TQ Delta LLC v. ADTRAN Inc.

Filing 811

MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 9/13/2019. Associated Cases: 1:14-cv-00954-RGA, 1:15-cv-00121-RGA(nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
TQ DELTA, LLC,
Plaintiff,
Civil Action No . 14-954-RGA

V.

ADTRAN, INC. ,
Defendant.

ADTRAN, INC.,
Plaintiff and
Counterclaim Defendant,
Civil Action No. 15-121-RGA

V.

TQ DELTA, LLC,
Defendant and
Counterclaim Plaintiff.

MEMORANDUM OPINION
Brian E. Farnan and Michael J. Farnan, FARNAN LLP, Wilmington, DE; Peter J. McAndrews,
Timothy J. Malloy, Thomas J. Wimbiscus, Sharon A. Hwang, Paul W . McAndrews, and Anna
M. Targowska, MCANDREWS, HELD & MALLOY, LTD ., Chicago, IL, attorneys for Plaintiff
TQ Delta LLC.
Kenneth L. Dorsney, MORRIS JAMES LLP, Wilmington, DE; Garland Stephens, Melissa L.
Hotze, Justin L. Constant and Rene E. Mai, WEIL, GOTSHAL & MANGES LLP, Houston, TX,
attorneys for Defendant AD TRAN, Inc.

September

f3 , 2019

Currently pending before the Court is TQ Delta's Motion for Summary Judgment of No
Invalidity of the Asserted Claims of U.S. Patent Nos. 8,335,956, 8,468,411 and 8,645,784. (D.I.
637). 1 The parties have fully briefed the issues. (D.I. 638, 684, 706). After full consideration of
the briefing, the motion is resolved as follows.
I.

BACKGROUND
Plaintiff TQ Delta filed this lawsuit against Defendant ADTRAN on July 17, 2014

asserting infringement of thirty-two patents. (D.I. 1). ADTRAN has countersued. (C.A. 15-121 ,
D.I. 1). I have divided the case into separate trials based on families of patents. (D.I. 369). For
the Family 9 trial, TQ Delta currently asserts claim 31 of U.S. Patent No. 8,335,956 ("the ' 956
patent"), claim 10 of U.S. Patent No. 8,468,411 ("the '411 patent"), and claim 7 of U.S. Patent No.
8,645,784 ("the ' 784 patent"). I have granted summary judgment of noninfringement as to claims
30, 53, and 55 of U.S . Patent No. 8,595 ,577. (D.I. 800; D.I. 801). The Accused Products are those
products containing the BCM65300 chipset. (D.I. 644 at 1 n. 1).
The Family 9 patents are "directed to various aspects of packet retransmission and memory
sharing in communications systems." (D.I. 447 at 1). The asserted claim of the ' 956 patent reads
as follows:
31. A system to share memory between a deinterleaving function and a packet
retransmission function comprising:
a transceiver capable of:
transmitting to another transceiver or receiving from another transceiver a message
indicating:
an amount of the memory is to be allocated to the deinterleaver function, and
an amount of the shared memory is to be allocated to the packet retransmission
function;

1

All docket item citations are to C.A. 14-954 unless otherwise noted.

