................................................................... 11 
`
`Summary of Hwang ........................................................................ 12 
`
`Summary of ANSI T1.413 .............................................................. 12 
`
`B.  Reasons to Combine ................................................................................ 13 
`
`1.  Reasons to Combine Milbrandt with Hwang .................................. 13 
`
`2.  Reasons to Combine Milbrandt/Hwang with ANSI T1.413 ........... 15 
`
`C.  Challenge #1: Claims 1-10 are rendered obvious under 35 U.S.C.
`§ 103 by Milbrandt in view of Hwang and ANSI T1.413 ...................... 19 
`
`1. 
`
`Independent Claims ......................................................................... 19 
`
`2.  Dependent Claims ........................................................................... 48 
`
`VII.  CONCLUSION ................................................................................................ 52 
`
` 
`
`
`
`
`
`iii
`
`

`

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

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`1018 Valerie Illingworth and John Daintith, THE FACTS ON FILE
`DICTIONARY OF COMPUTER SCIENCE (Market House Books 2001)
`(selected pages)
`1019 Thomas Starr, John M. Cioffi, Peter J. Silverman, Understanding
`Digital Subscriber Line Technology, (Prentice Hall 1999) (selected
`pages)
`1020 Andrew S. Tanenbaum, COMPUTER NETWORKS (Prentice Hall 1996)
`(selected pages)
`1021 B. P. Lathi, Modern Digital and Analog Communication Systems
`(Oxford University Press 1998) (selected pages)
`1022 Behzad Razavi, RF MICROELECTRONICS (Prentice Hall 1997)
`(selected pages)
`1023 Declaration of David Bader
`
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`I. MANDATORY NOTICES
`A. Real Party-in-Interest
`
`Petitioner, along with 2Wire, Inc., are the real parties-in-interest.
`
`B. Related Matters
`
`To the best knowledge of the Petitioner, U.S. Patent No. 8,432,956 (“the
`
`’956 Patent”) is involved in the following litigations:
`
`Number
`1-15-cv-00611
`
`Court Filed
`DED
`Jul. 17, 2015
`
`Name
`TQ Delta LLC v. Comcast Cable
`Communications LLC
`TQ Delta LLC v. CoxCom
`TQ Delta LLC v. DIRECTV
`TQ Delta LLC v. DISH
`TQ Delta LLC v. Time Warner Cable
`TQ Delta LLC v Verizon
`Communications, Inc.
`Adtran Inc v. TQ Delta LLC
`TQ Delta LLC v. ADTRAN
`ADTRAN v. TQ Delta, LLC
`TQ Delta, LLC v. ZyXEL
`Communications Corp.
`TQ Delta, LLC v. 2Wire, Inc.
`TQ Delta LLC v. Zhone Techs. Inc.
`
`The ’956 Patent and related U.S. Patent Nos. 7,835,430 (“the ’430 Patent”)
`
`1-15-cv-00612
`1-15-cv-00613
`1-15-cv-00614
`1-15-cv-00615
`1-15-cv-00616
`
`DED
`DED
`DED
`DED
`DED
`
`Jul. 17, 2015
`Jul. 17, 2015
`Jul. 17, 2015
`Jul. 17, 2015
`Jul. 17, 2015
`
`1-15-cv-00121
`1-14-cv-00954
`5-14-cv-01381
`1-13-cv-02013
`
`Feb. 3, 2015
`DED
`Jul. 17, 2014
`DED
`ALND Jul. 17, 2014
`DED Dec. 9, 2013
`
`1-13-cv-01835
`1-13-cv-01836
`
`DED Nov. 4, 2013
`DED Nov. 4, 2013
`
`and 8,238,412 (“the ’412 Patent”) are involved in the following related matters:
`
`Name
`Petition for Inter Partes Review of the
`’430 Patent by ARRIS Group, Inc.
`Petition for Inter Partes Review of the
`
`Court Filed
`Number
`IPR2016-00428 PTAB
`Jan. 2, 2016
`
`IPR2016-00429 PTAB
`
`Jan. 3, 2016
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`IPR2016-00430 PTAB
`
`Jan. 3, 2016
`
`IPR2016-01006 PTAB May 6, 2016
`
`’956 Patent by ARRIS Group, Inc.
