Trials@uspto.gov
`571.272.7822
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` Paper No. 8
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` Filed: December 14, 2016
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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 IPR2016-01160
`Patent 8,611,404 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`
`
`571.272.7822
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` Paper No. 8
`
`
` Filed: December 14, 2016
`
`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, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01160
`Patent 8,611,404 B2
`
`
`I.
`INTRODUCTION
`Arris Group, Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1‒20 of U.S. Patent No. 8,611,404 B2 (Ex. 1001,
`“the ’404 patent”). Paper 1 (“Pet.”). TQ Delta, LLC (“Patent Owner”) filed
`a Preliminary Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” After considering the Petition, the Preliminary Response, and
`associated evidence, we conclude that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`claims 1‒ 20 of the ’404 patent. Thus, we authorize institution of an inter
`partes review of claims 1‒ 20 of the ’404 patent as unpatentable over Bowie,
`Vanzieleghem, and ANSI T1.413. We, however, decline to institute review
`of claims 1‒20 of the ’404 patent as unpatentable over T1E1.4/97-161R1,
`T1E1.4/97-319, and ANSI T1.413 for reasons of efficiency.
`A. Related Proceedings
`Petitioner indicates that the ’404 patent is the subject of several
`
`district court proceedings. See Pet. 2.
`B. The ʼ412 Patent (Ex. 1001)
`The ’404 patent discloses a method and apparatus for establishing a
`
`power management sleep state in a multicarrier system. Ex. 1001, 1:31‒33.
`The ’404 patent discloses an asynchronous digital subscriber loop (ADSL)
`system having a first transceiver located at the site of a customer’s premises
`(“CPE transceiver”) and a second transceiver located at the local central
`telephone office (“CO transceiver”). Id. at 3:62‒67. The transceivers
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`include a transmitter section for transmitting data over a digital subscriber
`line and a receiver section for receiving data from the line. Id. at 4:14‒17.
`The transceivers further include a clock, controller, frame counter, and a
`state memory. Id. at 4:58‒5:15. Typically, data is communicated in the
`form of a sequence of data frames, sixty-eight frames for ADSL, followed
`by a synchronization frame. Id. The sixty-nine frames comprise a
`“superframe.” Id.
`The power down operation of the CPE transceiver begins on receipt of
`a power-down indication. Id. at 6:27‒30. The CPE transceiver responds to
`the power down indication by transmitting to the CO transceiver an “Intend
`to Enter Sleep Mode” notification. Id. at 6:39‒42. The CO transceiver
`responds by transmitting an “Acknowledge Sleep Mode” notification to the
`CPE transceiver, and the CPE transceiver transmits an “Entering Sleep
`Mode” notification to the CO transceiver. Id. at 6:53‒65. The CO
`transceiver detects the notification and transmits its own “Entering Sleep
`Mode” notification. Id. at 6:65‒67. The CO transceiver stores its state in its
`own state memory corresponding to the state memory of the CPE
`transceiver. Id. at 6:67‒7:2. The CO transceiver continues to advance the
`frame count and the superframe count during the period of power-down in
`order to ensure synchrony with the CPE transceiver when communications
`are resumed. Id. at 7:9‒12. The CO transceiver further continues to monitor
`the subscriber line for an “Exiting Sleep Mode” notification, and the CPE
`transceiver transmits this signal when it receives an “Awaken” indication.
`Id. at 7:57‒64. In response to the “Awaken” signal, CPE transceiver
`retrieves its store state from state memory and restores full power to its
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`circuitry. Id. at 7:64‒66. CO Transmitter detects “Exit Sleep Mode”
`notification and restores its state and power. Id. at 8:1‒4.
`C. Illustrative Claim
`Petitioner challenges claims 1‒20 of the ’404 patent. Pet. 22–58.
`Claims 1, 6, 11, and 16 are independent claims. Claim 6 is illustrative of the
`claims at issue and is reproduced below:
`6.
`An apparatus comprising a transceiver operable to:
`receive, in a full power mode, a plurality of superframes,
`wherein the superframe comprises a plurality of data frames
`followed by a synchronization frame;
`receive, in the full power mode, a synchronization signal;
`transmit a message to enter into a low power mode;
`store, in a low power mode, at least one parameter
`associated with the full power mode operation wherein the at
`least one parameter comprises at least one of a fine gain
`parameter and a bit allocation parameter;
`receive, in the low power mode, a synchronization signal;
`
`and
`
`exit from the low power and restore the full power mode
`by using the at least one parameter and without needing to
`reinitialize the transceiver.
