Trials@uspto.gov
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` Paper No. 44
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` Entered: February 10, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK, LLC,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01469
`Patent 9,094,268 B2
`____________
`
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
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` Paper No. 44
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`
`
` Entered: February 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK, LLC,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01469
`Patent 9,094,268 B2
`____________
`
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2016-01469
`Patent 9,094,268 B2
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`
`INTRODUCTION
`I.
`We instituted inter partes review, pursuant to 35 U.S.C. § 314, on a
`Petition (Paper 1, “Pet.”) filed by DISH Network L.L.C. (“Petitioner”)
`requesting inter partes review of claims 1, 2, 4, 11, 12, 14, 16 and 18 of U.S.
`Patent No. 9,094,268 B2 (Ex. 1001, “the ’268 patent”) owned by TQ Delta,
`LLC (“Patent Owner”). This Final Written Decision is entered pursuant to 35
`U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
`Petitioner has shown by a preponderance of the evidence that the challenged
`claims are unpatentable. Patent Owner’s Motion to Exclude is dismissed.
`
`A. Procedural History
`Petitioner filed a Petition requesting an inter partes review of claims 1,
`2, 4, 11, 12, 14, 16 and 18 of the ’268 patent. Pet. Patent Owner filed a
`Preliminary Response to the Petition. (Paper 8, “Prelim. Resp.”). We
`instituted inter partes review of (1) claims 1, 2, 11, and 12 of the ’268 patent
`as unpatentable as obvious under 35 U.S.C. § 103(a) over Bowie,1 Morelli,2
`and ANSI T1.413,3 and (2) claims 4, 14, 16, and 18 of the ’268 patent as
`unpatentable as obvious under 35 U.S.C. § 103(a) over Bowie and Morelli.
`Paper 13 (“Inst. Dec.”), 21.
`
`
`1 U.S. Patent No. 5,956,323; issued Sep. 21, 1999 (Ex. 1004, “Bowie”).
`2 U.S. Patent No. 6,236,674 B1; issued May 22, 2001 (Ex. 1005, “Morelli”).
`3 Network and Customer Installation Interfaces – Asymmetric Digital
`Subscriber Line (ADSL) Metallic Interface, AMERICAN NATIONAL
`STANDARDS INSTITUTION (ANSI) T1.413-1995 STANDARD (Ex. 1006,
`“ANSI T1.413”).
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`Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”),
`and Petitioner filed a Corrected Reply to Patent Owner’s Response (Paper 32,
`“Reply”).
`We held a hearing on November 8, 2017, and a transcript of the hearing
`is included in the record. Paper 43 (“Tr.”).
`
`B. Related Proceedings
`Petitioner states that the ’268 patent is asserted in TQ Delta LLC v.
`Comcast Corp., et. al., Case No. 1:15-cv-00611 (D. Del.); TQ Delta LLC v.
`CoxCom LLC et al., Case No. 1:15-cv-00612 (D. Del.); TQ Delta LLC v.
`DirecTV et al., Case No. 1:15-cv-00613 (D. Del.); TQ Delta LLC v. DISH
`Network Corp. et al., Case No. 1:15-cv-00614 (D. Del.); TQ Delta LLC v.
`Time Warner Cable Inc., et al., Case No. 1:15-cv-00615 (D. Del.); and TQ
`Delta LLC v. Verizon Services Corp., Case No. 1:15-cv-00616 (D. Del.). Pet.
`1–2, Paper 4, 2–3. The ’268 patent is related to U.S. Patent No. 8,611,404,
`which is involved in IPR2016-01160, IPR2016-01466, and IPR2016-01470.
`
`C. The ʼ268 Patent
`The ’268 patent describes “a multicarrier transmission system having a
`low power sleep mode and a rapid-on capability.” Ex. 1001, 3:35–37. The
`sleep mode idles a multicarrier transceiver when it is not needed to transmit or
`receive data, with transmission and reception capabilities quickly restored
`without requiring full initialization after inactivity. Id. at Abstract. The
`system includes a transceiver at the local central telephone office’s location
`(“CO transceiver”) and a transceiver at the customer’s premises (“CPE
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`transceiver”), which communicate over a telephone line. Id. at 3:66–4:9.
