IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`TQ DELTA, LLC,
`
`Plaintiff,
`
`v.
`
`COMMSCOPE HOLDING COMPANY, INC.,
`COMMSCOPE INC., ARRIS US HOLDINGS,
`INC., ARRIS SOLUTIONS, INC., ARRIS
`TECHNOLOGY, INC., and ARRIS
`ENTERPRISES, LLC,
`
`Defendants.
`
`Civil Action No. 2:21-cv-00310-JRG
`
`COMMSCOPE’S PRELIMINARY INVALIDITY CONTENTIONS
`
`Pursuant to Rule 3-3 of the Local Patent Rules (“P. R.”) of the Eastern District of Texas,
`
`Defendants CommScope Holding Company, Inc., CommScope, Inc., ARRIS US Holdings, Inc.,
`
`ARRIS Solutions, Inc., ARRIS Technology, Inc., and ARRIS Enterprises, LLC (collectively,
`
`“CommScope” or “Defendants”) hereby provide their Invalidity Contentions with respect to the
`
`claims identified by Plaintiff TQ Delta, LLC in its Disclosure of Asserted Claims and Infringement
`
`Contentions and Accompanying Document Production, served on November 4, 2021.
`
`I.
`
`PRELIMINARY STATEMENT
`
`In its Disclosure of Asserted Claims and Infringement Contentions, the asserted claims
`
`identified in Plaintiff’s cover pleading did not match the claims in the attached exhibits mapping
`
`the claims of the patents to the alleged infringing instrumentalities. CommScope made a
`
`reasonable effort to determine which claims TQ Delta was asserting and reserves the right to
`
`TQ Delta Exhibit 2024
`COMMSCOPE, INC. v. TQ DELTA LLC
`IPR2023-00066
`
`1
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`Page 1 of 105
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`

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`update these invalidity contentions if TQ Delta identifies additional asserted claims. An
`
`identification of asserted claims against CommScope is provided below.
`
`Family
`
`Patent
`
`Asserted Claims
`
`8,468,411
`
`10, 11, 17, 18, 19 and 25
`
`9,094,348
`
`1, 2, 3, 4, 9, 10, 11, and 12
`
`EDTX – Family 1
`
`9,485,055
`
`11, 17, and 19
`
`10,833,809
`
`1, 2, 3, 4, 6, 8, 9, 10, 11, 12, 13, 15, 16, 17, 18,
`20, 22, 23, 24, 25, and 27
`
`EDTX – Family 2
`
`8,937,988
`
`16 and 22
`
`9,154,354
`
`10, 11, and 12
`
`DDE – Family 1
`
`7,570,686
`
`17, 18, 19, 36, 37, 38, and 40
`
`DDE – Family 2
`
`7,453,881
`
`17, 18, 21, 23, 25, 26, 29, 31, 33, 34, 37, and 38
`
`DDE – Family 3
`
`7,844,882
`
`9, 13, 14, and 15
`
`8,276,048
`
`1, 5, 6, and 7
`
`DDE – Family 4
`
`8,090,008
`
`14
`
`DDE – Family 6
`
`8,462,835
`
`8, 10, 24, and 26
`
`10,567,112
`
`8, 10, 11, 12, and 14
`
`Pursuant to P. R. 3-3 and 3-4, CommScope hereby provides its invalidity disclosures and
`
`related documents pertaining to the asserted claims as identified by TQ Delta in its respective
`
`Infringement Contentions and as disclosed in the above table. With respect to each asserted claim
`
`and based on its investigation to date, CommScope hereby: (a) identifies each currently known
`
`item of prior art that either anticipates or renders obvious each asserted claim; (b) specifies whether
`
`such prior art anticipates each asserted claim or renders it obvious; (c) submits a chart identifying
`
`where each element in each asserted claim is disclosed, described, or taught in the prior art,
`
`2
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`

