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`Filed on behalf of TQ Delta, LLC
`By: Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CISCO SYSTEMS, INC. and DISH NETWORK, LLC,
`Petitioners
`
`v.
`
`TQ DELTA, LLC
`Patent Owner
`_____________
`
`
`Case No. IPR2016-01006
`Patent No. 7,835,430
`_____________
`
`
`PATENT OWNER’S RESPONSE UNDER 37 CFR §42.120
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................................... 1
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`THE ’430 PATENT ................................................................................................................ 4
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`
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`I.
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`II.
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`III. CLAIM CONSTRUCTION ................................................................................................. 6
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`IV. PETITIONERS HAVE NOT SHOWN UNPATENTABILITY
`BASED ON THE SINGLE GROUND INSTITUTED ............................................ 6
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`A. The Asserted References Do Not Render Obvious
`Transmitting/Receiving a Test Message Comprising “Idle
`Channel Noise”—Petitioner’ Theory Violates Several Legal
`Tenets ....................................................................................................... 8
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`1. Milbrandt Teaches Away From Using Chang’s “Circuitry”
`For Measuring Background Noise ...................................................... 9
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`2. Petitioners Did Not Establish a Reasonable Expectation of
`Success
`in Just Using Chang’s Overall “Concept” of
`Measuring Background Noise in Some Other Manner .................... 16
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`3. Incorporating Chang’s Background Noise Measurement
`Would Have Improperly Changed Milbrandt’s Fundamental
`Principle of Operation ....................................................................... 19
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`4. Adding Any Method of Measuring Background Noise to
`Milbrandt Would Have Been Redundant and Unnecessary ............. 22
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`A. No Weight Should Be Given to Unqualified Opinions of Petitioners’
`Expert ............................................................................................................. 26
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`V.
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`CONCLUSION .............................................................................................. 29
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`CERTIFICATE OF WORD COUNT ...................................................................... 30
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`i
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`EXHIBIT LIST
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`Declaration of Douglas Chrissan, PhD for Inter Partes Review
`Nos. IPR2016-01006, -01007, -01008, -01009
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`Hargrave’s Communications Dictionary (2001) at pp. 404, 485
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`U.S. Pat. Pub. No. 20050190826
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`Webster’s Unabridged Dictionary of the English Language (1989
`ed.) at p. 1217
`
`Transcript of 2/8/17 Deposition of Sayfe Kiaei
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`ITU-T G.992.1 (6/99) Series G: Transmission Systems and
`Media, Digital Systems and Networks – Asymmetric Digital
`Subscriber Line (ADSL) Transceivers
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`
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`
`
`ii
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`
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`I.
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`INTRODUCTION
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`Patent Owner TQ Delta, LLC (“Patent Owner”) submits this Response under
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`37 CFR §42.120 to the Petition filed by Cisco, Inc. requesting inter partes review
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`of claims 1-6 of U.S. Pat. No. 7,835,430 (“the ’430 patent”). Dish Network LLC
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`joined this proceeding pursuant to an order in 2017-00251 (Paper 10). Also
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`pending in IPR2017-00420 is a Motion for Joinder to this proceeding filed by
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`Comcast Cable Communications (which Patent Owner does not oppose); that
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`Motion does not have a ruling.
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`The Board has instituted inter partes review in this proceeding based on a
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`single Ground—alleged obviousness in view of a combination of Milbrandt,
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`Chang, Hwang, and ANSI T1.413. Patent Owner, however, respectfully submits
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`that for purposes of institution (1) the Board misapprehended or overlooked Patent
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`Owner’s rebuttal arguments on non-obviousness and the controlling law with
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`respect to those arguments, and (2) the Board accepted as true several unsupported
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`factual statements by Petitioner’s expert that are wholly incorrect and contradicted
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`by the asserted references themselves. Indeed, as shown by his testimony at his
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`deposition, Petitioners’ expert (Dr. Kiaei) is unknowledgeable and unqualified
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`regarding the technical issues in this proceeding. Therefore, Patent Owner
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`provides additional detail, technical explanations from its own qualified expert (Dr.
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`Chrissan), and further legal support to clarify these issues.
