`Filed: January 4, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
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`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
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`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
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`Patent Owner.
`____________________________
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`IPR2015-00059 (Patent 7,916,781)
`____________________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S COMBINED
`MOTION TO STRIKE AND MOTION TO EXCLUDE
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`TABLE OF CONTENTS
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`IPR2015-00059
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`Page
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`PRELIMINARY STATEMENT ..................................................................................... 1
`I.
`PATENT OWNER’S MOTION TO STRIKE ............................................................... 3
`II.
`A. Patent Owner’s Motion to Strike the University of Texas Librarian’s Declaration Is
`Waived and Lacks Merit. ................................................................................................. 3
`B. Petitioner’s Theory of Unpatentability Over Divsalar is Not New. .............................. 8
`C. Jezek Declaration Is Proper Reply Evidence ............................................................... 10
`D. Patent Owner’s Motion to Exclude Evidence Cited in the Record is Facially
`Insufficient. ...................................................................................................................... 12
`III. CONCLUSION ............................................................................................................... 14
`RESPONSE TO STATEMENT OF MATERIAL FACTS ..................................................... 15
`APPENDIX .................................................................................................................................. 18
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`IPR2015-00059
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`I.
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`PRELIMINARY STATEMENT
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`Patent Owner has presented no evidence to rebut Petitioner’s showing that
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`Divsalar qualifies as prior art. It has carefully avoided arguing that Divsalar is not
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`prior art to the ‘781 Patent. Indeed, Patent Owner could not make such an
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`argument, as its own inventors conceded that Divsalar was prior art during ex parte
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`prosecution and in other public statements. Therefore, Patent Owner’s motion to
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`strike evidence and argument regarding the prior art status of Divsalar is a waste of
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`both the parties’ and the Board’s resources.
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`As to Patent Owner’s challenge to the Declaration of Ms. Fradenburg, an
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`employee of the University of Texas Library, its motion to strike is both untimely
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`and meritless. First, Patent Owner never served formal objections to Ms.
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`Fradenburgh’s declaration, nor did it otherwise raise with the Board a motion to
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`strike her testimony during the discovery period in this Trial—when Petitioner
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`would have had an opportunity to compel her deposition, if the Board had
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`concluded that such action was necessary. Second, Petitioner properly followed
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`the procedure established by the Board in Marvell Semiconductor, Inc. v.
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`Intellectual Ventures I LLC, IPR2014-00553, Paper 28 (PTAB April 8, 2015) for
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`the deposition of a librarian who is unwilling to appear for deposition voluntarily.
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`In particular, Petitioner attempted to secure her voluntary attendance, then
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`proposed to Patent Owner that her deposition be compelled via subpoena.
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`Accordingly, Patent Owner’s motion should be denied.
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`Second, Patent Owner’s motion to strike what it calls a “New Theory of
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`Unpatentability” of anticipation over Divsalar as § 102(a) art is misguided. The
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`Petition characterized Ground 1 as follows: “Claims 1 and 2 are anticipated under
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`35 U.S.C. § 102 by Divsalar.” (Pet., Paper 4 at 13.) Similarly, the Trial was
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`Instituted on the following Ground: “claims 1 and 2 as anticipated by Divsalar”
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`(Institution Decision, Paper 18 at 16). Nothing in the Petition nor the Institution
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`Decision limits Ground 1 to anticipation under § 102(b), as Patent Owner suggests.
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`Third, Patent Owner seeks to strike the testimony of Timothy Jezek, which
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`refutes Patent Owner’s speculative allegations that each real party-at-issue was not
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`named in the Petition. Submission of rebuttal evidence with Petitioner’s reply is
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`both permitted and customary. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
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`1078 (Fed. Cir. 2015) (upholding Board’s refusal to strike reply evidence that was
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`“in fair reply” to Patent Owner’s contentions); 37 C.F.R. § 42.23(b). Notably,
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`Patent Owner could have cross-examined Mr. Jezek and submitted observations on
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`that cross-examination. It could also have requested a sur-reply to submit
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`additional argument, if it believed that was necessary. Instead, Patent Owner chose
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`to do nothing. Having shown no basis to strike this evidence, Patent Owner’s
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`motion should be denied.
