Trials@uspto.gov
`571-272-7822
`
`
`Paper 36
`Entered: March 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01160
`Patent 8,611,404 B2
`____________
`
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`

`

`IPR2016-01160
`Patent 8,611,404 B2
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.71(d), ARRIS Group, Inc. (“Petitioner”)
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`requests rehearing of our Final Written Decision (Paper 34, “Dec.”). Paper
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`35 (“Req. Reh’g”). Specifically, Petitioner submits that we erred by not
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`considering evidence and arguments regarding “synchronization signal” and,
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`as a result, denied Petitioner an opportunity to show that the references teach
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`the claimed “synchronization signal” under the claim construction adopted
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`in our Final Written Decision. Req. Reh’g passim.
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`For the reasons set forth below, Patent Owner’s Request for
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`Rehearing is denied.
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`II. STANDARD OF REVIEW
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`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was addressed previously in a motion, an opposition, or a
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`reply. Id. With this in mind, we address the arguments presented by Patent
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`Owner.
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`III. ANALYSIS
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`A. Background
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`In our Decision on Institution, we adopted Petitioner’s proposed
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`construction of “synchronization signal” to mean “a signal allowing frame
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`synchronization between the transmitter of the signal and the receiver of the
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`signal.” Paper 8, 6; Paper 1 (“Pet.”), 24. Patent Owner, in its Response,
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`argued that “synchronization signal” should not encompass a
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`“synchronization frame,” which allows for frame synchronization, because
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`IPR2016-01160
`Patent 8,611,404 B2
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`the claims separately recite a “synchronization frame.” Paper 16 (“PO
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`Resp.”), 21. Petitioner, in its Reply, argued that our initial construction was
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`correct and that, even if Patent Owner’s construction was adopted, it was
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`nevertheless taught by Vanzieleghem1 and ANSI T1.413.2 Paper 17
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`(“Reply”), 8–9, 18–19. In our Final Written Decision, we agreed with
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`Patent Owner that “synchronization signal” does not encompass a
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`synchronization frame and we construed “synchronization signal” to mean
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`“a signal allowing synchronization between the clock of the transmitter of
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`the signal and the clock of the receiver of the signal.” Dec. 6–10. With
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`respect to whether Petitioner had met its burden of showing that the
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`“synchronization signal” was taught in the prior art, we stated
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`The contentions in the Petition are based upon Petitioner’s
`proposed
`construction of
`“synchronization
`signal”
`as
`encompassing a synchronization frame—i.e., “allowing for
`frame synchronization.” See, e.g., Pet. 24, 37–38. We have not
`adopted that construction, however, for the reasons discussed
`above. Because our construction of “synchronization signal”
`excludes a synchronization frame, we are not persuaded that the
`argument and evidence
`in
`the Petition shows
`that
`the
`combination of Bowie, Vanzieleghem, and ANSI T1.413 teaches
`transmitting/receiving, in full power mode, a “synchronization
`signal.” Moreover, we agree with Patent Owner that Petitioner’s
`reliance, in the Reply, upon the teachings of a pilot tone in
`Vanzieleghem and ANSI T1.413 constitutes a change in theory
`and, therefore, is beyond the scope of a proper reply.
`Notwithstanding the mention of “a pilot tone” in paragraph 58 of
`
`
`
`1 U.S. Patent No. 6,246,725 B1; issued June 12, 2001 (Ex. 1006)
`(“Vanzieleghem”).
`2 Network and Customer Installation Interfaces – Asymmetric Digital
`Subscriber Line (ADSL) Metallic Interface, AMERICAN NATIONAL
`STANDARDS INSTITUTION (ANSI) T1.413-1995 STANDARD (Ex.
`1009) (“ANSI T1.413”).
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`IPR2016-01160
`Patent 8,611,404 B2
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`Dr. McNally’s declaration, the Petition itself unambiguously
`identifies the synchronization frame, not a pilot tone, as the
`recited “synchronization symbol.” See, e.g., Pet. 37–38 (citing
`Bowie’s and ANSI T1.413’s teachings of synchronization
`frame). We, therefore, do not address whether the pilot tone
`taught in Vanzieleghem and in ANSI T1.413 teaches the recited
`“synchronization signal.”
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`Dec. 15–16.
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`B. Petitioner’s Arguments
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`Petitioner argues that we “erred as a matter of law in failing to address
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`whether the pilot tone taught in Vanzieleghem and in ANSI T1.413 teaches
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`the ‘synchronization signal’ recited in the ’404 patent in view of the claim
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`construction ultimately adopted by the Board in the Final Written Decision.”
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`Req. Reh’g 2.
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`First, Petitioner argues we should consider whether the pilot tone
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`teaches the “synchronization signal” because Patent Owner admitted in its
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`Preliminary Response that “the ‘‘pilot tone’ of Vanzieleghem is sent out
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`periodically to maintain synchronization between the transmitter and
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`receiver.” Id. (quoting Paper 7, 30); see also id. at 4 (“This admission,
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`however, was not addressed or even mentioned in the Final Written
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`Decision.”). Petitioner did not present this argument previously. We could
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`not have overlooked or misapprehended those arguments presented for the
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`first time in the rehearing request. Moreover, even assuming the alleged
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`admission is true, it is not relevant to the issue of whether Petitioner’s