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`
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`1
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`First, the Board misapprehended one of Patent Owner’s arguments as to
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`why it would not have been obvious to combine Chang’s measurement of
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`background noise with Milbrandt. Namely, the Petition itself specifically argued
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`only that it allegedly would have been obvious to apply Chang’s actual
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`“background noise test circuitry” for measuring background noise to Milbrandt.
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`(See Pet. at 15-17.) But Milbrandt specifically taught away (i.e., criticized and
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`disparaged) any circuitry that required a technician visit and “truck roll”—which
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`was the only type of circuitry disclosed in Chang. Milbrandt’s disclosure in this
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`regard falls squarely within the Federal Circuit’s controlling law for a “teaching
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`away”—the law does not require Milbrandt to expressly call out Chang by name in
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`order to teach away from its undesirable technique.
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`Second, the Board overlooked and did not address in its Institution Decision
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`several other reasons raised by Patent Owner for why it would not have been
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`obvious to combine Chang’s background noise measurement technique with
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`Milbrandt. These reasons, which are explained and supported more fully in this
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`Response by Patent Owner’s expert, include that:
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`(a) applying Chang’s only disclosed “circuitry” for measuring background
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`noise (circuitry that required a technician visit and truck roll) would have
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`improperly changed the fundamental principle of operation of Milbrandt;
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`(b) to the extent that Petitioners were somehow arguing that it would have
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`2
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`been obvious to just apply Chang’s overall concept of measuring background noise
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`to Milbrandt (rather than Chang’s actual allegedly “circuitry”), Petitioners failed to
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`show any reasonable expectation of success (i.e., Petitioners do not explain how a
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`person of ordinary skill in the art could have measured background noise in
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`Milbrandt without Chang’s specific truck roll and technician visit); and
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`(c) Milbrandt already provides the same result and advantages of Chang’s
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`background noise measurement, making it nonobvious to add Chang’s superfluous
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`and redundant technique.
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`Petitioners cannot rely on the Board to fill in the gaps or defects in its
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`Petition, or to infer or read into the Petition arguments that Petitioners did not
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`make. See, e.g., In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
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`2016) (Inter partes review is “a system that is predicated on a petition followed by
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`a trial in which the petitioner bears the burden of proof” and the Board is not “free
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`to adopt arguments on behalf of petitioners that could have been, but were not,
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`raised by the petitioner during an IPR. Instead, the Board must base its decision on
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`arguments that were advanced by a party, and to which the opposing party was
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`given a chance to respond.”).
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`Nor can Petitioners fix the deficiencies and failures of proof in the Petition at
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`a later stage, for example by offering new arguments or new evidence in a Reply.
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`See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
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`3
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`(Fed. Cir. 2016) (“the expedited nature of IPRs bring with it an obligation for
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`petitioners to make their case in their petition to institute”); Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (a Petitioner may not
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`“raise[] a new issue or belatedly present[] evidence” that could have been, but was
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`not, raised in the Petition, particularly “new evidence necessary to make out a
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`prima facie case” of unpatentability).
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`As such, Petitioners’ single Ground for alleged obviousness fails. Patent
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`Owner respectfully requests that the Board issue a Final Written Decision
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`upholding the patentability of claims 1-6 of the ‘430 patent.
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`II. THE ’430 PATENT
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`The ’430 patent is directed to communicating specific diagnostic and test
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`information concerning a multicarrier communication channel between
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`multicarrier transceivers within a multicarrier communication network, digital
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`subscriber line (DSL) network, for example. In the case of a DSL network, the
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`transceivers correspond to a customer modem (remote transceiver) and a central
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`office modem (near transceiver). The test and diagnostic information may be
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`transmitted by the remote transceiver and received by the near transceiver. The
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`test and diagnostic information may be used to characterize the multicarrier
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`communication channel between the two transceivers. (See Ex. 1001, ’430 patent
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`at Abstract.) The ’430 patent recognizes that in prior art systems, analyzing the
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`4
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`condition of the communication channel required a technician to visit the remote
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`transceiver, i.e. a truck roll. (See Ex. 1001, ’430 patent at 1:21-23.) The ’430
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`patent recognizes that truck rolls are expensive and time consuming. (Id.) The
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`claims require the communication of specific test and diagnostic parameters by the
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`remote transceiver to the near transceiver. The information received may be used
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`to analyze the communication channel without requiring a truck roll to the remote
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`transceiver. (See Ex. 1001, ’430 patent at 2:44-56.)