1

allocating a first portion of the shared memory to the deinterleaving function; and
allocating a second portion of the shared memory to the packet retransmission
function, wherein the first allocated portion of the shared memory is no more than
the amount of memory indicated in the message for the deinterleaving function and
the second allocated portion of the shared memory is no more than the amount of
memory indicated in the message for the retransmission function.
('956 patent, cl. 31 ). The asserted claim of the '411 patent reads as follows:
10. A transceiver capable of packet retransmission comprising:
a transmitter portion capable of: transmitting a plurality of packets, identifying at
least one packet of the plurality of packets as a packet that should be retransmitted
and allocating a memory between a retransmission function and an interleaving
and/or deinterleaving function, wherein at least a portion of the memory may be
allocated to the retransmission function or to the interleaving and/or deinterleaving
function at any one particular time, and wherein a message transmitted during
initialization indicates how the memory has been allocated between the
retransmission function and the interleaving and/or deinterleaving function in the
transceiver.
('411 patent, cl. 10). The asserted claim of the ' 784 patent reads as follows :
7. A multicarrier communications transceiver with a shared memory, the
transceiver operable to:
share the memory between a packet retransmission function and one or more of
interleaving and deinterleaving functions ; and
transmit or receive a message indicating how the shared memory in the transceiver
is to be allocated to the packet retransmission function and to the one or more of
interleaving and deinterleaving functions.
('784 patent, cl. 7).
TQ Delta has filed a motion for summary judgment of no invalidity of the ' 956, '411 , and
' 784 patents. (D.I. 637). TQ Delta requests that I grant summary judgment of no invalidity
under 35 U.S.C. § 101 , § 102, § 103, and§ 112. (D.I. 638 at 2). ADTRAN has conceded that it
is only asserting invalidity theories under § 103 for Family 9. (D .I. 684 at 2). Thus, I will grant
summary judgment of no invalidity under § 101 , § 102, and § 112.
ADTRAN has put forward three combinations of prior art to prove the asserted claims of
the ' 956, ' 411 , and ' 784 patents obvious under§ 103 . ADTRAN asserts that the asserted patents
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are obvious (1) over VDSLl in view of ADSL2, (2) over Aramvith in view of Aksu, and (3) over
TR 25.896 and TS 25.401 in view of Eriksson.
II.

LEGALSTANDARD
A. Summary Judgment

"The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R.
Civ. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a
dispute about a material fact is ' genuine ' if the evidence is sufficient to permit a reasonable jury
to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). When determining
whether a genuine issue of material fact exists, the court must view the evidence in the light most
favorable to the non-moving party and draw all reasonable inferences in that party' s favor. Scott
v. Harris, 550 U.S . 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007).

B. Obviousness
A patent claim is invalid as obvious under 35 U.S.C. § 103 "if the differences between the
claimed invention and the prior art are such that the claimed invention as a whole would have been
obvious before the effective filing date of the claimed invention to a person having ordinary skill
in the art to which the claimed invention pertains." 35 U.S.C. § 103 ; see also KSR Int '! Co. v.
Teleflex Inc. , 550 U.S. 398, 406-07 (2007). "Under § 103, the scope and content of the prior art

are to be determined; differences between the prior art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art resolved.

3

Against this background, the

obviousness or nonobviousness of the subject matter is determined. "

KSR , 550 U.S. at 406

(internal citation and quotation marks omitted).
A court is required to consider secondary considerations, or objective indicia of
nonobviousness, before reaching an obviousness determination, as a "check against hindsight
bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676
F.3d 1063, 1078-79 (Fed. Cir. 2012). "Such secondary considerations as commercial success, long
felt but unsolved needs, failure of others, etc. , might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of

Kansas City, 383 U.S . 1, 17-18 (1966). Where "the content of the prior art, the scope of the patent
claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of
the claim is apparent in light of these factors, summary judgment is appropriate." KSR, 550 U.S .
at 427.

III.

DISCUSSION
A. VDSLl in View of ADSL2
TQ Delta argues that the ' 956, '411, and ' 784 patents cannot be found invalid as obvious

over VDSLl in view of ADSL2, because the combination does not disclose the "shared memory"
limitation or the "a [single] message" limitation, and there is not a motivation to combine the
references. (D .I. 63 8 at 10-12). ADTRAN asserts that there are genuine disputes of material fact
that prevent summary judgment ofno invalidity for this asserted combination. (D.I. 684 at 12-14).
1.

