Trials@uspto.gov
`571-272-7822
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` Paper: 42
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` Entered: January 22, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC., DISH NETWORK, LLC,
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS, INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-010061
`Patent 7,835,430 B2
`____________
`
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Rehearing Request
`37 C.F.R. § 42.71
`
`
`
`
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00251, and
`Comcast Cable Communications, L.L.C., Cox Communications, Inc., Time
`Warner Cable Enterprises L.L.C., Verizon Services Corp., and ARRIS
`Group, Inc., who filed a Petition in IPR2017-00420, have been joined in this
`proceeding.
`
`

`

`IPR2016-01006
`Patent 7,835,430 B2
`
`
`INTRODUCTION
`I.
`Pursuant to 37 C.F.R. § 42.71(d), TQ Delta, LLC (“Patent Owner”)
`requests rehearing of our Final Written Decision (Paper 40, “Dec.”). Paper
`41 (“Req. Reh’g”). Specifically, Patent Owner submits that we
`misapprehended (1) Patent Owner’s arguments regarding the combination of
`Chang and Milbrandt, (2) the law on “teaching away,” and (3) the law
`regarding proper reply evidence or argument. Req. Reh’g passim.
`For the reasons set forth below, Patent Owner’s Request for
`Rehearing is denied.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was addressed previously in a motion, an opposition, or a
`reply. Id. With this in mind, we address the arguments presented by Patent
`Owner.
`
`III. ANALYSIS
`In our Decision, we explained how Patent Owner overlooked, and did
`not address, Petitioner’s position that “Petitioner’s [Milbrandt and Chang]
`combination permits, but does not require, physical incorporation of
`elements but rather that the combined teachings of the prior art as a whole
`would have rendered the claim[s] obvious.” Dec. 19‒20 (citing Pet. 19; Ex.
`1009 ¶ 98). Patent Owner, in its rehearing request, makes new arguments
`regarding Petitioner’s proposed combination that does not include physical
`incorporation of elements from Chang and Milbrandt. Req. Reh’g 2‒5. A
`rehearing request is not an opportunity to make arguments that a party could
`
`
`
`2
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`