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`including for each element that is governed by 35 U.S.C. § 112 ¶ 6, the identity of the structure(s),
`
`act(s), or material(s) in each item of prior art (if any) that performs the claimed function; and (d)
`
`identifies the grounds for invalidating asserted claims based on indefiniteness under 35 U.S.C.
`
`§ 112 ¶ 2, enablement or written description under 35 U.S.C. § 112 ¶ 1. CommScope further relies
`
`on and incorporates all prior art references cited in the asserted patents and their respective
`
`prosecution histories. CommScope further relies on and incorporates by reference, as if originally
`
`set forth herein, all invalidity positions, and all associated prior art and claim charts, disclosed to
`
`TQ Delta by present or former defendants in any lawsuits or other proceedings1 or by potential or
`
`actual licensees to any of the asserted claims.
`
`In addition, based on its investigation to date, CommScope hereby produces the documents
`
`currently in its possession, custody, or control required to accompany these Invalidity Contentions
`
`pursuant to P. R. 3-4.
`
`Discovery has just begun. These contentions are made to the best of CommScope’s
`
`knowledge and understanding, which may change as facts and evidence are made available to it.
`
`Therefore, CommScope reserves the right to seek relief to amend and supplement these
`
`1 These lawsuits and proceedings include, but are not limited to, TQ Delta, LLC v. Nokia
`Corporation et al., No. 2:21-cv-00309-JRG (E.D. Tex. filed August 13, 2021); TQ Delta, LLC v.
`2Wire, Inc., No. 1:13-cv-01835-RGA (D. Del. filed November 4, 2013); ADTRAN Inc. v. TQ
`Delta, LLC, No. 1:15-cv-00121-RGA (D. Del. filed July 17, 2014); TQ Delta LLC v. ADTRAN
`Inc., No. 1:14-cv-00954-RGA (D. Del. filed July 17, 2014); ADTRAN, Inc. v. TQ Delta, LLC, No.
`5:24-cv-01381-JEO (N.D. Ala. filed July 17, 2014); TQ Delta v. ZyXEL Comms. Corp. et al., No.
`1:13-cv-02013-RGA (D. Del. filed December 9, 2013); TQ Delta, LLC v. Pace Ams., LLC et al.,
`No. 1:13-cv-01835-RGA (D. Del. filed November 4, 2013); TQ Delta, LLC v. Zhone Techs. Inc.,
`No. 1:13-cv-01836-RGA (D. Del. filed November 4, 2013); 2Wire, Inc. v. TQ Delta, LLC, No.
`IPR2015-00239 (P.T.A.B. filed on November 7, 2014); 2Wire, Inc. v. TQ Delta, LLC, No.
`IPR2015-00240 (P.T.A.B. filed on November 7, 2014); 2Wire, Inc. v. TQ Delta, LLC, No.
`IPR2015-00241 (P.T.A.B. filed on November 7, 2014);2Wire, Inc. v. TQ Delta, LLC, No.
`IPR2015-00242 (P.T.A.B. filed on November 7, 2014); 2Wire, Inc. v. TQ Delta, LLC, No.
`IPR2015-00243 (P.T.A.B. filed on November 7, 2014); 2Wire, Inc. v. TQ Delta, LLC, No.
`IPR2015-00247 (P.T.A.B. filed on November 7, 2014).
`
`3
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`

`

`contentions. In addition, the parties have vastly different interpretations of the asserted claims in
`
`this litigation. Indeed, CommScope maintains that none of its accused products infringe any of
`
`the asserted claims under a proper reading of the claims which include many narrowing claim
`
`terms. TQ Delta, for its part, however, advances overly broad readings of the claims in order to
`
`maintain its misguided infringement reads. CommScope reserves all rights with respect to the
`
`pending infringement claims, including that they are being brought in bad faith and that this case
`
`is exceptional.
`
`Nevertheless, to accommodate the vastly differing views of claim scope, these contentions
`
`are made to encompass the broader reading offered by TQ Delta as part of its infringement case.
`
`CommScope also notes that, under the proper reading of the claims, the asserted claims are still
`
`invalid in view of at least some of the art charted in these materials.
`
`No matter, any comparison of a claim term to the prior art expressly or implicitly using a
`
`construction offered by TQ Delta (in this or another case) is not a concession or admission to the
`
`correctness of that construction, and is simply done out of an abundance of caution in the event
`
`that such construction is adopted. Likewise, for any claim term CommScope contends to be
`
`indefinite, any comparison of that claim term to the prior art is not a concession that the term is
`
`definite, and instead is simply done out of an abundance of caution.
`
`All pin cites throughout these contentions are exemplary in nature. CommScope reserves
`
`the right to rely on supplemental citations and authorities to supplement all arguments made herein.
`
`CommScope also reserves the right to rely on additional citations to reply to any unforeseen
`
`rebuttals TQ Delta may make.
`
`II.
`
`IDENTIFICATION OF PRIOR ART PURSUANT TO P. R. 3-3(A)
`
`Pursuant to P. R. 3-3(a), and subject to CommScope’s reservation of rights, CommScope
`
`identifies each item of prior art that anticipates or renders obvious one or more of the asserted
`
`4
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`