"shared memory"

There are genuine disputes of material fact as to whether VDSL 1 or ADSL2 discloses the
"shared memory" limitation of the asserted claims. Dr. Wesel has stated that a person of ordinary
skill in the art would understand that both VDSLl and ADSL2 would typically be implemented

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using shared memory consistent with the claim language. (D.I. 655 , Ex. 21 at 482: 1-23 ; D.I. 652,
Ex. A at~~ 471-80; D.I. 654, Ex. C ~~ 159-65). A reasonable jury could conclude from his
opinions that a person of ordinary skill in the art would understand VDSLl and ADSL2 to disclose
shared memory.

2. "a [single] message"
TQ Delta alleges that Dr. Wesel ' s invalidity opinions rely on the use of multiple messages
in both VDSLl and ADSL2, and therefore, cannot as a matter of law be sufficient to prove
obviousness. (D.I. 638 at 10-11). ADTRAN argues that Dr. Wesel ' s opinions are sufficient for a
jury to conclude that "a [single] message" has been disclosed. (D.I. 684 at 12-13). Dr. Wesel has
provided the following opinions:
(1) "the R-MSG2 [as disclosed in VDSLl] conveys information [related] to memory for[]
the interleaving/deinterleaving function" and "renders transmitting or receiving a
message indicating how the shared memory in the transceiver is to be allocated to the
one or more of interleaving or deinterleaving functions obvious" (D.I. 648, Ex. A at~
508);
(2) the ADSL2 standard discloses similar messages "conveying information" related to
memory requirements for interleaving (id.

~

512);

(3) the ADSL2 standard discloses messages conveying "information used to deduce the
amount of the shared memory to support overhead channel retransmission" (id.

~

519);

(4) a person of ordinary skill in the art "would have understood that it would be
advantageous to remove the requirement to perform multiple arithmetic steps to learn
the minimum amount of shared memory [that] should be allocated to the packet
retransmission functions ." (Id.) .

5

Taking this evidence in the light most favorable to ADTRAN, I determine that a reasonable jury
could conclude that the messages in VDSLl and ADSL2 would have disclosed the "a [single]
message" limitation to a person of ordinary skill in the art.

3. Motivation to Combine
TQ Delta argues that "Dr. Wesel's motivation to combine VDSLl and ADSL2 is
insufficient" because " [s]howing that references relate to similar concepts is insufficient to show
motivation to combine specific references ." (D.I . 638 at 11). To the extent that Dr. Wesel has
provided further opinions regarding motivation to combine, TQ Delta asserts that its own expert,
Dr. Cooklev, has explained that Dr. Wesel's proposed combination would be impermissibly
redundant. (Id.). ADTRAN responds that (1) TQ Delta relies on a case that is inapposite, and (2)
Dr. Wesel's opinions are sufficient to create a material dispute of fact on the motivation to
combine.
I agree with ADTRAN that Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
1369 (Fed. Cir. 2012)) is inapposite. In that case, " [t]he record [was] devoid of any reason
someone would combine [the] references" and there was "significant evidence of teaching away"
in the prior art references . Id. Here, Dr. Wesel has offered opinions that a person of ordinary skill
in the art would have been motivated to combine the references because (1) VDSLl and ADSL2
use the same type of transceiver and similar types of interleaving to protect transmitted data from
errors, and (2) modification of the VDSLl overhead channel to utilize retransmission the way the
ADSL2 overhead channel does would enable the channel to "be used to control more functions."
(D.I. 652, Ex. A at ,i,i 346-49; D.I. 654, Ex. Cat ,i,i 54-57). Taking this evidence in the light most
favorable to ADTRAN, a reasonable jury could conclude that a person of ordinary skill in the art
would have been motivated to combine the references.

6

Therefore, taking the entirety of evidence regarding the combination of VDSLl with
ADSL2 in the light most favorable to ADTRAN, as I am required to do, I determine that a
reasonable jury could determine that the asserted claims are obvious. Thus, I will deny TQ Delta' s
motion for summary judgment of no invalidity as to the VDSL1 /ADSL2 combination.