`Figure 1 reproduced below depicts a preferred embodiment of the invention.
`
`
`Figure 1 shows a block diagram of a multicarrier transmission system. Id. at
`3:50–53. Each transceiver includes “DSL transceiver 10” with “transmitter
`section 12 for transmitting data over digital subscriber line 14 and receiver
`section 16 for receiving data from the line.” Id. at 4:18–21, FIG. 1. In one
`embodiment, the transmitter and receiver sections 12, 16 enter a low power
`mode (or “sleep” mode), where power is reduced or cut off to the digital
`modulators/demodulator portions (sections 12, 16) of the transmitter and
`receiver sections (corresponding to the IFFT 20 (data modulator) and FFT 56
`(demodulator) of the CPE transceiver of Figure 1). Id. at 6:66–7:21. In
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`another embodiment, the transceiver is placed into a “partial” sleep mode “in
`which only part of each transceiver is powered down.” Id. at 8:52–60.
`The ’268 patent specification discloses that a transceiver entering a low
`power mode must first store a variety of line parameters comprising its “state
`memory.” Id. at 6:66–7:14. During sleep mode state, the CO transceiver
`monitors data subscriber line 14 for an “Exiting Sleep Mode” signal from the
`CPE transceiver. Id. at 6:64–69. The CPE transceiver transmits this signal
`when the “controller receives an ‘Awaken’ indication. . . . In response to the
`‘Awaken’ signal, the CPE transceiver retrieves its stored state from the state
`memory 38 [and] restores full power to its circuitry.” Id. at 7:64–8:6.
`
`
`
`D. Illustrative Claims
`Claims 1 and 11 are independent and reproduced below as illustrative
`of the claims at issue:
`1. A method, in a multicarrier transceiver, comprising:
`transmitting or receiving a message to enter a low
`power mode; and
`entering the low power mode, wherein a transmitter
`portion of the transceiver does not transmit data during the
`low power mode and a receiver portion of the transceiver
`receives data during the low power mode, wherein the
`transceiver is a device that is capable of transmitting or
`receiving internet and video data.
`
`11. A method, in a multicarrier transceiver, comprising:
`transmitting or receiving a message to enter a low
`power mode for a transmitter portion while a receiver
`portion remains in a full power mode; and
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`entering the low power mode for the transmitter
`portion while the receiver portion remains in the full power
`mode, wherein the transceiver is a device that is capable of
`transmitting or receiving internet and video data.
`Ex. 1001, 10:6–14, 10:64–11:4.
`
`II. ANALYSIS
`A. Claim Interpretation
`We interpret 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). Any special definition for a claim term must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
`1480 (Fed. Cir. 1994).
`
`1. “low power mode
`Our Decision on Institution construed “low power mode” to mean “a
`mode in which power to the circuitry is reduced for the purpose of power
`conservation.” Inst. Dec. 7. Patent Owner does not propose a different
`construction for this term (PO Resp. 23–24) and Petitioner does not address
`this construction. Based on the record developed during this proceeding, we
`continue to apply this construction.
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`2. “transceiver”
`Our Decision on Institution construed “transceiver” as “a
`communications device capable of transmitting and receiving.” Inst. Dec. 8.
`Patent Owner does not propose a different construction for this term (PO
`Resp. 23–24) and Petitioner does not address this construction. Based on the
`record developed during this proceeding, we continue to apply this
`construction.
`
`3. “data”
`Our Decision on Institution determined that no further interpretation is
`required for “data.” Inst. Dec. 8. Neither party addressed this determination
`in subsequent briefing. Based on the record developed during this proceeding,
`we determine that no further interpretation is required for “data.”
`4. “maintaining synchronization”
`Dependent claims 2 and 12 recite “maintaining synchronization with a
`second transceiver during the low power mode.” Petitioner did not propose a
`construction for, and our Decision on Institution did not construe this term.