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`In particular, claims 1-6 of the ’430 patent require transmitting and/or
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`receiving information representing “frequency domain received idle channel
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`noise.” The frequency domain idle channel noise information corresponds to the
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`idle channel noise measured by the remote transceiver at different subchannels.
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`(See Ex. 2001, Chrissan Decl. at ¶ 21.) The frequency domain idle channel noise
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`information “allows characterization across the subchannels of the multicarrier
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`communication channel used by the multicarrier transceiver. Because this
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`information is generated by an already-installed transceiver and may be
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`communicated to a more convenient location (i.e., a near-end transceiver), again,
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`the need for a service technician visit may be eliminated.” (Id.) Also, because the
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`frequency domain idle channel noise information is representative of the idle
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`channel noise measured by the remote transceiver for subchannels of the
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`multicarrier communication channel, “the result is that the near-end transceiver, a
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`5
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`monitoring system and/or a technician may identify subchannels that are
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`experiencing excessive background noise, impulse noise or crosstalk.” (Id.)
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`III. CLAIM CONSTRUCTION
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`For purposes of this IPR only, Patent Owner does not contest the Board’s
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`express claim constructions. Any disagreements that Patent Owner might have
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`with the Board’s constructions are not material to the arguments in this Response,
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`as the claim constructions are not necessary to resolve any disputes.
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`In particular, the Board construed the terms “frequency domain received idle
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`channel noise information,” “array,” and “transceiver.” (See Paper 7, Institution
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`Decision at pp. 5-8.) The Board found that “frequency domain received idle
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`channel noise information” is “information about the background noise present in
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`each of a plurality of frequency subchannels when the subchannels are not in use.”
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`(Id. at p. 6.) The Board found that an “array” is “an ordered collection of multiple
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`data items of the same type.” (Id. at 7.) And the Board found that a “transceiver”
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`is “a device, such as a modem, with a transmitter and receiver.”
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`IV. PETITIONERS HAVE NOT SHOWN UNPATENTABILITY BASED
`ON THE SINGLE GROUND INSTITUTED
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`The Petition proposed one ground against the ’430 patent, based on a
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`combination of four different prior art references. The Board granted review
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`based this ground, specifically:
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`
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`Ground 1. Unpatentability of claims 1-6 under 35 U.S.C. § 103(a) over
`6
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`U.S. Patent No. 6,636,603 to Milbrandt (“Milbrandt”), in view of U.S. Pat. No.
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`6,891,803 to Chang et al. (“Chang”), U.S. Pat. No. 6,590,893 to Hwang et al.
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`(“Hwang”), and American National Standards Institute (ANSI) T1.413-1995
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`Standard, entitled “Network and Customer Installation Interfaces—Asymmetric
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`Digital Subscriber Line (ADSL) Metallic Interface” (“ANSI T1.413”).
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`Patent Owner respectfully submits that Petitioners have not carried its
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`burden of proving that claims 1-6 are unpatentable. Petitioners have first of all not
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`met its burden of establishing that the four asserted references can be pieced
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`together to satisfy all of the elements of the challenged claims—the Board relied
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`on several demonstrably incorrect factual/technical mischaracterizations by
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`Petitioners in this regard. Second, even if the references had separately disclosed
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`all elements of the challenged claims, Petitioners have not met its burden that it
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`would have been obvious to mix-and-match those elements—Petitioner’ purported
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`reasons for doing so are conclusory, based on incorrect assumptions, and violate
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`several basic tenets of controlling Federal Circuit law on obviousness.
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`Specifically, independent claim 1 of the ’430 patent recites:
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`1. A transceiver capable of transmitting test information
`over a communication channel using multi carrier modulation
`comprising:
`a transmitter portion capable of transmitting a message,
`wherein the message comprises one or more data variables that represent the
`test information, wherein bits in the message are modulated onto DMT
`symbols using Quadrature Amplitude Modulation (QAM) with more than 1
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`7
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`IPR2016-01006
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`bit per subchannel and wherein at least one data variable of the one or more
`data variables comprises an array representing frequency domain received
`idle channel noise information.