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`claims. The sections below contain tables which identify each prior art publication in
`
`accordance with P. R. 3-3(a).
`
`III.
`A.
`
`INVALIDITY CONTENTIONS FOR EDTX – FAMILY 1
`
`INVALIDITY UNDER 35 U.S.C. § 102 AND/OR 35 U.S.C. § 103
`
`In accordance with P. R. 3-3(b) and (c), claims 10, 11, 17, 18, 19 and 25 of the ’411 Patent,
`
`claims 1, 2, 3, 4, 9, 10, 11, and 12 of the ’348 Patent, claims 11, 17, and 19 of the ’055 Patent, and
`
`claims 1, 2, 3, 4, 6, 8, 9, 10, 11, 12, 13, 15, 16, 17, 18, 20, 22, 23, 24, 25, and 27 of the ’809 Patent
`
`(the “EDTX – Family 1 Patents”) are anticipated and/or rendered obvious by at least the following
`
`references:
`
`Patents and Patent Applications
`
`Patent or Application
`No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Short Cite
`
`7,103,096 (B2)
`
`9,455,800 (B2)
`
`7,657,818 (B2)
`
`U.S.
`
`U.S.
`
`U.S.
`
`8,644,341 (B1)
`
`U.S.
`
`5,907,563
`
`7,099,401
`
`U.S.
`
`U.S.
`
`9/5/2006
`
`9/27/2006
`
`2/2/2010
`(Priority date is
`6/22/2005)
`
`2/4/2014
`(Priority date is
`9/26/2003)
`
`5/25/1999
`(Priority date is
`5/7/1996)
`
`9/29/2006
`(Priority date is
`12/15/1999)
`
`Mitlin
`
`Ysebaert
`
`Cioffi
`
`Petranovich
`
`Takeuchi
`
`Betts
`
`5
`
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`

`

`Patents and Patent Applications
`
`Patent or Application
`No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Short Cite
`
`7,124,333 (B2)
`
`U.S.
`
`
`
`10/17/2006
`(Priority date is
`11/30/1998)
`
`Fukushima
`
`Publications
`
`Title
`
`Date of
`Publication
`
`Author and/or
`Publisher
`
`Short Cite
`
`International
`Telecommunications
`Union
`Telecommunications
`Standardization Sector
`(“ITU T”)
`Recommendation No.
`G.992.1 (06/1999), entitled
`“Asymmetric digital
`subscriber line (ADSL)
`transceivers”
`
`ITU-T Recommendation
`No. G.992.3 (01/2005),
`entitled “Asymmetric
`Digital Subscriber Line
`Transceivers 2 (ADSL2)”
`
`ITU-T Recommendation
`No. (06/2004), entitled
`“Very High Speed Digital
`Subscriber Line
`Transceivers”
`
`ITU-T Study Group 15
`Temporary Document No.
`BI 089, entitled “G.gen:
`ARQ for ADSL
`Transceivers”
`
`6/22/1999
`
`International
`Telecommunications
`Union
`
`G.992.1 or
`G.dmt
`
`6/13/2005
`
`International
`Telecommunications
`Union
`
`G.992.3 or
`G.dmt.bis
`
`6/13/2004
`
`International
`Telecommunications
`Union
`
`G.993.1 or
`Gvdsl
`
`10/27/2000
`
`International
`Telecommunications
`Union
`
`BI-089
`
`6
`
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`

