Tria1s@,uspto.gov 4
`571-272-7822
`
`‘
`
`.
`
`Paper 18
`Entered: May 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZWIRE, INC.,
`
`Petitioner,
`
`V.
`
`TQ DELTA LLC,
`Patent Owner.
`
`Case IPR2015-00240
`
`Patent 8,090,008 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
`
`(2560-1003
`
`Cisco v. TO Delta
`
`Page 1 of 464
`
`CSCO-1003
`Cisco v. TQ Delta
`Page 1 of 464
`
`
`571-272-7822
`
`‘
`
`.
`
`Paper 18
`Entered: May 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZWIRE, INC.,
`
`Petitioner,
`
`V.
`
`TQ DELTA LLC,
`Patent Owner.
`
`Case IPR2015-00240
`
`Patent 8,090,008 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
`
`(2560-1003
`
`Cisco v. TO Delta
`
`Page 1 of 464
`
`CSCO-1003
`Cisco v. TQ Delta
`Page 1 of 464
`
`
`
`IPR2015-00240
`
`Patent 8,090,008 B2
`
`Petitioner 2Wire, Inc. filed a Petition (Paper 2, “Pet.”) to institute an
`
`inter partes review of claims 1 and 14 of U.S. Patent No. 8,090,008 B2
`
`(Ex. 1001, “the ’008 patent”) pursuant to 35 U.S.C. §§ 311-19. Patent
`
`Owner TQ Delta LLC filed a Preliminary Response (Paper 11, “Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314. Pursuant to 35 U.S.C.
`
`§ 314(a), the Director may not authorize an inter partes review unless the
`
`information in the petition and preliminary response “shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`
`we have decided not to institute an inter partes review.
`
`I. BACKGROUND
`
`A. The ’008 Patent
`
`The ’008 patent pertains to multicarrier communications systems,
`
`such as digital subscriber line (DSL) systems using discrete multitone
`
`modulation (DMT), where a transmitter communicates over a
`
`communication channel by modulating “[c]arrier signals (carriers) or
`
`sub-channels spaced within a usable frequency band of the communication
`
`channel.” Ex. 1001, col. 1, 11. 33-39. In such a system, the phase and
`
`amplitude of the modulated carrier signals typically “can be considered‘
`
`random” because they “result from the modulation of an arbitrary sequence
`
`of input data bits comprising the transmitted information.” Id. at col. 1,
`
`11. 48-52. 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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`(e.g., voltage, current, phase, frequency, power) to the time-averaged value
`
`of the signal parameter.” Id. at col. 1, 1. 60—col. 2, l. 25. According to the
`
`’008 patent, PAR is an important consideration in designing a DMT
`
`communication system because an increased PAR can result in high power
`
`consumption or clipping of the transmission signal. Id. at col. 2, 11. 8-27.
`
`Therefore, there was a need in the art for a system that can “effectively
`
`scramble the phase of the modulated carrier signals in order to provide a low
`
`PAR for the transmission signal.” Id. at col. 2, 11. 28-30.
`
`Figure 1 of the ’008 patent is reproduced below.
`
`Phase
`E Scrambler
`
`.
`Transmitter
`
`I /;
`Er’
`
`Remote
`Transceiver
`
`Transceiver 19
`
`FIG. 1
`
`Figure 1 above depicts transceiver l0 communicating transmission signal 38
`
`over communication channel 18 (e.g., a pair of twisted wires of a telephone
`line) to remote transceiver 14. Id. at col. 3, 11. 25-50. Quadrature amplitude _
`
`modulation (QAM) encoder 42 maps input serial data bit stream 54 in the
`
`time domain into parallel QAM symbols 58 in the frequency domain. Id. at
`
`col. 3, 1. 63-001. 4, l. 1. Modulator 46 modulateseach carrier signal with a
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`‘ different QAM symbol 58 so that the signals have the phase and amplitude
`
`associated with the respective QAM symbol 58 (and input serial bit stream
`54). Id. at col. 4, 11. 10-22. Phase scrambler 66 in ‘modulator 46 calculates a
`
`phase shift for each carrier signal and combines the calculated phase shift
`
`with the phase characteristic of the respective carrier signal. Id. at col. 4,
`
`1. 48—col. 5, l. 4, col. 6, I]. 41—53. Phase scrambler 66 calculates the phase
`
`shifi for a carrier signal by (1) determining one or more values
`“independently of the QAM symbols 58, and, therefore, independently of the
`
`bit value(s) modulated onto the carrier signal,” and (2) solving a
`
`“predetermined equation” using the value associated with the carrier signal.
