throbber
Trials@uspto.gov
`571-272-7822
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` Paper No. 28
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` Entered: May 25, 2017
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`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`CHANBOND LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00234
`Patent 7,941,822 B2
`____________
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2016-00234
`Patent 7,941,822 B2
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`INTRODUCTION
`I.
`Petitioner, RPX Corporation (“RPX”), filed a Petition on
`November 20, 2015, requesting an inter partes review of claims 1–31 of
`U.S. Patent No. 7,941,822 B2 (Ex. 1001, “the ’822 patent”). Paper 1
`(“Pet.”). Patent Owner, ChanBond LLC (“ChanBond”), filed a Preliminary
`Response on March 10, 2016. Paper 6 (“Prelim. Resp.”). We determined
`that the information presented in the Petition demonstrated that there was a
`reasonable likelihood that RPX would prevail with respect to at least one
`challenged claim. Pursuant to 35 U.S.C. § 314, we instituted trial on
`June 6, 2016, as to claims 1–31 of the ’822 patent. Paper 7 (“Dec.”).
`After institution, ChanBond filed a Patent Owner’s Response.
`Paper 10 (“PO Resp.”). RPX filed a Reply to the Patent Owner’s Response
`to Petition. Paper 12 (“Pet. Reply”). Oral hearing was held January 30,
`2017, and the transcript of the oral hearing has been entered into the record
`as Paper 23.
`This final written decision is entered pursuant to 35 U.S.C. § 318(a).
`We have jurisdiction under 35 U.S.C. § 6.
`We hold that RPX has not demonstrated by a preponderance of the
`evidence that claims 1–31 of the ’822 patent are unpatentable under
`35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
`
`A. Related Matters
`The ’822 patent is asserted in several cases in the District of
`Delaware. Pet. 2–3; Paper 4, 2–3; Paper 15, 2–3. In addition, we have
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`instituted inter partes review of claims 1, 2, 5, 6, 19, 20, 23, and 29 of the
`’822 patent in IPR2016-01744.
`
`B. The ’822 Patent
`The ’822 patent is entitled “Intelligent Device System and Method for
`Distribution of Digital Signals on a Wideband Signal Distribution System.”
`Ex. 1001, [54]. The ’822 patent is directed to a “system and method for
`distribution of digital signals onto, and off of, a wideband signal distribution
`system.” Ex. 1001, 1:24–28. Specifically, the ’822 patent describes an
`“intelligent device” that receives an RF signal that has been modulated onto
`two or more RF channels, and combines that information back into a single
`stream. Id. at 10:55–11:31.
`Figure 5 is reproduced below:
`
`Figure 5 of the ’822 patent illustrates the signal path from intelligent device
`502 to addressable devices 202. Id. at 10:55–11:31.
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`As depicted in Figure 5, RF splitter 214 splits the signal entering
`intelligent device 502, and sends information regarding the RF channels in
`use to RF system channel detector 239. Id. at 10:55–60. In addition, the
`modulated RF signal is differentiated into an IP portion and a non-IP
`portion, according to the information frequency on the incoming carrier. Id.
`at 10:60–64. The non-IP portion of the signal passes through bandpass
`filter 216 and is fed to a standard RF television or computer outlet. Id.
`at 10:66–11:2. The IP portion of the signal passes through bandpass
`filter 218, and is demodulated by demodulator 220, which strips the RF
`carrier signal from the digital baseband signal. Id. at 11:15–20.
`Subsequently, the digital signals are combined by digital combiner 212, to
`achieve a parallel to serial conversion. Id. at 11:20–25. This signal is routed
`to addressable device 202. Id. at 11:25–31.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 19 are independent. Claim 1,
`reproduced below, is illustrative of the claimed subject matter.
`1.