`

`The patents, publications, and references identified above qualify as prior art under 35
`
`U.S.C. §§ 102(a), 102(b), 102(e), and/or 102(g). The charts identified as Exhibits A-01 through
`
`A-08, B-01 through B-08, C-01 through C-07, and D-01 through D-08 demonstrate how the
`
`asserted claims of the EDTX – Family 1 Patents are anticipated and/or rendered obvious by the
`
`references above. Each chart identifies certain prior art to the asserted claims of the EDTX –
`
`Family 1 Patents and identifies at least one citation in the prior art reference where each claim
`
`element of the asserted claims is disclosed. Though the charts provide illustrative citations to
`
`where each claim element may be found in the prior art, the cited references may contain additional
`
`disclosures of each claim element as well, and CommScope reserves the right to assert that any
`
`claim element is disclosed in other portions of the cited references. In addition, CommScope
`
`identifies, and incorporates here by reference, all prior art of record in the prosecution history of
`
`the EDTX – Family 1 Patents (and all related patents and applications), and all prior art ITU-T
`
`Recommendations or other industry publications (such as ATM Forum, Broadband Forum, or
`
`similar groups’ publications, reports, or specifications), any of which may anticipate and/or render
`
`the asserted claims of the EDTX – Family 1 Patents obvious. Further, CommScope identifies any
`
`TQ Delta patents that claim the same priority date as the EDTX – Family 1 Patents and disclose
`
`the same subject matter and for which a terminal disclaimer was not filed during prosecution, under
`
`the doctrine of obviousness-type double patenting. Additional evidence regarding the features
`
`and elements of prior art references may be provided by witness testimony, or by additional
`
`documents and materials describing the prior art, that may be identified through the course of
`
`ongoing discovery and investigation.
`
`To the extent that a reference above is found to be missing a limitation of the asserted
`
`claims of the EDTX – Family 1 Patents, any one of the prior art references identified above may
`
`7
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`

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`be combined with any one or more of the other references identified above to render the asserted
`
`claims of the EDTX – Family 1 Patents obvious under 35 U.S.C. § 103. CommScope reserves the
`
`right to rely on the references listed above for motivation to combine, the state of the art and/or
`
`the background knowledge of one of ordinary skill in the art.
`
`In addition, any of the foregoing anticipatory or secondary prior art references listed above
`
`may be combined with any of the prior art of record in the prosecution history of the EDTX –
`
`Family 1 Patents (and all related patents and applications), or with any prior art ITU-T
`
`Recommendations or other industry publications (such as ATM Forum, Broadband Forum, or
`
`similar groups’ publications, reports or specifications), to render the asserted claims of the EDTX
`
`– Family 1 Patents obvious. Further, any of the foregoing prior art listed above may be combined
`
`with one another to render the asserted claims of the EDTX – Family 1 Patents obvious.
`
`No showing of a specific motivation to combine prior art is required to combine the
`
`references disclosed above and in the attached charts. The Supreme Court identified in KSR
`
`International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), a number of rationales that would support
`
`a finding that the asserted claims are obvious:
`
`A. the Asserted Claims combine prior art elements according to known methods to yield
`predictable results;
`
`B. the Asserted Claims involve the simple substitution of one known element for another
`to obtain predictable results;
`
`C. the Asserted Claims involve the use of a known technique to improve similar devices
`(methods, or products) in the same way;
`
`D. the Asserted Claims apply a known technique to a known device (method, or product)
`ready for improvement to yield predictable results;
`
`E. the Asserted Claims involve combinations of prior art references that would have
`been “obvious to try”—i.e., a person of ordinary skill in the art could have reached
`the Asserted Claims by choosing from a finite number of identified, predictable
`solutions, with a reasonable expectation of success;
`
`8
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`