`Petition for Inter Partes Review of the
`’412 Patent by ARRIS Group, Inc.
`Petition for Inter Partes Review of the
`’430 Patent by Cisco Systems, Inc.
`Petition for Inter Partes Review of the
`’956 Patent by Cisco Systems, Inc.
`Petition for Inter Partes Review of the
`’412 Patent by Cisco Systems, Inc.
`Petition for Inter Partes Review of the
`’412 Patent by Cisco Systems, Inc.
`Petition for Inter Partes Review of the
`’430 Patent by DISH Network L.L.C.
`Petition for Inter Partes Review of the
`’412 Patent by DISH Network L.L.C.
`
`Concurrent with the filing of the present Petition for IPR of the ’956 Patent,
`
`IPR2016-01007 PTAB May 6, 2016
`
`IPR2016-01008 PTAB May 6, 2016
`
`IPR2016-01009 PTAB May 6, 2016
`
`IPR2017-00251 PTAB Nov. 11,
`2016
`IPR2017-00253 PTAB Nov. 11,
`2016
`
`Petitioner is also filing IPR petitions for the related ’412 and ’430 Patents.
`
`C. Lead and Back-up Counsel and Service Information
`
`LEAD COUNSEL
`John M. Baird (Reg. No. 57,585) / jmbaird@duanemorris.com
`DUANE MORRIS LLP
`505 9th Street, N.W., Suite 1000
`Washington, DC 20004
`Tel: (202) 776-7819
`Fax: (202) 379-9850
`
`BACK-UP COUNSEL
`Chris Tyson (Reg. No. 63,850) / cjtyson@duanemorris.com
`DUANE MORRIS LLP
`505 9th Street, N.W., Suite 1000
`Washington, DC 20004
`Tel: (202) 776-7851
`Fax: (202) 478-2620
`
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`D. Note Regarding Page Citations
`
`For exhibits that include suitable page numbers in their original publication,
`
`Petitioner’s citations are to those original page numbers and not to the page
`
`numbers added for compliance with 37 C.F.R. 42.63(d)(2)(ii).
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that it is not estopped or barred from requesting inter
`
`partes review of the ’956 Patent because this petition is accompanied by a motion
`
`for joinder. The one-year time bar of 35 U.S.C. §315(b) does not apply to a
`
`request for joinder. 35 U.S.C. § 315(b) (final sentence) (“[t]he time limitation set
`
`forth in the preceding sentence shall not apply to a request for joinder under
`
`subsection (c)”); 37 C.F.R. § 42.122(b).
`
`III. REQUESTED RELIEF
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-10 (all claims) of the
`
`’956 Patent, and cancel those claims as unpatentable.
`
`IV. REASONS FOR THE REQUESTED RELIEF
`
`As explained below the concepts described and claimed in the ’956 Patent
`
`were not novel. This Petition, supported by a declaration from Dr. Sayfe Kiaei,
`
`explains where each element is found in the prior art and why the claims would
`
`have been obvious to a person of ordinary skill in the art before the earliest
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`effective filing date.
`
`A.
`
`Summary of the ’956 Patent
`
`The ’956 Patent describes exchanging diagnostic and test information
`
`between transceivers over a digital subscriber line. Ex. 1001, 1:62-65. The
`
`diagnostic and test information are exchanged using multiple carriers with a higher
`
`order quadrature amplitude modulation scheme with more than 1 bit per carrier.
`
`Id., 3:56-59. The information exchanged includes power level per subchannel
`
`information. Id., 5:59-67; Ex. 1009, p. 11-14.
`
`Fig. 1 of the ’956 Patent illustrates a functional block diagram of an
`
`exemplary communication system capable of the claimed techniques.
`
`Ex. 1001, Fig. 1.
