UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ARRIS GROUP, INC.
`Petitioner
`
` v.
`
`TQ DELTA, LLC
`Patent Owner
`
`
`
`Case: IPR2016-00428
`
`U.S. PATENT NO. 7,835,430
`
`
`
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)-(d)
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ARRIS GROUP, INC.
`Petitioner
`
` v.
`
`TQ DELTA, LLC
`Patent Owner
`
`
`
`Case: IPR2016-00428
`
`U.S. PATENT NO. 7,835,430
`
`
`
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)-(d)
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`Introduction.............................................................................................. 1
`Introduction ............................................................................................ ..
`1
`
`
`
`I.
`I.
`
`II. Applicable Legal Standards..................................................................... 2
`II. Applicable Legal Standards ................................................................... .. 2
`
`
`
`III. Argument................................................................................................. 3
`III. Argument............................................................................................... .. 3
`
`IV. Conclusion............................................................................................... 10
`IV. Conclusion ............................................................................................. .. 10
`
`
`CERTIFICATE OF SERVICE
`CERTIFICATE OF SERVICE
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`2
`
`Arnold P’ship v. Dudas,
`362 F.3d 1338 (Fed. Cir. 2004)
`In re Gartside,
`203 F.3d 1305 (Fed. Cir. 2000)
`Star Frutis S.N.C. v. U.S.,
` 393 F.3d 1277 (Fed. Cir. 2005)
`Merial Ltd. v. VIRBAC,
`Case IPR2014-01279 (PTAB April 15, 2015) (Paper 18)
`KSR Int'l Co. v. Teleflex Inc.
`
`550 U.S. 398, 418 (2007)................................................................................ 3, 6
`In re Kahn
`
`441 F.3d 977, 988 (Fed. Cir. 2006)..................................................................... 3
`Standard Oil Co. v. American Cyanamid Co.
`
`774 F.2d 448, 454 (Fed. Cir. 1985).................................................................... 6
`Hand Quilter, Inc. v. Bernina Int’l AG,
`
`Case IPR2014-00270 (PTAB December 30, 2014) (Paper 17)......................... 8
`
`
`2
`
`2
`
`3
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71...................................................................................................1- 3
`35 U.S.C. § 103........................................................................................................ 1
`35 U.S.C. § 314........................................................................................................ 4
`
`ii
`
`
`
`
`
`
`
`PETITIONER’S EXHIBIT LIST
`
`
`Ex.
`No.
`1001 U.S. Patent No. 7,835,430 to Krinsky (“’430 Patent”)
`1002 Declaration of Lance McNally
`
`Brief Description
`
`1003 Curriculum Vitae of Lance McNally
`
`1004 Telebit T2500 Reference Manual (90100-02 Rev. C) (“T2500
`Manual”)
`1005 Telebit T1000 Reference Manual (90062-02 Rev. E) (“T1000 Manual”)
`1006 Held, Gilbert, “Data Communications Networking Devices: Operation,
`Utilization and LAN and WAN Internetworking, 4th,” Dec. 22, 1998.
`(“Held-DataComDev4”)
`1007 Wiley publication page for Held, Gilbert, “Data Communications
`Networking Devices: Operation, Utilization and LAN and WAN
`Internetworking, 4th,” Jan. 1999
`(http://www.wiley.com/WileyCDA/WileyTitle/productCd-
`047197515X.html)
`1008 US Patent 4,679,227, “Ensemble modem structure for imperfect
`transmission media” to Dirk Hughes-Hartogs (“’227 Patent”)
`
`1009 US Patent 4,833,706, “Ensemble modem structure for imperfect
`transmission media” to Dirk Hughes-Hartogs (division of 4,731,816,
`which is a division of 4,679,227) (“’706 Patent”)
`1010 US Patent 4,438,511, “Packetized ensemble modem” to Paul Baran
`(“’511 Patent”)
`
`1011 US Patent 5,838,268, “Apparatus and Methods for Modulation and
`Demodulation of Data” to Liron Frenkel (“’268 Patent”)
`
`1012 US Patent 5,961,589, “Emulation of Analog Modem Signaling Over
`ISDN for Translation-Less Interoperability with PSTN Based H.324
`System” to Carl C. Hansen
`1013 Telebit Trailblazer Datasheet from USPTO Trademark File History for
`“Telebit”, S/N: 73/480,840. (Received by USPTO on Aug. 15, 1986)
`
`
`
`iii
`
`
`
`Brief Description
`
`Ex.
