IPR2015-00059, Paper No. 41
`March 31, 2016
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`trials@uspto.gov
`571-272-7822
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`HUGHES NETWORK SYSTEMS LLC and
`HUGHES COMMUNICATIONS, INC.
`Petitioner
`vs.
`CALIFORNIA INSTITUTE OF TECHNOLOGY
`Patent Owner
`- - - - - -
`Case IPR2015-00059
`Patent 7,916,781
`Application 12/165606
`Technology Center 2600
`- - - - - -
`Oral Hearing Held: February 10, 2016
`
`Before: GLENN J. PERRY, KALYAN K. DESHPANDE,
`TREVOR M. JEFFERSON, Administrative Patent Judges
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`February 10, 2016 at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia in Hearing Room A, at 10:00 a.m.
`REPORTED BY: Karen Brynteson, RMR, CRR, FAPR
`
`
`March 31, 2016
`
`trials@uspto.gov
`571-272-7822
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`HUGHES NETWORK SYSTEMS LLC and
`HUGHES COMMUNICATIONS, INC.
`Petitioner
`vs.
`CALIFORNIA INSTITUTE OF TECHNOLOGY
`Patent Owner
`- - - - - -
`Case IPR2015-00059
`Patent 7,916,781
`Application 12/165606
`Technology Center 2600
`- - - - - -
`Oral Hearing Held: February 10, 2016
`
`Before: GLENN J. PERRY, KALYAN K. DESHPANDE,
`TREVOR M. JEFFERSON, Administrative Patent Judges
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`February 10, 2016 at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia in Hearing Room A, at 10:00 a.m.
`REPORTED BY: Karen Brynteson, RMR, CRR, FAPR
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
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`MATTHEW A. ARGENTI, ESQ.
`Wilson Sonsini Goodrich & Rosati, LLP
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`650-354-1154
`Margenti@wsgr.com
`
`
`
`
`
`
`
`APPEARANCES (continued):
`
`ON BEHALF OF THE PATENT OWNER:
`
`RICHARD TORCZON, ESQ.
`
`Wilson Sonsini Goodrich & Rosati
`
`1700 K Street, N.W.
`
`Fifth Floor
`Washington, D.C. 20006
`202-973-8911
`
`
`
`
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`2
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`ELIOT D. WILLIAMS, ESQ.
`HOPKINS GUY, ESQ.
`Baker & Botts LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304-1007
`650-739-7511
`Eliot.williams@bakerbotts.com
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`MICHAEL T. ROSATO, ESQ.
`Wilson Sonsini Goodrich & Rosati
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`
`206-881-2529
`mrosato@wsgr.com
`
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`Case No. IPR2015-00059
`Patent No. 7,916,781
`
`
`P R O C E E D I N G S
`
`(10:00 a.m.)
`JUDGE PERRY: We're on the record. We're
`convened this morning after our snow delay for oral argument
`in IPR2015- 00059, Hughes versus California Institute of
`Technology.
`The patent at issue is 7,916,781. Per our trial
`order, each side gets 60 minutes to argue from the record.
`Petitioner, of course, has the ultimate burden of proof and will
`argue first and Petitioner may reserve time for rebuttal.
`If you haven't done so already, counsel, please
`give your card to the court reporter so we get your names
`correct. I'm aware of one outstanding motion by Patent
`Owner, a motion to strike and exclude, which is Paper 32,
`opposed at Paper 35.
`Are there any other outstanding motions? Okay.
`So, Petitioner, when ready, you may begin.
`MR. WILLIAMS: Thank you very much, Your
`
`Honor.
`
`minutes --
`
`JUDGE PERRY: Do you want to reserve any time?
`MR. WILLIAMS: I would like to reserve 30
`
`JUDGE PERRY: Okay.
`MR. WILLIAMS: -- of my time. And I have hard
`copies of the demonstratives, if the Board would like them.
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`Case No. IPR2015-00059
`Patent No. 7,916,781
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`JUDGE PERRY: I would appreciate a copy.
`MR. WILLIAMS: Your Honor, if I could begin, let
`me introduce myself. My name is Eliot Williams. I represent
`the Petitioner in this proceeding. With me is co- counsel,
`Hopkins Guy. Jamie Lin is also here as co-counsel for
`Hughes. And in- house corporate counsel for intellectual
`property is Cory Myers, is also here with us today as well.
`Your Honor, I am going to begin with the
`substantive challenge to claims 1 and 2 of the challenged
`patent. And essentially what has occurred here is the Patent
`Owner has simply overclaimed.