`
`V Id. at col. 4, 11. 48-53, 64-67. For example, the value for a carrier signal
`
`may be “derived from one or more predefined parameters, such as a
`
`pseudo-random number generator.” Id. at col. 4, 11. 53—58. According to the
`’008 patent, the use of a value determined independently of the input bit 4
`
`values results in a lower PAR for the transmission signal. Id. at col. 2,
`
`1. 34-col. 3, l. 3. Transceiver 10 combines all of the carrier signals to form
`
`the transmission signal that is sent to remote transceiver 14. Id. at col. 8,
`
`ll. 17-22.
`
`B. Challenged Claims
`
`Claims 1 and 14 of the ’008 patent recite:
`
`1. A method for scrambling phase characteristics of
`carrier. signals in a first multicarrier transceiver that uses a
`plurality of carrier signals for modulating a bit stream, wherein
`each carrier signal has a phase characteristic associated with the
`bit stream, the method comprising:
`
`associating each carrier signal with a value determined
`independently of any bit value of the bit stream carried by that
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`respective carrier signal, the value associated with each carrier
`signal determined using a pseudo-random number generator;
`computing a phase shift for each carrier signal ‘based on
`the value associated with that carrier signal; and
`
`combining the phase shift computed for each respective
`carrier signal with the phase characteristic of that_ carrier signal
`so‘ as to substantially scramble the phase characteristics of the
`plurality of carrier signals, wherein multiple carrier signals
`corresponding to the scrambled carrier signals are used by the
`first multicarrier transceiver to modulate the same bit value.
`
`l4. A multicarrier system including a first transceiver
`that uses a plurality of carrier signals for modulating a bit
`stream, wherein each carrier signal has a phase characteristic
`associated with the bit stream, the transceiver capable of:
`
`associating each carrier signal with a value determined
`independently of any bit value of the bit stream carried by that
`respective carrier signal, the value associated with each carrier
`signal determined using a pseudo—random number generator;
`
`computing a phase shift for each carrier signal based on
`the value associated with that carrier signal; and
`
`combining the phase shift computed for each respective
`carrier signal with the phase characteristic of that carrier signal
`to substantially scramble the phase characteristics of the
`plurality of carrier signals, wherein multiple carrier signals
`corresponding to the scrambled carrier signals are used by the
`first transceiver to modulate the same bit value.
`
`C. The Prior Art
`
`Petitioner relies on the following prior art:
`
`Alleged admitted prior art in the Specification of the ’008
`patent at col.
`1,
`ll. 33-47, col. 3,
`11. 25-37, and Fig.
`1
`(Ex. 1001),
`and in U.S. Provisional Patent Application
`No. 60/164,134 (Ex. 1015) (“Admitted Prior Art”) (described at
`pages 17-18 of the Petition);
`
`Page 5 of 464
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`IPR20l5—0024O
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`Patent 8,090,008 B2
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`‘No.
`U.S. Patent
`(Ex. 1009, “Suzuki ’415”);
`
`5,694,415,
`
`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, “Fif1eld”); 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’.’).
