Trials@uspto.gov
`571-272-7822
`
`Paper No. 6
`Entered: November 1, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DALI WIRELESS INC.,
`Petitioner,
`
`v.
`
`COMMSCOPE TECHNOLOGIES LLC
`Patent Owner.
`____________
`
`Case IPR2017-01324
`Patent 7,848,747 B2
`____________
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 6
`Entered: November 1, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DALI WIRELESS INC.,
`Petitioner,
`
`v.
`
`COMMSCOPE TECHNOLOGIES LLC
`Patent Owner.
`____________
`
`Case IPR2017-01324
`Patent 7,848,747 B2
`____________
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01324
`Patent 7,848,747 B2
`
`
`I. INTRODUCTION
`
`A. Background
`Dali Wireless Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1–17 of U.S. Patent No. 7,848,747
`B2 (Ex. 1001, “the ’747 patent”). CommScope Technologies LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 5, “Prelim. Resp.”). Upon
`consideration of the Petition and Preliminary Response, we conclude, under
`35 U.S.C. § 314(a), that Petitioner has not established a reasonable
`likelihood that it would prevail with respect to any challenged claim.
`Accordingly, we do not institute an inter partes review of claims 1–17 of the
`’747 patent.
`
`B. Related Matter
`The parties indicate that the ’747 patent has been asserted against
`Petitioner in CommScope Technologies LLC v. Dali Wireless, Inc., No. 3:16-
`cv-477-B (N.D. Tex. 2016). Pet. 2; Paper 4, 2.
`
`C. Evidence Relied Upon
`Petitioner relies on the following references:
`Ex. 1006 (“Bellers”)
`US 8,446,530 B2 May 21, 2013
`
`
`
`
`
`
`
`(Filed Sep. 28, 2001)
`Ex. 1007 (“Farhan”) WO 01/56197 A2 Aug. 2, 2001
`Synchronous Quantized Subcarrier
`Ex. 1008 (“Grace”)
`Multiplexing for Transport of Video, Voice, and Data, 8 IEEE Journal on
`Selected Areas in Communications 1351 (September, 1990).
`
`Ex. 1009 (“Ichiyoshi”) US 6,014,366
`Jan. 11, 2000
`Petitioner also relies on the Declaration under 37 C.F.R. § 42.53 of
`Harry Bims, Ph.D. (Ex. 1002, “Bims Decl.”).
`
`
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`
`D. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis
`Claims Challenged
`Bellers and Farhan
`103(a)
`1–17 (all)
`Bellers and Grace
`103(a)
`7–11, and 13–17
`Ichiyoshi and Farhan
`103(a)
`1, 7, 8, 10, 11, and 14
`
`Pet. 16.
`E. The ’747 Patent
`The ’747 patent is entitled, “System and Method for Enhancing the
`Performance of Wideband Digital RF Transport Systems.” Ex. 1001, (54).
` The Abstract of the ’747 patent states:
`A system and method for enhancing the performance of
`wideband digital RF transport systems is disclosed, which
`enables the transport of different bandwidth segments on a
`plurality of wideband channels by selecting an optimal clock
`sample rate for each bandwidth segment to be transported. Thus,
`the bandwidth segments are proportionally allocated so that an
`optimum amount of bandwidth can be transported at the serial bit
`rate.
`Id., (57).
`Figure 2 of the ’747 patent is reproduced below.
`
`
`
`
`3
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`IPR2017-01324
`Patent 7,848,747 B2
`
`
`Figure 2 depicts “how the present invention allocates bandwidth
`proportionally.” Id. at 6:2–3. The detailed description of Figure 2 states:
`The sample rate of sample clock 204a is selected to be
`approximately 15 Msps (for 5 MHz bandwidth segments),
`approximately 90 Msps for sample clock 204b (for 40 MHz
`bandwidth segments), approximately 60 Msps for sample clock
`204c (for 25 MHz bandwidth segments), and approximately 15
`Msps for sample clock 204d (for 5 MHz bandwidth segments).
`Thus, as illustrated by this example, the bandwidths in frame 208
`are allocated proportionally, by transporting one slot for
`bandwidth A (5 MHz), six slots for bandwidth B (40 MHz), four
`slots for bandwidth C (25 MHz), and one slot for bandwidth D
`(5 MHz).
`Id. at 6:25–36.
`The ’747 patent contains 17 claims and 4 independent claims.
`Independent claim 1 is directed to a method, independent claims 7 and 11
`are directed to host units, and independent claim 14 is directed to a system.