`An intelligent device for receiving and processing RF
`signals, comprising:
`an input configured to receive a modulated RF signal
`containing multiple channels, and to receive channel in use
`information which identifies each channel in the modulated RF
`signal that includes information addressed to at least one
`addressable device;
`a demodulator unit configured to demodulate at least two
`channels contained in the modulated RF signal when the channel
`in use information identifies the at least two channels as
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`containing information addressed to the at least one addressable
`device; and
`a combiner configured to combine the at least two
`channels demodulated by the demodulator unit into a digital
`stream when the channel in use information identifies the at least
`two channels as containing information addressed to the at least
`one addressable device, and to output the digital stream to the at
`least one addressable device.
`Ex. 1001, 12:22–40. Claim 19 recites a similar device, but requires “a
`detector configured to detect each channel contained in the received
`modulated RF signal that includes information addressed to at least one
`addressable device, and to generate channel in use information identifying
`each channel that includes information addressed to the at least one
`addressable device” (id. at 15:5–10), in lieu of “an input configured to . . .
`receive channel in use information which identifies each channel in the
`modulated RF signal that includes information addressed to at least one
`addressable device” (id. at 12:24–28), as recited by claim 1.
`
`D. Prior Art Relied Upon
`In its Petition, RPX relies upon the following prior art references
`(Pet. 17–18, 40–41, 54–55, 56–57):
`Ollikainen
`US 6,377,981 B1
`Otten
`US 6,522,865 B1
`Grindahl
`US 7,633,893 B2
`Rakib
`US 2004/0172658 A1
`Haugli
`WO 99/49592
`
`Apr. 23, 2002
`Feb. 18, 2003
`Dec. 15, 2009
`Sept. 2, 2004
`Sept. 30, 1999
`
`(Ex. 1012)
`(Ex. 1011)
`(Ex. 1010)
`(Ex. 1007)
`(Ex. 1009)
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`Data-Over-Cable Service Interface Specifications, Radio Frequency
`Interface Specification, SP-RFI-I04-980724, Interim Specification (1998)
`(“DOCSIS 1.1.4”) (Ex. 1005).
`E. Instituted Grounds of Unpatentability
`We instituted the instant trial based on the following grounds of
`unpatentability:
`
`Claims
`
`Reference(s)
`Basis
`§ 103(a) Rakib and DOCSIS 1.1.4
`1–31
`1–9, 16, 19–25, 29, and 31 § 103(a) Haugli and Grindahl
`10, 11, and 26
`§ 103(a) Haugli, Grindahl, and Otten
`12–14, 17, 18, 27, and 28
`§ 103(a) Haugli, Grindahl, and Ollikainen
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the Specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation standard, claim terms are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in
`controversy need be construed, and only to the extent necessary to resolve
`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
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`1. “digital stream” and “digital information stream”
`Claims 1 and 19, the sole independent claims of the ’822 patent, each
`recite:
`a combiner configured to combine the at least two channels
`demodulated by the demodulator unit into a digital stream when
`the channel in use information identifies the at least two channels
`as containing information addressed to the at least one
`addressable device, and to output the digital stream to the at least
`one addressable device.
`Ex. 1001, 12:34–40; 15:16–23 (emphasis added). In addition, dependent
`claims 8, 16, 17, 25, and 31, further recite “the digital stream” or “a
`respective digital stream,” and dependent claims 13, 14, 18, 27, and 28 recite
`a “digital information stream.” Id. at 13:42–43, 14:11, 14:19, 14:48, 14:56,
`14:63, 16:16, 16:47, 16:54, 18:11.
`ChanBond contends that the “digital stream” of claims 1 and 19 must
`be “a common, i.e., the same, digital stream that is output to the at least one
`addressable device.” PO Resp. 27. ChanBond’s expert, Scott M. Nettles,
`Ph.D., elaborates on ChanBond’s conception of a “digital stream,” testifying
`that a “stream” is comprised of data packets that are part of the same
`communication, and that are differentiated from other packets in some way
`beyond that they share the same destination address. Ex. 2006 ¶ 18.
`Importantly, the packets of a stream are differentiated in some
`fashion (other than mere destination address) from other packets
`that may be transmitted over a common communication path so
`that the packets of the stream are recognized as being part of the
`same overall communication. This requires more than having
`the packets addressed to the same destination. Further
`information is needed so that the receiver recognizes the packets
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`as being part of a common communication and, often, have a
`relationship (e.g., temporal or otherwise) to one another.