`
`Claims 1, 3, 5, 7, and 9 are each independent claims. Claims 1 and 5 relate to
`
`a transmitter and a method of transmitting a message, while claims 3 and 7 relate
`
`to a receiver and a method of receiving such a message. Claim 9 recites both
`
`
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`transmitter and receiver limitations. Claim 1 is generally representative:
`
`1. A transceiver capable of transmitting diagnostic information over a
`communication
`channel using multicarrier modulation
`comprising:
`a transmitter portion capable of transmitting a message, wherein the
`message comprises one or more data variables that represent the
`diagnostic information, wherein bits in the message are
`modulated onto DMT symbols using Quadrature Amplitude
`Modulation (QAM) with more than 1 bit per subchannel and
`wherein at least one data variable of the one or more data
`variables comprises an array representing power level per
`subchannel information.
`Ex. 1001, 8:47-58.
`
`B.
`
`Prosecution History
`
`The ’956 Patent was filed as U.S. Patent Application No. 13/476,310 (“the
`
`’310 application”) on May 21, 2012. See Ex. 1002. The ’310 application was filed
`
`with a preliminary amendment canceling the original claims and presenting new
`
`claims 47-52. Ex. 1002 at 188.
`
`In the first Office Action, claims 44-52 were rejected for nonstatutory
`
`obviousness-type double patenting over the related ’412 and ’430 Patents. Id. at
`
`103-07. The Applicants then submitted a terminal disclaimer (id. at 85) and added
`
`claim 53. Id. at 79. The Examiner then allowed claims 44-53, providing a reason
`
`for allowance that emphasized features of the “message” recited in each of the
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`independent claims:
`
`Claims are allowable over prior art of record because the cited
`references either singularly or in combination cannot teach or suggest
`uniquely distinct features used in combination of other claimed
`elements “the message comprises one or more data variables that
`represent the diagnostic information wherein bits in the message are
`modulated onto DMT symbols using Quadrature Amplitude
`Modulation (QAM) with more than 1 bit per subchannel and wherein
`at least one data variable of the one or more data variables comprises
`an array representing power level per subchannel information”.
`
`Id. at 61-62 (emphasis original). The ’956 patent issued on April 30, 2013.
`
`C.
`
`Priority Date
`
`The ’956 Patent claims priority to two provisional applications, but the
`
`claims are not entitled to the benefit of either provisional filing date.
`
`Provisional Application No. 60/224,308 was filed on August 10, 2000. The
`
`’308 Provisional Application names as inventors Murat Belge, Michael A Tzannes,
`
`and Halil Padir. Ex. 1007 at 1, 3. None of these individuals is a named inventor on
`
`the ’956 Patent. Because there is no overlap of inventorship, the ’956 Patent is not
`
`entitled to the benefit of the filing date of the ’308 Provisional Application. 35
`
`U.S.C. § 119(e)(1); MPEP 211.01(a).
`
`Provisional Application No. 60/174,865 was filed on January 7, 2000. The
`
`’865 Provisional Application describes “bits that are modulated by using 1 bit per
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`DMT symbol modulation.” Ex. 1008 at 5. The application does not describe using
`
`Quadrature Amplitude Modulation (QAM) with more than 1 bit per subchannel, as
`
`required by every claim of the ’956 Patent. The application also does not describe
`
`an array representing power level per subchannel information, as required by every
`
`claim of the ’956 Patent. Accordingly, the ’956 Patent is not entitled to the benefit
`
`of the filing date of the ’865 Provisional Application. 35 U.S.C. § 119(e)(1); MPEP
`
`211.05.
`
`D.
`
`Summary of the Petition
`
`Testing a communication line for its ability to support digital subscriber line
`
`(DSL) services, and exchanging test information, were not new as of the ’412
`
`Patent’s effective filing date in 2001. Specifically, the prior art recognized that a
`
`DSL communication link needed to measure the transmission characteristics of the
`
`telephone line over which it operates. Since DSL is a multicarrier communication
`
`technology, and since the transmission characteristics can vary significantly over
`
`the different carrier frequencies available, the prior art also recognized that the
`
`measurements should include separately measuring the noise and power of each
`
`carrier frequency. DSL standards had also adopted the transmission of data using
`
`quadrature amplitude modulation (QAM) with more than 1 bit per subchannel.