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`Finally, Patent Owner moves to exclude forty-five exhibits as “irrelevant and
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`unfairly prejudicial”. Patent Owner’s motion does not explain how these exhibits,
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`which include the file histories of various parent and child patents in the same
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`family as the ‘781 Patent and several prior art references discussed extensively in
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`the petition, petitioner’s reply, and petitioner’s supporting declarations, could be
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`irrelevant or unfairly prejudicial. Accordingly, Patent Owner fails to carry its
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`burden as to this motion.
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`II. PATENT OWNER’S MOTION TO STRIKE
`A.
`Patent Owner’s Motion to Strike the University of Texas
`Librarian’s Declaration Is Waived and Lacks Merit.
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`Patent Owner has waived this issue. The first time Patent Owner formally
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`raised this issue in a filing was in its Patent Owner Response, where it argued that
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`“Petitioner should . . . be precluded from relying on” the Fradenburgh Declaration.
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`Paper 24 at 21, 27-29. Prior to that, the parties had exchanged emails regarding the
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`deposition of Ms. Fradenburgh. As those emails show, Petitioner followed the
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`procedure established by the Board in Marvell Semiconductor, Inc. v. Intellectual
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`Ventures I LLC, IPR2014-00553, Paper 28 (PTAB April 8, 2015). Specifically,
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`Petitioner attempted to obtain the voluntary appearance of Ms. Fradenburgh.
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`When it was unable to do so, Petitioner suggested to Patent Owner that if a
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`deposition was necessary (which seemed unlikely given the apparent lack of a
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`dispute over Divsalar’s availability as prior art), Patent Owner could subpoena Ms.
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`Fradenburgh. Patent Owner made no attempt to move forward with that subpoena
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`and made no formal objection to Ms. Fradenburgh’s testimony. Indeed, no
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`objection to the testimony of Ms. Fradenburgh was ever filed in this proceeding.
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`Cf. Ex. 2032 (Patent Owner’s objections).
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`Accordingly, prior to receiving the Patent Owner’s Response, Petitioner
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`believed the dispute over Ms. Fradenburgh had been resolved. Patent Owner
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`falsely suggests that Petitioner “remained silent on the issue [of whether Ms.
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`Fradenburgh’s testimony would be withdrawn] until after Caltech filed its Patent
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`Owner response.” Paper 32 at 4. To the contrary, Petitioner made clear in an
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`email to Patent Owner’s counsel—well before Patent Owner’s response was due—
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`that Ms. Fradenbugh’s testimony was not being withdrawn, and proposed that a
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`subpoena be issued if her deposition was still being requested:
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`“As to Ms. Fradenburgh, we will not be withdrawing her testimony.
`As I previously indicated, we understand that she will appear in
`response to a subpoena. Accordingly, if CalTech remains interested
`in taking her deposition, we suggest that you request the Board’s
`approval to issue such a subpoena.”
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`Ex. 1078 (email dated July 9, 2015). However, Petitioner never received a
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`response to this email. If Patent Owner intended to strike Ms. Fradenburgh’s
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`testimony, it should have timely objected to it, or requested a call with the Board to
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`move to strike her testimony during the discovery period in this Trial, when
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`Petitioner could have sought a subpoena. Patent Owner should not be permitted to
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`raise this issue after the close of discovery.
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`Even if this issue had not been waived, Patent Owner’s motion fails on the
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`merits. As discussed above, Petitioner followed the procedure adopted by the
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`Board in Marvell Semiconductor v. Intellectual Ventures relating to the deposition
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`of an unwilling librarian declarant. IPR2014-00553, Paper 28 (PTAB April 8,
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`2015). In particular, Petitioner attempted to arrange for the deposition of Ms.
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`Fradenburgh as requested by Patent Owner. Ex. 2027 at 1-2. However, the
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`University of Texas Library’s General Counsel Office informed Petitioner that Ms.
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`Fradenburgh would not appear voluntarily, but would appear if subpoenaed. Id.
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`Since Ms. Fradenburgh and the University of Texas are non-parties, Petitioner does
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`not have the unilateral ability to compel their testimony. Id.
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`In light of the circumstances, Petitioner suggested the proper procedure
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`would be for the Patent Owner to simply seek a subpoena to compel the deposition.