`Petitioner challenges all 17 claims. Independent claim 1 recites (emphasis
`added):
`1. A method comprising:
`
`receiving a plurality of analog inputs each having an associated
`bandwidth containing an arbitrary number of channels;
`
`
`sampling each of the plurality of analog inputs with a selected
`sample rate, the selected sample rates selected based on the
`bandwidth of the associated one of the plurality of analog
`inputs;
`
`
`combining the samples of the plurality of analog inputs;
`
`converting the combined samples to a serial data stream; and
`
`
`4
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`IPR2017-01324
`Patent 7,848,747 B2
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`
`transmitting the serial data stream over a communication
`medium.
`
`
`Dependent claim 6 recites (emphasis added), “[t]he method
`of claim 1, wherein the sample rate is proportional to the
`bandwidth of the associated one of the plurality of analog inputs.”
`
`Independent claim 7 recites (emphasis added), “each analog
`to digital converter circuit operating at a sample rate related to a
`signal bandwidth of its associated broadband RF signal.”
`
`Independent claim 11 recites (emphasis added), “the selected
`sample rates selected based on the bandwidth of the analog
`signal.”
`
`Independent claim 14 recites (emphasis added), “each output
`has an associated sample clock with a sample rate selected based
`on the bandwidth of the associated RF bandwidth segment.”
`
`Dependent claim 16 recites (emphasis added), “each analog
`to digital converter circuit has an associated sample clock with a
`sample rate selected based on the bandwidth of the associated RF
`bandwidth segment.”
`
`II. ANALYSIS
`Claim Construction
`
`A.
`
`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). In applying a broadest reasonable
`construction, claim terms generally 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. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`For the terms, “broadband,” “analog to digital converter circuit(s),”
`
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`Patent 7,848,747 B2
`
`and “multiplexer circuits,” Petitioner offers short definitions (one phrase
`each) with cites to the Bims Declaration (Ex. 1002). Pet. 10. But, Petitioner
`provides no supporting explanation or argument.
`
`Patent Owner asserts no claim construction is necessary as the claim
`terms for which Petitioner offers constructions “are irrelevant to the
`contested issues.” Prelim. Resp. 21. We agree with Patent Owner.
`No express construction of any term of the ’747 patent is needed for
`this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`B. The Graham Factors
`A claim is unpatentable under 35 U.S.C. § 103(a)1 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.” We resolve the question of obviousness 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;2 and (4) objective evidence of
`
`
`1 Because the ’747 patent has a filing date before September 16, 2012 (the
`effective date of the Leahy-Smith America Invents Act (AIA), Pub. L.
`No. 112-29, § 4(c), 125 Stat. 284 (2011)), we refer to the pre-AIA versions
`of 35 U.S.C. §§ 102 and 103.
`2 Petitioner proposes an assessment of the level of ordinary skill in the art.
`Pet. 10 (citing Ex. 1002 ¶65). Petitioner’s declarant, Dr. Bims, exceeds this
`assessed level. Ex. 1003 (Curriculum Vitae of Harry Bims, Ph.D.). Patent
`Owner does not propose an alternative assessment. For the purposes of this
`
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`nonobviousness, i.e., secondary considerations.3 See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`The Board must have an adequate evidentiary basis for its findings
`and our findings must be supported by a reasoned explanation. In re
`Nuvasive, Inc., 842 F.3d 1376, 1382–1383 (Fed. Cir. 2016). In order for us
`to satisfy our obligation to support and explain our decisions, a petition
`seeking institution of an inter partes review of a patent must provide us with
`sufficient evidence and explanations. See 37 C.F.R. § 42.22(a)(2)(“Each
`petition or motion must be filed as a separate paper and must include . . . A
`full statement of the reasons for the relief requested, including a detailed
`explanation of the significance of the evidence including material facts, and
`the governing law, rules, and precedent.”). In this proceeding, the Petition is
`deficient because its arguments regarding certain of the Graham factors are
`not supported adequately by evidence and the Petition does not contain
`explanations necessary for making the factual determinations required by
`Graham.
`With regard to the scope and content of the prior art, the application
`for the ’747 patent was filed on October 27, 2009. Ex. 1001, (22). It was a
`continuation of an application filed April 6, 2006. Id. at (63), 1:8–13. Thus,
`the earliest filing date to which the ’747 patent could be entitled is April 6,
`2006. Bellers is a U.S. patent that issued on an application filed on
`September 28, 2001. Ex. 1006, (22). Bellers qualifies as prior art under 35
`
`
`Decision, and to the extent necessary, we adopt Petitioner’s assessment.