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`F. the Asserted Claims are simply variations of work from one field of endeavor or a
`different one that would have been prompted based on design incentives or other
`market forces because the variations were predictable to one of ordinary skill in the
`art.
`
`KSR, 550 U.S. at 414–18 (rejecting Federal Circuit’s “rigid” application of motivation-to-combine
`
`test, and instead espousing “expansive and flexible” approach); see also Examination Guidelines
`
`for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in
`
`KSR International Co. v. Teleflex Inc., 72 Fed. Reg. 57,526 (Oct. 10, 2007). The Supreme Court
`
`has also held that a person of ordinary skill in the art is “a person of ordinary creativity, not an
`
`automaton,” that a motivation to combine may be simply “common sense,” and that “familiar items
`
`may have obvious uses beyond their primary purposes, and in many cases a person of ordinary
`
`skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR,
`
`550 U.S. at 420–21. The Supreme Court further held that it is sufficient that a combination of
`
`elements was “obvious to try,” holding that, “[w]hen there is a design need or market pressure to
`
`solve a problem and there are a finite number of identified, predictable solutions, a person of
`
`ordinary skill has good reason to pursue the known options within his or her technical grasp.” Id.
`
`at 421. Further, the Federal Circuit has held that a motivation to combine references may be
`
`implicit for patents based on improvements. DyStar Textilfarben GmbH & Co. Deutschland KG
`
`v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). The prior art references identified
`
`herein are almost universally within the field of the asserted patents and are directed to similar
`
`subject matter within that field. Additionally, any products, devices, or processes described in the
`
`references existed and/or were invented before or during the period in which the claimed
`
`inventions were developed, providing further motivation to combine them. CommScope reserves
`
`the right to rely on forthcoming testimony in this litigation.
`
`9
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`

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`To the extent TQ Delta challenges a combination of prior art with respect to a particular
`
`element, CommScope reserves all rights to supplement these contentions to further specify the
`
`motivation to combine the prior art. CommScope may rely on cited or uncited portions of the prior
`
`art, other documents, and/or expert testimony to establish that a person of ordinary skill in the art
`
`would have been motivated to modify or combine the prior art so as to render the claims invalid
`
`as obvious.
`
`One of ordinary skill in the art would have been motivated to combine one or more of the
`
`prior art references identified above to arrive at the combination of elements recited in each of the
`
`asserted claims of the EDTX – Family 1 Patents. The suggestion or motivation to modify or
`
`combine references for obviousness purposes is provided by the explicit and implicit teachings of
`
`the prior art identified by CommScope, the knowledge of one of ordinary skill in the art, and/or
`
`the nature of the claimed invention and the problem(s) purportedly being solved. As an initial
`
`matter, CommScope notes that each prior art reference is in or relates to the same field, high-speed
`
`communications, and more specifically, DSL networks. In addition, it would have been obvious
`
`to try combining the prior art references identified above because there were only a finite number
`
`of predictable solutions and/or because known work in one field or endeavor prompted variations
`
`based on predictable design incentives and/or market forces either in the same field or a different
`
`one. The combination of prior art references identified in these contentions would have been
`
`obvious because the combinations represent the known potential options with a reasonable
`
`expectation of success. Additionally, one of ordinary skill in the art would have been motivated
`
`to create combinations identified in these contentions using: known methods to yield predictable
`
`results; known techniques in the same way; a simple substitution of one known, equivalent element
`
`for another to obtain predictable results; and/or teaching, suggestion, or motivation in the prior art
`
`10
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`