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`Instead, Patent Owner refused, made no attempt to compel Ms. Fradenburgh’s
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`testimony, and sat on this issue until its Response. Moreover, Patent Owner has
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`made no showing that such a deposition would have been helpful to its position, in
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`view of the substantial unrebutted evidence of record that Divsalar is prior art.
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`Patent Owner cites to the Trial Practice Guide’s discussion of “Witness
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`Expenses” to support its apparent assertion that Petitioner was required take every
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`possible action to make Ms. Fradenburgh available. Paper 32 (citing 77 Fed. Reg.
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`48,756, 48,761 (“TPG”) (§ I(F)(1)(b)) (emphasis supplied)). But that section
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`relates to “witness expenses,” not the procedure to be followed when a third-party
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`witness is unwilling to sit for a deposition voluntarily. While that section might
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`entitle Patent Owner to shift any expenses associated with Ms. Fradenburgh’s
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`deposition to Petitioner, no such expenses were incurred because Patent Owner
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`refused to proceed with the procedure for compelling her deposition, and never
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`notified Petitioner that it intended to seek to strike her testimony, which would
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`have prompted Petitioner to seek Board authorization to compel her testimony.
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`Moreover, even if this section of the TPG were to apply to compelling
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`witness testimony, and it does not, it would still not support Patent Owner’s
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`contention that the testimony should be struck. First, the portion of the TPG cited
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`by Patent Owner does not set forth a mandatory requirement. The TPG simply
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`states that the party presenting a witness’s testimony “should arrange to make the
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`witness available for cross-examination.” TPG at 48,761 (emphasis added). Such
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`aspirational language cannot support the drastic measure of striking evidence.
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`Second, the “Witness Expenses” portion of the TPG cited by Patent Owner
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`is silent on the issue of compelling involuntary testimony and only mentions
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`expenses associated with “non-party witnesses.” TPG at 48,761. Instead, the issue
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`of obtaining involuntary testimony is addressed three paragraphs later under the
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`heading “Compelled Testimony.” Id. If the TPG was intended to require that
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`Petitioner must compel involuntary cross-examination testimony, it would have set
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`out such a requirement in the section addressed to that issue.
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`The Board decisions cited by Patent Owner are also inapplicable. First,
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`John’s Lone Star Dist., Inc. v. Thermolife Int’l., LLC is easily distinguishable.
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`There it was the Petitioner, not the witness, that refused to make the party deponent
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`available for cross-examination. IPR2014-01201, Paper 31 (PTAB May 13, 2015)
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`& Paper 25, p. 2 (“Petitioner indicated . . . that [the witness] would not be made
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`available for cross-examination because the scope of the cross examination could
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`not be ascertained”) (emphasis supplied). Here, it was the non-party witness that
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`refused to appear voluntarily. Petitioner has not refused to provide her cross-
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`examination testimony, and indeed even proposed to Patent Owner a simple
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`procedure to obtain that testimony. See Ex. 1078. In FLIR Systems, Inc. v. Leak
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`Surveys, Inc., the Patent Owner’s witness could not be reached and his
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`whereabouts were unknown. IPR2014-00411, Paper 113 at 14-16; IPR2014-
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`00411, Exhibit 1047 at 1. In HTC Corp. and HTC America, Inc. v. NFC Tech.,
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`LLC, the Patent Owner’s deponent resided in France, requiring issuance of a Letter
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`Rogatory to be compelled, and the “parties and the panel spent considerable time
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`and effort trying to arrange for the deposition,” which was ultimately unsuccessful.
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`IPR2014-01198, Paper 41 (PTAB Nov. 6, 2015). In each of these cases, the cross-
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`examining party had no mechanism available to it to obtain the cross-examination
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`testimony. In fact, the parties in HTC Corp. did make significant efforts to obtain
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`the cross-examination of a French deponent only to be rebuffed by the difficulties
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`of obtaining evidence under the Hague Convention. IPR2014-01198, Paper 41. In
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`stark contrast to any of these cases, Patent Owner could have simply obtained Ms.