`They have claimed activity that was in the prior
`art, activity that was published in a paper by one of the
`co-inventors of the challenged patent, actually, more than a
`year before the patent was filed.
`The Board has already provided some preliminary
`claim constructions in the case, which I will make reference to
`in a moment, and the Patent Owner has attempted to challenge
`some of those claim constructions, or at least it appears that's
`what the Patent Owner is doing.
`Really the focus of the claim is on these two steps.
`There is a first encoding operation and a second encoding
`operation. And I am referring here to slide 2 of the
`demonstratives, which shows claim 1.
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`With respect to the first encoding operation, as the
`Board knows, this limitation requires that there be a linear
`transform operation. And the Board did interpret "linear
`transform operation."
`The Board's Institution decision's construction is
`shown in slide 3. Essentially a linear transfer operation is one
`that obeys the laws of linear algebra.
`The Patent Owner has proposed a different
`construction. They say that this first encoding operation
`cannot be just any linear transform but must have some
`specific properties and, in particular, they say it must involve
`the irregular repetition and scrambling of bits. Although they
`don't always use this formulation in their response, that
`appears to be their argument.
`So we would contend that the Board's construction
`was correct. It was the plain meaning of "linear transform
`operation." This was confirmed during the deposition of
`Patent Owner's expert, who was asked about the idea of linear
`transformation, whether it had an ordinary meaning in the art,
`and he admitted that it did. And it was the meaning that the
`Board had gave it in the Institution decision. It is just a linear
`transform operation. That's what that term means.
`So the Patent Owner turns to the specification in
`an attempt to narrow that construction. As set forth in our
`reply brief, we think those arguments are defective. The
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`Case No. IPR2015-00059
`Patent No. 7,916,781
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`Patent Owner's expert really was just cherry-picking portions
`of the specification to try to make this argument that somehow
`the claimed linear transformation was limited to something
`more narrow than that.
`But even if you were to look to the specification to
`try to interpret what is an otherwise very clear claim, it
`doesn't help the Patent Owner because the specification made
`clear that when they used the term "irregular repeat and
`accumulate codes" in the specification or IRA, they are
`meaning to include also regular repeat-accumulate.
`And they say that in the specification as shown on
`slide 5, that regular can be considered a version,
`non- systematic type of an IRA. And the Patent Owner's expert
`concedes, essentially, that that's what that specification
`discussion is saying.
`So in addition to the specification, the related
`patents in the same patent family tend to show the same thing.
`They make -- both the parent and grandparent application
`include claims that do include irregularity in them. So it is
`clear the patent, the inventors knew how to claim irregularity
`when they wanted to.
`By not doing so in claims 1 and 2, they were
`showing an intent to claim more broadly, which is precisely
`what the claim says.
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`Case No. IPR2015-00059
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`Similarly, there is a file history and claim
`differentiation argument that shows the Patent Owner's claim
`construction is not correct. So, in particular, claim 9 in the
`patent originally recited that the number of information bits
`that appear is irregular.
`The examiner objected to that formulation as being
`indefinite, and the Patent Owner rewrote the claim in the way
`that it appears now.
`But Dr. Pfister, who is our expert, has said that,
`you know, one of ordinary skill in the art reading claim 9,
`even as written now, would understand that that is requiring
`irregularity and, therefore, such a requirement is not present in
`the claims that precede it.
`So for all those reasons, we think the Patent
`Owner's claim construction arguments should be rejected.
`Once you reject that argument, there is really no dispute that
`Divsalar has a linear transformation in the first two steps
`shown in figure 3 of Divsalar.
`So I will turn now to the second encoding
`operation.
`This claim requires that you perform an
`accumulation operation on the bits that were kind of the output
`of the first encoding operation. And the Patent Owner has
`made the argument that this second encoding operation that's
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`in the claims is really supposed to be the inner coder that is
`described in the specification.
`And, therefore, it is a specific type of inner coder
`that must be the accumulation operation. And, in particular,
`there, they argue that it requires the addition of a previously
`generated parity bit and more than one input bit to generate
`the second parity bit.
`So the problem for Patent Owner is that none of
`this is in the specification. And, in fact, the specification
`shows quite the opposite.
`The specification defines an accumulator that
`doesn't do that at all. It wouldn't meet the claim construction
`that the Patent Owner is proposing. This is the description
`from the specification that defines this encoder, and it defines
`the accumulator that is used there.