`
`D. The Asserted Grounds
`
`g
`
`Petitioner challenges claims 1 and 14 of the ’008 patent on the
`
`following grounds:'
`
`Suzuki ’614, Suzuki ’4l5,
`and Admitted Prior Art
`
`_
`
`35 U.S.C. § 103(a)
`_
`
`Laroia, Suzuki ’415, and
`T1 .413
`'
`
`Fifield, Suzuki ’415, and
`Admitted Prior Art
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`1 Petitioner states that it “requests cancellation ofclaims 1 and 14 of the ’008
`patent as unpatentable under 35 U.S.C. §§ 102 and 103,” but does not
`include any ground under 35 U.S.C. § 102 in its Petition. See Pet. 14-15.
`
`6 .
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`E. Claim Interpretation
`
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs.,
`LLC, 778 F.3d 1271, 1278-82 (Fed. Cir. 2015). Petitioner argues that no
`
`terms in claims 1 and 14 require interpretation. Pet. 15-16. Patent Owner
`
`proposes interpretations for two phrases: “a value determined independently
`
`of any bit value” and “wherein multiple carrier signals corresponding to the
`
`scrambled carrier signals are used by the first transceiver to modulate the
`same bit value.” Prelim. Resp. 9-16. After reviewingthe parties’ papers,
`
`we determine that no claim terms require express interpretation for purposes
`
`of this Decision.
`
`II. DISCUSSION
`
`A. Obviousness Based on Suzuki ’6I4, Suzuki ’4I5, and
`Admitted Prior Art
`
`Petitioner contends that claims 1 and 14 are unpatentable over Suzuki
`
`’614, Suzuki ’415, and Admitted Prior Art under 35‘ U.S.C. § 103(a). Pet.
`27-35. Petitioner relies on Suzuki ’614 for the limitations recited in the
`
`preambles of the claims (e.g., transceiver, carrier signals) and “Suzuki ’614
`
`in combination with Suzuki ’415” for the three steps recited in the claims.
`
`Id. at 27-30. Petitioner provides a claim chart citing various portions of
`
`Suzuki ’6l4 and Suzuki ’415, and states that the claim chart is supported by
`
`the Declaration of Krista S. Jacobsen, Ph.D. Id. at 27, 31-35 (citing
`
`Ex. 1002 111] 157-200, App. A1).
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`I We are not persuaded that Petitioner has established a reasonable
`likelihood of prevailing on its asserted ground based on Suzuki ’614, Suzuki
`
`,
`
`’415, and Admitted Prior Art. “Section 103(a) forbids issuance of a patent
`
`' when ‘the differences between the subject matter sought to be patented and
`
`the prior art are such that the subject matter as a whole would have been
`I 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 '1 Co. v. Teleflex
`Inc., 550 U.S. 398, 405 (2007). A patent claim, however, “is not proved
`obvious merely by demonstrating that each of its elements was,
`independently, known in the prior art.” Id. at 418. “Rather, obviousness
`requires the additional showing that a person of ordinary skill at the time of
`
`the invention would have selected and combined those prior art elements in
`the normal course of research and development to yield the claimed
`4
`
`invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
`I Cir. 2011). For an obviousness analysis, “it can be important to identify a
`
`reason that would have prompted a person of ordinary skill in the relevant
`field to combine the elements in the way the claimed new invention does.”
`
`KSR, 550 U.S. at 418. Further, an assertion of obviousness “‘cannot be
`
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obViousness.”’ Id. (citing In re Kahn,-441 F .3d 977, 4988 (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 ’614, Suzuki ’4l5, and Admitted Prior Art to achieve the method of
`
`claim 1 or system of claim 14. Petitioner merely alleges that the claims
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`would have been “obvious” in View of the three items of prior art, and
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`describes how_ Suzuki ’6l4 and Suzuki ’4l 5 allegedly teach various aspects
`
`of the claims. See Pet. 27-30. For example, with respect to the step of
`
`“associating each carrier signal with a value determined independently of
`
`any bit value of the bit stream carried by that respective carrier signal,”
`
`Petitioner acknowledges that Suzuki ’614 does not “describe the details” of
`
`how the reference generates random phase shift data for each subcarrier, and
`
`argues that Suzuki ’415 teaches the generation of M-bit random numbers,
`
`which, according to Petitioner, are “determined independently of any bit
`value” because they are random. Id. at 28-29 (citing Ex. 1009, col. 1,
`11. 52-55, col. 3, 11. 25——30, col. 4, 11. 22—34). Petitioner then argues as
`
`follows:
`
`It would have been obvious to combine Suzuki ’614 with
`
`Suzuki ’415 in order to produce the subject matter of Claim 1.