`No.
`1014 Cover Page and Table of Contents for “Packetized Ensemble Protocol
`Modem[:] Firmware Release 3 [-] Commands and Registers Reference
`Manual[,] October 1987” from USPTO Trademark File History for
`“Packetized Ensemble Protocol”, S/N 73/565,517. (Received by
`USPTO on March 2, 1992)
`1015 George Gilder, “Inventing the Internet again,” Forbes ASAP, June 1,
`1997. (http://www.discovery.org/a/20) (“Gilder”)
`
`1016
`
`“Telebit introduces asynchronous error correcting modem,”
`Computerworld, July 22, 1985, pp. 63, 68.
`
`1017
`
`Jim Schefter, “Fast-lane modems,” Popular Science, Nov. 1985, pp. 44,
`46.
`1018 Scott Mace, “Telebit Multicarrier Modem Supports 19.2-KBPS Data
`Rate,” InfoWorld, 11:9, Feb. 27, 1989, p. 16.
`1019 Mike Byrd, “Breaking the Speed Barrier,” PC Magazine, 9:21, Dec. 11,
`1990, pp. 307-349.
`1020 Walkoe, W.; Starr, T.J.J., “High bit rate digital subscriber line: a
`copper bridge to the network of the future,” Selected Areas in
`Communications, IEEE Journal on, Aug 1991, Vol. 9 No. 6, pp. 765-
`768.
`1021 Chow, J.S.; Tu, J.C.; Cioffi, J.M., “A discrete multitone transceiver
`system for HDSL applications,” Selected Areas in Communications,
`IEEE Journal on, Aug 1991, Vol. 9 Iss. 6, pp. 895-908.
`1022 Chow, P.S.; Tu, J.C.; Cioffi, J.M. “Performance evaluation of a
`multichannel transceiver system for ADSL and VHDSL services,”
`Selected Areas in Communications, IEEE Journal on, Aug. 1991, Vol.
`9 Iss. 6, pp. 909-919.
`1023 Cioffi, J.M.; “Lighting up copper [History of Communications],” IEEE
`Communications Magazine, May 2011, Vol. 49 Iss. 5, pp. 30-43.
`1024 Cerf, Vint; “Computing Technology and Military Communications,”,
`IEEE InfoCom 1986, April 1986, p. 240.
`1025 Eduardo F. Casas, Cyril Leung, “OFDM for Data Communication Over
`Mobile Radio FM Channels-Part I: Analysis and Experimental
`Results,” IEEE Transactions on Communications, Vol. 39, No. 5, May
`1991.
`
`
`
`iv
`
`
`
`Brief Description
`
`1027
`
`1029
`
`1030
`
`1031
`
`Ex.
`No.
`1026 Ballard, Michael, “APPLIED DIGITAL SIGNAL PROCESSING: The
`Telebit Trailblazer Modem,” Tuscon Amateur Packet Radio Corp. -
`Packet Status Register Newsletter, Issue 31, April 1988.
`tech.doc.Z (March 8, 1991), available from site providing FTP mirror
`of UUNET support materials,
`ftp://ftp.funet.fi/ftp/index/doc/netinfo/UUNET/Telebit-Info
`1028 Google Groups Search for telebit and t2500 within Usenet Newsgroup
`com.dcom.modems
`(http://groups.google.com/forum/#!searchin/comp.dcom.modems/$20te
`lebit$20t2500)
`“19.2k baud modems,” Usenet news group comp.sys.amiga (Dec. 17,
`1987 – Jan. 3, 1988), currently available from at least
`http://groups.google.com/d/topic/comp.sys.amiga/RT6luTnu9aA/
`discussion.
