DISH Network LLC v. TQ Delta LLC

1. Case Identification

• Case #: IPR2016-01469
• Patent #: 9,094,268
• Filed: July 20, 2016
• Petitioner(s): DISH Network L.L.C.
• Patent Owner(s): TQ Delta LLC
• Challenged Claims: 1, 2, 4, 11, 12, 14, 16, 18

2. Patent Overview

• Title: Multicarrier Transmission System with Low Power Sleep Mode and Rapid-On Capability
• Brief Description: The ’268 patent describes a multicarrier transmission system, such as an ADSL system, featuring a transceiver with a low power "sleep" mode. The system is designed to conserve power by placing transmitter and/or receiver sections into a reduced power state and enables a "rapid-on" capability by storing and retrieving line parameters from memory to quickly resume full operation.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 14 and 16 by Bowie

• Prior Art Relied Upon: Bowie (Patent 5,956,323).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bowie, which describes methods for conserving power in ADSL terminal units, discloses every element of independent claims 14 and 16. Bowie teaches a multicarrier transceiver that transmits or receives a "shut-down signal" (the claimed "message") to initiate a low power mode. In this mode, the transmitter circuitry is powered down while a "resume signal detector" (a receiver portion) remains fully operational to detect a wake-up signal. This meets the limitation of entering a low power mode for the transmitter portion while the receiver portion remains in full power. Furthermore, Bowie discloses storing "loop characteristic parameters" in memory upon entering the low power mode to enable rapid resumption of data transmission, which corresponds to the claimed "storing at least one parameter associated with the full power mode." For claim 16, Petitioner asserted that because Bowie’s transmitting circuitry is shut off during low power mode, it inherently does not transmit user data.
  • Key Aspects: The core of this ground is that Bowie’s "resume signal detector" constitutes a "receiver portion" that remains in a "full power mode" while other parts of the transceiver power down.

Ground 2: Obviousness of Claims 1, 2, 11, and 12 over Bowie, Morelli, and the 1995 ADSL Standard

• Prior Art Relied Upon: Bowie (Patent 5,956,323), Morelli (Patent 6,236,674), and the 1995 ADSL Standard (ANSI T1.413-1995).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted this ground as an alternative in case Bowie’s "resume signal" is not considered "data" under claim 1. Bowie provides the foundational ADSL system with a low power mode. Morelli teaches a transceiver where a receiver portion remains fully active to receive "data packets" while the transmitter is off, explicitly disclosing a receiver receiving data during a low power state. The 1995 ADSL Standard, an industry-governing document for ADSL systems like Bowie's, explicitly discloses the use of ADSL for transmitting internet and video data, satisfying this limitation in claims 1 and 11. For dependent claims 2 and 12, Morelli’s data packets include "synchronizing bits," which would allow the combined system to maintain synchronization during the low power mode.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Bowie with Morelli to improve Bowie's system. Replacing Bowie's simple AC resume signal with Morelli's more sophisticated "data packets" would enable the system to maintain synchronization while in low power mode, resulting in a more predictable and rapid resumption of full power operation. Bowie itself suggests that low power implementations may vary, motivating a POSITA to incorporate known, advantageous techniques from analogous art like Morelli. A POSITA would have been motivated to look to the 1995 ADSL Standard because any ADSL system of that era, such as Bowie's, was required to comply with it to ensure interoperability and functionality.
  • Expectation of Success: The combination involved applying known power-saving and data-handling techniques from Morelli to a standard ADSL architecture described in Bowie, a predictable integration that would be expected to work as intended.

Ground 3: Obviousness of Claims 4, 14, 16, and 18 over Bowie in view of Morelli

• Prior Art Relied Upon: Bowie (Patent 5,956,323) and Morelli (Patent 6,236,674).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground serves as an obviousness alternative for claims 14 and 16 (also challenged under anticipation) and extends the challenge to claims 4 and 18. Petitioner argued that if the Board finds Bowie’s resume signal detector is not the claimed "receiver portion," then it would have been obvious to modify Bowie using the teachings of Morelli. Morelli explicitly discloses a system where the receiver portion remains fully active to receive data packets while the transmitter is in a low power state. A POSITA would have found it obvious to modify Bowie’s transceiver to keep its entire receiver portion (not just the signal detector) fully powered, as taught by Morelli, while the transmitter is powered down. This combination directly teaches the limitations of entering a low power mode for the transmitter while the receiver remains fully powered and, in the case of claim 18, receives data during that full power mode.
  • Motivation to Combine: The motivation was to improve the functionality of Bowie’s power-saving mode. By incorporating Morelli’s teaching of a fully active receiver, the Bowie system could maintain a higher data exchange rate or maintain synchronization, leading to better performance upon wake-up. Bowie’s disclosure that "particular circuit components that can be placed in a low power mode may vary" expressly suggests that modifying which parts of the transceiver are powered down is a known design choice, motivating a POSITA to implement the configuration taught by Morelli.
  • Expectation of Success: Modifying the power allocation within Bowie's transceiver to match Morelli's configuration was presented as a simple and predictable design choice for a POSITA, with a high expectation of success.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2 in the petition) based on Bowie in view of the 1995 ADSL Standard for claims 1 and 11. The arguments were substantially incorporated into the three-way combination ground summarized above.

4. Key Claim Construction Positions

• "Low Power Mode": Petitioner proposed the construction "a state in which power to circuitry is reduced for the purpose of power conservation." This construction was argued to be consistent with the patent's specification and necessary to encompass the various partial and full sleep modes described.
• "Data": Petitioner proposed the construction "information." This broad construction was central to its argument that the "resume signal" in Bowie, even if just a 16 kHz AC signal, constitutes "data" because it conveys information (i.e., the instruction to wake up).

5. Relief Requested

• Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1, 2, 4, 11, 12, 14, 16, and 18 of the ’268 patent as unpatentable.