`3 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
`
`7
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`IPR2017-01324
`Patent 7,848,747 B2
`
`U.S.C. § 102(e). Farhan is an international patent application published on
`August 2, 2001. Ex. 1007, (43). Farhan qualifies as prior art under 35
`U.S.C. § 102(b). Grace is an article from an IEEE journal published in
`September of 1990. Ex. 1008, 1. Grace also qualifies as prior art under 35
`U.S.C. § 102(b). Ichiyoshi is a U.S. patent issued on January 11, 2000,
`which was based on an application filed on April 15, 1997. Ex. 1009, (22),
`(45). Ichiyoshi qualifies as prior art under 35 U.S.C. §§ 102 (b) and (e).
`Thus, we are persuaded that the cited art qualifies as prior art.
`With regard to any differences between the claimed subject matter and
`the prior art, the Petition identifies no such differences. See generally Pet.
`To the contrary, for example, with regard to claim 1 and the combination of
`Bellers and Farhan, Petitioner cites both Bellers and Farhan for each element
`without explanation as to what limitations are taught or suggested by each
`reference. See Pet. 13–19. The presentation with regard to each challenged
`claim and each asserted ground is similarly deficient. And, specifically with
`regard to the highlighted limitations in the claims as set forth above,
`Petitioner relies on each of the cited references as teaching or suggesting
`selecting the sample rate based on bandwidth. See Pet. 14–15 (claim 1,
`citing Bellers and Farhan), 25–26 (claim 6, citing Bellers and Farhan), 31–
`32 (claim 7, citing Bellers and Farhan), 39–40 (claim 11, citing Bellers and
`Farhan), 56 (claim 14, citing Farhan), 58 (claim 16, citing Bellers and
`Farhan), 61–64 (all claims, citing Bellers and Farhan), 67 (claim 7, citing
`Bellers and Grace), 72 (claim 11, citing Bellers and Grace), 78–79 (claim
`14, citing Grace), 79–80 (claim 16, citing Bellers and Grace), 80–82 (claims
`7–11 and 13–17, citing Bellers and Grace), 83 (claim 1, citing Ichiyoshi), 86
`(claim 7, citing Ichiyoshi and Farhan), 90 (claim 11, citing Ichiyoshi and
`
`8
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`IPR2017-01324
`Patent 7,848,747 B2
`
`Farhan), 95 (claim 14, citing Farhan), 95–96 (claims 1, 7, 8, 10, 11, 14,
`citing Ichiyoshi and Farhan). Petitioner has not provided us with the
`necessary arguments and evidence to make any findings as to any
`differences between the claimed subject matter and the cited prior art
`references, as required by Graham.
`The Petitioner has failed to present sufficient evidence and
`explanation to make the factual findings that support a legal conclusion of
`obviousness and has not established a reasonable likelihood that claims 1–17
`of the ’747 are unpatentable.
`
`C. Selecting the Sample Rate Based on Bandwidth
`
`As shown above, each of the claims of the ’747 contains a limitation
`relating to selecting the sample rate based on the bandwidth. And, as noted
`above, Petitioner relies on each of the cited references as teaching or
`suggesting selecting the sample rate based on the bandwidth. After
`reviewing the cited art and other evidence, primarily the Bims Declaration,
`we find no teaching or suggestion of selecting the sample rate based on
`bandwidth.
`
`1. Bellers
`Bellers is entitled “Dynamic Sampling.” Ex. 1006, (54). Bellers
`relates to digital sampling of video signals. Id. at 1:6–7. Bellers teaches “a
`sampling rate which is modulated based upon the spatial frequencies of the
`content being sampled.” Id. at 4:14–16 (emphasis added). Bellers expressly
`defines spatial frequencies, as follows: “[t]he spatial frequency or
`frequencies of an image are the rates of pixel change per unit distance,
`usually expressed in cycles per degree or radian.” Id. at 1:11–13. Petitioner
`
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`IPR2017-01324
`Patent 7,848,747 B2
`
`cites the following passages of Bellers as teaching or suggesting selecting
`the sample rate based on bandwidth. See Pet. 14–15, 25–26, 31–32, 39–40,
`58, 61–64, 67, 72, 78–82.