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`generally. Also, market forces in the industry and the desire to improve features and performance
`
`would motivate the addition of features to systems as they become available; become smaller;
`
`become less expensive; become more commonly used; provide better performance; reduce costs;
`
`size or weight; or predictably achieve other clearly desirable results. For example, a person of
`
`ordinary skill in the art of data transmission knew error correction techniques, such as forward
`
`error correction and interleaving techniques, could be combined with data retransmission
`
`techniques, such as automatic repeat request protocols, long before the invention date—April 12,
`
`2006—associated with the asserted claims of the EDTX – Family 1 Patents. See, e.g., BI-089,
`
`Introduction (publicly available no later than October 27, 2000 (emphasis added)). Such a
`
`combination would have been motivated by the goals of improving performance and other
`
`functionalities of data transmission technology, such as DSL, and bolstering protections against
`
`data transmission errors. Id. The preceding motivation to combine references is exemplary only,
`
`and should not be used to limit these disclosures. There would have been substantial motivation
`
`to combine the prior art references prior to the invention date of April 12, 2006, and CommScope
`
`reserves the right to and intends to supplement the foregoing with expert and other testimony.
`
`More detailed bases for the motivation to combine specific references will be set forth in
`
`CommScope’s expert report(s) on invalidity following claim construction and discovery on
`
`validity issues.
`
`To the extent that TQ Delta raises any secondary considerations of non-obviousness, for
`
`example, in its expert reports, CommScope reserves the right to address any such considerations.
`
`B.
`
`INVALIDITY UNDER 35 U.S.C. § 112
`
`CommScope lists below exemplary grounds upon which it contends the asserted claims of
`
`the EDTX – Family 1 Patents are invalid for failure to meet one or more requirements of 35 U.S.C.
`
`§ 112. A more detailed basis for CommScope’s written description, enablement, and
`
`11
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`

`

`indefiniteness defenses will be set forth in CommScope’s expert report(s) on invalidity.
`
`CommScope reserves the right to supplement and/or amend these contentions based on § 112 in
`
`light of discovery on invalidity issues and on any other basis permitted by the Court or the
`
`applicable rules. Such supplementation and/or amendments may include, but are not limited to,
`
`invalidity contentions based on indefiniteness, lack of written description, and/or lack of
`
`enablement.
`
`1.
`
`Invalidity Under 35 U.S.C. § 112 ¶ 1
`
`35 U.S.C. § 112 ¶ 1 requires that the specification contain a written description of the
`
`invention. “[T]he hallmark of written description is disclosure.” Boston Scientific Corp. v.
`
`Johnson & Johnson, 647 F.3d 1353, 1361–62 (Fed. Cir. 2011) (citation omitted). The test for
`
`whether a specification adequately describes an invention is “whether the disclosure of the
`
`application relied upon reasonably conveys to those skilled in the art that the inventor had
`
`possession of the claimed subject matter as of the filing date. . . . [T]he test requires an objective
`
`inquiry into the four corners of the specification from the perspective of a person of ordinary skill
`
`in the art. . . . [It] is a question of fact.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336,
`
`1351 (Fed. Cir. 2010) (en banc); Boston Scientific, 647 F.3d at 1362.
`
`The enablement requirement of § 112 demands that the patent specification enable “those
`
`skilled in the art to make and use the full scope of the claimed invention without ‘undue
`
`experimentation.’” Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997)
`
`(quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). “[T]he scope of the claims must be
`
`less than or equal to the scope of the enablement.” Nat’l Recovery Tech., Inc. v. Magnetic
`
`Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999).
`
`The asserted claims of the EDTX – Family 1 Patents are invalid because the patent
`
`specification does not include sufficient description of the subject matter claimed, and the manner
`
`12
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`

`

`and process of using it, in such full, clear, concise, and exact terms as to enable any person of
`
`ordinary skill in the art to which it pertains to make and use the claimed subject matter without
`
`undue experimentation. CommScope further contends that the full scope of each asserted claim
`
`was not described with particularity in the specification to which priority is apparently sought,
`
`thereby setting forth insufficient detail to allow one of ordinary skill in the art to understand what
`
`is claimed and to recognize that the inventor(s) invented what is claimed. By way of example, and
`
`without limitation, at least the following elements are not enabled and/or fail to meet the written
`
`description requirement of § 112:
`
` “wherein the first type of packet comprises one or more PTM-TC (Packet Transfer
`
`Mode-Transmission Convergence) codewords” (’055 Patent, claim 17)
`
` “wherein the packet comprises a header field and a plurality of PTM-TC
`
`codewords, a plurality of ATM cells or a plurality of Reed-Solomon codewords,
`
`and” (’348 Patent, claim 1)
`
` “wherein the packet comprises a header field and a plurality of PTM-TC
`
`codewords, a plurality of ATM cells or a plurality of Reed-Solomon codewords,
`
`and” (’348 Patent, claim 9)
`
` “wherein the transmitted messages have a higher immunity to noise than the
`
`received packet” (’348 Patent, claim 2)
`
` “wherein the received messages have a higher immunity to noise than the
`
`transmitted packet” (’348 Patent, claim 10)
`
` “wherein the transmitted message has a higher immunity to noise than the received
`
`packet” (’809 Patent, claim 9)
`
` “wherein the received message has a higher immunity to noise than the transmitted
`
`13
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`