`Id. This notion that the packets of a stream must be differentiated from other
`packets that may be sent over the same communication path, beyond by
`having a different destination address, is central to ChanBond’s contention
`that the challenged claims are nonobvious in view of Rakib and
`DOCSIS 1.1.4. See PO Resp. 27–37.
`RPX agrees with ChanBond that, as it is used in the ’822 patent, the
`claim term “digital stream” means “a common (i.e., the same) digital
`stream.” Pet. Reply 2 (quoting PO Resp. 27). RPX disagrees, however,
`with Dr. Nettles’ contention that the data packets of a digital stream “should
`somehow be related based on their content or have any other ‘relationship
`(e.g., temporal or otherwise)’ to one another.” Id. at 4 (quoting Ex. 2006
`¶ 18). In this regard, RPX asserts that “[t]he ’822 patent is agnostic as to the
`content of the packets that flow through its system.” Id. at 3–4.
`We agree with the parties that the “digital stream” and “digital
`information stream” of the ’822 patent refer, respectively, to “a common
`digital stream” and “a common digital information stream.” This
`understanding comports with the plain language of the claims. For example,
`independent claims 1 and 19 each recite “a combiner configured to combine
`the at least two channels demodulated by the demodulator unit into a digital
`stream when the channel in use information identifies the at least two
`channels as containing information addressed to the at least one addressable
`device[.]” Ex. 1001, 12:34–40, 15:17–23. Claims 13 and 27 likewise recite
`that “the combiner is configured to output the digital information
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`demodulated by the wireless demodulator unit as an outgoing digital
`information stream[.]” Id. at 14:9–12, 16:45–48. Thus, the claims
`contemplate combining channels, or information, into a common stream.
`The specification of the ’822 patent lends further support to this
`understanding of “digital stream” and “digital information stream.” For
`example, the specification teaches a preferred embodiment in which eight
`ten megabits per second signals are combined by a digital combiner such
`that “the signal exiting the digital combiner 410 would exit at eighty
`megabits per second.” Id. at 9:41–44. The resultant 80 megabits per second
`signal is subsequently described as an “80 megabits per second digital
`stream[.]” Id. at 10:12–13.
`The broadest reasonable interpretation of the claim terms “digital
`stream” and “digital information stream” includes no requirement, however,
`that the packets of the recited stream must be differentiated from other
`packets by more than destination address. As explained above, independent
`claims 1 and 19 of the ’822 patent describe the “digital stream” as the
`product of the combiner combining demodulated channels identified as
`having information addressed to an addressable device. Ex. 1001, 12:29–40,
`15:11–23. Claims 1 and 19 additionally state that the digital stream is output
`to the addressable device. Id. Neither claim 1 nor claim 19 recites further
`detail concerning the characteristics of the packets of the “digital
`stream.” Id.
`Moreover, the dependent claims of the ’822 patent suggest that a
`“stream” may include unrelated content from different sources that is
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`addressed to different destinations. For example, claims 14 and 28, which
`depend indirectly from claims 1 and 19, respectively, recite that the
`“combiner is configured to combine the digital information demodulated by
`the wireless demodulator unit with digital information received from at least
`one addressable device, and output the combined digital information as the
`outgoing digital information stream to the wideband distribution unit.”
`Ex. 1001, 14:14–19, 16:49–54. Thus, by their plain language, these claims
`contemplate that the digital information to be combined may be received
`from more than one addressable device, and remain agnostic regarding the
`relationship between the packets in a stream, or the ultimate destination of
`those packets. See Ex. 1020, 96:11–97:8 (testimony by Dr. Nettles that
`claims 13 and 14 of the ’822 patent refer to a “digital information stream”
`that may include packets from different devices, relating to different content,
`going to different destinations).