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`Fradenburgh’s cross-examination by issuing a subpeona to the involuntary third-
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`party witness, as expressly contemplated by the rules and the Board, precisely as
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`Petitioner suggested. See Marvell Semiconductor, IPR2014-00553, Paper 28
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`(issuing subpoenas at the Patent Owner’s request to obtain cross-examination
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`testimony of third-party librarian witnesses); Ex. 1078. Patent Owner simply made
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`no effort to do so.
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`Therefore, Patent Owner has not shown that it is entitled to the relief that it
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`seeks, and Ms. Fradenburgh’s testimony should not be struck.
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`B.
`Patent Owner seeks
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`Petitioner’s Theory of Unpatentability Over Divsalar is Not New.
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`to strike what
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`it calls a “New Theory of
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`Unpatentability” of anticipation over Divsalar as § 102(a) art. Patent Owner’s
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`argument is misguided. The Petition characterized Ground 1 as follows: “Claims 1
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`and 2 are anticipated under 35 U.S.C. § 102 by Divsalar.” (Pet., Paper 4 at 13.)
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`The Trial was Instituted on the following Ground: “claims 1 and 2 as anticipated
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`by Divsalar.” (Institution Decision, Paper 18 at 16). Nothing in the Petition nor
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`the Institution Decision limits Ground 1 to anticipation under § 102(b), as Patent
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`Owner suggests. Notably, in support of its response, Patent Owner submitted the
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`declaration of Dr. Golomb’s declaration that admits that the Board instituted inter
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`partes review “of claims 1 and 2 of the ‘781 patent under 35 U.S.C. § 102 based on
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`Divsalar.” Ex. 2024 at ¶ 10.
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`Patent Owner ignores the Petition’s clear assertion that the claims are
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`“anticipated by Divsalar,” and instead erroneously argues that the Petition’s
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`description of Divsalar as being “published at least by April 30, 1999 and available
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`as prior art under 35 U.S.C. § 102(b)” limited Petitioner to showing anticipation
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`under only § 102(b). But that portion of the Petition only states that Divsalar
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`qualifies as prior art under § 102(b). Since the prior art reference was not written
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`by the same inventive entity, Patent Owner does not, and cannot, argue that
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`Divsalar would qualify as a printed publication under § 102(b), but not under
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`§ 102(a). Indeed, when the printed publications is authored by another entity,
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`§ 102(a) is merely a subset of § 102(b)—that is, such a printed publication
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`qualifying as prior art under § 102(b) necessarily qualifies under § 102(a). Cf. In
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`re Katz, 687 F.2d 450, 454 (C.C.P.A. 1982) (finding that § 102(a) would render the
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`one-year bar of § 102(b) superfluous “unless it is describing the work of another”).
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`Patent Owner notes that the petition identifies a publication date of April 30,
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`1999, and asserts that the “petition identifies no other alleged date of publication
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`and no other statutory basis for asserting Divsalar as prior art.” Paper 32 at 6
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`(emphasis in original). To the contrary, the petition also establishes that Divsalar
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`was published by September 1998, when it was presented by two of the three
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`named inventors at the Allerton Conference. Pet. at 7 (citing Ex. 1010 (Pfister
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`Decl.) ¶ 32). The petition also noted that Divsalar was cited by the inventors
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`during prosecution. Pet. at 3. Therefore, there is nothing new about the arguments
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`contained in petitioner’s Reply regarding Divsalar’s status as a prior art
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`publication.
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`Moreover, Patent Owner was on notice that the Petition was instituted on
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`grounds of anticipation over Divsalar, so it cannot now complain that it had no
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`chance to present evidence that the invention pre-dated Divsalar. Regardless,
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`Patent Owner could not possibly establish that the invention pre-dated Divsalar, as
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`the inventors themselves cited Divsalar as prior art during prosecution. Paper 18 at
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`p. 11.
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`C. The Jezek Declaration Is Proper Reply Evidence
`In its response to the Petition, Patent Owner continued to assert its
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`unsubstantiated allegations that the Petition did not name all real parties-in-interest.
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`Now, Patent Owner seeks to exclude the only direct evidence offered on this issue
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`by either party—a declaration by Timothy Jezek, in-house counsel for Petitioner,
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`which responds to the Patent Owner’s unfounded assertion that DISH is an
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`unnamed real party-in-interest. Exhibit 1076 (“Jezek Declaration”).