`And it is very clear that it doesn't meet the
`construction proposed by Patent Owner. Even Patent Owner's
`expert admits that. During his deposition he conceded that
`this description of the accumulator embodiment wouldn't
`satisfy the claim construction that the Patent Owner is
`proposing, so we think that this, you know, clearly this
`construction of the Patent Owner should be rejected.
`We do go on in the reply to try to explain what we
`think got the Patent Owner to the wrong answer here, and it
`was their expert's misinterpretation of this figure 3 of the
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`patent which shows essentially a factor graph that is supposed
`to be an embodiment of the invention.
`The Patent Owner's expert divided up that factor
`graph in a particular way that yields an inner coder that has
`rate A. And the specification makes clear A is a number that
`is going to be one or larger.
`And that's inconsistent with the specification's
`description of the inner coder, which requires that that have a
`rate close to one, and preferably, you know, one or within
`1 percent of one.
`And Petitioner has shown the proper way to sort of
`decompose that figure in figure 3 in the specification, which
`leads to an accumulator with rate 1, and that is exactly the
`claim construction that we apply in determining that Divsalar
`anticipates.
`So then just looking at, then comparing the
`specification embodiment of an accumulator with what the
`prior art accumulator is, you know, the Board can see the
`language is almost identical. It looks like that language was
`probably borrowed when the specification description of
`accumulator was generated.
`So we think the evidence is clear that as properly
`construed, the Divsalar reference has both the first and second
`encoding steps.
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`Okay. That's essentially the essence of the
`substantive presentation, unless the Board has questions, and
`then I was going to move on to a couple of the evidentiary
`matters that have been raised.
`JUDGE PERRY: We understand the substance.
`MR. WILLIAMS: Great. So I do want to talk
`about the publication of Divsalar. Because there is a dispute,
`as the Board knows, about whether Petitioner has met its
`burden of showing Divsalar is a prior art publication.
`So the interesting thing to note about that is that
`Divsalar is a publication by one of the inventors of this patent.
`He was -- it is not the same inventive entity, obviously. There
`is different combinations of inventors, but at least Mr.
`McEliece, for instance, is on -- is a named inventor and is an
`author of the Divsalar paper.
`So the other interesting thing to note is that Mr.
`McEliece is obviously still or he is affiliated with CalTech and
`is someone who, if he had evidence that would tend to show
`that Divsalar was not a publication, it is very likely he would
`have been brought in to present that evidence.
`He has not been brought in to present that
`evidence. We as Petitioners did attempt to get that evidence,
`as the Board knows, and that was, that was denied.
`But the fact remains that the person who would
`very likely have the evidence that it is not a publication has
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`never shown up to say that it is not. CalTech has never argued
`that Divsalar is not a publication. They have never made such
`a statement.
`I don't think they are going to make such a
`statement today. I think, if pushed, they wouldn't agree that it
`was not a publication. It would just be factually untrue.
`So let's just talk about what the evidence is for the
`publication of Divsalar. Obviously, there is the Fradenburgh
`declaration and the attachment to the Fradenburgh declaration.
`So Ms. Fradenburgh is a librarian at the University
`of Texas. She looked in the record. She gave us a copy of the
`Divsalar publication from the University of Texas's library,
`from the shelves. And she gave us a copy of the internal
`record at the University of Texas library that shows when that
`document was made available to the public, which was in
`April of 1999. So we have that. It is clear that the document
`--
`
`JUDGE PERRY: How does that declaration,
`counsel, show that the publication was made available and
`isn't simply residing in a warehouse box?
`MR. WILLIAMS: Well, her paragraph 7 was the
`library's records reflect that the reference was made available
`to members of the public on April 30th, 1999.
`JUDGE PERRY: Which happens to be the date of
`the acquisition records creation?
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`MR. WILLIAMS: That's the date that shows, as
`the UT created date in their acquisition record, that's correct.
`That's correct.
`But let me put aside the Fradenburgh declaration
`for a moment. Let's pretend we didn't have that evidence.
`There is still overwhelming evidence in the record before the
`Board that Divsalar is a prior art publication that is available
`here. And let me go through quickly what that evidence is.
`So first obviously we have the IDS that was filed
`during prosecution history by the inventors, showing they were
`aware of the reference. They sent it to the Patent Office with
`a date of publication in September of 1998.
`Robert McEliece, the inventor, lists Divsalar as a
`publication on his CV, Exhibit 1075. Dr. Pfister, who is our
`expert, in opening declaration in paragraph 41 says he has
`reviewed the Divsalar reference and believes it is prior art --
`predates the May 18th, 2000 priority date. In particular, he
`says, that Divsalar was published in the Allerton Proceedings
`no later than September of 1998.