`Ex. 1001, 10:29‒43.
`D. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability of claims 1‒20 of the ’404 patent under 35 U.S.C.
`§ 103(a) as follows (see Pet. 22–58):1
`
`
`1 Petitioner supports its challenge with the Declaration of Lance McNally.
`(Ex. 1003).
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`References
`Bowie,2 Vanzieleghem,3 and
`ANSI T1.4134
`T1E1.4/97-161R1,5
`T1E1.4/97-319,6 and ANSI
`T1.413
`
`Claims
`Challenged
`1‒20
`
`1‒20
`
`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2142–46 (2016). Under the broadest reasonable
`construction standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`
`
`2 U.S. Patent No. 5,956,323; issued Sep. 21, 1999 (Ex. 1005) (“Bowie”).
`3 U.S. Patent No. 6,246,725 B1; issued Jun. 12, 2001 (Ex. 1006)
`(“Vanzieleghem”).
`4 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”).
`5 T1E1.4/97-161R1, “Warm Re-Start for ADSL”, Werner Henkel, Peter
`S. Chow, September 22-26, 1997 T1E1.4 Working Group Meeting
`(Ex. 1007) (“97-161R1”).
`6 T1E1.4/97-319, “Power Down in Multicarrier Transmission”, Thierry
`Pollet, Peter Reusens, September 22-26, 1997 T1E1.4 Working Group
`Meeting (Ex. 1008) (“97-319”).
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`1. “Synchronizing Signal”
`Petitioner argues that the ’404 patent specification does not define
`“synchronization signal.” Pet. 24 (citing Ex. 1003 ¶ 37). Rather, Petitioner
`argues that the ’404 patent describes a “timing reference signal” and is the
`only mechanism disclosed for synchronization. Id. (citing Ex. 1001, 5:39‒
`45). Specifically, the ’404 patent discloses that “[t]he timing reference
`signal ‘synchronizes frame counter of the CPE transceiver to the
`corresponding frame counter of the CO transceiver.’” Id. (quoting Ex. 1001,
`5:50‒52). Accordingly, Petitioner argues that the claimed “synchronization
`signal” is the same as the “timing reference signal,” and should be construed
`to mean “a signal allowing frame synchronization between the transmitter of
`the signal and the receiver of the signal.” Id. (citing Ex. 1003 ¶¶ 38‒39).
`Patent Owner argues that “[i]t is not necessary at this stage of the proceeding
`to construe this limitation,” but proposes that the broadest reasonable
`interpretation of “synchronization signal” is “an indication used to establish
`or maintain a timing relationship between transceivers.” Prelim. Resp. 6.
`We are persuaded by Petitioner and Patent Owner. The construction
`proposed by Patent Owner is not inconsistent with the construction provided
`by Petitioner, and because Petitioner’s construction is based in light of the
`’404 patent specification, on this record, we interpret “synchronization
`signal” to mean “a signal allowing frame synchronization between the
`transmitter of the signal and the receiver of the signal.”
`2. “Transceiver”
`Petitioner argues that “transceiver” should be construed to mean “a
`communications device . . . capable of transmitting and receiving.” Pet. 33
`(citing Ex. 1013, 1056). Patent Owner does not offer a construction of this
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`term. We are persuaded by Petitioner, and, on this record, we interpret
`“transceiver” to mean “a communications device . . . capable of transmitting
`and receiving.”
`B. Obviousness of Claims 1‒20 over Bowie, Vanzieleghem, and
`ANSI T1.413
`
`Petitioner contends that claims 1‒20 of the ’404 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Bowie,
`Vanzieleghem, and ANSI T1.413. Pet. 33–46. For the reasons discussed
`below, the evidence, on this record, indicates there is a reasonable likelihood
`that Petitioner would prevail in showing that claims 1‒20 of the ’404 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious.