`“Connecting a TrailBlazer to a Sun 3/280,” Usenet news group
`comp.docm.modems (Jan. 29 – Feb. 23, 1988), currently available from
`at least http://groups.google.com/d/topic/comp.dcom.modems/
`Y9nERwnsdzE/discussion.
`“Telebit modem questions answered,” Usenet news group
`comp.dcom.modems (March 4 – 14, 1988), currently available from at
`least http://groups.google.com/d/topic/comp.dcom.modems/
`7gxaiOs_P14/discussion.
`“checkblazer.c -- get spectrum data from last connection,” Usenet news
`group comp.dcom.modems (April 21, 1988), currently available from
`at least http://groups.google.com/d/topic/comp.dcom.modems/
`oQxiZ9m8M9c/discussion.
`“Break definition,” Usenet news group comp.dcom.modems (Sept. 7 –
`17, 1988), currently available from at least http://groups.google.com/d/
`topic/comp.dcom.modems/nDZ8ZIASqfo/discussion.
`“Clarifying Modulation Theory (LONG!!),” Usenet news group
`comp.dcom.modems (Sept. 13, 1988), currently available from at least
`http://groups.google.com/d/topic/comp.dcom.modems/MqianzrgMrQ/
`discussion
`“Trailblazer detailed info wanted,” Usenet news group
`comp.dcom.modems (Nov. 3 – 25, 1988), currently available from at
`least http://groups.google.com/d/topic/comp.dcom.modems/
`eMYZsJ19BY/discussion.
`
`1032
`
`1033
`
`1034
`
`1035
`
`
`
`v
`
`
`
`Ex.
`No.
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`Brief Description
`
`“Telebit T2500,” Usenet news group comp.docm.modems (May 20 -
`23, 1989), currently available from at least http://groups.google.com/
`d/topic/comp.dcom.modems/QJY5ACBg5_M/discussion.
`“Telebit registers,” Usenet news group comp.dcom.modems (May 21 –
`June 6, 1989), currently available from at least
`http://groups.google.com/d/topic/comp.dcom.modems/gA5a9ugoWcM/
`discussion.
`“TELEBIT PEP,” Usenet news group comp.dcom.modems (March 6,
`1990), currently available from at least http://groups.google.com/
`d/topic/comp.dcom.modems/GDLtb2JP1zE/discussion.
`“TELEBIT,” Usenet News group comp.dcom.modems (March 22,
`1990) currently available from at least http://groups.google.com/d/
`topic/comp.dcom.modems/mMnXGk3QQRw/discussion.
`“T2500 Regester access,” Usenet news group comp.dcom.modems
`(Aug. 17, 1990), currently available from at least
`http://groups.google.com/d/topic/comp.dcom.modems/Eghhcli0AHU/d
`iscussion.
`“Telebit registers,” Usenet news group comp.dcom.modems (Aug. 17 –
`20, 1990), currently available from at least http://groups.google.com/d/
`topic/comp.dcom.modems/aqsNKN8gGeA/discussion.
`“Telebits ‘PEP’ protocol,” Usenet news group comp.dcom.modems
`(Dec. 7, 1990 – Jan. 6, 1991), currently available from at least
`http://groups.google.com/d/topic/comp.dcom.modems/8ovkVeNkGHc/
`discussion.
`“T2500's and v.32bis -- rumors?,” Usenet news group
`comp.dcom.modems (March 14 – 22, 1991), currently available from at
`least http://groups.google.com/d/topic/comp.dcom.modems/
`m3ufre6XIEo/discussion.
`“PEP,” Usenet news group comp.dcom.modems (Jan. 20 – Feb. 1,
`1993), currently available from at least http://groups.google.com/d/
`topic/comp.dcom.modems/pfh8s26IU-w/discussion.