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`reliance, in the Reply, upon the teachings of a pilot tone in Vanzieleghem
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`and ANSI T1.413 constituted a change in theory from the Petition and,
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`therefore, was beyond the scope of a proper reply.
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`IPR2016-01160
`Patent 8,611,404 B2
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`Second, Petitioner argues that it appropriately addressed the pilot tone
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`in the Reply and we “erred in deeming the discussion in the Reply that the
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`‘pilot tone’ of Vanzieleghem and ANSI T1.413 teaches the claimed
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`‘synchronization signal’ as being ‘beyond the scope of a proper reply.’”
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`Req. Reh’g 3–5. Specifically, Petitioner argues that its discussion was
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`properly the subject of the Reply because “[t]he Federal Circuit has
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`recognized that when a patent owner argues for a claim construction in its
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`PO Response, a petitioner can and should ‘present a case for unpatentability
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`under that construction when it ha[s] the opportunity, in its Reply.’” Id. at 5
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`(citing Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019,
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`1029 (Fed. Cir. 2017). The quoted passage in Rovalma states
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`in this case, unlike in SAS Institute, the petitioner had clear notice
`that the Board might adopt the claim construction ultimately
`adopted—that construction was argued in the Patent Owner’s
`Response—yet it did not present a case for unpatentability under
`that construction when it had the opportunity, in its Reply.
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`Rovalma, S.A., 856 F.3d at 1029. Here, as in Rovalma, Petitioner had clear
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`notice that we might adopt a claim construction excluding synchronization
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`frame because Patent Owner argued for such a construction in its Patent
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`Owner Response. PO Resp. 19–23. And though the Rovalma decision
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`faults Petitioner for not “present[ing] a case for unpatentability under that
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`construction when it had the opportunity, in its Reply,” it does not say what
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`Petitioner’s suggest—i.e., that petitioners may, in their replies, abandon
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`completely the teachings relied upon in the petition and point to an entirely
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`different teaching within a reference. Instead, Rovalma merely observes that
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`where, as here, Petitioner has notice of a dispute over the construction of a
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`term, it should, in its Reply, argue why the evidence relied upon in the
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`IPR2016-01160
`Patent 8,611,404 B2
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`Petition nevertheless satisfies the alternative construction. Petitioner’s
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`arguments in its Reply that the synchronization frame teaches the
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`“synchronization signal” because it allows for frequency synchronization are
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`the type of arguments contemplated by Rovalma. But because Petitioner
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`chose to rely solely on Vanzieleghem’s and ANSI T1.413’s teachings of a
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`synchronization frame within a superframe (Dec. 14–15 (citing Pet. 37–38))
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`and did not clearly identify any reliance on Vanzieleghem’s or ANSI
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`T1.413’s pilot tone as the “synchronization signal,” we are not persuaded
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`that we erred by determining that those arguments are beyond the scope of a
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`proper reply.
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`Third, Petitioner contends that, “even if the Board declines to consider
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`PO’s admission or the arguments in Petitioner’s Reply, Petitioner should be
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`permitted to show that the cited references teach the claimed
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`‘synchronization signal’ under the construction adopted by the Board, for the
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`first time, in the Final Written Decision.” Req. Reh’g 13–14. Petitioner,
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`however, cites no authority for its proposition. To the extent Petitioner
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`relies on SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed.
`
`Cir. 2016) (Req. Reh’g 5–6), we note that in this case, unlike in SAS, the
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`Board did not construe an undisputed term sua sponte. To the contrary,
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`Patent Owner disputed the construction of “synchronization signal” in its
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`Patent Owner Response, Petitioner replied to those arguments in its Reply,
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`and the panel agreed with Patent Owner. Thus, this is not a case where an
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`agency has “‘change[d] theories in midstream without giving respondents
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`reasonable notice of the change’ and ‘the opportunity to present arguments
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`under the new theory.’” SAS Inst., 825 F.3d at 1351 (citing Belden Inc., v.
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`6
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`IPR2016-01160
`Patent 8,611,404 B2
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`Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015), quoting Rodale Press,
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`Inc. v. FTC, 407 F.2d 1252, 1256-57 (D.C. Cir. 1968)).
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`
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`II. ORDER
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`Accordingly, it is it is ORDERED that Petitioner’s Request for
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`Rehearing is denied.
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`
`
`7
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`

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`IPR2016-01160
`Patent 8,611,404 B2
`
`For PETITIONER:
`
`Charles Griggers
`Dan Gresham
`THOMAS HORSTEMEYER, LLP
`charles.griggers@thomashorstemeyer.com
`dan.gresham@thomashorstemeyer.com
`
`Bob Starr
`ARRIS Group, Inc.
`bob.starr@arris.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
`
`
`
`
`8
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