`The specification of the ’822 patent is likewise consistent with an
`understanding of the claim terms “digital stream” and “digital information
`stream” as being free from any requirement that the packets of the recited
`stream be differentiated from other packets by more than destination
`address. Aside from the claims themselves, the specification of the ’822
`patent uses the term “digital stream” in only a single instance, to describe
`signal throughput (the specification nowhere uses the term “digital
`information stream”). Ex. 1001, 10:10–14. The specification explains that
`“the channel width can, for example, be increased from 6 MHz per channel
`to 12 MHz per channel in order to accommodate, for example, the
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`80 megabits per second digital stream, if adjacent channel space is available
`or unused.” Id. Notably absent from the discussion of the “digital stream”
`in the specification of the ’822 patent is any mention of a requirement that
`the packets of such a stream must be related to each other, or must otherwise
`be differentiated from other packets that may be transmitted over the same
`communications path based on something beyond destination address. Id.
`Rather, as Dr. Nettles acknowledges, the 80 megabit per second digital
`stream described in the specification includes data “coming from different
`devices” (Ex. 1020, 79:4–6), that is “not all related to the same content” (id.
`at 79:16–19).
`Accordingly, while we agree with the parties that the broadest
`reasonable interpretations of the claim terms “digital stream” and “digital
`information stream” refer, respectively, to “a common digital stream” and “a
`common digital information stream,” we decline to read into those claim
`terms any requirement that the relevant “stream” be comprised of data
`packets that are part of the same communication, and that are differentiated
`from other packets in some way beyond that they share the same destination
`address. Nevertheless, for completeness, we observe that our conclusions
`regarding the obviousness of the challenged claims under each instituted
`ground of unpatentability, set forth below, apply with equal force regardless
`of whether the terms “digital stream” and “digital information stream” are
`deemed to require that the packets in the relevant stream be comprised of
`data packets that are part of the same communication, and differentiated
`from other packets in some way beyond by destination address.
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`2. Other Claim Terms
`In the Decision on Institution, we concluded that the claim terms
`“when,” “detector,” “additive signal,” and “channel identification
`information,” for which RPX proffered constructions in its Petition (Pet. 7–
`9), did not require express construction, and should be given their plain and
`ordinary meaning. Dec. 6. Neither RPX nor ChanBond challenges our
`determination that the plain and ordinary meaning of each of these terms
`applies in the instant proceedings. Pet. Reply 1 (“RPX agrees with the
`Board that affording those terms their ordinary and customary meaning is
`appropriate for the purposes of these proceedings.”); PO Resp. 21 (“[T]he
`term ‘when’ requires only its ‘ordinary and customary meaning.’ . . . [T]he
`term ‘detector’ is used in accordance with its regular and customary
`meaning[.]”), 25 (“Insofar as this construction is consistent with the
`‘ordinary and customary meaning’ of this term, Patent Owner agrees,
`however, it should not be limited unnecessarily by the cited examples from
`the specification referenced by Petitioner.”), 26 (“[T]he claim is plain in
`meaning as written, no further construction is necessary.”).
`Accordingly, we conclude that none of the claim terms “when,”
`“detector,” “additive signal,” and “channel identification information,”
`requires express construction, and afford each term its plain and ordinary
`meaning.
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`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In assessing obviousness,
`[o]ften, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this analysis
`should be made explicit.
`KSR, 550 U.S. at 418. “[R]ejections on obviousness grounds 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`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);
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`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`
`C. Obviousness Grounds of Unpatentability
`Based on Rakib and DOCSIS 1.1.4
`
`RPX asserts that claims 1–31 are unpatentable under § 103(a) as
`obvious in view of Rakib and DOCSIS 1.1.4. Pet. 17–40. Claims 2–18
`depend, directly or indirectly, from claim 1, and claims 20–31 depend,
`directly or indirectly, from claim 19. In support of its assertion, RPX relies
`upon the Declaration of Frank Koperda (“Koperda Declaration,” Ex. 1002),
`and the Declaration of Christie Poland (“Poland Declaration,” Ex. 1019).
`
`1. Rakib
`Rakib describes a gateway for coupling a local area network
`connected to peripheral devices located at a customer’s premises to “one or
`more external networks that deliver analog signals bearing analog video . . . ,
`or modulated with digital video-on-demand data, or IP packets bearing IP
`telephony data or data from the internet.” Ex. 1007, Abstract.