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`Petitioner is allowed to fully reply to Patent Owner’s arguments made in
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`response to the Petition. 37 C.F.R. § 42.23(b) (The reply may “respond to
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`arguments raised in the corresponding opposition or patent owner response.”). The
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`submission of rebuttal evidence with Petitioner’s reply is both permitted and
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`customary. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078 (Fed. Cir.
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`2015) (affirming denial of motion to exclude declaration in support of petitioner’s
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`reply brief that responds to the patent owner’s response to the petition).
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`Notably, Patent Owner does not allege that the Jezek declaration raises any
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`new issue. For example, there is no allegation that the Jezek declaration was
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`necessary to establish a prima facie case of unpatentability. Petitioner correctly
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`identified each RPII in the Petition as required—the rebuttal evidence submitted in
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`response to Patent Owner’s baseless allegations to the contrary merely confirms
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`this fact. Patent Owner seems to agree that the content of the Jezek declaration
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`“might rebut” its argument related to identification of the real party-in-interest.
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`Paper 32 at p. 10.
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`Patent Owner’s only complaint appears to be that it cannot respond to
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`Petitioner’s reply “with its own argument or evidence.” Id. This is specious.
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`First, Patent Owner did not even attempt to cross-examine or submit observations
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`on that cross-examination, as permitted by the Scheduling Order and TPG. See
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`Paper 19 at 5 (“A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-examination
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`testimony of a reply witness because no further substantive paper is permitted after
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`the reply.”) Second, if such argument or evidence were likely to be fruitful, Patent
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`Owner could have sought leave for a sur-reply. See Belden at 1081 (“[A]lthough
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`no rule provides patent owners the right to file surreplies to a petitioner’s Reply,
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`the Board has allowed such surreplies in inter partes reviews.”).
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`Finally, the substance of the Jezek declaration was no surprise. As Patent
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`Owner admits, the Jezek declaration mirrors the declaration that it moved to
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`expunge from the record prior to institution. Paper 32 at p. 9. Patent Owner was
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`well aware of Petitioner’s position, which it had the opportunity to address as part
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`of its response to the Petition. However, it chose to simply reassert the same
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`arguments already rejected by the Board in the Institution Decision.
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`Therefore, Patent Owner has failed to carry its burden on its motion to strike.
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`D.
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`Patent Owner’s Motion to Exclude Evidence Cited in the Record
`is Facially Insufficient.
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`A motion to exclude must at least “[e]xplain why the evidence is not
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`admissible (e.g., relevance or hearsay)” and “may not be used to challenge the
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`sufficiency of the evidence.” TPG at 48,767. Patent Owner fails to carry its
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`burden. Patent Owner makes the blanket assertion that forty-five exhibits in the
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`record are unfairly prejudicial and irrelevant. But its only explanation as to why
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`these exhibits are inadmissible is that they are not “discussed, relied upon, or cited
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`in the petition or anywhere else in the record.” Paper 32 at p. 11.
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`Contrary to Patent Owner’s argument, these exhibits are all discussed,
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`replied upon and cited in the petition, the reply, and/or the supporting declarations
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`submitted by Petitioner. See, e.g., Pet. at 5 (citing prosecution histories and related
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`patents in the ‘781 Patent family); Pet. at 23 (citing Ex. 1038); Paper 29 (Reply) at
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`p. 16 (citing Exs. 1042, 1060); Ex. 1010 (Pfister Decl.) at ¶ 2 (citing prosecution
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`histories and related patent family); id. at ¶ 24 (citing. Ex. 1061); id. at ¶ 26 (citing.
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`Ex. 1062); id. at ¶ 29 (citing Exs. 1012, 1066); id. at ¶ 30 (citing. Ex. 1032, 1063);
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`id. at ¶ 40 (citing Ex. 1018); id. at ¶ 41 (citing Exs. 1013, 1017, 1019, 1033, 1043,
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`1047); id. at ¶ 106 (citing Ex. 1023).1 Additionally, Exhibits 1021, 1036, and 1060
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`are actually cited in Patent Owner’s filings. Patent Owner’s Preliminary
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`Response, Paper 13 at p. 3 n.3, p. 39; Patent Owner Response, Paper 24 at pp. 8,
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`22-23. Thus, Patent Owner’s indiscriminate motion to exclude is based on an
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`incorrect factual premise, and should be denied.