`
`Because the ’412 Patent’s claims simply use prior-art communication technology
`
`to exchange information gathered using prior-art line measurements, the claims are
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`unpatentable and should be canceled.
`
`V.
`
`IDENTIFICATION OF CHALLENGES AND CLAIM
`CONSTRUCTION
`A. Challenged Claims
`
`Claims 1-10 (all claims) of the ’956 Patent are challenged in this Petition.
`
`B.
`
`Statutory Grounds for Challenges
`
`Challenge #1: Claims 1-10 are obvious under 35 U.S.C. § 103(a) over U.S.
`
`Patent No. 6,636,603 to Milbrandt (“Milbrandt”) (Ex. 1011) in view of U.S. Patent
`
`No. 6,590,893 to Hwang et al. (“Hwang”) (Ex. 1013), and further in view of
`
`American National Standards Institute (ANSI) T1.413-1995 Standard, entitled
`
`“Network and Customer Installation Interfaces—Asymmetric Digital Subscriber
`
`Line (ADSL) Metallic Interface,” (“ANSI T1.413”) (Ex. 1014). Milbrandt was
`
`filed on July 30, 1999, and Hwang was filed on April 7, 1999. Thus, both
`
`Milbrandt and Hwang are prior art under § 102(e). ANSI T1.413 was approved on
`
`August 18, 1995, and published shortly thereafter, and is prior art under § 102(b).
`
`Ex. 1009, p. 30; Ex. 1023 ¶ 2. Also, the additional evidentiary references relied
`
`upon by Dr. Kiaei in his declaration were also publicly available. Ex. 1023 ¶¶ 3-9.
`
`C. Level of Ordinary Skill in the Art
`
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, the person of ordinary skill
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`in the art is someone knowledgeable concerning multicarrier communications.
`
`That person would have (i) a Master’s degree in Electrical and/or Computer
`
`Engineering, or equivalent training, and (ii) approximately five years of experience
`
`working in digital telecommunications. Ex. 1009, p. 15-16. Lack of work
`
`experience can be remedied by additional education, and vice versa. Id. at 16.
`
`D. Claim Construction1
`
`This Petition analyzes the claims consistent with the broadest reasonable
`
`interpretation in light of the specification. See 37 C.F.R. § 42.100(b). All claim
`
`terms not discussed below are to be given their broadest reasonable interpretation,
`
`as understood by a person of ordinary skill in the art consistent with the disclosure.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
` “during Showtime” (claims 9-10): The term “during Showtime” is not
`
`defined in the ’956 patent specification, but it does refer to “during showtime, e.g.,
`
`the normal steady state transmission mode, or the like.” Ex. 1001, 3:37-38.
`
`Showtime is a term of art used in DSL communication standards. Ex. 1009, p. 19.
`
`After a communication link is tested, “each modem notifies its peer that it is ready
`
`to enter normal communications, known in the standard as ‘showtime.’” Ex. 1019
`
`
` 1
`
` It is noted that there are other relevant terms that are discussed by Dr. Kiaei in his
`
`declaration at Ex. 1009 at 21-25.
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`at 379; see also Ex. 1014, p. 108. Consistent with the specification’s description
`
`and with its special meaning as a term of art, and for the purposes of this
`
`proceeding, a POSITA would have understood that the broadest reasonable
`
`interpretation of “during Showtime” includes “during normal communications of
`
`an ANSI T1.413-compliant device.” Ex. 1009, p. 20.
`
`“array” (claims 1-10): The ’956 patent does not provide an express
`
`definition for this term. Contemporary dictionaries define array to mean an
`
`“ordered collection of identical structures” (Ex. 1017, p. 71) or a “collection of
`
`data items . . . [that are] arranged in a particular order or pattern and are all of the
`
`same type” (Ex. 1018, p. 9). Consistent with the dictionary definitions and for the
`
`purposes of this proceeding, a POSITA would have understood that the broadest
`
`reasonable interpretation of “array” includes “an ordered collection of multiple
`
`data items of the same type.” Ex. 1009, p. 20-21.