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`Figure 4A of Rakib is reproduced below:
`
`Figure 4A depicts “a gateway having ADSL, satellite, cable and broadcast
`TV antenna interface circuitry.” Id. at ¶ 30. Rakib discloses that the
`gateway functions to “deliver requested services to all the peripherals in the
`customer premises.” Id. at ¶ 120. Rakib explains that gateway 14 includes
`“the entire circuitry of a DOCSIS1.2 cable modem 70 therein.” Id. at ¶ 118.
`Rakib further states that “[a] DOCSIS modem module can be any known or
`future developed cable modem that conforms to the DOCSIS standard.” Id.
`at ¶ 265. Claims 10 and 26 of Rakib explicitly recite that the claimed cable
`modem “is compatible with the DOCSIS 1.2 national standard for cable
`modems as that standard existed as of the filing date of this patent
`application.” Id. at claim 10, claim 26.
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`2. DOCSIS 1.1.4
`DOCSIS 1.1.4 is a superseded interim specification drafted by cable
`operators as part of a telecommunications standard designed to facilitate the
`deployment of “high-speed data communications systems on cable television
`systems.” Ex. 1005, 1. In particular, DOCSIS 1.1.4 was intended to “allow
`transparent bi-directional transfer of Internet Protocol (IP) traffic, between
`the cable system headend and customer locations, over an all-coaxial or
`hybrid-fiber/coax (HFC) cable network.” Id.
`DOCSIS 1.1.4 describes a Downstream Transmission Convergence
`sublayer, which permits the transmission of services, such as digital video,
`over the physical-layer bit stream. Id. at § 3.6.1. This sublayer uses
`188-byte MPEG packets, which include a 4-byte header followed by a
`184 byte payload. Id. DOCSIS 1.1.4 explains that this sublayer may include
`a mixture of Media Access Control (“MAC”) payloads and those of other
`services, as dictated by the cable modem termination system (“CMTS”), i.e.,
`the headend controller for HFC modems. Id. at § 5.1. DOCSIS 1.1.4
`specifically exemplifies the interleaving of DOC MAC bytes with digital
`video. Id.
`
`3. Rationale to Combine
`RPX contends that a relevant skilled artisan would have had reason to
`incorporate the teachings of DOCSIS 1.1.4, including the MAC management
`messages, cable modem-CMTS interaction protocols, RSVP support, and
`cable modem configurations, into the communications network and gateway
`described by Rakib. Pet. 19–21; Ex. 1002 ¶¶ 104–106, 142–143.
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`In support of its position, RPX states that an ordinarily skilled artisan
`would have understood that the cable modems referenced by Rakib “would
`comply with the DOCSIS standard then in effect, i.e., DOCSIS 1.1, and
`would operate as discussed [in] paragraphs 52–100 of the Koperda
`declaration.” Pet. 19. RPX asserts also that an ordinarily skilled artisan
`would have found it obvious to apply the teachings of the
`DOCSIS specification (Ex. 1005) to the cable modem 70 Rakib
`discloses, particularly in view of Rakib’s express suggestion that
`the modem 70 can be DOCSIS compatible and Rakib’s multiple
`references to the use of DOCSIS modems and DOCSIS data.
`Pet. 19–20. RPX does not further elaborate on the purported rationale for
`combining Rakib and DOCSIS 1.1.4 in the Petition.
`ChanBond contends that “[a]s a threshold matter, Petitioner’s
`proposed combination fails.”1 PO Resp. 37. In particular, ChanBond asserts
`that the record is devoid of evidence that DOCSIS 1.1.4 was in effect at the
`
`
`1 ChanBond expressly contests the sufficiency of RPX’s asserted rationale
`for combining Rakib and DOCSIS 1.1.4 in its Patent Owner’s Response.