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`In addition, contrary to Patent Owner’s assertions, the exhibits are plainly
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`relevant to the issues presented in this proceeding. For example, Exhibits 1001-
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`1004 and 1007-1009 are the prosecution histories of the parent and child patents in
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`the same family as the ‘781 Patent, and are obviously relevant at least relevant to
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`1 A more detailed catalog of these citations appears in Petitioner’s Response to
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`Patent Owner’s Statement of Material Facts, which follows this Response.
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`the meaning of the challenged claims, which Patent Owner has disputed. Patent
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`Owner Response, Paper 24 at pp. 29-45.
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`Paragraphs 13-29 of Dr. MacKay’s declaration (Ex. 1060) provide
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`background and support for his qualifications as an expert. Paragraphs 34-38 and
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`40-83 of that declaration provide background for Dr. MacKay’s relevant work in
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`the field of art, including his work with the inventors of the ‘781 Patent. Most of
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`the remaining references are background prior art references, which must be
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`considered when submitted with a petition and supporting evidence. See Ariosa
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`Diags. v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (“Given
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`those references in the Petitions and supporting declarations, Exhibit 1010 had to
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`be considered by the Board . . . .”).
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`In short, the evidence Patent Owner seeks to exclude is relevant. Patent
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`Owner has made no showing as to how the presence in the record of this evidence
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`is unfairly prejudicial to Patent Owner. Accordingly, Patent Owner has not
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`satisfied its burden.
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`III. CONCLUSION
`For the reasons set forth above, Patent Owner’s motion to strike and motion
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`to exclude should be denied.
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`January 4, 2015
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`
` /Eliot D. Williams/
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`Attorneys for Petitioner
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`RESPONSE TO STATEMENT OF MATERIAL FACTS
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`1.
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`Denied to the extent Patent Owner asserts that the Petition is limited
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`to anticipation by Divsalar under only § 102(b). The petition also asserts more
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`generally that Divsalar was “published by two of the three inventors of the ‘781
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`Patent in September 1998, more than one year before the earliest priority date of
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`the ‘781 Patent.” Pet., Paper 4, at 7. As Ground 1, the Petition asserts: “Claims 1
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`and 2 are anticipated by Divsalar.” Pet. at 3. This inter partes review proceeding
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`was also instituted as to “claims 1 and 2 as anticipated by Divsalar.” Paper 18
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`(“Inst. Dec.”) at 16.
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`2.
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`3.
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`Admits that Exhibit 1064 shows that Divsalar is available as prior art.
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`Denied. The Petition asserts that Divsalar was cited as prior art
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`during prosecution. Pet. at 3. See also Ex. 1011 at p. 2; Ex. 1006 at p. 4. The
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`petition also relies on the Declaration of Henry Pfister to show that Divsalar was
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`prior art as of September 1998. Pet. at 7 (citing Ex. 1010 at ¶ 32); Pet. at 10
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`(citing Ex. 1010 ¶ 31-32). Dr. Pfister’s declaration includes citations to other prior
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`art references to corroborate Divsalar’s publication date. Ex. 1010 ¶ 32 (citing
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`Exs. 1014 (“Ping”), 1057 (“Pfister”), 1031 (“Viterbi”)).
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`4.
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`5.
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`Denied. See supra.
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`Denied. See Pet. at 7 (noting Divsalar was “published . . . in
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`September 1998”).
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`6.
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`7.
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`Admitted.
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`Denied. Petitioner informed Patent Owner that General Counsel at
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`the University of Texas stated that a subpoena would be required to secure the
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`appearance of Ms. Fradenburgh and suggested that Patent Owner “request issuance
`
`of a subpoena to compel her deposition” as occurred in Marvell Semiconductor,
`
`Inc. v. Intellectual Ventures I LLC, IPR2014-00553, Paper 28 (PTAB April 8,
`
`2015). Ex. 2028 at p. 3.
`
`8.
