Paper 10
`Entered: August 23, 2016
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`Trials@uspto.gov
`Tel: 571-272-7822
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`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
`Patent 7,835,430 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and TREVOR M.
`JEFFERSON, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
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`

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`IPR2016-00428
`Patent 7,835,430 B2
`
`
`INTRODUCTION
`I.
`Arris Group, Inc. ( “Petitioner”) filed a request for rehearing (Paper 9, “Req.
`Reh’g”) of the Board’s decision (Paper 8, “Dec.”), which denied institution of inter
`partes review of claims 1‒6 of U.S. Patent No. 7,835,430 B2 (Ex. 1001, “the ’430
`patent”). Petitioner requests rehearing with respect to our decision not to institute
`review of claims 1‒6 on the ground that claims 1‒6 of the ‘430 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Hughes-Hartogs,1 Baran,2
`and Frenkel.3 Req. Reh’g 1. Petitioner contends that 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.” Req. Reh’g 1 (italics omitted). For the reasons stated below, Petitioner’s
`request is denied.
`
`STANDARD OF REVIEW
`II.
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`panel will review the decision for an abuse of discretion.” An abuse of discretion
`occurs when a “decision was based on an erroneous conclusion of law or clearly
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v.
`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The
`request must identify, specifically, all matters the party believes the Board
`misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`
`1 U.S. Patent No. 4,679,227; issued July 7, 1987 (Ex. 1008) (“Hughes-Hartogs”).
`2 U.S. Patent No. 4,438,511; issued Mar. 20, 1984 (Ex. 1010) (“Baran”).
`3 U.S. Patent No. 5,838,268; issued Nov. 17, 1998 (Ex. 1011) (“Frenkel”).
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`IPR2016-00428
`Patent 7,835,430 B2
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`III. DISCUSSION
`We determined in our Decision Denying Institution that
`Petitioner generally states the subject matter of the claims was
`described by Hughes-Hartogs, Baran, and Frenkel “in a manner that
`would have led a person of ordinary skill in the art to the claimed
`subject matter through the exercise of only routine skill.” Pet. 45.
`Petitioner further states that “the modification of ‘227 Patent [Hughes-
`Hartogs] to include the teachings of ‘511 Patent [Baran] and ‘268
`Patent [Frenkel] is demonstrative of the application of a known
`technique to a known device to yield predictable results under
`35 U.S.C. §103.” Id. However, Petitioner does not point to evidence
`or explain why a person with ordinary skill in the art would have
`combined Hughes-Hartogs, Baran, and Frenkel, why such a
`combination would have required only “routine skill,” or even why
`the results of such a combination would have been predictable. See
`Prelim. Resp. 48‒51. Accordingly, Petitioner has not provided any
`reason that would have prompted a person with ordinary skill in the
`art to combine Hughes-Hartogs, Baran, and Frenkel in the manner
`proposed by Petitioner.
`Dec. 14.
`
`Petitioner argues that we overlooked pages 42‒44 of the Petition, which
`explains that Hughes-Hartogs expressly references Baran, and Frenkel expressly
`references Hughes-Hartogs.4 Req. Reh’g 4‒6 (citing Ex. 1008, 1:46‒51; Ex. 1011,
`1:50‒54, 2:8‒10). Petitioner further argues that we overlooked that Hughes-
`Hartogs discloses that it is a continuation in the efforts previously initiated by
`Baran and incorporates Baran by reference. Id. at 4 (citing Ex. 1004, 1:65‒66,
`7:40‒42). Petitioner concludes that “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
`
`
`4 Petitioner explains that Frenkel discloses an express reference to U.S. Patent No.
`4,833,706, which is a grandchild of Hughes-Hartogs.
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`IPR2016-00428
`Patent 7,835,430 B2
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`reason to combine the known elements in the fashion claimed by the patent at
`issue.’” Id. at 6 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
`
`We disagree with Petitioner that we overlooked these points in the Petition.
`Petitioner mischaracterizes our Decision. We did not determine that there was not
`a reason to combine Hughes-Hartogs, Baran, and Frenkel, but rather we
`determined that Petitioner failed to set forth sufficient evidence and rationale
`explaining why a person with ordinary skill in the art would have combined
`Hughes-Hartogs, Baran, and Frenkel. See Dec. 13‒15. At best, the Petition only
`sets forth that Hughes-Hartogs references Baran, and Frenkel indirectly references
`Hughes-Hartogs. See Pet. 10‒12. The Petition does not set forth any rationale to
`combine Hughes-Hartogs, Baran, and Frenkel, but rather only states the prior art
`references each other. See id. Petitioner now argues that a “person of ordinary
`skill in the art, having ordinary curiosity and creativity, could then connect the
`dots,” and now provides an explanation as to why a person of ordinary skill in the
`art would have combined Hughes-Hartogs, Baran, and Frenkel. See Req. Reh’g 6‒
`9. However, we did not overlook or misapprehend these now asserted reasons to
`combine the prior art because this rationale was not presented in the Petition.
