Nokia Corp v. TQ Delta LLC

1. Case Identification

• Case #: IPR2022-00471
• Patent #: 8,462,835
• Filed: January 21, 2022
• Petitioner(s): Nokia of America Corporation
• Patent Owner(s): TQ Delta, LLC
• Challenged Claims: 8-10, 15, 24-26, and 31

2. Patent Overview

• Title: Impulse Noise Management
• Brief Description: The ’835 patent describes a system for dynamically reconfiguring forward error correction (FEC) and interleaver parameter (FIP) settings in a Digital Subscriber Line (DSL) transceiver during operation. The claimed invention allows a system to switch from a first FIP setting to a second, different FIP setting without a full system re-initialization by using a flag signal to synchronize the transition on a pre-defined codeword boundary.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 8-10, 15, 24-26, and 31 are anticipated under 35 U.S.C. §102(b) by G.992.1.

• Prior Art Relied Upon: G.992.1 (ITU-T Recommendation, 1999).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the G.992.1 standard, specifically its Appendix II describing a Dynamic Rate Adaptation (DRA) procedure, discloses every element of the challenged claims. Petitioner contended that the DRA procedure allows for modifying FEC and interleaver settings during "Showtime" (steady-state operation). The DRA_Swap_Request message in G.992.1 was identified as the claimed "flag signal," as it informs the receiving transceiver when to switch to updated FIP settings. Petitioner further asserted that G.992.1 explicitly teaches that the rate swap, triggered by the flag signal, "always coincide[s] with codeword boundaries" to avoid resetting the FEC mechanism, thus meeting the key limitation of switching on a pre-defined boundary.

Ground 2: Obviousness - Claims 8-10, 15, 24-26, and 31 are obvious over G.992.1 in view of SC-060.

• Prior Art Relied Upon: G.992.1 (ITU-T Recommendation, 1999) and SC-060 (ITU-T SG15/Q4 Contribution, Aug. 2001).
• Core Argument for this Ground:
  • Prior Art Mapping: G.992.1 provides the baseline DSL system with a DRA procedure for online FIP reconfiguration. SC-060, a contribution to the same standards body that developed G.992.1, proposes a more robust On-Line Reconfiguration (OLR) protocol to address shortcomings in existing methods.
  • Motivation to Combine: Petitioner argued that the DRA protocol in G.992.1 had known reliability weaknesses, particularly regarding the acknowledgment messaging which could fail in the presence of impulse noise, leading to a lack of synchronization between transceivers. A POSITA would look to contributions to the relevant ITU working group, such as SC-060, to find solutions. SC-060 was presented as an "extremely robust" protocol that used a "Synch Flag" for acknowledgment and specific timing parameters (SFlgSf, SfDly) to improve reliability and efficiency. Therefore, a POSITA would combine SC-060's robust acknowledgment and timing mechanism with G.992.1's DRA procedure to improve its performance.
  • Expectation of Success: A POSITA would have a reasonable expectation of success as both documents relate to the same ADSL technology and address the same problem of online parameter reconfiguration, with SC-060 being a direct proposed improvement for the G.992.1-family of standards.

Ground 3: Obviousness - Claims 8-10, 15, 24-26, and 31 are obvious over G.992.1 in view of Wunsch.

• Prior Art Relied Upon: G.992.1 (ITU-T Recommendation, 1999) and Wunsch (Application # 2002/0172188).

• Core Argument for this Ground:

  • Prior Art Mapping: As in the previous ground, G.992.1 provides the foundational DRA procedure. Wunsch (’188 application) is presented as teaching an improved method for robust online reconfiguration of transceiver parameters.
  • Motivation to Combine: The motivation was again to improve the reliability of G.992.1's DRA protocol. Petitioner argued that Wunsch explicitly identifies the problem that acknowledgment messages can be missed, causing transceivers to become unsynchronized, which "causes errors in the link that degrade performance." Wunsch proposed a solution using a "Synch Flag" sent over the physical media dependent (PMD) layer, which provides "improved reliability" over standard messaging. A POSITA would combine Wunsch's reliable Synch Flag acknowledgment method with the DRA procedure of G.992.1 to prevent synchronization failures.
  • Expectation of Success: Success would be expected because Wunsch explicitly incorporates the G.992.1 standard by reference and directs its teachings to improving the online reconfiguration capabilities of ADSL equipment operating under that standard.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against all claims based on SC-060 as a single reference, arguing it would have been obvious for a POSITA to modify the protocol taught therein to cover the specific FIP settings recited in the claims.

4. Key Claim Construction Positions

• Petitioner accepted the claim constructions from a parallel district court litigation for the purposes of the IPR. Key accepted constructions included:
  • "flag signal": A "signal used to indicate when an updated FIP setting is to be used (the signal does not include the FEC codeword counter value...)." Petitioner argued the DRA_Swap_Request message of G.992.1 met this definition.
  • "the switching occurs on a pre-defined forward error correction codeword boundary": The "switching...is effective on the boundary of a...codeword where the position of the boundary of each codeword is known prior to the switching." Petitioner contended G.992.1 explicitly taught this to avoid an FEC reset.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate for several reasons:
  • §325(d): The asserted prior art references (G.992.1, SC-060, Wunsch) were not substantively considered by the examiner during the original prosecution.
  • Discretionary Denial under Fintiv: The Fintiv factors were argued to weigh against denial because no parallel district court proceeding existed between Petitioner and Patent Owner for the ’835 patent. Even considering a co-defendant's litigation, that case was in its early stages with a trial date that was distant and uncertain.
  • Discretionary Denial under General Plastic: Petitioner acknowledged filing a "Copycat Petition" that mirrors one filed by CommScope (IPR2022-00352). However, it argued against denial because Petitioner had never previously challenged the patent, is wholly unrelated to CommScope, and filed the petition for efficiency and to preserve the option for joinder, not for improper roadmapping.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 8-10, 15, 24-26, and 31 of Patent 8,462,835 as unpatentable.