`Patent Owner argues that
`“maintaining
`interpretation of
`the broadest
`reasonable
`synchronization with a second transceiver,” in view of the
`specification, is “maintaining a timing relationship between two
`transceivers by correcting errors or differences in the timing of the
`timing reference of the transceiver and the timing reference of a
`second transceiver,” and the Board should adopt this construction.
`PO Resp. 26 (citing Ex. 2012 ¶ 57). Patent Owner argues that the ’268 patent
`explains synchronization based on clock synchronization reference signals
`between the transmitter and receiver clocks and not synchronization of
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`incoming packet data. PO Resp. 25–27 (citing Ex. 1001, 4:62–5:4, 5:44–50;
`Ex. 2012 ¶¶ 56, 59). Patent Owner further contends that the ’268 patent
`explains that the clock of a ‘remote transceiver, such as that at a
`subscribers premises will be synchronized’ to the clock in CO
`transceiver, i.e., a master clock. Ex. 1001 at 4:64-67. Thus, in the
`context of the ’268 patent maintaining synchronization is the
`process used to ‘drive[] clock 30 [in one transceiver] in
`synchronism with the Master Clock in the driving transmitter [in
`another transceiver].’ Ex. 1001 at 5:53-55.
`PO Resp. 25. Thus, Patent Owner argues that the construction consistent with
`the specification of the ’268 patent requires maintaining synchronization as
`described in the ’268 patent, which means “maintaining a timing relationship
`between two transceivers by correcting errors or differences in the timing of
`the timing reference of the transceiver and the timing reference of a second
`transceiver.” PO Resp. 26–27.
`Patent Owner argues that their proposed construction is consistent with
`technical dictionaries that refer to checking and correcting variations in
`timing. PO Resp. 27 (citing Ex. 2017, 360; Ex. 2012 ¶ 59). Patent Owner
`also asserts that the Board’s preliminary construction in its Decision to
`Institute in a related case, IPR2016-01466, credits an argument that
`maintained synchronization between transceivers based on timing and
`correction of timing errors between DSL transceivers. PO Resp. 27–28 (citing
`Cisco Sys., Inc. v. TQ Delta, LLC, No. IPR2016-01466, slip op. at 11 (PTAB
`Feb. 9, 2017) (Paper 7) (“Petitioner explains that ANSI T1.413 uses a
`synchronization symbol in order to maintain timing by correcting timing
`errors in communication between DSL transceivers.” (citing Ex. 1007, 64));
`Ex. 2012 ¶ 59).
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`Petitioner responds that the ’268 patent describes two types of
`synchronization, timing and frame synchronization, both of which are used to
`maintain synchronization. Reply 1–2 (citing Ex. 1001, 5:5–20, 5:42–67, 6:50,
`8:64–9:10; 9:31–36; Ex. 2012 ¶ 55;4 Ex. 1060, 15:6–16:8, 19:4–10)). Thus,
`Petitioner argues that Patent Owner’s proposed construction is too narrow, as
`the ’268 patent does not disclose synchronizing as limited to time synching
`“by correcting errors or differences between a timing reference of the
`transmitter and a timing reference of the receiver of the signal.” Reply 2.
`Indeed, Petitioner contends that the embodiment in the ’268 patent
`specification that uses timing reference signals (Ex. 1001, 5:42–67) does not
`require correcting errors or differences between timing references and is
`merely a preferred embodiment that does not limit “maintaining
`synchronization” to the embodiment discussed. Id. at 2–3 (citing Ex. 1001,
`3:51–53, Fig. 1).
`Petitioner argues that Patent Owner’s declarant admits that the claims
`of the ’268 patent do not specify a particular type of synchronization.
`Reply 1–2 (Ex. 1060, 19:4–10). Furthermore, Petitioner asserts the Patent
`Owner’s declarant admits that frame synchronization can be used to maintain
`superframe alignment or synchronization. Reply 1–2 (citing Ex. 1001, 5:5–
`20; Ex. 1060, 24:6–15); see also Ex. 1001, 7:52-54 (discussing frame
`synchronization during low power mode). Thus, Petitioner argues that Patent
`Owner’s proposed construction of “maintaining synchronization” improperly
`
`
`4 Petitioner’s Reply cites Exhibit 2003, but appears to refer to Exhibit 2012,
`which is the Declaration of Douglas A. Chrissan, PhD. Reply 1.