`
`“transceiver” (claims 1-10): The word “transceiver” is a combination of the
`
`words transmitter and receiver. Ex. 1009, p. 21. The ’956 patent “refer[s] to the
`
`transceivers generically as modems.” Ex. 1001, 1:67-2:1. A dictionary of
`
`telecommunication terms defines a transceiver as “Any device that transmits and
`
`receives.” Ex. 1017 at 913. Consistent with the ’956 specification, and for the
`
`purposes of this proceeding, a POSITA would have understood that the broadest
`
`reasonable interpretation of “transceiver” includes a “device, such as a modem,
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`with a transmitter and receiver.” Ex. 1009, p. 22.
`
`VI.
`
`IDENTIFICATION OF HOW THE CONSTRUED CLAIMS ARE
`UNPATENTABLE
`A.
`
`Summary of the Prior Art
`
`Claims 1-10 of the ’956 Patent are rendered obvious under 35 U.S.C. §
`
`103(a) over Milbrandt and Hwang in view of ANSI T1.413. Ex. 1009, p. 31.
`
`1.
`
`Summary of Milbrandt
`
`Milbrandt describes technology that allows a digital subscriber line (DSL)
`
`service provider to test the telephone lines used to deliver service to its customers.
`
`Milbrandt’s system collects measurements of “line noise” and other characteristics
`
`using devices located at the customers’ premises. Ex. 1011, Abstract. The noise
`
`measurements and other information are transmitted from the customers’ premises
`
`to the service provider’s central office over the same telephone lines used to
`
`provide DSL service. Id., 11:38-53. Milbrandt describes using the collected
`
`measurements for various purposes, including determining a transmit power level
`
`for the modems providing DSL services and estimating the data rate capacity of the
`
`subscriber lines. Id., Abstract, 3:17-24, 10:18-24; Ex. 1009, p. 28-29.
`
`Milbrandt further describes how DSL services can provide for high speed
`
`data transmission and Internet access. Id., 1:30-39. The communication
`
`components in Milbrandt’s network use “ADSL [asymmetric DSL] techniques that
`
`comply with ANSI Standard T1.413, such as discrete multi tone (DMT)
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`modulation” to transmit and receive messages. Id., 9:33-34; Ex. 1009, p. 29.
`
`2.
`
`Summary of Hwang
`
`Hwang similarly describes a “network using discrete multi-tone (DMT)
`
`technology.” Ex. 1013, 4:58-59. More specifically, Hwang describes “higher-rate
`
`digital subscriber line communication schemes capable of utilizing twisted pair
`
`wiring from an office or other terminal node of a telephone network to the
`
`subscriber premises.” Id., 2:23-27. Like Milbrandt, Hwang employs ADSL
`
`techniques, and Hwang explains that ADSL uses discrete multi-tone (DMT)
`
`technology to divide the available frequency range into 256 distinct carriers, or
`
`tones. Id., 3:3-5; Ex. 1011, 9:31-34. Within each carrier, data is encoded using
`
`quadrature amplitude modulation (QAM) signals. Id., 3:1-3. Hwang explains that
`
`these techniques provide “effective high-speed data communications over twisted
`
`pair wiring between customer premises and corresponding network-side units, for
`
`example located at a central office of the telephone network.” Id., 3:15-19. Thus,
`
`Hwang provides additional details about the same standards-based ADSL
`
`communication technology described in Milbrandt. Ex. 1009, p. 29.
`
`3.
`
`Summary of ANSI T1.413
`
`ANSI T1.413 is a standards specification defining the electrical
`
`characteristics and signals used in Asymmetric Digital Subscriber Line (ADSL)
`
`communications. Ex. 1014, Abstract. The standard specifies the minimum
`
`12
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
`
`requirements for equipment implementing ADSL. Id.
`
`Among the features of ADSL is the encoding to data into discrete multitone
`
`(DMT) symbols. Id. at 23-34. Within each DMT subchannel, an ADSL transmitter
`
`encodes a variable number of bits of data using a constellation encoder. Id. at 43-
`
`45. A skilled artisan would have recognized the constellation encoder of ANSI
`
`T1.413 as performing QAM modulation. Ex. 1009, p. 30; see also Ex. 1016 at 188
`
`(“[E]ach of the numerous subchannels employs its own coding technique based on
`
`QAM.”).