`
`Denied. Exhibit 1060 is itself a filing. The remaining exhibits are
`
`cited in Petitioner’s filings. See, e.g., Pet. at 5 (citing prosecution histories); Paper
`
`29 (Reply) at p. 16 (citing Exs. 1042, 1060); Ex. 1010 (Pfister Decl.) at ¶ 2 (citing
`
`prosecution histories and related patent family); id. at ¶ 24 (citing. Ex. 1061); id. at
`
`¶ 26 (citing. Ex.1062); id. at ¶ 29 (citing Exs. 1012, 1066); id. at ¶ 30 (citing. Ex.
`
`1063); id. at ¶ 40 (citing Ex. 1018); id. at ¶ 41 (citing Exs. 1013, 1017, 1019, 1033,
`
`1043, 1047); id. at ¶ 106 (citing Ex. 1023); id. at ¶ 30 (citing Ex. 1032); Ex. 1059
`
`(Frey Decl.) ¶ 13 (citing Ex. 1034); id. ¶ 14 (citing Exs. 1012); id. ¶ 16 (citing Ex.
`
`1035); id. ¶ 17 (citing Ex. 1048); id. ¶ 18 (citing Ex. 1036); id. ¶ 23 (citing Ex.
`
`1055); Ex. 1060 (MacKay Decl.) ¶ 15 (citing Ex. 1038); id. ¶¶ 17, 19 (citing Exs.
`
`1040, 1048); id. ¶ 24 (citing Ex. 1039); id. ¶ 25 (citing Ex. 1040); id. ¶ 27 (citing
`
`Ex. 1038); id. ¶ 28 (citing Ex. 1023); id. ¶¶ 31, 37 (citing Exs. 1018, 1042); id. ¶ 32
`
`(citing Ex. 1044); id. ¶ 33 (citing Exs. 1042, 1043); id. ¶ 35 (citing Ex. 1046); id. ¶
`
`Active 23090330.3
`
`16
`
`
`
`IPR2015-00059
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`42 (citing Ex. 1034); id. ¶ 46 (citing Ex. 1035); id. ¶ 47 (citing Ex. 1048); id. ¶ 51
`
`(citing Exs. 1033, 1038); id. ¶ 57 (citing Exs. 1038, 1051); id. ¶ 60 (citing Exs.
`
`1038, 1052); id. ¶ 64 (citing Exs. 1038, 1053); id. ¶ 67 (citing Exs. 1038, 1054); id.
`
`¶ 71 (citing Exs. 1038, 1055); id. ¶ 74 (citing Exs. 1038, 1056); id. ¶ 83 (citing
`
`Exs. 1019, 1065).
`
`
`
`Active 23090330.3
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`17
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`IPR2015-00059
`
`APPENDIX
`
`U.S. Patent No. 7,116,710 by Hui Jin, et. al. entitled “Serial
`Concatenation of Interleaved Convolutional Codes Forming Turbo-
`Like Codes.” (the “’710 Patent”)
`
`Prosecution History of the ’710 Patent
`
`U.S. Patent No. 7,421,032 by Hui Jin, et. al. entitled “Serial
`Concatenation of Interleaved Convolutional Codes Forming Turbo-
`Like Codes.” (the “’032 Patent”)
`
`Prosecution History of the ’032 Patent
`
`U.S. Patent No. 7,916,781 by Hui Jin, et. al. entitled “Serial
`Concatenation of Interleaved Convolutional Codes Forming Turbo-
`Like Codes.” (the “’781 Patent”)
`
`Prosecution History of the ’781 Patent
`
`U.S. Patent No. 8,284,833 by Hui Jin, et. al. entitled “Serial
`Concatenation of Interleaved Convolutional Codes Forming Turbo-
`Like Codes.” (the “’833 Patent”)
`
`Prosecution History of the ’833 Patent
`
`U.S. Provisional Application Ser. No. 60/205,095 by Hui Jin, et. al.
`(the “’095 Provisional Application”)
`
`Declaration of Henry D. Pfister, Ph.D.