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`(See Ex. 1001, ’430 patent at claim 1.) Claims 2-6 are also each independent claims, but
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`vary only with respect to elements not at issue in this proceeding (e.g., whereas claim 1
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`recites “transmitting” test information claim 2 recites “receiving” test information, etc.).
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`
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`For the reasons discussed below, Petitioners have not shown that a combination of
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`Milbrandt, Chang, Hwang, and ANSI T1.413 would have rendered obvious a transceiver
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`that transmits a test message comprising an array representing “frequency domain
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`received idle channel noise information.”
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`A. The Asserted References Do Not Render Obvious
`Transmitting/Receiving a Test Message Comprising “Idle Channel
`Noise”—Petitioner’ Theory Violates Several Legal Tenets
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`The claims also each require that the test information transmitted in a
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`message comprise “idle channel noise information.” In order to satisfy this
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`limitation, Petitioners allege that it would have been obvious to combine (a)
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`Milbrandt’s alleged disclosure of transmitting test information with (b) Chang’s
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`alleged disclosure of measuring “background noise.” (See Pet. at 14-20.)
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`Patent Owner raised four reasons in its Preliminary Response why adding
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`Hwang’s method of measuring background noise to Milbrandt would not have
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`been obvious. These include that:
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`(1) Milbrandt teaches away from using Chang’s type of “circuitry” for
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`8
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`measuring background noise;
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`(2) Petitioners have not alleged any other way of just combining Chang’s
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`overall concept of measuring background noise into Milbrandt, and if Petitioners
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`had they have not shown a reasonable expectation of success in doing so;
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`(3) Incorporating Chang’s background noise measurement would have
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`improperly changed Milbrandt’s fundamental principle of operation;
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`(4) Regardless of the manner in which background noise is measured,
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`adding that capability to Milbrandt would have been redundant and unnecessary.
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`In instituting review, the Board only addressed one of these four reasons for
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`non-obviousness—Patent Owner’s “teaching away” argument. (See Paper 7,
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`Institution Decision at 20-21.) Patent Owner respectfully submits that the Board
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`misapprehended Petitioner’ argument and the governing law in this regard. But in
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`addition, the Board overlooked or misapprehended Patent Owner’s other three
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`arguments, each of which mandates against a finding of obviousness.
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`1. Milbrandt Teaches Away From Using Chang’s
`“Circuitry” For Measuring Background Noise
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`Chang discloses only one way to measure background noise—using two
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`units attached to opposite ends of a transmission line to be tested, which must be
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`separately activated and read at each end. Nowhere does Chang suggest how
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`background noise could be measured without such units attached at opposite ends
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`of the line. And Petitioners do not point to or allege any other way that a person of
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`ordinary skill in the art would have known how to measure background noise.
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`In fact, Petitioners specifically argued only that it allegedly would have been
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`obvious to incorporate Chang’s “background noise test circuitry” for measuring
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`background noise into Milbrandt using Chang’s alleged “known methods.”1 (See
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`Pet. at 15-17.) In other words, Petitioners specifically argued only that it would
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`have been obvious to use Chang’s actual physical equipment in Milbrandt—
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`1 Apparently in response to Patent Owner’s argument in this regard in the Patent
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`Owner Preliminary Response, Petitioner’s expert (Dr. Kiaei) attempted to broaden
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`his opinions regarding Chang at his deposition. (See Ex. 2005, Kiaei Dep. Tr. at
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`23:17-25:7.) He did so not in response to any question, but unilaterally. (See id.)
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`When pressed, however, Dr. Kiaei could point to nowhere in his declaration where
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`he ever offered an opinion that Chang’s test method could be used to automatically
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`transmit background noise information without a truck roll. (See id. at 25:8-
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`29:14.) Dr. Kiaei pointed to inapplicable statements in his declaration regarding
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`Chang storing “executables,” but his attempt to read more into those statements in
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`his declaration is not credible and should be rejected by the Board. (See id.)
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`10
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`Patent Owner’s Preliminary Response
`IPR2016-01006
`equipment that required a technician visit and “truck roll.”2 The Board’s criticism
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`that “Patent Owner’s arguments are narrowly based on incorporating physically all
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`technicalities of Chang into Milbrandt” (see Paper 7, Institution Decision at 20) are
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`therefore misplaced. Patent Owner is addressing Petitioner’ own argument.