`For example,
`it would have been obvious to compute the
`random phases disclosed in Suzuki
`’614 in the manner
`disclosed in Suzuki ’415 in order to produce the random phase
`shifts used in Suzuki ’614.
`
`Id. at 30 (citations omitted).
`
`Petitioner’s first statement that it “would have been obvious” to
`
`combine Suzuki ’614 with Suzuki ’415 is conclusory and does not
`
`demonstrate a reason to combine. See KSR, 550 U.S. at 417-18; Unigene,
`
`655 F.3d at 1360; In re Chaganti, 554 F. App’x 917, 922 Wed. Cir. 2014)
`
`(“It is not enough to say that there would have been a reason to combine two
`
`references because to do so would ‘have been obvious to one of ordinary
`
`skill.’ Such circular reasoning is not sufficient—more is needed to sustain
`
`an obviousness rejection.” (citation omitted)). Petitioner’s second statement
`
`also is insufficient, as it merely states the result of the asserted combination,
`
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`i.e., the basic components of Suzuki ’614 performing the random number
`
`calculations described in Suzuki ’41 5. It does not offer any rationale to
`
`modify the basic components of Suzuki ’6l4 to perform the calculations of
`
`Suzuki" ’415, or explain why an ordinarily skilled artisan would have
`
`incorporated the phase shift calculations of Suzuki ’415 into the system of
`
`Suzuki ’614. Further, the mere fact that Suzuki ’614 does not describe the
`
`“details” of its random phase shift data does not mean that a person of
`
`ordinary skill in the art would have looked to the particular calculations of
`
`Suzuki ’415. See Pet. 28-29. Indeed, as Patent Owner correctly points out,
`
`Suzuki ’614 only discloses the end result of phase shifis, without any detail
`
`as to how the phase shifts are calculated. See Prelim. Resp. 19-20;
`
`Ex. 1003, col. 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
`’4lS with Suzuki ’6l4 in reaching a conclusion of obviousness.
`
`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 ’4l5. See Pet. 27.
`
`Petitioner’s asserted ground is based on the combination of Suzuki ’614,
`
`Suzuki ’415, and Admitted Prior Art, but Petitioner does not cite anything
`
`from the Admitted Prior Art in its analysis of the ground in the Petition, or
`
`identify any reason why a person of ordinary skill in the art would have
`
`combined any Admitted Prior Art teachings with those of the other cited
`
`references. See id. at 27-35. 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. § 42.104(b)(4)-(5); Prelim. Resp.
`
`23-25.
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`We recognize that the Declaration of Dr. Jacobsen (Ex. 1002)-includes
`
`additional discussion regarding the combination of Suzuki ’6l4, Suzuki
`
`’4l5, and Admitted Prior Art. See, e.g., Ex. 1002 1[1| 196-200. That
`
`analysis, however, is not discussed adequately in the Petition itself, as
`
`Petitioner only includes blanket citations to forty-four paragraphs and
`
`a twenty-three-page appendix of the Declaration. See Pet. 27-30 (citing
`
`Ex. 1002 111} 157-200, App. A1). A petition seeking inter partes review
`
`must identify “[h]ow the construed claim is unpatentable under the statutory
`
`grounds identified” and “where each element of the claim is found in the
`
`prior art,” and must explain the “relevance of the evidence to the challenge
`
`, raised,” because the Board may “give no weight to the evidence where a
`
`party has failed to state its relevance or to identify specific portions of the
`
`evidence that support the challenge.” 37 C.F.R. § 42.104(b)(4)—(5); see also
`
`.37 C.F.R. § 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 12) (informative) (noting that “[o]ne purpose ofthe 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 claims 1 and 14 are unpatentable over Suzuki ’614,
`
`Suzuki ’4l5, and Admitted Prior Art.