`1. Bowie (Ex. 1005)
`Bowie discloses a power conservation system for transmission
`systems in which data is modulated over a communications loop from a
`central office location to a customer premise. Ex. 1005, 1:4‒8. Bowie
`discloses that to provision ADSL service, ADSL units are located at each
`end of a wire loop, a first ADSL unit at the customer premises (CPE) and a
`second ADSL unit at the telephone company central office (COT). Id. at
`3:51‒58. Data is arranged in a structure known as a “frame” prior to
`transmission. Id. at 3:66‒67.
`ADSL units enter a low power mode to reduce power requirements.
`Id. at 5:6‒8. CPE unit initiates low power mode by sending a “shut-down”
`signal to the COT unit. Id. at 5:8‒10. Both the CPE unit and COT unit may
`store loop characteristics that enable rapid resumption of user data
`transmission when units return to full power mode. Id. at 5:18‒25. Each
`unit then enters low power mode by shutting off the now unnecessary
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`sections of the signal processing, transmitting, and receiving circuitry. Id. at
`5:26‒28. After shutdown, the loop is in an inactive state. Id. at 5:28‒29.
`The units return to full power mode after the CPE unit transmits to the
`COT unit a resume signal. Id. at 5:48‒59. The stored loop characteristics
`are used to restore the loop parameters. Id. at 5:60‒66.
`2. Vanzieleghem (Ex. 1006)
`Vanzieleghem discloses a transmitter that modulates a plurality of
`carriers with data received by the transmitter to derive symbols. Ex. 1006,
`1:13‒19. Vanzieleghem discloses an Asymmetrical Digital Subscriber Line
`(ADSL) transceiver unit located in the central office ATU-C. Id. at 4:46‒52.
`Bits of data received are grouped into frames and the frames are transferred
`to coding circuit MMC. Id. at 5:39‒44. Coding circuit MMC maps the
`frames to carriers and modulates the carriers to Discrete Multi-tone (DMT)
`symbols. Id. at 5:44‒47. For every 68 DMT symbols transmitted on the
`communication line, a synchronization symbol is also transmitted. Id. at
`5:53‒54. The combination of the synchronization symbol and the 68 DMT
`symbols is considered a superframe. Id. at 5:62‒65. After generating 256
`superframes, coding circuit MMC generates a “line-monitoring superframe”
`that contains information used to measure the quality of transmission on the
`communication line. Id. at 5:66‒6:4. The combination of 256 superframes
`and a line-monitoring superframe is considered a hyperframe. Id. at 6:4‒6.
`3. ANSI T1.413 (Ex. 1009)
`ANSI T1.413 discloses electrical characteristics of Asymmetric
`Digital Subscriber Line (ADSL) signals appearing at a network interface.
`Ex. 1009, Abstract. ADSL allows for the provision of Plain Old Telephone
`Service (POTS) and a variety of digital channels. Id. at 1. Digital channels
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`consist of full duplex low-speed channels and simplex high-speed channels
`in the direction from the network to the customer premises, and low-speed
`channels in the opposite direction. Id.
`4. Analysis
`The evidence set forth by Petitioner indicates there is a reasonable
`likelihood that Petitioner will prevail in showing that claims 1‒20 are
`unpatentable under 35 U.S.C. § 103(a) as obvious. Pet. 33–46.
`For example, claim 6 recites “[a]n apparatus comprising a
`transceiver.” As discussed above, “transceiver” is defined as a
`“communication device . . . capable of transmitting and receiving.” See
`Section II.A.2. Petitioner argues that Bowie discloses terminal units that
`transmit and receive data. Pet. 33 (citing Ex. 1005, Abstract; Ex. 1003 ¶ 47).
`Petitioner alternatively argues that Vanzieleghem discloses ADSL
`transceivers. Id. (citing Ex. 1006, 4:45‒47; Ex. 1003 ¶ 47).
