Paper No. ___
`Filed: September 17, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________________
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`
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`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioner,
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`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
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`Case IPR2015-00059
`Patent 7,916,781
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`_____________________________
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`
`
`PATENT OWNER’S OPPOSITION
`TO PETITIONER’S MOTION FOR DISCOVERY
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`
`Filed: September 17, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2015-00059
`Patent 7,916,781
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`_____________________________
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`
`
`PATENT OWNER’S OPPOSITION
`TO PETITIONER’S MOTION FOR DISCOVERY
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`Case IPR2015-00059
`Patent 7,916,781
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`TABLE OF CONTENTS
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`V.
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`Page
`PRECISE STATEMENT OF RELIEF REQUESTED ................................. 1
`I.
`INTRODUCTION ....................................................................................... 1
`II.
`III. LEGAL STANDARDS ............................................................................... 3
`IV. THE REQUESTED DISCOVERY IS AN ATTEMPT TO CURE A
`DEFECT IN THE PETITION ...................................................................... 3
`PETITIONER’S FAILURE TO PROVIDE ITS WITNESS
`UNDERMINES ITS ASSERTION THAT THE REQUESTED
`DISCOVERY IS IN THE INTEREST OF JUSTICE ................................... 6
`VI. PETITIONER’S REQUEST FOR “ROUTINE DISCOVERY” IS
`MISPLACED .............................................................................................. 8
`VII. PETITIONER’S REQUESTS ARE SPECULATIVE,
`BURDENSOME AND DOES NOT SATISFY THE GARMIN
`FACTORS ................................................................................................. 11
`A.
`The requests are unnecessary and not supported by more than a
`mere possibility and by mere allegation ........................................... 11
`The requests are unduly burdensome ............................................... 13
`B.
`VIII. PETITIONER’S DISCOVERY REQUESTS ILLUSTRATE ITS
`MISAPPREHENSION OF THE UNDERLYING LEGAL ISSUE ............ 14
`IX. CONCLUSION ......................................................................................... 15
`X. APPENDIX ............................................................................................... 17
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`I.
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`PRECISE STATEMENT OF RELIEF REQUESTED
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`On September 10, 2015, Petitioner filed its motion for additional discovery,
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`seeking to compel document discovery and testimony from Dr. Dariush Divsalar
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`and Dr. Robert McEliece. For at least the reasons set forth below in Patent
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`Owner’s (“Caltech”) opposition, Petitioner fails to demonstrate the requested
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`discovery is in the interests of justice. The motion should be denied.
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`II.
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`INTRODUCTION
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`In view of the materials presented in the petition, the Board instituted trial
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`based on the understanding that 1) the “Divsalar Reference” (Ex. 1011) was
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`published at the 36th Annual Allerton Conference (Paper 18 pp. 11-12); and 2) that
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`Petitioner’s lone witness regarding the reference’s alleged publication, the librarian
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`Ms. Fradenburgh, was an available witness in this proceeding (id. at 11). As set
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`forth in Caltech’s Patent Owner Response, both of those bases have been
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`demonstrated as false. Paper 24 (“PO Response”) pp. 20-29.
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`With its case now in doubt, Petitioner seeks authorization to embark on a
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`late-stage discovery campaign it speculates might reconstruct the unpatentability
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`case it was required to set forth in the original petition. Not only does Petitioner
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`fail to demonstrate the requested discovery is in the interest of justice, but
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`Petitioner’s representations actually illustrate fundamental misapprehensions
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`regarding the scope of an inter partes review and of the underlying legal issue.
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`Inter partes review is strictly limited to prior art patents and publications; it does
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`not contemplate some version of notice pleading in a petition followed by a
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`discovery campaign attempting to substantiate the pleaded case. See 35 U.S.C.
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`§ 312(a)(3). Moreover, it is impossible to reconcile Petitioner’s claims that 1) the
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`Divsalar Reference was sufficiently available to the public and, therefore, a printed
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`publication as asserted; but 2) information about the alleged public availability of
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`the Divsalar Reference is uniquely in the hands of only one or two individuals. In
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`other words, if only Dr. Divsalar and Dr. McEliece were aware of the reference’s
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`availability, then the reference could not have been broadly available such that
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`members of the public exercising reasonable diligence could locate it. Petitioner
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`represents that despite its extraordinary diligence, it has been unable to locate any
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`member of the public to substantiate its assertion of public availability.