`They never took his deposition. They had an
`opportunity to, obviously. They said they wanted to take his
`deposition and then they decided not to.
`They have never challenged his testimony to that
`
`effect.
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`JUDGE PERRY: Did Dr. Pfister explain how he
`knew that it was published in the Allerton Conference?
`MR. WILLIAMS: He didn't explain how he knew,
`but what he did say is he, himself, wrote a paper that cited to
`Divsalar a few months later. Clearly he had access to it.
`I mean, the test is not whether the thing is indexed.
`The test is whether it is accessible to members of the public,
`in this case of level of skill in the art. So this is a very
`narrow field. These people are Ph.D.s. they all know what is
`going on in the research space.
`We know he had access to the paper because he
`cited it himself a few months later and presented it at the
`paper -- at a paper cited to Divsalar at the next year's Allerton
`Conference, which was still before the filing date of the
`patent-in- suit.
`JUDGE JEFFERSON: What exhibit number was
`Dr. Pfister's testimony?
`MR. WILLIAMS: I'm sorry?
`JUDGE JEFFERSON: What exhibit number was
`Dr. Pfister's testimony?
`MR. WILLIAMS: So his declaration is
`Exhibit 1010. The paper is Exhibit 1057. And he discusses it
`at, I believe, paragraphs 32 and 41 of his declaration.
`JUDGE JEFFERSON: Thank you.
`
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`MR. WILLIAMS: We have additional evidence as
`well, so let me get to that. So we also submitted a declaration
`of David MacKay, I think is how you pronounce his name.
`That's -- his declaration is Exhibit 1060. He talks about two
`papers that he wrote and published on his own web site, both
`of which cite to Divsalar.
`For instance, Exhibit 1042 is a paper entitled
`Sparse Graph Codes. He testified that he placed that document
`on his web site by June 2nd, 1999. So by that time he had
`already written this brief paper that cites to the Divsalar
`reference.
`Clearly he had access to the Divsalar reference by
`that date, which is just a few weeks after the 102(b) date,
`proving that he obviously had access to this document before
`the critical period.
`JUDGE PERRY: Counsel, were all these exhibits
`discussed in your original petition?
`MR. WILLIAMS: The exhibits were discussed,
`yes. I mean, this particular argument for the publication date
`and that the evidence proves publication date, no, not all of
`them were.
`They were raised in the reply, obviously. With the
`petition, we relied primarily on the Fradenburgh declaration,
`which makes clear that the document was, you know, a
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`publication in a library by that date, but the other evidence
`was in the record and we just didn't address that at that point.
`So unless you have other questions about the
`publication date, I can move on. The motion to exclude, that
`was really -- I mean, I will address the motion to exclude very
`briefly.
`
`I think the challenge is mainly to the Fradenburgh
`declaration. They also challenge one of the declarations
`relating to real party in interest, which I can get to in just a
`moment.
`
`But the point I wanted to make about the
`Fradenburgh declaration is even if it were to be excluded, it
`wouldn't change the fact that the evidence is overwhelming
`that Divsalar was available as a prior art reference.
`But we do think it would be error to exclude the
`Fradenburgh declaration. We did our best to make her
`available for deposition. We didn't suggest a procedure by
`which she could be deposed. The Patent Owner never took us
`up on that opportunity.
`JUDGE PERRY: The motion to exclude also
`moved to exclude a number of exhibits that were, according to
`Patent Owner, not discussed in the original petition. Would
`you briefly address that aspect of the motion?
`MR. WILLIAMS: Yeah. I mean, frankly, you
`know, just to put all the cards on the table, what happened
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`here is we filed multiple petitions at once that were using a lot
`of the same exhibits. In an attempt to try to simplify the
`reference between the petitions, we used the same exhibit
`numbers where they were the same exhibit, they were being
`used in multiple petitions.
`JUDGE PERRY: So in that case you wouldn't have
`any problem with our expunging those exhibits from this
`particular case record?
`MR. WILLIAMS: Well, I mean, largely the ones
`that are actually not cited, I would not have a problem with
`that in this proceeding, but, frankly, I am not sure what the
`benefit to anybody would be.
`I mean, the references were already of record in
`the other petitions, which were never expunged. There is no
`prejudice to the presence of those exhibits in the record.