`

`packet” (’809 Patent, claim 16)
`
` “wherein the transmitted message has a higher immunity to noise than the received
`
`packet” (’809 Patent, claim 23)
`
`The asserted claims of the EDTX – Family 1 Patents (and all other claims in the asserted
`
`patents that include or depend from any claims that include any of the above limitations) are invalid
`
`because they fail to meet the enablement and/or written description requirements of § 112.
`
`The accused products do not infringe the asserted claims of the EDTX – Family 1 Patents
`
`based on a proper interpretation of the scope of those claims. To the extent the asserted claims of
`
`the EDTX – Family 1 Patents may eventually be construed so broadly as to cover the accused
`
`products, such a construction (or constructions) would render asserted claims of the EDTX –
`
`Family 1 Patents invalid for failure to meet the requirements of § 112 ¶ 1.
`
`2.
`
`Invalidity Under 35 U.S.C. § 112 ¶ 2
`
`Claims are indefinite under 35 U.S.C. § 112 ¶ 2 when they “fail to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). To the extent an asserted apparatus claim includes
`
`both apparatus and method limitations, that claim is invalid for indefiniteness under § 112 ¶ 2
`
`because it fails to identify or notify the public of what constitutes direct infringement. See IPXL
`
`Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005).
`
`The asserted claims of the EDTX – Family 1 Patents are also invalid because they fail to
`
`particularly point out and distinctly claim the subject matter that the purported inventors claimed
`
`(i.e., the claims are indefinite). A person of ordinary skill in the art to which the purported
`
`invention pertains would not understand the scope of each asserted claim when read in light of the
`
`specification. By way of example, and without limitation, at least the following claim terms are
`
`indefinite under § 112:
`
`14
`
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`
`

`

` “a multicarrier transceiver including a processor and memory operable to:” (’348
`
`Patent, claim 1)
`
` “wherein the transceiver is operable to retransmit the packet using the forward error
`
`correction encoder and the interleaver” (’348 Patent, claim 3)
`
` “a multicarrier transceiver including a processor and memory operable to:” (’348
`
`Patent, claim 9)
`
` “wherein the transceiver is operable to receive a retransmitted packet using the
`
`forward error correction decoder and the deinterleaver” (’348 Patent, claim 11)
`
` “A transceiver operable” (’055 Patent, claim 11)
`
`The asserted claims of the EDTX – Family 2 Patents (and all other claims in the asserted
`
`patent that include or depend from any claims that include any of the above limitations) are invalid
`
`because they fail to particularly point out and distinctly claim the subject matter that the applicants
`
`regarded as their invention.
`
`IV.
`A.
`
`INVALIDITY CONTENTIONS FOR EDTX – FAMILY 2
`
`INVALIDITY UNDER 35 U.S.C. § 102 AND/OR 35 U.S.C. § 103
`
`In accordance with P. R. 3-3(b) and (c), claims 16 and 22 of the ’988 Patent and claims 10-
`
`12 of the ’354 Patent (the “EDTX – Family 2 Patents”) are anticipated and/or rendered obvious by
`
`at least the following references:
`
`Patents and Patent Applications
`
`Patent or Application
`No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Short Cite
`
`6,516,027
`
`U.S.
`
`2/4/2004
`(application filed
`2/18/1999)
`
`Kapoor
`
`15
`
`Page 15 of 105
`
`