`“need info on Telebit modems,” Usenet news group
`comp.dcom.modems (Feb. 3 – 7, 1993), currently available from at
`least http://groups.google.com/d/topic/comp.dcom.modems/
`BDm3DexVdQU/discussion.
`
`
`
`vi
`
`
`
`Ex.
`No.
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`Brief Description
`
`“PEP,” Usenet news group biz.comp.telebit (Aug. 22, 1993), currently
`available from at least http://groups.google.com/d/topic/
`biz.comp.telebit/5bhra5c1cvY/discussion.
`“New sportster comments,” Usenet news group comp.docm.modems
`(Oct. 20 – 30, 1994), currently available from at least
`http://groups.google.com/d/topic/comp.dcom.modems/XzDiArpIXpQ/
`discussion.
`“What is a PEP modem?,” Usenet news group comp.dcom.modems
`(Oct. 31 – Nov. 9, 1996), currently available from at least
`http://groups.google.com/d/topic/comp.dcom.modems/iLgcQrmo_hI/di
`scussion.
`“DSL modem?,” Usenet News group comp.dcom.modems (July 30,
`1999) currently available from at least http://groups.google.com/d/
`topic/comp.dcom.modems/ShzYRCuj4i4/discussion.
`“Modem Line Corruption,” Usenet news group comp.dcom.modems
`(Jan. 10 – 21, 2002), currently available from at least
`http://groups.google.com/d/topic/comp.dcom.modems/2xyANA6Sjw8/
`discussion.
`
`vii
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.71(c)-(d), ARRIS Group, Inc. (“Petitioner”)
`
`hereby requests rehearing of that part of the Board’s Decision (Paper No. 7, June
`
`22, 2016) regarding Statutory Ground 2 of the Petition1 which asserts that claims
`
`1-6 of the ‘430 patent2 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`
`Hughes-Hartogs3, Baran4, and Frenkel5.
`
`I.
`
`INTRODUCTION
`
`Petitioner respectfully submits the Board overlooked or misapprehended
`
`important points presented in the Petition regarding why a person of ordinary skill
`
`in the art at the time of the alleged invention would have been motivated to
`
`combine the teachings of Hughes-Hartogs with those of Baran and Frenkel. The
`
`first important point is that Hughes-Hartogs contains a direct and express reference
`
`to Baran. Ex. 1008; 1:46-51 and 1:65-66. Correspondingly, a second important
`
`point is that Frenkel also contains a direct and express reference to the teachings of
`
`
`1 References and citations herein to “Petition” are to Petitioner’s Petition, Paper
`
`No. 1, filed January 2, 2016.
`
`2 U.S. Patent No. 7,835,430 (Ex. 1001).
`
`3 U.S. Patent No. 4,679,227 (Ex. 1008).
`
`4 U.S. Patent No. 4,438,511 (Ex. 1010).
`
`5 U.S. Patent No. 5,838,268 (Ex. 1011).
`
`
`
`1
`
`
`
`Hughes-Hartogs.6 Ex. 1011, 2:8-10. Petitioner discussed these disclosures by
`
`Hughes-Hartogs and Frenkel, and their bearing upon obviousness (Petition at 41-
`
`45, 50-51), but the Board did not address Petitioner’s discussion of these points.
`
`Patent Owner did not respond to the argument either. Petitioner respectfully
`
`submits that rehearing of Statutory Ground 2 is appropriate in these circumstances.
`
`
`
`II. APPLICABLE LEGAL STANDARDS
`
`An institution decision is reviewed for an abuse of discretion. 37 C.F.R.
`
`§ 42.71(c). An abuse of discretion occurs if the decision is based on an erroneous
`
`interpretation of the law, on factual findings that are not supported by substantial
`
`evidence, or an unreasonable judgment in weighing relevant factors. Star Frutis
`
`S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362
`
`F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed.