`
`B. Obviousness Based on Laroia, Suzuki ’415, and T].413
`
`Petitioner’s asserted ground of unpatentability based on Laroia,
`
`Suzuki ’415, and T1 .413 under 35 U.S.C. § l03(a) suffers from the same
`
`deficiency as its ground based on Suzuki ’i6l4, Suzuki ’4l5, and Admitted
`
`Prior Art. See supra Section II.A; Prelim. Resp. 33-34. Petitioner relies on
`
`Laroia for the limitations recited in the preambles of claims 1 and 14 (e.g.,
`
`transceiver, carrier signals) as well as the “computing” and ‘‘combining’’
`
`steps of each claim, and relies on “Laroia in combination with Suzuki ’415”
`
`for the step recited in each claim of “associating each carrier signal with a
`value determined independently of any bit value of the bit stream carried by
`
`that respective carrier signal,” citing fifty-one paragraphs and an
`
`eighteen-page appendix of Dr. Jacobsen’s Declaration. Pet. 36-43 (citing
`
`Ex. 1002 111] 215-65, App. Bl). Again, Petitioner argues that the claims-
`would have been “obvious” in View of the three prior art references, but does
`
`not identify in the Petition any reason why an ordinarily skilled artisan
`
`would have incorporated the phase shift calculations of Suzuki ’4l5 into the
`
`system of Laroia. See id. at 36-39.
`With respect to T1 .413, Petitioner argues as follows:
`
`To the extent that some claimed aspect of the transceiver
`or multicarrier modulation is considered missing in Laroia, it
`would have been obvious from T1.413 in order to implement
`
`12
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`‘the multicarrier modulation and transmission disclosed in
`Laroia.
`It would have been obvious to combine the network
`
`structures disclosed in T1.413 to implement them with the
`Amulticarrier modulation and transmission systems disclosed in
`Laroia.
`
`Id. at 38 (citations omitted). These conclusory statements are insufficient,
`
`and Petitioner cannot rely on the more detailed analysis of Dr. Jacobsen, as
`
`that analysis is not discussed or reflected in the arguments made in the
`Petition itself. See id. at 36-43; KSR, 550 US. at 417—l8; Unigene, 655
`
`F.3d at 1360; Chaganti, 554 F. App’x at 922. Further, it is unclear what
`
`“network structures” in T1 .413 Petitioner is relying on for the asserted -
`
`combination, as Petitioner cites four figures and five pages of the lengthy
`
`standard document without pointing out any specific features. See Pet. 38,
`40 (citing Ex. 1006, 10-13, 132, Figs. 2-5). Petitioner has not shown
`sufficiently a reason to combine the teachings of T1 .413 with those ofLaroia
`
`and Suzuki ’4l 5 or explained sufficiently what aspects of the references
`
`would be combined
`
`Accordingly, Petitioner has not demonstrated a reasonable likelihood
`
`of prevailing on its assertion that claims 1 and 14 are unpatentable over
`
`Laroia, Suzuki ’415, and T1.4l3.
`
`C. Obviousness Based on Fzfield, Suzuki ’-415, and
`Admitted Prior Art
`
`Petitioner’s asserted ground of unpatentability based on Fifield, Suzuki
`
`’415, and Admitted Prior Art under 35 U.S.C. § l03(a) is deficient as well.
`
`See Prelim. Resp. 37-38. Similar to its ground based on Suzuki ’614,
`
`Suzuki ’415, and Admitted Prior Art, Petitioner relies on Fifield for the
`
`limitations recited in the preambles of claims 1 and 14 (e.g., transceiver,
`
`l3
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`carrier signals), relies on “Fifield, combined with Suzuki ’4l 5,” for the three
`
`steps recited in the claims, relies on “Fifield alone or in combination with
`
`Suzuki ’4l5, and the Admitted Prior Art,” for the limitation of ‘‘multiple 4
`
`carrier signals corresponding to the scrambled carrier signals .