`The ones we do have problems with, obviously,
`relate to the particular prior art publication issue that I just
`mentioned. So, you know, in our reply, we cite to Exhibits
`1031, 1041, 1042, 1057, and 1060, which is Dr. MacKay's
`declaration.
`I think I forgot to tell you, by the way, a moment
`ago that there was another paper that cited to Divsalar before
`the priority date, which was Viterbi. That is Exhibit 1031 that
`I just listed.
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`So, yeah, those obviously we would have a clear
`objection to having expunged because we do rely on them in
`our reply. They were submitted with the petition. And they
`tend to show the availability of the Divsalar reference as prior
`art. So they are clearly relevant to the proceeding.
`So, yeah, let me just move on to the real party in
`interest issue, because I did want to mention that before I sit
`down.
`
`So there is two arguments that are being made with
`respect to real party in interest. First is that somehow we
`didn't properly name EchoStar, which is the parent company of
`Hughes. We obviously completely disagree with that. And we
`think the Board resolved that issue in the Institution decision
`already. We think that was the correct decision.
`There is no magic words for, required for
`identifying a real party in interest. That's clear from other
`panels' decisions and the statute itself.
`So that gets us then to DISH, which is an entity
`that is a completely separate entity from Hughes and EchoStar.
`The only connection between the two that seems to be hinted
`at is two.
`
`One is that there is a common shareholder of both
`corporations, which we have never denied. It is a true
`statement, but the problem is that the common shareholder is
`not alleged to be the real party in interest and he is not. He
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`had no input into the decision to make -- to file these
`proceedings, as the evidence shows. No evidence has been
`presented that he did.
`We submitted testimony of Tim Jezek, who is
`in- house counsel that said he didn't and that the decision was
`made entirely at the in- house counsel level within Hughes.
`There is another allegation that DISH somehow,
`because its products were at issue in the litigation, and there
`was an indemnification obligation to DISH, that that makes
`DISH a real party in interest.
`That argument would be somewhat interesting if
`not for the fact that there was absolutely no evidence
`presented in the District Court that any DISH product was
`actually infringing. And for that reason those claims were
`dismissed on summary judgment, several months before the
`Patent Owner response was filed in this case.
`So we contend that we have named the real parties
`in interest correctly, and there is no evidence to the contrary.
`JUDGE PERRY: I have just one more question, if
`I can relate back to the Fradenburgh declaration --
`MR. WILLIAMS: Sure.
`JUDGE PERRY: -- one more time.
`MR. WILLIAMS: Absolutely.
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`JUDGE PERRY: Why didn't your side apply for a
`subpoena to make Robin Fradenburgh available for
`cross-examination?
`MR. WILLIAMS: Yeah, it is a good question.
`And I expected to get that question. And I have thought about
`it, what my answer would be many times.
`I think the best answer is, I mean, in hindsight, we
`probably would have, if we knew that this was the direction
`things were going to go, that they were intending actually to
`strike her testimony.
`If we realized that that's where this was headed, we
`would have asked for a conference with the Board to figure out
`what the best procedure is, but at the time this occurred when
`we found out that she wasn't ready to appear voluntarily, we
`did look to the Board's precedent. And there was a
`precedential, not a precedential, but there was a prior panel
`decision on the almost identical facts where the Patent Owner
`requested the subpoena.
`I mean, after all, they are the one who wanted to
`question her. It wasn't us. We had her declaration testimony
`already. So it made sense to us that it would be the Patent
`Owner that would issue the subpoena, which we suggested to
`the Patent Owner twice, and never heard back.
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`JUDGE PERRY: Doesn't our Trial Practice Guide
`specifically put the onus on the party proffering the
`testimony?
`MR. WILLIAMS: So the Trial Practice Guide, I
`would say, is actually ambiguous on these facts as to what to
`do when you have a witness who gave you a declaration
`voluntarily, but who is not going to volunteer for a deposition,
`was requiring a subpoena.
`I can see that any costs associated with that would
`be borne by us. The rules, I think, make that clear. The Trial
`Practice Guide makes that, I think, clear.
`And we were doing the best we could with the facts
`we had. We were cooperating with the Patent Owner,
`suggesting a very simple procedure for obtaining her
`testimony. So, I mean, that's my answer.
`I mean, also the Trial Practice Guide is not a
`binding rule. The words used around the testimony of a
`witness to speak in languages of "should" and things like that,
`so we didn't view it as a necessary requirement that we had to
`subpoena her.
`It didn't frankly make a lot of sense to us, given
`that typically a subpoena would be used by someone who
`actually wanted to question her, which was not what was
`happening.