`
`Cir. 2000). If an institution decision has misapprehended or overlooked a
`
`
`6 Column 2, lines 8-10 of Frenkel refers to U.S. Patent No. 4,833,706 which is a
`
`continuing application (division) of U.S. Patent No. 4,713,816 which is a
`
`continuing application (division) of Hughes-Hartogs (U.S. Patent No. 4,679,227),
`
`with each of these listed applications of Telebit inventor Dirk Hughes-Hartogs
`
`sharing the same written description.
`
`
`
`2
`
`
`
`significant fact, the necessary abuse of discretion required by 37 C.F.R. § 42.71(c)
`
`has been established. Merial Ltd. v. VIRBAC, Case IPR2014-01279, slip op. at 8
`
`(PTAB April 15, 2015) (Paper 18).
`
`
`
`III. ARGUMENT
`
`The Board rejected Petitioner’s argument for combining the teachings of
`
`Hughes-Hartogs with those of Baran and Frenkel for two reasons. First, the Board
`
`stated that while Petitioner explained that a person of skill in the art at the time of
`
`invention could have combined Hughes-Hartogs, Baran, and Frenkel, Petitioner
`
`allegedly failed to explain why a person of ordinary skill would have done so. See
`
`Decision at 14. Second, the Board stated that Petitioner’s argument was based on
`
`the testimony of its expert, which the Board did not find persuasive. Id. at 15.
`
`Taking the last reason first, it is true that Petitioner cited to its expert’s
`
`declaration as supportive of Petitioner’s stated rationale for obviousness, but the
`
`rationale stands whether supported by an expert or not. The law requires “some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). There is no
`
`corollary requirement that the “rational underpinning” be further supported by an
`
`expert. Thus, for purposes of evaluating whether Statutory Ground 2 of the Petition
`
`
`
`3
`
`
`
`meets the threshold stated in 35 U.S.C. § 314(a), Petitioner respectfully submits the
`
`Board should consider whether the art in issue does so on its own, without reliance
`
`on the expert declaration.
`
`Regarding the first basis for rejection, there is an important point regarding
`
`obviousness based on Hughes-Hartogs in view of Baran and Frenkel made by
`
`Petitioner at pages 42-43 of the Petition that the Board did not address in its
`
`Decision. There, Petitioner provides a reason for why a person of skill in the art at
`
`the time of the invention would find it obvious to combine the teachings of
`
`Hughes-Hartogs (‘227 Patent) and Baran (‘511 Patent), explaining:
`
`As expressly stated in the background section of the ‘227 Patent
`
`(which is also owned by Telebit Corp.), the ‘511 Patent describes a
`
`high speed modem that “transmits data over 64 orthogonally
`
`modulated carriers” to compensate for equivalent line noise and signal
`
`loss. Ex. 1008, 1:46-51. Moreover, the ‘227 Patent “application
`
`reflects a continuation of the effort initiated by Baran [in ‘511].”
`
`Ex. 1008, 1:65-66. (Emphasis added).
`
`Thus, Hughes-Hartogs expressly states that its disclosure is a continuation of the
`
`efforts previously initiated in Baran. Perhaps even more importantly, Hughes-
`
`Hartogs incorporates by reference Baran at column 7, lines 40-42 (emphasis
`
`added):
`
`Alternatively, modulation could be accomp[l]ished by direct multip[l]ication
`
`of the carrier tones as described in the above-referenced Baran patent,
`
`
`
`4
`
`
`
`which is hereby incorporated by reference, at col. 10, lines 13-70, and col.
`
`11, lines 1-30. Additionally, the demodulation system described in Baran at
`
`col. 12, lines 35-70, col. 13, lines 1-70, and col. 14, lines 1-13 could be
`
`substituted.
`
`Correspondingly, with respect to Frenkel (‘268 Patent), the Frenkel reference also
`
`contains an express reference to the teachings of Hughes-Hartogs (‘227 Patent).