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`The record demonstrates, and Petitioner’s arguments in its motion
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`underscore, that the Divsalar Reference was not publicly available 102(b) prior art
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`as set forth in the petition. Petitioner’s request is simply a belated and untimely
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`attempt to cure defects in its case-in-chief as set forth in the petition. Moreover,
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`Petitioner’s stated need for discovery is due to its strategic choice in refusing to
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`make its witness, Ms. Fradenburgh, available for cross-examination. Petitioner’s
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`motion for discovery seeks a “do-over” to search for information it speculates
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`might exist so as to belatedly fix the deficiencies in its petition, as well as excuse
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`its failure to produce its own witness. In view of these reasons and as further set
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`forth below, including the undue burden the requests would place on the Board,
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`Caltech, and the proposed witnesses, the requests should be denied.
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`III. LEGAL STANDARDS
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`A petitioner bears the burden of “mak[ing] a sufficient showing that [a
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`purported prior art reference] is a printed publication, i.e., that it was publicly
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`accessible.” Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper 11 at
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`19-20 (Dec. 24, 2014) (citing In re Lister, 583 F.3d 1307, 1317) (Fed. Cir. 2009);
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`see also Nestle Oil Oyj v. Reg Synthetic Fuels, LLC, IPR2013-00578, Paper 54 at
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`15 (March 12, 2015). This burden must be satisfied in the petition. See, e.g.,
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`Symantec Corp. v. Trustees of Columbia University, IPR2015-00370, Paper 13 at 9
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`(June 17, 2015) (denying institution for failure of proof on publication date in the
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`petition); see also Medtronic, Inc. v. Endotach LLC, IPR2014-00695, Paper 18 at 9
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`(Sept. 25, 2014) (noting that petitioner’s “burden to make its case” requires that the
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`petitioner anticipate reasonable positions a patent owner may take in response and
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`“adequately address such positions in its Petition as needed”).
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`A party seeking additional discovery has the burden of demonstrating that
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`the additional discovery is “necessary in the interest of justice.” 37 C.F.R.
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`§ 42.51(b)(2); Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
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`Paper 26 at 6 (Mar. 5, 2013). “That is significantly different from the scope of
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`discovery generally available under the Federal Rules of Civil Procedure.”
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`Garmin, IPR2012-00001, Paper 26 at 5.
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`IV. THE REQUESTED DISCOVERY IS AN UNTIMELY ATTEMPT TO
`CURE A DEFECT IN THE PETITION
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`Petitioner bears the burden of establishing in its petition the asserted case for
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`unpatentability, but its motion for discovery makes clear that it failed to do so.
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`Petitioner’s contention that the Divsalar Reference constitutes a 102(b) printed
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`publication has been flawed from the start, a point repeatedly raised by Caltech.
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`The petition asserts only that the Divsalar Reference was “published by at least
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`April 30, 1999,” citing without explanation to Exhibit 1064. See Paper 1 (“Pet.”) p.
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`2. Aside from its citation to Exhibit 1064, the petition makes no mention of the
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`basis for Petitioner’s belief that the Divsalar Reference constitutes 102(b) prior art.
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`Of specific relevance to Petitioner’s present motion, the petition does not discuss
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`the authors of the Divsalar reference, the Allerton Conference, or any date earlier
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`than April 30, 1999.
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`Exhibit 1064 is an unsupported declaration submitted by Robin
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`Fradenburgh, identified as a librarian at the University of Texas, Austin. Ex. 1064
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`p. 1. As Caltech has explained, the Fradenburgh declaration is insufficient to
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`support Petitioner’s contention that the Divsalar Reference constitutes a prior art
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`printed publication under 102(b). See Preliminary Response (Paper 13, “Prelim.
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`Resp.”) pp. 19-23; PO Response pp. 24-27. For example, Ms. Fradenburgh’s
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`declaration refers to an “acquisition record” identified as Exhibit A, but no Exhibit
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`A was attached to the declaration. Ex. 1064 p. 1. Ms. Fradenburgh’s declaration
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`refers to a “true and accurate copy of the corresponding portions of the reference in
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`the Library,” identified as Exhibit B to her declaration, yet no Exhibit B was
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`attached to the declaration. Id. at 2. Moreover, the declaration identifies the date
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`that the Divsalar Reference was acquired by the library as “EXACT DATE
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`UNKNOWN_(CHECK IN RECORD ARCHIVED).” Id. at 1.
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`Following institution, Caltech requested to cross examine Ms. Fradenburgh
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`to explore these issues. As described in Caltech’s response, and in violation of the
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`Board’s rules addressing testimony of witnesses, Petitioner refused to provide its
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`witness for cross-examination. See PO Resp. pp. 27-29; Exs. 2025-2028; 37 C.F.R.
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`42.51(b)(1)(ii). Rather, Petitioner informed Caltech that Ms. Fradenburgh would
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`not appear “willingly” and Caltech would have to seek a subpoena to compel Ms.