B. Aramvith in view of Aksu
TQ Delta argues that the ' 956, ' 411 , and ' 784 patents cannot be found invalid as obvious
over Aramvith in view of Aksu because the combination does not disclose (1) the "shared
memory" limitation, (2) the "wherein the first allocated portion of the shared memory is no more
than the amount of memory indicated in the message for the interleaving/deinterleaving function"
limitation, (3) the "a message" limitation, or (4) the "a [single] message" limitation. (D.I. 638 at
12-18). ADTRAN asserts that there are genuine disputes of material fact that prevent summary
judgment of no invalidity for this asserted combination. (D .I. 684 at 14-18).
TQ Delta argues that Dr. Wesel improperly relies on Aramvith for the disclosure of "shared
memory" because, in Aramvith, the purported shared memory operates contrary to the claim
construction. (D.I. 638 at 12-13). TQ Delta also asserts that Aksu does not disclose the "shared
memory" limitation.

(Id. at 14-15). ADTRAN responds that TQ Delta is offering a new

interpretation of my claim construction and ignores the majority of Dr. Wesel ' s opinions. (D.I.
684 at 14-15).
I construed the term "the [shared] memory" to mean "common memory used by at least
two functions, where a portion of the memory can be used by either one of the functions ." (D.I.
390 at 13; D.I. 396 at 1). I do not understand TQ Delta to be offering a new interpretation of my
claim construction. There does not appear to be a dispute between the parties that Aramvith
permits the purported shared memory to be used by the encoder alone, but does not permit it to be

7

used by the interleaver function alone as the only time the interleaver uses the memory is when it
is being used by the encoder as well. (D.I. 638 at 13; D.I. 684 at 14). As I stated when construing
this claim, "for these patents, at any one time, a certain part of the memory can be used by one
function or the other, but not both." (D.I. 390 at 15). Thus, a reference with a memory system
that allows portions of the memory to be used by both functions at the same time does not disclose
the "shared memory" limitation of the asserted claims.
Neither do Dr. Wesel ' s opinions on Aksu appear to offer an opinion that Aksu discloses
"shared memory" as construed. Nowhere in Dr. Wesel ' s opinions or ADTRAN ' s briefing are the
"at least two functions" using the memory in Aksu identified. (D.I. 652, Ex. A at~ 486).
Even taking this evidence in the light most favorable to ADTRAN, a reasonable jury could
not find by clear and convincing evidence that a person of ordinary skill in the art would understand
either Aramvith or Aksu to disclose the "shared memory" limitation. Because this limitation is
not found in either reference, I need not examine the other disputed limitations. I will grant
summary judgment of no obviousness in view of the Aramvith/ Aksu combination.

C. TR 25.896 and TS 25.401 in View of Eriksson
TQ Delta argues that the ' 956, '411, and '784 patents cannot be found invalid as obvious
over TR 25.896 and TS 25.401 in view of Eriksson because the combination does not disclose (1)
the "shared memory" limitation, (2) the "wherein the first allocated portion of the shared memory
is no more than the amount of memory indicated in the message for the interleaving/deinterleaving
function" limitation, (3) the "a message" limitation, or (4) the "a [single] message" limitation.
(D.I. 638 at 18-20). ADTRAN asserts that there are genuine disputes of material fact that prevent
summary judgment of no invalidity for this asserted combination. (D.I. 684 at 18-20).