`
`Page 44 of the Petition explains:
`
`The ‘268 Patent describes methods and apparatuses for
`
`modulating and demodulating data. As stated in the background
`
`section of the ‘268 Patent, a prior multicarrier modulation scheme
`
`with respect to the filing of the ‘268 Patent is DMT (Discrete Multi-
`
`tone Modulation):
`
`(3) DMT--As described in U.S. Pat. No. 4,833,706
`
`and in ADSL Standard T1.413/95, the carriers are keyed
`
`by the data, using Quadrature Amplitude Shift Keying
`
`(QASK).
`
`Ex. 1011, 1:50-54 and 2:8-10. As such, the ‘268 Patent
`
`describes
`
`the 4,833,706 Patent (Ex. 1009) as disclosing
`
`the
`
`modulation of bits of data on DMT symbols using QASK (which is
`
`also known as Quadrature Amplitude Modulation (QAM)). See Ex.
`
`1012, 5:52-56 (“Most physical analog modems in the marketplace use
`
`a technique known as QAM (Quadrature Amplitude Modulation)
`
`which is also referred to as QASK (Quadrature Amplitude Shift
`
`Keying) to encode digital information (bits) into analog waveforms.”).
`
`It is noted that U.S. Patent No. 4,833,706 (Ex. 1009) referenced
`
`
`
`5
`
`
`
`above is a grandchild of the ‘227 Patent and shares the same
`
`specification. (Emphasis added).
`
`Since the law presumes a familiarity on the part of the person of ordinary skill in
`
`the art with all of the prior art relevant to the claims at issue, see, e.g., Standard Oil
`
`Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985), the only
`
`question, then, is whether a person of ordinary skill in the art at the time of the
`
`invention would have had “an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” See KSR, 550 U.S. at 418.
`
`The clear answer is “yes.” With respect to claim 1, Frenkel expressly directs
`
`one of ordinary skill in the art to Hughes-Hartogs which in turn expressly directs
`
`one of ordinary skill in the art to (and incorporates by reference) Baran. A person
`
`of ordinary skill in the art, having ordinary curiosity and creativity, could then
`
`connect the dots. They would have been motivated to review Frenkel and find that
`
`Frenkel clearly refers to the teachings of Hughes-Hartogs in confirming that
`
`Hughes-Hartogs discloses the features of Limitation [C] of claim 1, as stated on
`
`pages 49-51 of the Petition. Likewise, a person of ordinary skill in the art, having
`
`ordinary curiosity and creativity, would have been motivated to review Baran and
`
`Hughes-Hartogs together to find that they disclose Limitation [D] of claim 1, as
`
`stated on pages 51-55 of the Petition. The reasoning applied above with respect to
`
`claim 1 of the ‘430 Patent also applies to claims 2-6 of the ‘430 Patent as fully
`
`
`
`6
`
`
`
`explained in the Petition. See Petition at 55-60. Moreover, not only could a person
`
`of ordinary skill combine the ideas of the Baran, Hughes-Hartogs, and Frenkel
`
`references, but also the express citations disclose and explicitly suggest combining
`
`the ideas in those references at the time when Hughes-Hartogs and Frenkel were
`
`created, which was well-before the priority date of the ‘430 patent that is the
`
`subject of this Inter Partes Review. Where there is an explicit suggestion within
`
`the reference, such as an incorporation by reference or even merely a citation, the
`
`motivation for the combination is plain, and one of ordinary skill can fill in the
`
`gaps of one reference with the teachings of the others.