`Receiver 101 includes a sampling mechanism 104 which
`samples the analog video input signal at a frequency modulated
`by or dependent upon the spatial frequency of the sampled
`content.
`Ex. 1006, 3:11–14.
`FIG. 2A, a number . . . of analog filters 201 are employed by
`sampling mechanism 104 to separate the input signal’s frequency
`spectrum . . . A number of corresponding analog-to-digital
`converters 202 each having different settings for the various
`filtered signals are employed to generate different digital
`representations having different sampling rates . . . .
`Id. at 3:32–40.
`The present invention employs a sampling rate which is
`modulated based upon the spatial frequencies of the content
`being sampled. Higher sampling rates, and larger sample
`densities, are employed for content having high spatial
`frequencies while lower sampling rates are employed for content
`having low spatial frequencies.
`Id. at 4:14–19.
`These passages do not relate to selecting the sample rate based on
`bandwidth. Petitioner provides no adequate explanation or other support in
`the Petition for concluding these passages in Bellers teach or suggest
`selecting the sample rate based on bandwidth.
`
`2. Farhan
`Farhan is entitled “Digital Forward Communication System.”
`
`Ex. 1007, (54). Farhan relates to “systems for the distribution of video,
`digital, and other information signals from a transmitting station to number
`
`10
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`IPR2017-01324
`Patent 7,848,747 B2
`
`of receiving stations via optical fibers.” Id. at 2. Petitioner cites Figures 4
`and 5 of Farhan as teaching or suggesting selecting the sample rate based on
`bandwidth. See Pet. 14–15, 25–26, 31–32, 39–40, 56, 58, 61–64, 86, 90,
`95–96. Figures 4 and 5 of Farhan are reproduced below.
`
`
`
`
`
`
`Figure 4 depicts “a block diagram of an optical transmission system,” and
`Figure 5 depicts “a block diagram of an alternative optical transmitter
`employed in a broadband communication system.” Ex. 1007, 3. These
`figures, however, do not relate to selecting the sample rate based on
`bandwidth. Petitioner provides no adequate explanation or other support in
`
`11
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`IPR2017-01324
`Patent 7,848,747 B2
`
`the Petition for concluding these figures in Farhan teach or suggest selecting
`the sample rate based on bandwidth.
`
`3. Grace
`Grace is an article from the IEEE Journal on Selected Areas in
`
`Communications tilted, “Synchronous Quantized Subcarrier Multiplexing
`for Transport of Video, Voice, and Data.” Ex. 1008, 1. Petitioner cites the
`following passage from Grace as teaching or suggesting selecting the sample
`rate based on bandwidth. See Pet. 67, 72, 78–82.
`This approach has the advantage of allowing the parameters of
`each A/D converter to be tailored to the exact requirements of
`each channel. In this manner, the fewest number of bits can be
`transmitted . . . yielding the maximum bandwidth efficiency.
`Ex. 1008, 1352.
`This passage does not relate to selecting the sample rate based on
`bandwidth. Petitioner provides no adequate explanation or other support in
`the Petition for concluding this passage in Grace teaches or suggests
`selecting the sample rate based on bandwidth.
`
`4. Ichiyoshi
`Ichiyoshi is entitled “Variable-Bandwidth Frequency Division
`
`Multiplex Communication System.” Ex. 1009, (54). Petitioner cites the
`following passages in Ichiyoshi as teaching or suggesting selecting the
`sample rate based on bandwidth. See Pet. 83, 86, 90, 95–96.
`The sampling frequency fs is normally set to fs = NΔf where Δf
`represents a channel frequency interval. The sampling frequency
`fs is generated independently in the transmission device 81 and
`the reception device 82.
`Ex. 1009, 6:3–6.
`
`12
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`
`. . . signal combining circuit 91 includes a sampling timing
`generator 1 for generating a signal of the sampling frequency fs,
`and N A/D converter 3 for sampling N independent information
`signals with the sampling frequency fs . . .
`Id. at 6:9–13.
`These passages do not relate to selecting the sample rate based on
`bandwidth. Petitioner provides no adequate explanation or other support in
`the Petition for concluding these passages in Ichiyoshi teach or suggest
`selecting the sample rate based on bandwidth.
`
`We discern no teaching or suggestion of selecting the sample rate
`based on bandwidth in the cited passages and figures from the applied
`references. Petitioner provides no adequate explanation or argument as to
`how a teaching or suggestion of selecting the sample rate based on
`bandwidth may be derived from the cited passages and figures or any
`persuasive explanation or argument as how selecting the sample rate based
`on bandwidth would have been obvious based on these references or
`otherwise.