`PO Resp. 37–38. Although counsel for ChanBond misspoke during oral
`hearing and indicated that ChanBond had not raised the rationale for
`combining Rakib and DOCSIS 1.1.4 in the Patent Owner’s Response
`(Paper 23, 50:2–3), counsel concluded oral argument by stating that
`ChanBond rests on the arguments presented during the hearing “together
`with the arguments in our papers” (id. at 55:15–16). Accordingly, we
`determine that ChanBond did not waive, or otherwise withdraw its argument
`concerning the sufficiency of RPX’s rationale for combining the cited
`references. Furthermore, we observe, as detailed below, that irrespective of
`any statements by ChanBond’s counsel, RPX bears the burden of proving,
`by a preponderance of the evidence, that an ordinarily skilled artisan would
`have had reason to make the proposed combination. 35 U.S.C. § 316(e).
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`time of Rakib’s invention, or that DOCSIS 1.1.4 was even compatible with
`Rakib. Id. at 37–38. In this regard, ChanBond states that DOCSIS 1.1.5 had
`purportedly superseded DOCSIS 1.1.4 before the earliest priority date of
`Rakib, and thus, DOCSIS 1.1.4 would not have been in effect at the time of
`invention of Rakib. Id. at 38; see also Ex. 2006 ¶ 69. ChanBond further
`remarks, as acknowledged by RPX’s expert, Mr. Koperda (Ex. 1002 ¶ 104,
`n.3), that Rakib refers throughout to DOCSIS 1.2, and does not mention
`DOCSIS 1.1.4. PO Resp. 37. ChanBond, therefore, argues that RPX has
`not met its burden to show that an ordinarily skilled artisan would have had
`reason to combine Rakib and DOCSIS 1.1.4. Id.
`We find that the preponderance of the evidence does not support a
`conclusion that an artisan of ordinary skill would have had reason to
`combine the network gateway of Rakib with the protocols and formatting
`disclosed in DOCSIS 1.1.4.
`We are mindful that obviousness inquiry requires “an expansive and
`flexible approach.” KSR, 550 U.S. at 415. Such analysis “need not seek out
`precise teachings directed to the specific subject matter of the challenged
`claim, for a court can take account of the inferences and creative steps that a
`person of ordinary skill in the art would employ.” Id. at 418. It is
`axiomatic, however, that a determination 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.” Kahn, 441 F.3d at 988.
`
`18
`
`

`

`IPR2016-00234
`Patent 7,941,822 B2
`
`
`
`Although inter partes review may be instituted where it has been
`shown that “there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition” (35 U.S.C.
`§ 314(a)), “the burden of persuasion is on the petitioner to prove
`‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e),
`and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v.
`Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Therefore,
`petitioners must “adhere to the requirement that the initial petition identify
`‘with particularity’ the ‘evidence that supports the grounds for the challenge
`to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
`F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)).
`RPX has not met this requirement. Although we determined in the
`Decision on Institution that RPX had “articulated reasoning with rational
`underpinnings” as to why a relevant skilled artisan would have combined
`Rakib and DOCSIS 1.1.4 under the applicable reasonable likelihood of
`success standard (Dec. 11), we conclude that RPX has not met its burden to
`show––by a preponderance of the evidence––that a relevant skilled artisan
`would have had reason to combine Rakib and DOCSIS 1.1.4.
`Applying the preponderance of the evidence standard, as required at
`this stage in the proceeding, we find that the Petition does not adequately
`articulate a reason why an ordinarily skilled artisan at the time of invention
`of the ’822 patent would have sought to incorporate the relevant protocols
`and configurations of the DOCSIS 1.1.4 specification into the gateway of
`Rakib. See Pet. 19–20. RPX identifies “Rakib’s express suggestion that the
`
`19
`
`

`

`IPR2016-00234
`Patent 7,941,822 B2
`
`
`
`modem 70 can be DOCSIS compatible and Rakib’s multiple references to
`the use of DOCSIS modems and DOCSIS data” as supplying the rationale to
`combine the cited references. Id. at 19–20. We observe, however, that
`Rakib does not discuss DOCSIS compatibility in general, as RPX suggests,
`but rather, focuses explicitly on compatibility with DOCSIS 1.2. See, e.g.,
`Ex. 1007, Fig. 4A (“DOCSIS 1.2 MODEM”), claim 10 (“wherein said cable
`modem is compatible with the DOCSIS 1.2 national standard for cable
`modems as that standard existed as of the filing date of this patent
`application”), claim 26 (same), ¶ 53 (“The particular cable modem shown at
`70 is labelled as DOCSIS 1.2 compatible, but it can be any known cable
`modem design as can the external cable modem.”). Although the evidence
`of record indicates that DOCSIS 1.2 was never formally adopted (see
`Ex. 1002 ¶ 104 n.3; Ex. 1008, 2), Rakib is nevertheless unambiguously
`directed to a DOCSIS 1.2 compatible modem (see, e.g., Ex. 1007, Fig 4A,
`¶ 53, claim 10, claim 26).