`
`In other words, to the person of ordinary skill in the art, the disclosure of
`
`Hughes-Hartogs would have raised the obvious question with respect to Limitation
`
`[C], “are bits modulated onto DMT symbols using Quadrature Amplitude
`
`Modulation (QAM)?,” and the disclosure of Frenkel would have affirmatively
`
`answered the question by expressly stating that bits in DMT (as described in
`
`Hughes-Hartogs) are modulated using QAM (aka QASK) (as acknowledged by
`
`Frenkel with respect to Hughes-Hartogs at column 2, lines 8-10). See Petition at
`
`49-51. Similarly, to the person of ordinary skill in the art, the disclosure of
`
`Hughes-Hartogs would have solicited the obvious question with respect to
`
`Limitation [D], “can data variables in a received message represent frequency
`
`domain received idle channel noise information?,” and the disclosure of Baran
`
`
`
`7
`
`
`
`would have affirmatively answered the question by expressly stating that it is
`
`useful to exchange performance information between sending and receiving
`
`modems, such as measurements defining noise for each frequency used as a
`
`carrier, see Petition at pp. 43 and 53-54, where Hughes-Hartogs specifically
`
`acknowledges building upon the prior teachings of Baran. See Petition at 42-43.
`
`In its Preliminary Response, Patent Owner does not address or acknowledge
`
`Petitioner’s argument that a person of ordinary skill in the art would have been
`
`motivated to combine Hughes-Hartogs with Baran and Frenkel based on the
`
`express references to Baran by Hughes-Hartogs and to Hughes-Hartogs by
`
`Frenkel. There is no acknowledgement or discussion of these points in the section
`
`specifically dedicated to responding to Statutory Ground 2 (Paper No. 7, pp. 40-
`
`51), nor is there any such acknowledgement or discussion anywhere else in the
`
`Preliminary Response.
`
`Because neither the Board nor the Patent Owner addressed Petitioner’s
`
`points regarding these important disclosures by Hughes-Hartogs and Frenkel and
`
`their bearing upon obviousness, and because these points of discussion are ones
`
`that call into question the Board’s conclusion regarding Statutory Ground 2,
`
`Petitioner respectfully submits that rehearing is appropriate. See, e.g., Hand
`
`
`
`8
`
`
`
`Quilter, Inc. v. Bernina Int’l AG, IPR2014-00270, (PTAB December 30, 2014)
`
`(Paper 17) at 24.7
`
`
`
`
`7 In the Decision on a Request for Rehearing, the Board in granting the rehearing
`
`request explains, “Petitioner notes, however, that the Non-Institution Decision
`
`apparently overlooked Petitioner’s argument that Watabe itself, even without the
`
`support of expert testimony, provides sufficient rationale to show a reasonable
`
`likelihood that a person of ordinary skill in the art would have found it obvious to
`
`combine the teachings of Watabe and Gordon. Id. at 2-7 (citing Pet. 50). We agree
`
`that we misapprehended the significance of this argument in the Petition. The
`
`import of this argument becomes clear, however, upon consideration of
`
`Petitioner’s request.” (Emphasis added).
`
`
`
`9
`
`
`
`IV. CONCLUSION
`
`In light of the foregoing, Petitioner respectfully submits the Board should
`
`rehear Statutory Ground 2 and should, in turn, conclude that Petitioner has shown a
`
`reasonable likelihood it will prevail in showing that claims 1-6 are unpatentable as
`
`obvious based on Hughes-Hartogs, Baran, and Frenkel.
`
`Dated: July 21, 2016
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Charles W. Griggers/
`Charles W. Griggers
`Reg. No. 47,283
`
`Counsel for Petitioner
`ARRIS Group, Inc.
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6, I hereby certify that on this 22nd day of July,
`
`2016,
`
`the
`
`foregoing PETITIONER’S REQUEST FOR REHEARING
`
`PURSUANT TO 37 C.F.R. § 42.71(c)-(d) was served via electronic mail on the
`
`following counsel of record for Patent Owner.
`
`Christopher Scharff (cscharff@mcandrews-ip.com)
`Scott McBride (smcbride@mcandrews-ip.com)
`Peter McAndrews (pmcandrews@mcandrews-ip.com)
`Thomas Wimbiscus (twimbiscus@mcandrews-ip.com)
`
`MCANDREWS HELD & MALLOY
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`
`
`
`THOMAS | HORSTEMEYER, LLP
`
` /Charles W. Griggers/
`Charles W. Griggers
`Reg. No. 47,283
`
`
`
`
`
`Dated: July 22, 2016
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