Nokia Of America Corp v. TQ Delta LLC

1. Case Identification

• Case #: IPR2022-00656
• Patent #: 8,594,162
• Filed: March 7, 2022
• Petitioner(s): Nokia of America Corporation
• Patent Owner(s): TQ Delta, LLC
• Challenged Claims: 8, 9, 11

2. Patent Overview

• Title: Impulse Noise Management
• Brief Description: The ’162 patent relates to the online reconfiguration of Forward Error Correction (FEC) and interleaver parameters in Digital Subscriber Line (DSL) systems. The invention’s stated purpose is to allow transitions between different parameter values to adjust Impulse Noise Protection (INP) without requiring a full system re-initialization procedure.

3. Grounds for Unpatentability

Ground 1: Anticipation over G.992.1 - Claims 8 and 11 are anticipated under 35 U.S.C. §102 by G.992.1.

• Prior Art Relied Upon: G.992.1 (ITU-T Recommendation G.992.1 (1999)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that G.992.1, an established ADSL standard, discloses every element of independent claim 8. The standard teaches a device (an ADSL Transceiver Unit, or ATU) with a mandatory interleaver. G.992.1’s Dynamic Rate Adaptation (DRA) procedure explicitly allows for changing interleaver parameter values (specifically, interleaver depth) during operation ("Showtime"). This change is initiated by sending a DRA_Swap_Request message, which Petitioner contended is the claimed "flag signal," to trigger the parameter switch at a pre-defined superframe boundary that coincides with an FEC codeword boundary. Petitioner further argued that dependent claim 11 is anticipated because the DRA procedure is inherently used to optimize modem settings in response to changing channel conditions, which is directly associated with impulse noise protection, data rate, and latency values.

Ground 2: Obviousness over G.992.1 and SC-060 - Claims 8, 9, and 11 are obvious over G.992.1 in view of SC-060.

• Prior Art Relied Upon: G.992.1 (ITU-T Recommendation G.992.1 (1999)) and SC-060 (ITU-T SG15/Q4 contribution SC-060 (Aug. 2001)).
• Core Argument for this Ground:
  • Prior Art Mapping: G.992.1 provides the baseline ADSL system with the DRA protocol for online reconfiguration. Petitioner argued that SC-060, a technical contribution to the relevant ITU-T working group, discloses a more robust On-Line Reconfiguration (OLR) protocol to address shortcomings in the base standard. SC-060’s protocol uses a "Synch Flag," described as the inverse of a Synch Symbol, as an acknowledgment, which Petitioner asserted meets the "inverted sync symbol" limitation of claim 9. The combination results in a system that changes interleaver parameters using a flag signal (the Synch Flag) to trigger the change at a specified time on a codeword boundary.
  • Motivation to Combine: A POSITA would have been motivated to improve the reliability of G.992.1’s DRA protocol, which was susceptible to synchronization failures, particularly in noisy environments. SC-060 was presented to the same standards body and explicitly addressed this known problem, describing non-synchronized reconfigurations as "catastrophic" and its proposed protocol as "extremely robust."
  • Expectation of Success: A POSITA would have a high expectation of success in combining the references because SC-060 was designed as a direct enhancement for ADSL standards like G.992.1, proposed a unified protocol, and required minimal implementation complexity.

Ground 3: Obviousness over G.992.1 and Wunsch - Claims 8, 9, and 11 are obvious over G.992.1 in view of Wunsch.

• Prior Art Relied Upon: G.992.1 (ITU-T Recommendation G.992.1 (1999)) and Wunsch (Application # 2002/0172188).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented a similar argument to Ground 2, using Wunsch as the secondary reference. Wunsch also discloses an improved OLR protocol to address the known disadvantages of G.992.1. It teaches using a "Sync Flag" as an acknowledgment, defined as a bit pattern "maximally different" from the normal Sync Symbol, which Petitioner argued taught the inverted sync symbol of claim 9.
  • Motivation to Combine: The motivation was again to improve the reliability and speed of G.992.1’s DRA protocol. Wunsch itself enumerated the disadvantages of requiring repeated acknowledgment messages, as in G.992.1, and proposed its Synch Flag embodiment as a direct solution that "improves the ability for ADSL equipment to reconfigure transceiver parameters during normal 'showtime' operation."
  • Expectation of Success: Success would be expected because Wunsch explicitly incorporates G.992.1 by reference and presents its teachings as a more robust and flexible protocol building directly on the standard, confirming the teachings could be easily applied.
• Additional Grounds: Petitioner asserted an additional obviousness challenge based on G.992.2 in view of WH-077, which relied on similar theories of improving a base standard with a more robust reconfiguration protocol.

4. Key Claim Construction Positions

• For the purposes of the petition, Petitioner adopted the following constructions from a related district court proceeding:
  • "flag signal": "signal used to indicate when an updated interleaver parameter value is to be used (the signal does not include the FEC codeword counter value upon which the updated interleaver parameter value is to be used)."
  • "interleaver parameter value": "numerical value of the interleaver depth."
  • "...used for transmission on a pre-defined forward error correction codeword boundary...": "used for transmission starting on a boundary of a forward error correction codeword where the position of the boundary of each codeword is known prior to use of the second interleaver parameter value."

5. Key Technical Contentions (Beyond Claim Construction)

• Public Accessibility of ITU-T Contributions: A central contention underlying multiple grounds was that ITU-T contribution documents, such as SC-060 and WH-077, qualify as prior art printed publications under §102. Petitioner argued these documents were disseminated to hundreds of skilled artisans in the relevant standards-setting body without any expectation of confidentiality and were made available via an ITU server, making them publicly accessible to interested persons exercising reasonable diligence.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), asserting that the specific prior art references and combinations presented in the petition were not before the examiner during prosecution.
• Regarding potential denial under Fintiv, Petitioner contended that the parallel district court litigation was in its early stages, with a trial date scheduled far enough in the future that an IPR would conclude first. Petitioner argued that institution would promote efficiency by narrowing issues for the district court, especially given the large number of patents asserted in the parallel case.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 8, 9, and 11 of Patent 8,594,162 as unpatentable.