`
`D. Reason to Combine
`With regard to each combination of references, the Petitioner’s
`presentation on reasons to combine the teachings of the applied references is
`brief and conclusory. Pet. 11–12. For example, Petitioner’s entire
`presentation with regard to the reasons for combining the teachings of
`Bellers and Farhan is:
`
`Bellers and Farhan combined disclose all the elements of
`claims 1–17.
`It was commonly understood that flexible ADCs could
`
`have a sampling rate adapted to the associated bandwidth of
`their analog input signal. [Ex. 1002 ¶¶ 75, 76.] POSITAs would
`
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`IPR2017-01324
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`
`to modify Farhan’s broadband
`have been motivated
`communication system to implement Beller’s ADC to improve
`bandwidth efficiency through optimizing sampling rates of each
`RF signal. Id. ¶¶117-119. Bellers and Farhan describe
`techniques for sampling analog input signals, and the results of
`combining them would have predictably increased efficiency.
`Id. ¶ 120. The common technology of both disclosures indicates
`that the proposed modification would be straightforward for
`POSITAs to implement. Id.
`Pet. 11 (emphasis added).
`This entire passage and Petitioner’s entire presentation on reasons to
`combine contains nothing but citations to Petitioner’s declarant’s own
`unsupported conclusions. To the extent that these unsupported conclusions
`purport to identify a reason to combine the applied references to achieve the
`recitations of the challenged claims, they are insufficient. For example,
`Paragraphs 75 and 76 of the Bims Declaration relate to construction of the
`term “multiplexer circuits” and provide no support for concluding it was
`“commonly understood” to adapt the sampling rate of ADCs based on
`bandwidth of the analog input signal.
`Similarly, Paragraphs 117–120 of the Bims Declaration (Ex. 1002) do
`not clearly relate to or sufficiently support the statements, for which they are
`cited. Paragraphs 117–120 relate instead to the purported obviousness of
`specific limitations of dependent claims 3–5. See, e.g., Ex. 1002 ¶ 117 (“It
`is my opinion that Bellers in light of Farhan renders this claim element [the
`wherein clause in claim 3] obvious.”).
` Petitioner’s presentations as to the reasons to combine for the other
`combinations of references’ teachings are similarly deficient. The citations
`do not support the statements made. With regard to the alleged motivation
`to combine Bellers and Grace, Petitioners cite (Pet. 11–12) paragraphs 290–
`
`14
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`Patent 7,848,747 B2
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`292 of the Bims Declaration, which relate to Ichiyoshi and Farhan. With
`regard to the alleged motivation to combine Ichiyoshi and Farhan, Petitioner
`cites (Pet. 12) paragraph 254 of the Bims Declaration, which relates to
`Bellers and Grace. There exists a lack of evidentiary support provided in the
`Petition with regard to the motivation to combine the references.
`Moreover, as the Petition fails to provide adequate explanation or
`argument regarding any differences between the claimed inventions and
`cited art, it is unclear how or why the teachings of cited art would have been
`combined or modified. For instance, the Petition does not explain how
`Bellers would have been modified in light of the teachings of Farhan, or how
`the teachings of these references would have been combined so as to arrive
`at the claimed subject matter. The Petition also is deficient in this regard
`with respect to the other proposed combinations. There is no adequate
`explanation or argument as to what claim elements are taught or suggested
`by the individual cited references and no specifics as to how or why these
`teachings or suggestions would have been combined.
`On this record, Petitioner has failed to show a reasonable likelihood of
`establishing a reason to combine with regard to any of the asserted
`combinations of the teachings of the applied references.
`
`III. CONCLUSION
`
`Petitioner has not established a reasonable likelihood of prevailing in
`showing that any of claims 1–17 of the ’747 patent are unpatentable.
`
`15
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`IV. ORDER
`
`For the reasons given, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is not instituted on any claim of the ’747 patent.
`
`
`PETITIONER:
`Richard T. Black
`Benjamin J. Hodges
`Kevin S. Ormiston
`Foster Pepper PLLC
`Rich.Black@foster.com
`Ben.Hodges@foster.com
`Kevin.Ormiston@foster.com
`
`PATENT OWNER:
`
`Philip P. Caspers
`Samuel A. Hamer
`Carlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A.
`pcaspers@carlsoncaspers.com
`shamer@carlsoncaspers.com
`
`
`16
`
`
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