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`limits the claim term to just timing synchronization and excludes frame
`synchronization. Reply 2.
`Petitioner argues that the dictionary definition cited by Patent Owner
`quotes the definition for “synchronous transmission” and not
`“synchronization” as recited in the claims. Reply 3–4; Ex. 1061, 6. Petitioner
`also notes that the related proceeding, IPR2016-01466, cited by Patent Owner
`(PO Resp. 27–28) involved a different set of claim terms—“synchronization
`signal” and “synchronization frame”—that are not present in the challenged
`claims of the ’268 patent. Reply 4. Finally, Petitioner argues that
`“maintaining synchronization,” which must encompass both time and frame
`synchronization, is not limited to time synchronization and should be given its
`plain and ordinary meaning. Id.
`Having considered the parties’ arguments and evidence, we do not
`agree with Patent Owner’s proposed construction that “maintaining
`synchronization” requires timing synchronization by correcting errors or
`differences between timing references. The claims of the ’268 patent do not
`recite “synchronization signal” or “synchronization frame” but refer only to
`“maintaining synchronization” during low power mode without specification
`as to the method of synchronization. See, e.g., Ex. 1001, 10:6–17 (claims 1
`and 2). Indeed, claims 2 and 12 do not recite any particular synchronization
`signal or synchronization frame as a limitation.
`We are not persuaded by Patent Owner’s argument that the broad
`recitation of “maintaining synchronization” excludes the frame
`synchronization described in the ’268 patent specification. Patent Owner’s
`declarant testified that “in the context of the ’268 patent, there are two
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`different types of synchronization that occur between transceivers: timing
`(clock) synchronization and frame synchronization” (Ex. 2012 ¶ 55) and that
`the ’268 specification provides an example of both types of synchronization
`(Ex. 1060, 15:6–16:8). In the examples cited by Patent Owner’s declarant
`(Ex. 1001, 4:42–58, 5:16), we find no support for limiting “maintaining
`synchronization,” as recited in claims 2 and 12, to timing synchronization by
`“maintaining a timing relationship between two transceivers by correcting
`errors or differences in the timing of the timing reference of the transceiver
`and the timing reference of a second transceiver” as Patent Owner asserts. PO
`Resp. 26; see Ex. 1060, 15:6–16:8. Instead, we find that the ’268 patent
`discusses several types of synchronization, including synchronization frames,
`synchronizing pilot tones, and timing signals. See Ex. 1001, 5:5–20, 5:42–67,
`6:50, 8:64–9:10; 9:31–36.
`We also are not persuaded by Patent Owner’s argument regarding the
`preliminary construction of limitations in a related case, IPR2016-01466,
`being consistent with Patent Owner’s narrow construction. The claim terms at
`issue in that case involved limitations on distinct synchronization signals that
`are not present in the claims of the ’268 patent. Petitioner also points to
`testimony in a related case, IPR2016-01466, in which Patent Owner’s
`declarant admitted that the “by correcting” language in Patent Owner’s
`proposed construction was added in response to arguments made by
`Petitioner’s expert in that case and not because of teachings in the ’268 patent
`specification. Reply 4 (citing Ex. 1062, 85:12–15). Thus, we do not find the
`related case persuasive with respect to the recited “maintaining
`synchronization” construction Patent Owner proposes. We also are not
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`persuaded by Patent Owner’s dictionary definition, which does not address
`“synchronization” as recited in the challenged claims, but instead, is directed
`to “synchronous transmission.” PO Resp. 27 (citing Ex. 2017; Ex. 2012 ¶ 59).
`In sum, we agree with Petitioner that “maintaining synchronization”
`encompasses both timing and frame synchronization. Reply 2. Accordingly,
`we are not persuaded by Patent Owner’s proposed construction that narrowly
`limits maintaining synchronization to timing synchronization by correcting
`errors, as Patent Owner proposes. Based on the full record, we determine that
`“maintaining synchronization” encompasses both timing and frame
`synchronization, but carries its ordinary and customary meaning.