`Claim 6 further recites “receive, in a full power mode, a plurality of
`superframes, wherein the superframe comprises a plurality of data frames
`followed by a synchronization frame.” Petitioner argues that the ’404 patent
`specification discloses that “full power mode is understood to refer to
`normal operation when low power mode has not been invoked,” and
`Petitioner’s expert, Mr. McNally, opines that the “broadest reasonable
`construction for the term ‘full power mode’ is normal operation.” Pet. 35
`(citing Ex. 1001, 5:38); Ex. 1003 ¶ 35. Petitioner further argues that Bowie
`and Vanzieleghem describe ADSL systems that use superframes to
`communicate data in normal operation, where Vanzieleghem further
`discloses transmitting 68 DMT symbols and a synchronization symbol as a
`superframe in full power to a receiver. Id. at 35‒37 (citing Ex. 1005, 2:41‒
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`43; Ex. 1006, 2:35‒40, 5:62‒65, Fig. 2; Ex. 1003 ¶ 104). Petitioner also
`argues that ANSI T1.413 discloses a superframe structure that comprises 68
`frames (frame 0 ‒ frame 67) and a synchronization symbol. Id. at 36 (citing
`Ex. 1009, 24).
`Claim 6 also recites “receiv[ing], in the full power mode, a
`synchronization signal.” As discussed above, a synchronization signal is
`construed to mean “a signal allowing frame synchronization between the
`transmitter of the signal and the receiver of the signal.” See Section II.A.1.
`Petitioner argues that Vanzieleghem and ANSI T1.413 disclose transmitting
`a synchronization frame within a superframe, and, accordingly, a
`synchronization signal is received. Pet. 37‒38 (citing Ex. 1006, 5:55‒65;
`Ex. 1009, 46‒47, 113; Ex. 1003 ¶ 58).
`Claim 6 additionally recites “transmit[ting] a message to enter into a
`low power mode.” Petitioner argues that Bowie discloses the use of a
`message, and other means, for initiating a low power mode. Pet. 38 (citing
`Ex. 1005, 5:9‒12; Ex. 1003 ¶ 107). Petitioner also argues that
`Vanzielgehem discloses the transmission of a message from transmitter to
`receiver to avoid unneeded decoding operations at the receiver in the low
`power state. Id. at 38‒39 (citing Ex. 1006, 7:15‒17; Ex. 1003 ¶ 107).
`Claim 6 also recites “stor[ing], in a low power mode, at least one
`parameter associated with the full power mode operation.” Petitioner argues
`that Bowie discloses storing “loop characteristic parameters in a low-power
`state,” where loop characteristic parameters are required to adapt the devices
`to the wire loops so that normal data transmission can begin. Pet. 39‒40
`(citing Ex. 1005, 4:66‒5:3, 8:22‒24; Ex. 1003 ¶ 70).
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`Claim 6 additionally recites “wherein the at least one parameter
`comprises at least one of a fine gain parameter and a bit allocation
`parameter.” Petitioner argues that ANSI T1.413 discloses that the goal of
`the initialization sequence that the ’404 patent and Bowie propose to avoid is
`the determination of optimum carrier gains and bit allocations. Pet. 40
`(citing Ex. 1009, 87). Mr. McNally, Petitioner’s expert, explains that Bowie
`must include at least one of a fine gain parameter and a bit allocation
`parameter because Bowie claims storing loop characteristic parameters. Id.
`(citing Ex. 1005, 8:22‒24); Ex. 1003 ¶¶ 74‒75. Mr. McNally specifically
`explains that ANSI T1.413 identifies fine gain and bit allocation parameters,
`and “it would have been obvious based on the 1995 ADSL Standard [ANSI
`T1.413] for one skilled in the art to store the bits allocation and gains as
`Bowie’s loop characteristics.” Ex. 1003 ¶ 74.
`Claims 6 further recites “receive, in the low power mode, a
`synchronization signal.” Petitioner argues that Vanzieleghem discloses a
`signal that maintains frame synchronization during low power mode. Pet. 41
`(citing Ex. 1006, 6:57‒61).
`Claim 6 also recites “exit from the low power and restore the full
`power mode by using the at least one parameter and without needing to
`reinitialize the transceiver.” Petitioner argues that Bowie discloses restoring
`the loop parameters to enable data transmission to resume quickly. Pet. 42
`(citing Ex. 1005, 5:52‒66, 6:31‒34, 8:24‒25). Petitioner also argues that
`ANSI T1.413 discloses “determining the parameters to account for loop
`characteristics.” Id. (citing Ex. 1009, 87).