`RPX does not offer adequate explanation as to why a relevant skilled
`artisan would have sought to combine Rakib with DOCSIS 1.1.4, when
`Rakib is addressed to DOCSIS 1.2, and makes no mention of DOCSIS 1.1.4.
`Nor does RPX explain why an ordinarily skilled artisan would have
`understood Rakib’s references to “DOCSIS 1.2 compatible,” “DOCSIS
`modem,” or “DOCSIS data” as suggesting combination with DOCSIS 1.1.4.
`In this regard, we highlight that RPX does not present evidence sufficient to
`establish any relationship between the cited portions of DOCSIS 1.1.4 and
`DOCSIS 1.2, or otherwise demonstrate a rationale for combining Rakib with
`
`20
`
`

`

`IPR2016-00234
`Patent 7,941,822 B2
`
`
`
`DOCSIS 1.1.4. Rather, RPX relies solely on Mr. Koperda’s unsupported,
`conclusory testimony (in a footnote) that any differences between
`DOCSIS 1.1.4 and DOCSIS 1.2 are “not relevant to the
`downstream/upstream RF channel management” (Ex. 1002 ¶ 104 n.3);
`testimony to which we give little weight (37 C.F.R. § 42.65(a)).
`RPX additionally attempts to bypass Rakib’s focus on DOCSIS 1.2 by
`arguing that an ordinarily skilled artisan “would have understood that the
`referenced cable modems would comply with the DOCSIS standard then in
`effect, i.e., DOCSIS 1.1,” and would operate as described in the Koperda
`Declaration. Pet. 19. But RPX’s ambiguity in referring to “DOCSIS 1.1” in
`general, rather than any particular revision of DOCSIS 1.1, is fatal to its
`position. RPX does not dispute Dr. Nettle’s (Chanbond’s expert) contention
`(Ex. 2006 ¶ 69) that DOCSIS 1.1.4 had been superseded by DOCSIS 1.1.5
`before the time of invention of Rakib. See Pet. Reply 11 (“Even if true, the
`existence of a new version of a specification would not, by itself, make it
`improper to use an older version of the same specification in an obviousness
`combination. That the resulting device might not be the ‘latest and greatest’
`is beside the point.”); Paper 23, 12:12–14 (“The fact that a new version came
`out doesn’t make it not obvious over the old version is the only point we're
`making.”). Accordingly, RPX’s argument that an ordinarily skilled artisan
`would have understood the modems described by Rakib as complying with
`“the DOCSIS standard then in effect” (Pet. 19) militates against a finding
`that an ordinarily skilled artisan would have sought to combine Rakib with
`
`21
`
`

`

`IPR2016-00234
`Patent 7,941,822 B2
`
`
`
`DOCSIS 1.1.4, and instead supports the conclusion that a relevant skilled
`artisan would have looked to DOCSIS 1.1.5.
`Moreover, the Petition lacks evidence sufficient to establish any
`relationship between the cited portions of DOCSIS 1.1.4 and DOCSIS 1.1.5,
`or otherwise lend support to a determination that a relevant skilled artisan
`would have turned to DOCSIS 1.1.4 when DOCSIS 1.1.5 was in effect.
`Instead, RPX relies so

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