`
`D. Divsalar, H. Jin, and R. J. McEliece, “Coding Theorems for
`"Turbo-like" Codes.” Proc. 36th Allerton Conf. on Comm., Control
`and Computing, Allerton, Illinois, pp. 201-210, Sept. 1998
`(“Divsalar”) (published no later than April 30, 1999 at the University
`of Texas library)
`
` B.J. Frey and D.J.C. MacKay, “Irregular Turbocodes.” from the 37th
`Allerton Conference (“Frey”) (published no later than October 8, 1999
`at the website of D.J.C. MacKay)
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`Active 23090330.3
`
`18
`
`
`
`IPR2015-00059
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`E.K. Hall and S.G. Wilson, “Stream-Oriented Turbo Codes.” 48th
`IEEE Vehicular Technology Conference, pp. 71-76, 1998 (“Hall”)
`(published no later than June 23, 1998 at the Library of Congress)
`
`L. Ping, W. K. Leung, N. Phamdo, “Low Density Parity Check Codes
`with Semi-random Parity Check Matrix.” Electron. Letters, Vol. 35,
`No. 1, pp. 38-39, Jan. 7th, 1999 (“Ping”) (published no later than
`April 22, 1999 at the Library of Congress)
`
`M. Luby, M. Mitzenmacher, A. Shokrollah, D. Spielman, “Analysis of
`Low Density Codes and Improved Designs Using Irregular Graphs.”
`STOC ’98 Proceedings of the Thirtieth Annual ACM symposium on
`Theory of Computing, pp. 249-258, 1998 (“Luby”) (published no later
`than July 30, 1998 at the University of Washington)
`
`U.S. Patent No. 6,081,909 by Michael Luby, et. al. entitled
`“Irregularly Graphed Encoding Technique.” (“the Luby ’909 Patent”)
`(filed November 6, 1997 and issued June 27, 2000)
`
`F. R. Kschischang and B. J. Frey, “Iterative decoding of compound
`codes by probability propagation in graphical models.” IEEE Journal
`on Selected Areas in Communications, 16, 219-230. 1998.
`(“Kschischang”) (published no later than Febuary 23, 1998 at the
`Library of Congress)
`
`U.S. Patent No. 7,089,477 by Michael Divsalar, et. al. entitled
`“Interleaved Serial Concatenation Forming Turbo-Like Codes .”
`(“the ’477 Patent”)
`
`RA.c code (including RA.c, and supporting files)
`
`J.L. Hennessy and D.A. Patterson, Computer organization and design:
`the hardware/software interface. 1994. (“Hennessy”) (published no
`later than November 8, 1994 at the Library of Congress)
`
`Complaint, California Institute of Technology v. Hughes
`Communications, Inc. et. al., No. 13-CV-07245 (CACD)
`
`Amended Complaint, California Institute of Technology v. Hughes
`Communications, Inc. et. al., No. 13-CV-07245 (CACD)
`
`Active 23090330.3
`
`19
`
`
`
`IPR2015-00059
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
` D. J. C. MacKay, S. T. Wilson, and M. C. Davey, “Comparison of
`Constructions of Irregular Gallager codes.” IEEE Trans. Commun.,
`Vol. 47, No. 10, pp. 1449-1454, Oct. 1999 (“MacKay”) (published no
`later than December 3, 1999 at the Library of Congress)
`
`Corrected Claim Construction Order (D.I. 105)
`
`Joint Claim Construction and Prehearing Statement (D.I. 60)
`
`Reporter’s Transcript of Claims Construction and Motion Hearing of
`July 9, 2014
`
`U.S. Patent No. 4,623,999 by Patricia Patterson, entitled “Look-up
`Table Encoder for Linear Block Codes .” (“the ’999 Patent”) (issued
`November 18, 1986)
`
`Luby, Mitzenmacher, Shokrollahi, Spielman, and Stemann, “Practical
`loss-resilient codes” in STOC '97 Proceedings of the twenty-ninth
`annual ACM symposium on Theory of Computing, 1997
`
`Richardson, Shokrollahi, and Urbanke, “Design of Provably Good
`Low-Density Parity Check Codes”
`
`Bond, Hui, and Schmidt, “Constructing Low-Density Parity-Check
`Codes with Circulant Matrices” ITW 1999, Metsovo, Greece (June
`27-July 1 1999).
`
`Viterbi and Viterbi, “New results on serial concatenated and
`accumulated-convolutional turbo code performance” in Annales Des
`Télécommunications 1999
`
`Benedetto, Divsalar, Montorsi, and Pollara, “Serial concatenation of
`interleaved codes: Performance an