`5. “parameter associated with [a/the] full power mode”
`Independent claim 4 recites “at least one parameter associated with a
`full power mode,” and independent claim 14 recites a similar limitation. Ex.
`1001, 10:29–30, 11:17–20.
`Patent Owner proposes construing this term to mean “parameter
`associated with the transmission and/or reception of data during normal
`operation.” PO Resp. 28 (citing Ex. 2012 ¶ 61). The ’268 patent describes
`storing a list of parameters comprising the “state” of transceiver. Ex. 1001,
`6:66–7:14. Patent Owner argues that this list “includes communication
`protocol-specific parameters that are used for the transmission of data and
`does not include loop characteristics.” PO Resp. 29 (citing Ex. 2012 ¶ 62).
`Petitioner counters that the term should have its ordinary and customary
`meaning. Reply 5–6. Petitioner argues that the list of characteristics Patent
`Owner relies on are merely exemplary. Petitioner contends that the ’268
`patent expressly states that stored parameters “preferably include at least” the
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`items listed, indicating that other parameters may be stored. Reply 5–6 (citing
`Ex. 1001, 7:8–9). Absent a clear disavowal of scope, Petitioner argues that
`the claims are simply not limited to the types of parameters listed in the
`specification. Reply 5–6 (citing Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362, 1367 (Fed. Cir. 2012) (holding full scope of plain and ordinary
`meaning is appropriate “unless the patentee explicitly redefines the term or
`disavows its full scope”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
`1369 (Fed. Cir. 2004) (holding that features relating to particular
`embodiments may not be read into the claims absent clear disclaimer in the
`specification)).
`In light of the arguments and evidence presented, we are not persuaded
`that this term requires an express construction. Patent Owner’s proposed
`construction does not add necessary clarity to the claims, as it merely replaces
`“full power mode operation” with “transmission and/or reception of data
`during normal operation.” The parties, however, do not dispute the meaning
`of “full power mode operation.” Accordingly, an express construction is not
`necessary to resolve the disputes between the parties.
`
`
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a hypothetical person of ordinary skill in the
`art, with respect to and at the time of the’268 patent, “would hold a bachelor’s
`degree or the equivalent in electrical engineering (or related academic fields)
`and at least four years of additional work experience in the area of digital
`and/or telecommunication system design, as applicable to DSL systems, or,
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`alternately, eight years of equivalent work experience.” Pet. 12 (citing Ex.
`1002 ¶¶ 26–33).
`Patent Owner contends that such a person “would have had a bachelor’s
`degree in electrical engineering (or a similar technical degree or equivalent
`work experience) and at least 3 years of experience working with such
`multicarrier communication systems.” PO Resp. 21.
`We determine that no express finding on a specific corresponding level
`of technical education and experience is necessary. Here, the level of ordinary
`skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`C. The Parties’ Post-Institution Arguments
`In our Decision on Institution, we concluded that the arguments and
`evidence advanced by Petitioner demonstrated a reasonable likelihood that
`claims 1, 2, 11, and 12 of the ’268 patent are unpatentable as obvious under 35
`U.S.C. § 103(a) over Bowie, Morelli, and ANSI T1.413 and that claims 4, 14,
`16, and 18 of the ’268 patent are unpatentable as obvious under 35 U.S.C.
`§ 103(a) over Bowie and Morelli. Inst. Dec. 21. We must now determine
`whether Petitioner has established by a preponderance of the evidence that the
`specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e).
`Our Order previously instructed Patent Owner that “any arguments for
`patentability not raised in the [Patent Owner Response] will be deemed
`waived.” Paper 14, 5–6; see also 37 C.F.R. § 42.23(a) (“Any material fact not
`specifically denied may be considered admitted.”); In re Nuvasive, Inc., 842
`F.3d 1376, 1379–1382 (Fed. Cir. 2016) (holding Patent Owner waived an
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`argument addressed in Preliminary Response by not raising the same
`argument in the Patent Owner Response). Additionally, the Board’s Trial
`Practice Guide states that the Patent Owner Response “should identify all the
`involved claims that are believed to be patentable and state the basis for that
`belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`(Aug. 14, 2012).