`
`B. Reasons to Combine
`1.
`
`Reasons to Combine Milbrandt with Hwang
`
`Milbrandt describes communicating via digital subscriber line (DSL)
`
`techniques, including Asymmetrical Digital Subscriber Line (ADSL). Ex. 1011,
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`9:31-34. Hwang is similarly directed toward DSL communications to provide data
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`services using a subscriber’s existing twisted-pair copper telephone wiring. Ex.
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`1013, 2:30-36. Hwang further describes the data modulation techniques employed
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`by ADSL modems. As Hwang explains, “ADSL services utilize[] discrete multi-
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`tone (DMT) technology.” Id., 2:66-67. Hwang provides additional details about
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`ADSL services, beyond those expressly disclosed in Milbrandt, by explaining that
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`multitone (DMT) symbols are modulated using quadrature amplitude modulation
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`(QAM). Id., 2:67-3:3. This modulation technique allows up to 15 bits of data to be
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`transmitted with each symbol. Id., 3:11-12; Ex. 1009, p. 31.
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`A person of ordinary skill in the art would have found it obvious to combine
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`the teachings of Milbrandt and Hwang because Hwang provides additional details
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`of ADSL communication technology. Ex. 1009, p. 31-32. Because Milbrandt and
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`Hwang all describe different aspects of the same ADSL communication
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`technology, a person of ordinary skill in the art would have found it obvious to
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`refer to all of their teachings in implementing an ADSL communication system for
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`the purpose of obtaining a more complete understanding. Ex. 1009, p. 32.
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`Accordingly, it would have been obvious to a person of ordinary skill in the
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`art at the time to utilize up to 15 bits for each subchannel, as Hwang teaches, in the
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`communication system of Milbrandt, for the purpose of transmitting more data on
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`each subchannel. Ex. 1009, p. 32. Also, it would have been obvious to transmit
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`Milbrandt’s message (including the subscriber line information) by modulating bits
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`onto DMT symbols using QAM with up to 15 bits of data for each subchannel,
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`because it would allow for use of the communications channel already established,
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`which uses up to 15 bits of data for each subchannel, and allow for transmitting
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`more data on each subchannel. Id. Doing so would have resulted in a system that is
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`overall more efficient and has higher throughput. Id. A person of ordinary skill
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`would have understood that transmitting data at a higher throughput would have
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`practical implications such as improving service for customers and making the
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`system as whole commercially desirable in the marketplace. Id.
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`In short, the combination of Hwang with Milbrandt is nothing more than
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`applying Hwang’s known technique (i.e., using up to 15 bits per subchannel) to the
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`DSL system of Milbrandt that uses DMT/QAM, for the purpose of yielding
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`predictable results (e.g., transmitting data more efficiently, increasing throughput,
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`improving service for customers, and making the system as whole commercially
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`desirable in the marketplace.) Ex. 1009, p. 32-33; See, e.g., Dystar Textilfarben
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`GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, (Fed. Cir.
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`2006) (“Indeed, we have repeatedly held that an implicit motivation to combine
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`exists not only when a suggestion may be gleaned from the prior art as a whole, but
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`when the ‘improvement’ is technology-independent and the combination of
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`references results in a product or process that is more desirable, for example
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`because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or
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`more efficient. Because the desire to enhance commercial opportunities by
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`improving a product or process is universal—and even common-sensical—we
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`have held that there exists in these situations a motivation to combine prior art
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`references even absent any hint of suggestion in the references themselves.”)
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`2.
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`Reasons to Combine Milbrandt/Hwang with ANSI T1.413
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`A person of ordinary skill in the art would have combined the teachings of
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`Milbrandt and Hwang with the teachings of ANSI T1.413 because both Milbrandt
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`Petition for Inter Partes Review of U.S. Patent No. 8,432,956
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`and Hwang describe ADSL communication systems and ANSI T1.413 defines the
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`ADSL communication standard. Ex. 1009, p. 33. Because Milbrandt and Hwang
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`implement the technology standardized by ANSI T1.413, a person of ordinary skill
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`in the art would have referred to the ANSI T1.413 document for additional details
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`about how the ADSL communication equipment should function in accordance
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`with the standard. Id.