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`Petitioner’ argument in this regard, however, fails in view of Milbrandt’s
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`own teachings. Specifically, Milbrandt teaches that a “truck roll”—a “dispatch of
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`a service technician to install communication equipment or to configure the
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`telephone line at the customer premises . . . to determine the data rate capacity of a
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`particular telephone line” is highly undesirable because it “is time consuming and
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`2 The Board, in a footnote, indicated that it did not believe that Petitioner was
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`making such an argument, citing to the declaration of Petitioner’s expert. (See
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`Paper 7, Institution Decision at fn. 6.) But Petitioner’s statements in the Petition
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`are unambiguous (see above), and arguments not found in the Petition cannot be
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`incorporated from the declaration of an expert. See 37 C.F.R. § 42.6(a)(3). And in
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`any event, Kiaei also makes the same argument—that it allegedly would have been
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`obvious to incorporate Chang’s actual “background noise test circuitry” according
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`to “known methods” into Milbrandt. (See Ex. 1009, Kiaei Decl. at ¶ 98.) Kiaei
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`does not allege that a person of ordinary skill in the art would have known how to
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`measure background noise any way other than Chang’s method.
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`cost prohibitive for the data services provider and the subscriber.” (Ex. 1011,
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`Milbrandt at 2:9-15.) One goal of Milbrandt was to substantially eliminate or
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`reduce such disadvantages. (See id. at 2:19-21.) To that end, Milbrandt discloses
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`and teaches a method of determining and controlling the power of modems,
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`including measuring noise, remotely and without any need for a “truck roll.” (See
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`id. at 6:66-7:7, 10:18-32, Figs. 5-7, 11:38-53.)
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`Similarly, the ’430 patent itself also explains that the state of the art at the
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`time disparaged any measurement methods requiring a technician visit or truck
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`roll. (See Ex. 1001, ’430 patent at 1:21-23 (stating that test or diagnostic methods
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`requiring a “dispatching a technician to the remote site, e.g., a truck roll” are “time
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`consuming and expensive”), 2:18-23 (stating that it is desirable to test or diagnose
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`a communication line “without the technician having the physically visit, i.e., a
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`truckroll, to the remote site to collect data”).
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`In contrast, Chang specifically discloses only one “background noise test
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`circuitry” and one “known method”—a method for measuring background noise in
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`a transmission line that requires a truck roll. Specifically, Chang discloses portable
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`“test sets” that can be connected to a “twisted wire pair” to test, among other
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`things, background noise on the wire pair:
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`12
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`(Ex. 1012, Chang at Fig. 7, 4:1-2 (“FIG. 7 shows a test set up for transmission line
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`impairment testing.”), 2:59-61 (“line impairment tests can include . . . background
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`noise . . .”). Specifically, when performing “line impairment tests” such as testing
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`the background noise on a line between a central office and a remote modem, test
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`sets must be physically connected and read at both ends of the line, as shown
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`below:
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`(Ex. 1012, Chang at Fig. 9F3, 15:7-15 (“Fig. 9F shows a test set up for
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`3 Chang does disclose a test setup for “testing ATU-R function” that includes only
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`a test set at the Central Office end, however, that test setup only “verifies that the
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`customer premise equipment is working properly” and is not disclosed as being
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`simultaneous ATU-C and ATU-R emulation. . . . . In the simultaneous ATU-C and
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`ATU-R emulation mode, test sets 200 verif[y] that the wire pairs can carry ADSL
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`with an acceptable error rate.)
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`
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`For “impairment testing” in Chang, each of the separate tests must be
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`manually configured and operated at each respective end. (See Ex. 1012, Chang at
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`11:36-38.) Chang repeatedly refers to the “test sets” as equipment that is used by
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`“technicians” in a “mobile environment.” (See, e.g., 2:24-32 (“[T]he line
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`qualification and connectivity testing are often performed in a mobile environment.
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`The service technicians generally move from site to site to test the local loop. . . .