`Petitioner argues that Bowie and Vanzieleghem are systems based on
`the standard disclosed in ANSI T1.413, and were obvious to combine
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`because “they provide complementary technology for the efficient
`implementation of low power modes with rapid-on capabilities.” Pet. 27.
`Petitioner argues that Vanzieleghem addresses synchronization concerns and
`low power transmitter technology, and Bowie addresses the need for
`controlling the transition between normal and low power operation. Id.
`Petitioner further argues that Bowie also addresses the “importance of
`storing subscriber loop characteristics to ensure a rapid return to normal
`operation.” Id. Accordingly, because Bowie and Vanzieleghem are based
`on the standard disclosed in ANSI T1.413, a person with ordinary skill in the
`art would have found it obvious to combine Bowie, Vanzieleghem, and
`ANSI T1.413. Id. at 27‒28.
`Patent Owner argues that the combination of Bowie, Vanzieleghem,
`and ANSI T1.413 fails to teach or suggest “stor[ing], in a low power mode,
`at least one parameter associated with the full power mode operation
`wherein the at least one parameter comprises at least one of a fine gain
`parameter and a bit allocation parameter.” Prelim. Resp. 13‒15. Petitioner
`first argues that ANSI T1.413 fails to disclose “a low power mode much less
`storing a fine gain parameter or a bit allocation parameter in a low power
`mode.” Id. at 13‒14. On this record, we are not persuaded by Patent
`Owner’s argument. As discussed above, Petitioner argues that Bowie
`discloses “stor[ing], in a low power mode, at least one parameter associated
`with the full power mode operation,” and ANSI T1.413 discloses “wherein
`the at least one parameter comprises at least one of a fine gain parameter and
`a bit allocation parameter.” Accordingly, Patent Owner’s argument that
`ANSI T1.413 fails to disclose the entire limitation is tantamount to an attack
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`on ANSI T1.413 individually, whereas Petitioner’s argument is based on
`what the combination of the references teaches or suggests.
`Patent Owner further argues that “Petitioner’s effort to break up the
`Storing Limitation is improper.” Id. at 14‒15. Patent Owner argues that the
`“‘at least one parameter [that] comprises at least one of a fine gain parameter
`and a bit allocation parameter’ is the same ‘at least one parameter’ that is
`‘store[d], in low power mode,’” and “these requirements are not discrete
`limitations that can be separated.” Id. On this record, we are not persuaded
`by Patent Owner’s argument. As discussed above, Bowie discloses storing
`loop characteristic parameters upon receipt of a shut-down signal in order to
`enable rapid resumption of transmission when returning to full power mode.
`Pet. 39‒40 (citing Ex. 1005, 4:66‒5:3, 8:22‒24; Ex. 1003 ¶ 70); Ex. 1005,
`5:18‒25. ANSI T1.413 defines the characteristics or parameters of
`transmission, such as the number of bits and relative power levels. Pet. 40
`(citing Ex. 1009, 87). On this record, we credit the testimony of Petitioner’s
`expert, Mr. McNally, that ANSI T1.413 identifies fine gain and bit
`allocation parameters, and “it would have been obvious based on the 1995
`ADSL Standard [ANSI T1.413] for one skilled in the art to store the bits
`allocation and gains as Bowie’s loop characteristics.” Ex. 1003 ¶ 74.
`Patent Owner further argues that Petitioner fails to demonstrate why a
`person of ordinary skill in the art would have modified Bowie to include the
`teachings of ANSI T1.413. Prelim. Resp. 15‒19. Patent Owner similarly
`argues that Petitioner fails to provide “sufficient non-conclusory evidence to
`support a reason to combine Bowie, Vanzieleghem, and the ADSL Standard
`[ANSI T1.413],” and Mr. McNally’s testimony is conclusory. Id. at 19‒27.
`On this record, we are not persuaded by Patent Owner’s argument. As
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`discussed above, Petitioner asserts that both Bowie and Vanzieleghem are
`concerned with reducing power consumption by adding a low power mode,
`and this assertion is supported by the disclosures of Bowie and
`Vanzieleghem. Pet. 27 (citing Ex. 1005, 2:1‒4; Ex. 1006, 1:40‒41).
`Petitioner further asserts that both Bowie and Vanzieleghem discloses ADSL
`systems that are described by ANSI T1.413, which is also supported by the
`disclosures themselves. Id.; Ex. 1005, 3:24‒26; Ex. 1006, 1:22‒32.