`With the complete record before us, we note that we have reviewed
`arguments and evidence advanced by Petitioner to support its unpatentability
`contentions where Patent Owner chose not to address certain limitations in its
`Patent Owner Response. In this regard, we determine that the record now
`contains persuasive, unrebutted arguments and evidence presented by
`Petitioner regarding the manner in which the asserted prior art teaches
`corresponding limitations of the claims against which that prior art is asserted.
`Based on the preponderance of the evidence before us, we conclude that the
`prior art identified by Petitioner teaches or suggests all uncontested limitations
`of the reviewed claims. The limitations that Patent Owner contests in the
`Patent Owner Response are addressed below.
`
`D. Obviousness of Claims 1, 2, 11, and 12 based on Bowie, Morelli,
`and ANSI T1.413 and Obviousness of Claims 4, 14, 16, and 18 based on
`Bowie and Morelli
`Petitioner contends that Bowie, Morelli, and ANSI T1.413 teach the
`limitations of claims 1, 2, 11, and 12. Pet. 23–43. Petitioner provides
`citations to prior art, argument, and declaration of Petitioner’s declarant, Mr.
`Hoarty (Declaration of W. Leo Hoarty, Ex. 1002), in support of its
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`contentions. Id. Petitioner also contends that Bowie and Morelli teach the
`limitations of claims 4, 14, 16, and 18. Pet. 43–48.
`1. Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness (i.e.,
`secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). We analyze this asserted ground based on obviousness with the
`principles identified above in mind.
`2. Bowie (Ex. 1004)
`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. 1004, 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.
`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
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`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 sections of the signal
`processing, transmitting, and receiving circuitry, including signal processing
`111, transmitting 112, and receiving 113 circuitry. Id. at 5:26‒28. After
`shutdown, the loop is in an inactive state. Id. at 5:28‒29. During low power
`operation, circuitry 115 remains capable of detecting the resume signal. Id. at
`5:28–29. This resume signal may be detected by the COT unit using a 16 kHz
`AC signal detector 115 that employs conventional frequency detection
`techniques and remains operative when the COT unit is in low-power mode.
`Id. at 5:52–56. 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.
`3. Morelli (Ex. 1005)
`Morelli discloses a transceiver with a low power mode (or sleep mode)
`operation. Ex. 1005, Abstract. Morelli includes a transmitter 12 and a
`receiver 16, where transmitter 12 can be placed in a low power mode to
`conserve power when data transmission is not necessary. Id. at 1:11–15, 2:4–
`10, 6:54–62. Receiver 16 can also be placed in a low power mode when
`packets are not being received, but upon detection of a packet, can be awoken
`from the low power mode to resume full power receipt of packets. Id. at
`1:11–15, 2:37–58, 6:66–7:17, 8:43–49, 9:53–57, 14:6–19, 14:57–64, 19:7–10.
`Morelli also discloses that the receiver 16 remains in “active mode” while the
`transmitter 12 switches between a low power mode and full power mode, as
`needed to conserve power. Id. at 21:51–54. Morelli also discloses “data
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`packets” are communicated between transceivers, which include
`“synchronizing bits for synchronizing the receiver 16.” Id. at 9:1–3, 1:45–50,
`FIG. 2.
`
`4. ANSI T1.413 (Ex. 1006)
`ANSI T1.413 discloses electrical characteristics of Asymmetric Digital
`Subscriber Line (ADSL) signals appearing at a network interface. Ex. 1006,
`Abstract. ADSL allows for the provision of Plain Old Telephone Service
`(POTS) and a variety of digital channels. Id. at 1. Digital channels 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.
`5. Petitioner’s Contentions
`Petitioner contends that Bowie, Morelli, and ANSI T1.413 teach the
`limitations of claims 1, 2, 11, and 12. Pet. 23–43. Petitioner also contends
`that Bowie and Morelli teach the limitations of claims 4, 14, 16, and 18.
`Pet. 43–48.