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`Conventional test equipment are generally bulky and cumbersome, and not well
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`suited for a mobile environment.”), 2:36-39 (“During the testing process,
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`measurements are made and the test results are provided to a service technician
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`who then configures the xDSL connection accordingly.”).))
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`Thus, Milbrandt specifically and expressly teaches away from using a
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`method or circuitry like Chang’s for measuring background noise. (See Ex. 2001,
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`Chrissan Decl. at ¶¶ 71-80.) Milbrandt’s statements specifically “criticize,
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`discredit, or other discourage” using a truck roll or technician visit by stating that
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`capable of conducting “impairment tests” such as tests for background noise. (Ex.
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`1012, Chang at Fig. 9H, 15:20-26.)
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`14
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`doing so is time consuming and cost prohibitive. (See Paper 7, Institution Decision
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`at 21; see also Ex. 2001, Chrissan Decl. at ¶¶ 71-80.)
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`Importantly, Petitioner’ own expert (Dr. Kiaei) agreed at his deposition that
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`at the time of the invention of the ‘412 patent, any test method that required a truck
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`roll was known to be less desirable than a test method that could be done remotely
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`at a central office. (See Ex. 2005, Kiaei Dep. Tr. at 36:23-37:1 (“Q: So in 1999,
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`do you agree that a truck roll was considered undesirable for testing a DSL line
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`parameter? A: In general, yes . . .”).) He also agreed that any statement such as
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`Milbrandt’s that an approach is “cost prohibitive and time consuming” is a
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`“criticism of that approach.” (Id. at 40:21-24.)
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`As such, under the controlling law, this could not be more a more by-the-
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`letter example of a “teaching away.” For example, in Depuy Spine, Inc. v.
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`Medtronic Sofamor Danek, a reference was found to teach away from a rigid screw
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`where it merely disclosed that a “shock-absorber” screw “greatly facilitates the
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`surgical procedure.” 526 F. Supp. 2d 162, 171-172 (Fed. Cir. 2007). Takeda
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`Chemical Indus., Ltd. v. Alphapharm Pty., Ltd. similarly involved a prior art
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`reference that taught away from using phyridyl compounds where it merely
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`associated them with “negative effects” such as weight gain. See 492 F.3d 1350,
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`1358-59 (Fed. Cir. 2007). Santarus, Inc. v. Par Pharm., Inc. found no obviousness
`
`in combining a secondary reference teaching the use of non-enteric coated
`
`
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`15
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`conventional oral dosage forms where the primary reference taught that such
`
`dosage forms “degrade too quickly.” See 694 F.3d 1344, 1355 (Fed. Cir. 2012). In
`
`re Brat found that a prior art reference taught away from uniting two lenses where
`
`doing so would result in “poor performance of image formation.” 16 U.S.P.Q.2d
`
`(BNA) 1812, 1813 (Fed. Cir. Oct. 3, 1990) (unpublished). And in Ex parte Jones,
`
`the Board found that a reference taught away from a display at a single space meter
`
`where it taught that using one would result in undesirable “power consumption.”
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`Appeal No. 2014-008262 (P.T.A.B. Nov. 29, 2016).
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`In other words, the law does not require that a reference expressly say, in
`
`those exact words, that a patented approach is highly discouraged or taught away.
`
`Nor does the law require that a reference specifically call out, by name, a
`
`secondary reference as being unsuitable or unworkable. If that was the case,
`
`findings of a teaching away would be much rarer than the law reflects. Rather,
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`under the law it is enough if the prior art point out disadvantages, negative effects,
`
`or other criticisms with an approach. This is exactly what Milbrandt discloses with
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`respect to Chang’s truck-roll approach for performing a test or diagnosis.
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`2.
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`Petitioners Did Not Establish a Reasonable Expectation of
`Success in Just Using Chang’s Overall “Concept” of
`Measuring Background Noise in Some Other Manner
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`The Board also overlooked and did not address another argument presented
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`by Patent Owner—that even if Petitioners had argued that it more generally would
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`16
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`have been obvious to just incorporate Chang’s overall concept of measuring
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`background noise into Milbrandt, without using Chang’s physical equipment, then
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`Petitioners failed to show any reasonable expectation of success in doing so.