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`Additionally, Milbrandt specifically describes “using ADSL techniques that
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`comply with ANSI Standard T1.413.” Ex. 1011, 9:33-34. Hwang similarly refers
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`to details of the ADSL standard set by ANSI. Ex. 1013, 3:5. These explicit
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`references in Milbrandt and Hwang would direct a skilled artisan to combine the
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`teachings of Milbrandt and Hwang with the teachings of ANSI T1.413. Ex. 1009,
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`p. 33-34. Accordingly, a person of ordinary skill in the art would have utilized the
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`teachings of ANSI T1.413, in the communication system represented by the
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`combination of Milbrandt and Hwang for the purpose making its devices and
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`system compliant with the ANSI T1.413—which Milbrandt explicitly references as
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`a desirable feature. Id.
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`For example, with respect to noise information, ANSI T1.413 teaches that
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`the subscriber modem determines and provides a signal to noise ratio (SNR) to the
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`central office modem on demand for the purpose of system testing to thereby
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`improve signal quality and reliability. Ex. 1014, p. 103. It would have been
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`obvious to a person of ordinary skill in the art to have Milbrandt’s subscriber
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`modem to determine and transmit to the central office modem its SNR on demand
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`(as ANSI T1.413 teaches), because it would facilitate system testing, improve
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`signal quality and reliability, and allow for Milbrandt’s system to comply with the
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`ANSI T1.413 standard. Ex. 1009, p. 34.
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`As another example, ANSI T1.413 teaches that the subscriber modem
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`determines a power level per sub-carrier based on a REVERB signal received from
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`the central office modem. Ex. 1014, pp. 87, 94-95. It would have been obvious to a
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`person of ordinary skill in the art to have Milbrandt’s subscriber modem determine
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`its power level based on a REVERB signal (as ANSI T1.413 teaches), because
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`determining the power level per sub-carrier would allow the subscriber modem of
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`Milbrandt to adjust its automatic gain control (AGC) to an appropriate level, allow
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`the subscriber modem to send back upstream to the central office modem the
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`power levels to be used on each DMT sub-carrier, and make Milbrandt’s system
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`compliant with the ANSI T1.413 standard. Ex. 1009, p. 34-35. Making Milbrandt’s
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`system compliant with the ANSI T1.413 standard would be desirable because it
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`would allow for interoperability with other devices that are ANSI T1.413 standard
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`compliant, make the overall system more robust since it has been developed
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`through an accredited consensus process represented by the ANSI T1.413 standard,
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`and also make the system as whole commercially desirable in the marketplace. Id.,
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`p. 35.
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`Along with looking to the ANSI T1.413 standard for its specific
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`requirements to be standard compliant, a person of ordinary skill in the art would
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`have looked to ANSI T1.413 to gain a better understanding of how
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`communications are performed in general. Ex. 1009, p. 35. In one instance, with
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`respect to communications, ANSI T1.413 teaches that the modems transmit in an
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`orderly manner an array indexed by the sub-carrier number i to the upstream
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`central office modem (ATU-C). Ex. 1014, pp. 107 and 110.
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`A person of ordinary skill in the art would have recognized and it would
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`have been obvious to transmit information pertaining to sub-carrier frequencies as
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`an array (as ANSI T1.413 teaches), because it would allow for the information to
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`be transmitted in an ordered manner and allow the receiving modem to receive and
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`access the information on a per sub-carrier basis, without the need for additional
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`processing or reordering of the received information. Ex. 1009, p. 35-36. A skilled
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`artisan would have recognized that such an approach would minimize CPU
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`utilization and provide an overall more efficient and organized communication
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`approach. Id., p. 36.
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`In short, the combination of ANSI T1.413 with the system represented by
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`the combination of Milbrandt and Hwang is nothing more than applying the ANSI
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`T1.413’s known techniques (i.e., using a standardized approach and transmitting
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`Petition for I