`Petitioner argues that Bowie, Morelli and ANSI T1.413 are analogous
`art from the same field of endeavor and directed to the field of power
`conservation (low power and sleep modes) in multicarrier communication
`systems. Pet. 26 (citing Ex. 1004, Abstract, 3:24–4:9, 4:55–58; Ex. 1005,
`Abstract, 11:45–53; Ex. 1006, 45, 70; Ex. 1002 ¶ 119).
`Petitioner further argues that Bowie teaches a multicarrier transceiver
`and transmitting a message to enter low power mode, where the transceiver
`does not transmit data during low power mode of claim 1. Pet. 26–28.
`Petitioner argues that Bowie combined with Morelli discloses a low power
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`mode where the transmit transceiver (as Morelli suggests) is shut down while
`the receiver remains in active mode to receive data packets. Pet. 29–30 (citing
`Ex. 1005, 1:11–15, 1:45–50, 2:4–10, 6:43–51, 54–62, 8:16–20, 8:46–59; Ex.
`1002 ¶¶ 148–149). Petitioner asserts that Bowie’s system can be modified to
`incorporate the teachings of Morelli by applying known techniques to yield
`predictable results. Pet. 30–34 (citing Ex. 1002 ¶¶ 151–55).
`Petitioner argues that Bowie, Morelli, and ANSI T1.413, in
`combination, teach the “transceiver is a device that is capable of transmitting
`or receiving internet and video data” limitation of claim 1. Pet. 33–38.
`Petitioner provides articulated reasoning to combine the ADSL functions and
`capabilities of Bowie and ANSI T1.413 with the data transmission and low
`power system of Morelli in the transmission of video data. Id. (citing Ex.
`1002 ¶¶ 156–65, 167–69).
`With respect to dependent claim 2, which recites “maintaining
`synchronization with a second transceiver during the low power mode,”
`Petitioner cites Morelli, which teaches that “incoming data packets received
`by receiver portion 16 include ‘a synchronization field 46 including
`synchronizing bits for synchronizing the receiver 16.’” Pet. 38 (quoting
`Ex. 1005, 9:1–3; citing Ex. 1005, 8:60–9:17, 11:1–44, 1:45–50, FIG. 2).
`Petitioner argues that the system of Bowie could be modified to use the data
`packets and synchronization bits of Morelli in combination with ANSI
`T1.413. Pet. 39–40 (Ex. 1002 ¶¶ 113, 173–74). Specifically, Petitioner
`argues that:
`It would also be obvious to maintain this synchronicity when
`Bowie’s modified system is the low power mode because the
`receiver is still operating at full power and receiving messages
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`while the unit 232, 242 is overall in a low power mode state. (Id.,
`¶ 174.) Thus, a POSITA would understand that, because the first
`transceiver’s receiver is still receiving data packets from the
`second transceiver, the two communicating transceivers must be
`synchronized. (Id., ¶ 174.)
`Pet. 39–40. With respect to independent claim 11 and dependent claim 12,
`which recite limitations similar to claims 1 and 2, Petitioner relies on the same
`arguments presented for claims 1 and 2. Pet. 40–43. With respect to claims 4,
`14, 16, and 18, Petitioner relies on the arguments presented above for Bowie
`and Morelli with respect to claims 1, 2, 11, and 12 with respect to Bowie and
`Morelli. Id. at 43–49 (citing id. at 26–43).
`Notwithstanding Patent Owner’s arguments, which we have considered
`and which we address below, we are persuaded by a preponderance of the
`evidence by Petitioner’s showing, which we adopt as our own findings and
`conclusions, that claims 1, 2, 11, and 12 of the ’268 patent are unpatentable as
`obvious under 35 U.S.C. § 103(a) over Bowie, Morelli, and ANSI T1.413; and
`that claims 4, 14, 16, and 18 of the ’268 patent are unpatentable as obvious
`under 35 U.S.C. § 103(a) over Bowie and Morelli.
`6. Patent Owner’s Contentions
`Patent Owner argues that Petitioner has failed to show that the
`combination of Bowie, ANSI T1.143, and Mor
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