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`So, I mean, that's how we wound up here. But,
`yeah, if they had responded and said, no, we're going to move
`to strike her testimony before their response was due, then I
`think we would have clearly -- the issue would have been
`flagged for us. We would have called the Board and tried to
`get some guidance.
`JUDGE PERRY: Thank you.
`MR. WILLIAMS: With that, I will reserve the
`remainder of my time.
`JUDGE PERRY: Okay.
`MR. ROSATO: So we have hard copies of the
`demonstrative exhibits. Can we approach?
`JUDGE PERRY: Yes.
`MR. ROSATO: Mike Rosato for CalTech, the
`Patent Owner. I have at counsel table Matthew Argenti,
`co-counsel, Richard Torczon, also co- counsel. And at our law
`firm here for entertainment purposes is Mr. Mata in the back
`of the room.
`It is a pleasure to be here, Your Honors. We do
`emphasize our appreciation to the Board for time today, efforts
`throughout the proceeding, rescheduling due to snowstorms
`and general attention to this matter.
`So I would like to first turn to this threshold issue
`of whether the Divsalar reference qualifies as prior art to this
`proceeding in the first place.
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`This is a threshold issue, of course, because if the
`Petitioner has not established that a reference, the only
`reference at issue is prior art as asserted, there is no need for
`the Board to reach these issues of application of the teachings
`of that reference to the claims and so forth.
`In particular, there are several issues surrounding
`that evidence, that issue of whether the reference qualifies.
`There are procedural aspects, and there are substantive
`aspects.
`
`The procedural aspects are covered in the briefing,
`and I am happy to talk about those. And we will reach them.
`I do want to spend some time on the content of the
`evidence and the deficiencies that are there, because I think
`the content of that evidence forms a basis for a finding that the
`Petitioner has failed to demonstrate that the reference is prior
`art as asserted.
`So what is that evidence? And turning to slide 5 of
`the demonstrative exhibits, back in the petition, the original
`petition submitted in this case on page 2 of that petition,
`Petitioner complies with Board Rule 104(b)(2), to the extent
`that it specifically identifies the Divsalar reference as
`allegedly being prior art under 102(b), and specifically
`identifies the date of April 30th, 1999.
`They are doing what they are supposed to do under
`the rules, to the extent they are identifying with particularity
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`how they believe the reference is prior art and when it was
`believed publicly available.
`One other thing -- well, and then the extent of that
`discussion is what you find on page 2 of the petition. There is
`one sentence identifying the reference as prior art. There is an
`incorporation to Exhibit 1064, which is the declaration of
`Ms. Fradenburgh. There is no discussion in that declaration,
`there is no discussion of anything else. That is the one
`sentence offered by the Petitioner on this issue.
`Now, the Board in its Institution decision did raise
`another issue in addition to identifying the Fradenburgh
`declaration as being the only piece of evidence submitted by
`Petitioner. And the Board further posed the question of
`whether the Divsalar reference was published at the Allerton
`Conference.
`So the latter question is certainly a fair and
`relevant question, but it is also one that is easily resolved.
`And we want to make sure we address that.
`To be clear, the Divsalar reference was not
`published at the Allerton Conference. Petitioner never made
`that assertion. In fact, to the contrary, they made an assertion
`just the opposite.
`They specifically indicated that the reference was
`not published at the conference. They submitted testimony of
`two witnesses, Dr. Pfister and Dr. MacKay, both testifying as
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`to the procedure for how the Allerton Conference handles their
`publications.
`That process is the conference occurs, papers are
`submitted after the conference, the papers, to the extent they
`are accepted for publication, are published sometime
`thereafter.
`So we know that the paper was not published at the
`conference. It is a fair question. We should address that, and
`it has been addressed. I just wanted to make sure that point
`was covered.
`And if there is any further information or interest
`in that issue, it is covered at pages 23 and 24 of the Patent
`Owner's response. It is also summarized at slide 9 of the
`demonstrative exhibits.
`I would like to turn to --
`JUDGE PERRY: Counsel, even if we accept that
`the paper was not published at the Allerton Conference,
`mustn't it have been published by the time the University of
`Texas acquired it the following April?
`MR. ROSATO: Well, we don't know when they
`acquired it or if they ever did. And I would like to look at --
`it is absolutely worthwhile looking at the Fradenburgh
`declaration and trying to evaluate what that actually tells us, if
`anything.
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`But that is a valid point. Let me turn to that.
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