`
`.
`
`. used by the
`
`first transceiver to modulate the same bit value,” and cites sixty-five
`
`paragraphs and a twenty-three-page appendix of Dr. Jacobsen’s Declaration.
`Pet. 44-52 (citing Ex. 1002 M 252-316, App. C1). Again, Petitioner merely
`
`alleges that the claims would have been “obvious,” without explaining in the
`
`Petition any reason why a person of ordinary skill in the art would have
`
`combined the teachings of the three items of prior art. Id. at 44-46.
`
`Petitioner also cannot rely on the more detailed analysis of Dr. Jacobsen,
`
`which is not discussed sufficiently in the Petition. Accordingly, Petitioner
`
`has not demonstrated a reasonable likelihood of prevailing on its assertion
`
`that claims 1 and 14 are unpatentable over Fifield, Suzuki ’4l5, and
`
`Admitted Prior Art.
`
`D. Conclusion
`
`We conclude that Petitioner has not demonstrated a reasonable
`
`likelihood that at least one of the challenged claims of the ’008 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.-
`
`Page 14 of 464
`
`
`
`IPR2015-00240
`
`Patent 8,090,008 B2
`
`HI. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’008 patent.
`
`Page 15 of 464
`
`
`
`IPR2015-00240
`
`Patent 8,090,008 B2
`
`PETITIONER:
`
`Jennifer A. Albert
`
`Eleanor M. Yost
`
`’ GOODWIN PROCTER LLP
`
`Ja1be1‘t@goodwinprocter.com
`eyost@goodwinprocte1'.com
`
`PATENT OWNER:
`
`Peter J. McAndrews
`
`Thomas J. Wimbiscus
`
`.
`
`-
`Christopher M. Scharff
`MCANDREWS HELD & MALLOY, LTD. -
`pmcandre-ws@mcandrews—ip.com
`wimbiscus@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`Page 16 of 464
`
`
`
`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
`
`Page 17 of 464
`
`
`
`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
`
`Page 18 of 464
`
`
`
`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
`
`Page 19 of 464
`
`
`
`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
`
`Page 20 of 464
`
`
`
`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
`
`Page 21 of 464
`
`
`
`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
`
`-&'~»J!\>'-
`
`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 Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`T Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`TQ Delta, LLC
`TQ Delta, LLC
`
`TQ Delta, LLC
`
`L S 8,090,008 B2
`US 8,073,041 B1
`US 7,292,627 B2
`LS 7,471,721 B2
`US 8,218,610 B2
`US 8,355,427 B2
`US 7,453,881 B2
`4
`US 7,809,028 B2
`LS 7,978,706 B2
`10 US 8,422,511 B2
`US 7,889,784 B2
`S7,835,430 B2
`L S 7,570,686 B2
`S 8,238,412 B2
`LS 8,432,956 B2
`—-.— ONll‘
`
`LS 7,451,379 B2
`4
`LS 8,516,337 B2
`17
`LS 7,979,778 B2
`18
`19 US 7,925,958 B2
`S 8,462,835 B2
`US 8,594,162 B2
`S 7,978,753 B2
`ON
`S 6,445,730 B1
`3
`24 US 8,611,404 B2
`25
`'S 8,437,382 B2
`26
`US 7,836,381 B1
`27
`US 7,844,882 B2
`28 US 8,276,048 B2
`29 US 8,495,473 B2
`30
`LS 8,607,126 B1
`31
`LS 7,831,890 B2
`32
`L5 8,625,660 B2
`
`— I
`
`l\) ._
`N
`
`
`
`Page 22 of 464
`
`
`
`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:
`
`Page 23 of 464
`
`
`
`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
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