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`Fradenburgh’s cross-examination on its own accord. Exs. 2026, 2027.1
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`Petitioner bears the burden of establishing in its petition the asserted case for
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`unpatentability, including establishing that the Divsalar Reference qualifies as
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`prior art and is within the scope of review as set forth by statute. The petition fails
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`to establish a critical component of its case-in-chief, and it is neither permissible
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`under the Board’s rules nor in the interests of justice for Petitioner to seek
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`prejudicially late discovery to cure a defect in its petition.
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`1 Petitioner has never explained why Ms. Fradenburgh was willing to appear for
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`direct testimony but unwilling to appear for cross-examination. Nor has Petitioner
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`explained why this information was not communicated to the Board and Caltech
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`earlier, such that it could be taken into consideration prior to institution. See also,
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`Exs. 2025-2028.
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`V.
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`PETITIONER’S FAILURE TO PROVIDE ITS WITNESS
`UNDERMINES ITS ASSERTION THAT THE REQUESTED
`DISCOVERY IS IN THE INTEREST OF JUSTICE
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`As explained above and in Caltech’s preliminary and post-institution
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`responses, the Fradenburgh declaration—the sole evidence cited in the petition to
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`support the assertion that the Divsalar Reference qualifies as 102(b) prior art—is
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`flawed and fails to demonstrate the Divsalar Reference’s public availability by
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`April 30, 1999 as Petitioner asserts. Caltech put Petitioner on notice that it planned
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`to challenge the sufficiency of this evidence in its preliminary response. Prelim.
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`Resp. pp. 19-23. Nevertheless, Petitioner failed to provide Ms. Fradenburgh for a
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`cross-examination deposition and attempted to push its burden to do so onto
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`Caltech. PO Resp. pp. 27-29; Exs. 2025-2028.
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`Petitioner’s failure to provide Ms. Fradenburgh for cross-examination was a
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`clear violation of the rules governing this proceeding. See 37 C.F.R. 42.51(b)(1)(ii)
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`(authorizing cross-examination of affidavit testimony as routine discovery). The
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`Office Trial Practice Guide plainly states that the burden of producing a witness for
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`deposition falls on the party presenting the testimony, explaining that “a party
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`presenting a witness’s testimony by affidavit should arrange to make the witness
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`available for cross examination” and that “[t]his applies to . . . non-party
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`witnesses.” 77 Fed. Reg. 48761.
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`During the teleconference authorizing Petitioner’s motion, Petitioner
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`admitted that it did not provide its declarant for cross-examination, but could have
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`produced the witness if it chose to do so:
`Could we have subpoenaed [Ms. Fradenburgh] or requested leave
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`from the Board to subpoena her? I think the answer is yes, but, again,
`we already have her direct testimony by declaration, which does
`establish a publication date of this document that’s, you know, well
`within the critical time period.
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`Ex. 2030 at 18:17-22. Thus, Petitioner’s position is that it was capable of
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`producing Ms. Fradenburgh for cross-examination, but did not do so because it
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`saw no benefit to Petitioner. In Petitioner’s view, if Caltech wanted to cross-
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`examine Ms. Fradenburgh, compelling her to appear was Caltech’s problem. Id.
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`at 19:1-7.
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`First, Petitioner’s position that Caltech bore any burden to compel Ms.
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`Fradenburgh’s testimony is incorrect. As discussed above, Petitioner’s failure to
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`provide Ms. Fradenburgh for cross-examination is a clear violation of Board rules
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`and guidance. See 37 C.F.R. 42.51(b)(1)(ii); see also 77 Fed. Reg. 48761. A recent
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`Board decision speaks directly to this issue, holding that the party presenting the
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`witness’s direct testimony is obligated to make the witness available, including if
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`necessary seeking leave to issue a subpoena under 35 U.S.C. § 24. FLIR Systems,
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`Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 113 pp. 14-16 (September 3,
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`2015) (excluding sua sponte the testimony of declarant after cross-examination
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`was requested and party presenting the witness’s direct testimony refused).
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`Second, presumably Petitioner made a tactical decision when it failed to
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`make available the witness relied upon in the petition for alleged substantiation of
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`Petitioner’s fundamental assertion that the Divsalar Reference qualifies as 102(b)
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`prior art. As quoted above, Petitioner further clarified that it could have produced
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`Ms. Fradenburgh for cross-examination, but chose not to do so. Thus, according to
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`Petitioner’s own representations, it already possessed the ability to generate, by
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`some other means, information equivalent to what it now seeks by additional
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`discovery. See Garmin, IPR2012-00001, Paper 26 at 6. Petitioner’s choice not to
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`exercise that option, however, does not demonstrate that it is in the interest of
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`justice to burden Caltech with additional discovery.