`Similarly, Petitioner’s argument that we overlooked or misapprehended that
`Hughes-Hartogs discloses that it is a continuation in the efforts previously initiated
`by Baran is not persuasive. We did not overlook that statement at pages 42‒43 of
`the Petition. Petitioner, however, did not explain that statement in the context of
`the legal conclusion of obviousness. In essence, Petitioner did not make its case
`and it is not the Board’s place to make a case for a Petitioner all to the detriment of
`a Patent Owner. Lastly, we are not persuaded by Petitioner’s arguments that we
`overlooked or misapprehended that Hughes-Hartogs incorporates Baran by
`reference because Petitioner did not present this argument in the Petition.
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`IPR2016-00428
`Patent 7,835,430 B2
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`Petitioner further mischaracterizes our Decision in their argument that “the
`
`Board stated that Petitioner’s argument was based on the testimony of its expert.”
`Id. at 3. We determined:
`At best, Petitioner directs us to pages 66‒69 of the Declaration of Mr.
`Lance McNally. Id. at 47‒51. Although we decline to incorporate Mr.
`McNally’s Declaration into the Petition, we note that pages 66‒69 of
`Mr. McNally’s Declaration consist of several paragraphs discussing
`the application of the cited prior art to independent claim 1 of the ’430
`patent. Ex. 1002 ¶¶ 125–136. Only paragraphs 132 and 134 discuss
`the combination of Hughes-Hartogs and Baran and Hughes-Hartogs
`with Frenkel. Id. ¶ 132, 134. For example, McNally declared that
`“[a] POSA would combine the ‘227 [Hughes-Hartogs] and ‘511
`[Baran] patents to show a test mode with messages comprising one or
`more data variables that represent the test information.” Id. ¶ 132.
`McNally further declared that “[a] POSA would combine the ‘268
`[Frenkel] and ‘227 [Hughes-Hartogs] patents as obvious to meet the
`claim element of a DMT symbol, using QAM and more than 1 bit per
`subchannel.” Id. ¶ 134. However, such statements are conclusory,
`unsupported by a sufficient rationale or reason to combine Hughes-
`Hartogs with Baran or Frenkel. As such, even if we were to
`incorporate these passages from Mr. McNally’s Declaration into the
`Petition, which we do not, these passages are insufficient to support a
`conclusion of obviousness.
`Dec. 14‒15. As such, we declined to incorporate Mr. McNally’s declaration into
`the Petition, and determined that the Petition could not incorporate portions of the
`Declaration without a discussion of these portions in the Petition. We further
`determined that Mr. McNally’s Declaration is insufficient to establish a rationale to
`combine Hughes-Hartogs, Baran, and Frenkel because the statements in the
`Declaration “are conclusory, unsupported by sufficient rationale or reason to
`combine Hughes-Hartogs with Baran or Frenkel.” Id. at 15. Therefore, we did not
`determine that there is a “corollary requirement that the ‘rational underpinning’ be
`further supported by an expert,” as argued by Petitioner. Req. Reh’g 3.
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`IPR2016-00428
`Patent 7,835,430 B2
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`Accordingly, we are not persuaded by Petitioner that we misapprehended or
`overlooked points in the Petition that provided a rationale to combine Hughes-
`Hartogs, Baran, and Frenkel. We also are not persuaded by Petitioner’s argument
`that we required a rationale to combine to be supported by an expert. Therefore,
`Petitioner’s request for rehearing is denied.
`
`IV. CONCLUSION
`The Board denies the relief requested in the request for rehearing.
`
`V. ORDER
`
`Accordingly, it is hereby
`ORDERED that Petitioner’s request for rehearing is denied.
`
`
`For PETITIONER:
`Charles Griggers
`charles.griggers@thomashorstemeyer.com
`Dan Gresham
`dan.gresham@thomashorstemeyer.com
`Bob Starr
`bob.starr@arris.com
`
`For PATENT OWNER:
`Peter J. McAndrews
`pmcandrews@mcandrews-ip.com
`Thomas J. Wimbiscus
`twimbiscus@mcandrews-ip.com
`Scott P. McBride
`smcbride@mcandrews-ip.com
`Christopher M. Scharff
`cscharff@mcandrews-ip.com
`
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