8

1. "shared memory"

Dr. Wesel ' s opinions create a material dispute of fact as to whether this combination
discloses "shared memory." TQ Delta alleges that no reference discloses a "shared memory" fo r
interleaving. (D .I. 63 8 at 18). I note that my construction of "shared memory" only requires that
"at least two functions" share the memory. It does not require specific functions. Dr. Wesel has
offered an opinion that TR 25.896 discloses a shared memory supporting retransmission and that
it uses "a combined buffer (which a [person of ordinary skill in the art would understand to be
within a shared memory) to store the already-interleaved data. " (D.I. 648 at,, 492-493). Taking
this evidence in the light most favorable to ADTRAN, a reasonable juror could conclude that these
references disclose the "shared memory" limitation of the asserted claims.
2. "a message"
Dr. Wesel ' s opinions create a material dispute of fact as to whether this combination
discloses the "a message" limitation in the asserted claims. Dr. Wesel has provided opinions that
TR 25.896 has "[m]essages conveying parameters" transmitted between two parts of the
transceiver and that "[i]t would be obvious to include a ceiling on the allocated memory in these
messages." (D.I. 648, Ex. A at , 538). He has also provided an opinion that "Eriksson further
suggests sending messages indicating the amount of memory available for use." (Id. at , 539).
Dr. Wesel ' s opinions on the message limitation do not appear to be relying on references other
than the TR 25.896, TS 25.401 and Eriksson. (Id. at , , 531-41 ; D.I. 654, Ex. Cat,, 232-41 ).
Taking this evidence in the light most favorable to ADTRAN, a reasonable jury could determine
that a person of ordinary skill in the art would understand this combination to disclose the "a
message" limitation of the asserted claims.

9

3. "a [single] message"
The parties' arguments regarding the "a [single] message" limitation under the combination
of TR 25.896, TS 25.401, and Eriksson mirror the arguments made for the VDSL1/ADSL2
combination. (D.I. 638 at 20; D.I. 684 at 19). Dr. Wesel has provided opinions from which a
reasonable jury could conclude that a person of ordinary skill in the art would understand from TR
25.896 discloses transmission of a message. (D.I. 652, Ex. A at

,r,r 531 , 540-41 ; D.I. 654, Ex. C

at ,r 241).

4. "wherein the first allocated portion of the shared memory is no more than
the amount of memory indicated in the message for the
interleaving/deinterleaving function"
TQ Delta argues that Dr. Wesel ' s opinions are insufficient to render this claim limitation
obvious. (D.I. 638 at 19). Specifically, TQ Delta alleges that Dr. Wesel opines that the minimum
amount of memory for retransmission and interleaving must be known, which is inconsistent with
Dr. Wesel's opinion that it would be obvious to a person of ordinary skill in the art to change the
indication of minimum memory to maximum memory. (Id. at 19-20). Finally, TQ Delta alleges
that Dr Wesel's theoretical system "renders . .. the alleged prior art system inoperable for its
intended purpose." (Id. at 20). ADTRAN responds that TQ Delta mischaracterizes Dr. Wesel ' s
opinions and that Dr. Wesel ' s opinions create a genuine dispute of material fact. (D.I. 684 at 1920).

I agree with ADTRAN that Dr. Wesel ' s opinions create a genuine dispute of material fact
as to whether this combination renders the claim limitation obvious. Dr. Wesel ' s opinion is that it
would have been obvious to add an indication of maximum amount of memory to be allocated to
each function to a message conveying parameters to support retransmission and interleaving, not
to replace another indication. (D.I. 652, Ex. A at

10

,r,r 531-41 ).

Taking this evidence in the light

most favorable to ADTRAN, a reasonable jury could conclude that the combination of TR 25 .896
and TS 25.401 in view of Eriksson makes this claim limitation obvious.
Thus, a reasonable jury could conclude that the asserted claims are rendered obvious under
the combination of TR 25 .896 and TS 25.401 in view of Eriksson. I will therefore deny TQ Delta' s
motion for summary judgment of no invalidity as to this combination.

IV.

CONCLUSION
For the foregoing reasons, I will grant TQ Delta's motion for summary judgment of no

invalidity under§ 101, § 102, and§ 112. I will grant summary judgment of no obviousness for
the Aramvith/Aksu combination and deny summary judgment as to the other two combinations.
An accompanying order will be entered.

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