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`Under the law, however, a party who petitions the Board for a determination
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`of obviousness “must show that a skilled artisan would have been motivated to
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`combine the teachings of the prior art references to achieve the claimed invention,
`
`and that the skilled artisan would have had a reasonable expectation of success
`
`from doing so.” 3D-Matrix, Ltd., v. Menicon Co., Ltd., IPR2014-00398, Paper 11,
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`at 15 (Aug. 1, 2014) (quoting Proctor & Gamble Co. v. Teva Pharms. USA, Inc.,
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`566 F.3d 989, 994 (Fed. Cir. 2009) (citations omitted; emphasis added); Actelion
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`Pharma, Ltd. v. Icos Corp., IPR2015-00561, Paper 50 (P.T.A.B. Aug. 3, 2016)
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`(“Motivation to combine and reasonable expectation of success are two legal issues
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`not to be conflated.”) (emphasis added); Ex partes Imai, Appeal 2012-003246
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`(P.T.A.B. Sept. 30, 2014) (“While it is true that the test for obviousness is not
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`whether the features of a secondary reference may be bodily incorporated into the
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`structure of the primary reference, this does not mean that finding isolated features
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`is all that is needed to establish obviousness.”).
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`It is not enough for a Petitioners or Petitioners’ expert to just conclusorily
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`allege that a person of ordinary skill would have known how to make such a
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`modification or combination, or that doing so would have been “predictable”—
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`17
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`Patent Owner’s Preliminary Response
`IPR2016-01006
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`rather, a Petitioner must provide a persuasive analysis of exactly how such a
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`combination or modification would have worked in practice. See, e.g., Allsteel,
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`Inc. v. Dirtt Environmental Sol., IPR2015-01690, Paper 10 (P.T.A.B. Jan. 27,
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`2016) (expert testimony that allegedly obvious modification would not have “any
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`significant engineering obstacle” was “not given much weight . . . because it is
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`conclusory”); Daifuku Co., Ltd. v. Murata Machinery, Ltd., IPR2015-01538, Paper
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`11 (P.T.A.B. Jan. 19, 2016) (“Petitioner and Dr. Sturges have not provided a
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`persuasive analysis of . . how the modified loading system would work in
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`practice.”). See also, ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
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`694 F.3d 1312, 1327 (Fed. Cir. 2012) (an expert’s “conclusory statement” that a
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`person of ordinary skill in the art “would have known” how to combine the
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`references is “not sufficient and is fraught with hindsight bias”); e.g., T-Mobile
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`USA, Inc., et al v. Mobile Telecomm. Tech., LLC, IPR2015-00017, Paper 9
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`(P.T.A.B. April 8, 2015) (“A mere allegation that the combination would have
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`yielded a predictable result is insufficient to show the possible predictability . . .”).
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`For example, in Coalition for Affordable Drugs VII LLC v. Pozen, Inc., the Board
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`rejected a conclusory allegation of predictability, stating that:
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`“The only evidence that Petitioner cites for its assertion regarding
`‘predictable results’
`in relation
`to NSAIDs
`is Dr. Shargel’s
`Declaration at paragraph 198, which repeats the statements presented
`in the Petition on this point, without citing any evidence itself.
`Conclusory assertions by Petitioner, merely repeated in conclusory
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`18
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`Patent Owner’s Preliminary Response
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`and unsupported statements by an expert witness in support, are not
`persuasive here.”
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`Id. at IPR2015-01680, Paper 18 (P.T.A.B. 2016) (internal citations omitted).
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`Here, as discussed, Petitioners only allege that it would have been obvious to
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`use Chang’s actual “known technique” or “background noise test circuitry” in
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`Milbrandt. (See Pet. at 16.) Chang’s only known technique or circuitry requires a
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`technician visit and truck roll. (See supra at Ex. 2001, Chrissan Decl. at ¶¶71-80.)
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`To the extent that Petitioners intended to argue that it would have somehow been
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`obvious to add the ability to measure background noise to Milbrandt without a
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`technician visit and truckroll, Petitioners fails to address in any way how that could
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`be accomplished. (See Pet. at 14-17.) Nor do Petitioners provide any evidence (or
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`even any allegation) that a person of ordinary skill in the art would have known
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`how to do so. (See id.)
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`3.
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`Incorporating Chang’s B
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