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`IPR2016-01006
`Patent 7,835,430 B2
`
`or should have made previously. The arguments are new, and thus, we need
`not and do not address such new arguments.
`Next, Patent Owner argues that we misapprehended the law on
`“teaching away.” Id. at 5‒7. Patent Owner argues that Milbrandt’s teaching
`away of a truck roll is related to and commensurate with the ’430 patent
`claims, because the ’430 claims do specifically foreclose a truck roll, by
`requiring transmitting test information over a communication channel. Id. at
`6‒7. This argument is new, and, therefore, we could not have overlooked or
`misapprehended this argument. In any event, we disagree that the claims
`foreclose a truck roll. As we explained in our Decision, “claim 1 is directed
`to a transceiver and the type of message the transceiver is capable of
`transmitting. There is nothing in claim 1 that specifies how the transceiver
`message originates or how the test information is measured.” Dec. 21.
`Patent Owner also argues that we misapprehended or misapplied the
`law regarding proper reply evidence or argument. Id. at 7‒15. In particular,
`Patent Owner argues that evidence of a reasonable expectation of success
`was provided for the first time in connection with the Reply which was
`improper, and that such evidence was the only evidence cited by the Board.
`Id. at 9‒10. Contrary to Patent Owner’s assertions, we did not rely solely on
`evidence provided for the first time in connection with the Reply. Dec. 22‒
`23 (citing Ex. 1011, 11:38‒45 in support of our finding that a person having
`ordinary skill in the art at the time of the invention knew how to transmit,
`and thus, receive or obtain, test information without a truck roll; Ex. 1020,
`109 in support of our finding that a person having ordinary skill in the art at
`the time of the invention knew that measurements of idle channel noise
`information represent noise, such as thermal noise, cross talk, and impulse
`
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`IPR2016-01006
`Patent 7,835,430 B2
`
`noise; Ex. 1009, 33‒34 in support of our finding that such noises are
`independent of data signals transmitted on a subscriber line and are most
`readily and directly measured when there are no data signals on the line;
`finding that the involved patent itself (Ex. 1001) does not provide specific
`details on how to measure idle channel noise information, indicating that at
`the time of the invention, measuring idle channel noise, with or without a
`truck roll, would be within the skill set of a person of ordinary skill in the
`art2). Moreover, we determined that those portions of the Reply and
`evidence which Patent Owner contended to be beyond the scope of what can
`be considered appropriate for a reply were “not beyond the proper scope of a
`reply because we find that they fairly respond to Patent Owner’s arguments
`raised in Patent Owner’s Response.” Dec. 23‒24, n.12. In essence, Patent
`Owner disagrees with that determination, which is not a proper basis for
`requesting rehearing of a decision. The remaining arguments spanning
`
`
`2 As we explained in our Decision this finding was further supported by
`Patent Owner’s own expert who on cross examination declared that the
`“concept of . . . measuring idle channel noise information” was known by
`those of skill in the art at the time of the ’430 patent” (e.g., at the time of the
`invention). Dec. 23 (citing Ex. 1110, 136:4‒137:9). In other words, no
`specific details are provided in the ’430 patent on how to measure idle
`channel noise without a truck roll, but as confirmed by both experts, a
`skilled artisan at the time of the invention knew how to perform such
`measurement. Dec. 23. Patent Owner implicitly argues for the first time
`that it was not known how to measure idle channel noise without a truck roll
`before the ’430 patent, a feature Patent Owner argues is required by the
`claims. Req. Reh’g 6‒7, 12 n.3. But that new argument is not supported by
`record evidence. Moreover, to the extent that only the inventors knew how
`to perform such a measurement (e.g., measure idle channel noise without a
`truck roll), as Patent Owner now asserts, the Specification provides no
`details on how to perform such measurements.
`4
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`IPR2016-01006
`Patent 7,835,430 B2
`
`pages 7‒12 are either new arguments, presented for the first time, or are
`arguments disagreeing with our decision, none of which are proper for a
`rehearing request.
`In addition, Patent Owner argues that we abused our discretion by
`“refusing to give Patent Owner the opportunity, before the Board issued its
`Final Written Decision, to submit any evidence or argument showing why
`Petitioner’s Reply arguments were improper.” Req. Reh’g 12‒15. Patent
`Owner also argues that we failed to allow Patent Owner to provide any
`explanation or argument on the Board call “on this issue.” Id. First, Patent
`Owner did not secure a transcript of the call where we allegedly failed to
`allow Patent Owner to provide explanation. Paper 21. We recall taking the
`call to hear what Patent Owner had to say, as opposed to ruling on Patent
`Owner’s request as stated per Patent Owner’s email. Ex. 3001. We would
`not have held the conference call if we were not prepared to hear Patent
`Owner’s arguments.
`Moreover, we authorized Patent Owner an opportunity to file a list, by
`page and line number, of those statements and evidence in Petitioner’s Reply
`deemed by Patent Owner to be beyond proper scope of a reply. Paper 21.
`Patent Owner took advantage of that opportunity. Paper 22. Although the
`“listing” format required Patent Owner to be efficient in its identification
`and required Petitioner to be efficient in its responsive paper, these papers
`provided “the information necessary to make a reasoned decision” (Ultratec,
`Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017)) about
`whether the arguments and evidence raised in reply were outside the scope
`of a proper reply. Thus, we disagree with Patent Owner that it was not
`afforded due process.
`
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`IPR2016-01006
`Patent 7,835,430 B2
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`
`In any event, our Decision minimally cites to the Reply and evidence
`in support of the Reply. See, e.g., Dec. 23, 26. And with respect to those
`citations, to the extent that they were included per Patent Owner’s list, we
`determined that the arguments and evidence in support of the Reply were
`made in response to arguments made in the Patent Owner Response. Dec.
`23‒24, n.12. We further made clear that with respect to Patent Owner’s
`objected to evidence in connection with the Reply, we did not even rely on
`such evidence. Dec. 27‒28 (dismissing Patent Owner’s motion to exclude as
`moot because we did not rely on objected to evidence in determining that
`Petitioner had demonstrated, by a preponderance of the evidence that the
`challenged claims are unpatentable, without considering the specific
`objected to evidence.)
`Patent Owner argues that we abused our discretion by not allowing
`Patent Owner opportunity to respond to the determination in our Decision
`that “idle channel noise” is obtained “during idle times, when the subchannel
`is not in operation.” Req. Reh’g 14 (citing Dec. 24 (which cites Ex. 1009
`¶¶ 48, 91; Ex. 1110, 133:12–134:15)). Patent Owner’s argument is
`misplaced as we relied on Dr. Kiaei’s declaration made in support of the
`Petition. Clearly, this was not “new evidence” as Patent Owner alleges.
`Patent Owner had ample opportunity in its Patent Owner Response to
`address such testimony. Moreover, our reliance on the cross examination of
`Patent Owner’s declarant (Ex. 1110) also was not an abuse of discretion. As
`triers of fact, we must consider and weigh witness evidence, to ascertain
`which evidence supports allegations made, by a preponderance of the
`evidence. In addition, and importantly, none of the evidence we relied on at
`page 24 of our Decision in support of our finding that a person having
`
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`IPR2016-01006
`Patent 7,835,430 B2
`
`ordinary skill in the art at the time of the invention would have understood
`that idle channel noise is obtained during idle times, when the subchannel is
`not in operation, was listed in Patent Owner’s paper. Paper 22 (no listing of
`either Ex. 1009 ¶¶ 48, 91 or Ex. 1110, 133:12–134:15 as being beyond the
`proper scope of a reply). In conclusion, Patent Owner was afforded due
`process.
`
`IV. ORDER
`Accordingly, it is ORDERED that Patent Owner’s Request for
`Rehearing is denied.
`
`For PETITIONER:
`David L. McCombs
`Theodore M. Foster
`Gregory P. Huh
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`
`
`
`
`
`For PATENT OWNER:
`
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`McANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
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