`Vanzieleghem explicitly references ANSI T1.413. Ex. 1006, 1:22‒32.
`Petitioner further cites to the declaration of Mr. McNally, which is also
`supported by the disclosures. Pet. 27‒28 (citing Ex. 1003 ¶¶ 84‒85 (citing
`Ex. 1006, 2:7‒14)).
`Patent Owner further argues that a person with ordinary skill in the art
`would not have combined Bowie, Vanzieleghem, and ANSI T1.413. Prelim.
`Resp. 27‒30. Patent Owner specifically argues that the “references teach
`away from
`the proposed combination” and “Petitioner’s proposed
`combination would render Bowie inoperable for its intended use.” Id. On
`this record, we are not persuaded by Patent Owner.
`“A reference may be said to teach away when a person of ordinary
`skill, upon reading the reference, would be discouraged from following the
`path set out in the reference, or would be led in a direction divergent from
`the path that was taken by the applicant.’ Ricoh Co., Ltd. v. Quanta
`Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A
`reference does not teach away if it merely expresses a general preference for
`an alternative invention from amongst options available to the ordinarily
`skilled artisan, and the reference does not discredit or discourage
`investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
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`(Fed. Cir. 2004). Patent Owner does not identify any disclosure from the
`references that discredits or discourages investigation into the claimed
`invention. Furthermore, Patent Owner’s argument that Vanzieleghem’s
`periodic pilot tone would render Bowie inoperable because it would
`constantly cause Bowie to resume full power mode is not supported by the
`disclosures, and is conclusory because Patent Owner does not identify why it
`is the pilot signal that is used to cause Bowie to resume full power mode.
`See Prelim. Resp. 30.
`Accordingly, we are persuaded that Petitioner has met its burden of
`showing a reasonable likelihood that claims 1‒20 of the ’404 patent are
`unpatentable over Bowie, Vazieleghem, and ANSI T1.413.
`C. Obviousness of Claims 1‒20 over 97-161R1, 97-319, and ANSI T1.413
`Petitioner contends that claims 1‒20 of the ’404 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over 97-161R1, 97-319,
`and ANSI T1.413. Pet. 46–58. Pursuant to 35 U.S.C. § 316(b), rules
`for inter partes proceedings were promulgated to take into account the
`“regulation on the economy, the integrity of the patent system, the efficient
`administration of the Office, and the ability of the Office to timely complete
`proceedings.” The promulgated rules provide that they are to “be construed
`to secure the just, speedy, and inexpensive resolution of every
`proceeding.” 37 C.F.R. § 42.1(b). As a result, and in determining whether
`to institute an inter partes review of a patent, the Board, in its discretion,
`may “deny some or all grounds for unpatentability for some or all of the
`challenged claims.” 37 C.F.R. § 42.108(b). The Board has discretion
`whether to institute a review. See 35 U.S.C. § 314(a). Accordingly, for
`
`
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`IPR2016-01160
`Patent 8,611,404 B2
`
`reasons of efficiency, we exercise our discretion not to institute on this
`ground for reasons of administrative efficiency.
`D. Conclusion
`For the foregoing reasons, we are persuaded that Petitioner has met its
`burden of showing a reasonable likelihood that claims 1‒20 of the ’404
`patent are unpatentable over Bowie, Vazieleghem, and ANSI T1.413.
`We exercise our discretion to not institute on the ground that claims
`1‒20 of the ’404 patent are unpatentable over 97-161R1, 97-319, and
`ANSI T1.413.
`
`III. ORDER
`After due consideration of the record before us, and for the foregoing
`reasons, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to claims 1‒20 of the ’404 patent as unpatentable under
`35 U.S.C. § 103(a) over Bowie, Vanzieleghem, and ANSI T1.413;
`FURTHER ORDERED that no other grounds are instituted; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ʼ404 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial.
`
`16
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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
`
`Robert Starr
`ARRIS GROUP, INC.
`Bob.Starr@arris.com
`
`
`
`For PATENT OWNER:
`Peter McAndrews
`Thomas Wimbiscus
`Scott McBride
`Christopher Scharff
`McANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`
`
`
`17
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