`

`Patents and Patent Applications
`
`Patent or Application
`No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Short Cite
`
`6,084,917
`
`U.S.
`
`7/4/2000
`(application filed
`12/16/1997)
`
`Kao
`
`WIPO PCT
`International
`Publication No. WO
`98/52312
`
`6,205,410
`
`5,790,550
`
`6,064,692
`
`9,154,354
`
`U.S. Provisional
`Application
`60/179539
`
`
`
`W.I.P.O.
`
`11/19/1998
`
`Chow 312
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`10/13/1998
`(application filed
`on 10/13/1998)
`
`Cai
`
`8/4/1998
`
`Peeters
`
`5/16/2000
`(application filed
`on 6/20/1997)
`
`7/24/2001
`(§ 102(e) date of
`February 11,
`2000)
`
`Chow 692
`
`Gross
`
`2/1/2000
`(date filed)
`
`Subramanian
`
`Publications
`
`Title
`
`Date of
`Publication
`
`Author and/or
`Publisher
`
`Short Cite
`
`Bandwidth optimized
`digital transmission
`techniques for spectrally
`shaped channels with
`impulse noise
`
`May 1993
`
`P.S. Chow,
`STANFORD
`UNIVERSITY
`
`Chow 1993
`
`16
`
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`
`

`

`Publications
`
`Title
`
`Date of
`Publication
`
`Author and/or
`Publisher
`
`Short Cite
`
`TNETD8000 Very High
`Bit-Rate Digital Subscriber
`Line (VDSL) Chipset
`Hardware and Software
`Evaluation Module (EVM)
`User’s Guide
`
`November 1999
`
`TEXAS
`INSTRUMENTS
`
`TNETD8000
`User Guide
`
`Providing the Right
`Solution for VDSL
`
`July 16, 1999
`
`TEXAS
`INSTRUMENTS,
`White Paper,
`
`Providing
`the Right
`Solution for
`VDSL
`
`The patents, publications, and references identified above qualify as prior art under 35
`
`U.S.C. §§ 102(a), 102(b), 102(e), and/or 102(g). The charts identified as Exhibits E-01 through
`
`E-11 and F-01 through F-07 demonstrate how the asserted claims of the EDTX – Family 2 Patents
`
`are anticipated and/or rendered obvious by the references above. Each chart identifies certain prior
`
`art to the asserted claims of the EDTX – Family 2 Patents and identifies at least one citation in the
`
`prior art reference where each claim element of the asserted claims is disclosed. Though the charts
`
`provide illustrative citations to where each claim element may be found in the prior art, the cited
`
`references may contain additional disclosures of each claim element as well, and CommScope
`
`reserves the right to assert that any claim element is disclosed in other portions of the cited
`
`references. In addition, CommScope identifies, and incorporates here by reference, all prior art of
`
`record in the prosecution history of the EDTX – Family 2 Patents (and all related patents and
`
`applications), and all prior art ITU-T Recommendations or other industry publications (such as
`
`ATM Forum, Broadband Forum, or similar groups’ publications, reports, or specifications), any
`
`of which may anticipate and/or render the asserted claims of the EDTX – Family 2 Patents obvious.
`
`Further, CommScope identifies any TQ Delta patents that claim the same priority date as the
`
`17
`
`Page 17 of 105
`
`

`

`EDTX – Family 2 Patents and disclose the same subject matter and for which a terminal disclaimer
`
`was not filed during prosecution, under the doctrine of obviousness-type double patenting.
`
`Additional evidence regarding the features and elements of prior art references may be provided
`
`by witness testimony, or by additional documents and materials describing the prior art, that may
`
`be identified through the course of ongoing discovery and investigation.
`
`To the extent that a reference above is found to be missing a limitation of the asserted
`
`claims of the EDTX – Family 2 Patents, any one of the prior art references identified above may
`
`be combined with any one or more of the other references identified above and the following
`
`references, all of which qualify as prior art under 35 U.S.C. §§ 102(a), 102(b), 102(e), and/or
`
`102(g), to render the asserted claims of the EDTX – Family 2 Patents obvious under 35 U.S.C.
`
`§ 103. CommScope reserves the right to rely on the references listed above for motivation to
`
`combine, the state of the art and/or the background knowledge of one of ordinary skill in the art.
`
`Publications
`
`Title
`
`Date of
`Publication
`
`Author and/or
`Publisher
`
`Short Cite
`
` Network and Customer
`Installation Interfaces –
`Asymmetric Digital
`Subscriber Line (ADSL)
`Metallic Interface
`
`August 1995
`
`American