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`In view of Petitioner’s deliberate refusal to comply with the rules governing
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`this proceeding, or to pursue other means available to Petitioner, it cannot be in the
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`interest of justice to permit exploratory discovery at this stage, nearly eight months
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`after Caltech first put Petitioner on notice that its evidence was insufficient, in
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`order to place evidence into the record for the first time in the reply.
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`VI. PETITIONER’S REQUEST FOR “ROUTINE DISCOVERY” IS
`MISPLACED
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`Petitioner is wrong about this being “routine discovery” because “routine
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`discovery . . . is narrowly directed to specific information known to the responding
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`party to be inconsistent with a position advanced by that party in the proceeding,
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`and not broadly directed to any subject area in general within which the requesting
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`party hopes to discover such inconsistent information.” Garmin, IPR2012-00001,
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`Paper 26 at 3-4.
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`Here, Petitioner proposes exactly the kind of speculative requests directed to
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`a subject area, rather than specific information, that the Board denied in Garmin.
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`See id. at 4 (“Cuozzo casts a wide net directed to broad classes of information
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`which may not include anything inconsistent with position taken by Garmin.”).
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`Petitioner’s entire basis for arguing that “Dr. McEliece is likely to have in his
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`possession documents that would be inconsistent with Patent Owner’s argument”
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`is that (1) Dr. McEliece’s CV lists the Divsalar Reference as a publication, and (2)
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`the Divsalar Reference was identified by the inventors during prosecution of the
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`’781 patent in an IDS allegedly listing September 1998 as the date of publication.
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`Paper 25 pp. 4-5. Neither one of these points, alone or taken together, establishes
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`the existence of specific information inconsistent with a position taken by Caltech.
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`In its response, Caltech discussed evidence, including Petitioner exhibits,
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`demonstrating that the final versions of Allerton Conference papers are not due
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`from the authors until after the conference takes place, and therefore publication of
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`the Proceedings takes place sometime after that. PO Response pp. 21-24 (citing Ex.
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`1060 ¶ 21, Ex. 1010 ¶ 29, Ex. 2022, Ex. 2023). That the 1998 Allerton Conference
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`took place in September 1998 is not in dispute, and Caltech’s objection to reliance
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`on the Divsalar Reference as prior art is not based on whether the article actually
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`appeared in the Proceedings (which Petitioner admits would have published
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`sometime after the conference). Rather, the dispute is whether Petitioner met its
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`burden of proving that the Proceedings were publicly available prior to the 102(b)
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`prior art date of May 18, 1999 as it has asserted.
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`With respect to Dr. McEliece’s CV, listing the Divsalar Reference as a
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`“publication” does nothing to prove the article qualifies as a 102(b) reference for
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`this proceeding. The CV entry merely indicates that the article was included in the
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`Proceedings of the 1998 Allerton Conference at pp. 201-210, facts which are in no
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`way inconsistent with the positions advanced by Caltech in this proceeding. Dr.
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`McEliece’s CV does not support Petitioner’s argument those Proceedings were
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`published and publicly available at a date sufficient to qualify as 102(b) prior art,
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`as it is completely silent as to any date of publication.
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`Likewise, inclusion of the Divsalar Reference in an IDS listing a date of
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`“September 1998” does not prove, or even support, publication by a certain date.
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`“September 1998” merely refers to the date that the 1998 Allerton Conference took
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`place, not to any subsequent date of publication. See Ex. 1006 p. 4. Moreover,
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`“submission of a reference on an IDS does not constitute an admission that a cited
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`reference falls within the legal definition of prior art.” L-3 Commc’n Holdings, Inc.
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`and Premier Util. Servs., LLC v. Power Survey, LLC, IPR2014-00832, Paper 9 at
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`16-17 (PTAB Nov. 14, 2014) (finding that date listed in an IDS “does not
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`establish, by itself, with a reasonable likelihood, that this was the date that the
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`document was ‘publicly accessible’”); see also ResQNet.com, Inc. v . Lansa, Inc.,
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`594 F.3d 860, 866 (Fed. Cir. 2010) (recognizing that “mere submission of an IDS
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`. . . does not constitute the patent applicant’s admission that any reference in the
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`IDS is material prior art” and refusing to consider document a 102(b) reference
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`where “[n]o other evidence of publication or public availability was provided”).
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`Petitioner’s attempt to cast its discovery request as “routine” should be
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`rejected, as Petitioner is unable to show the existence—or even a likelihood of
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`existence—of any specific information inconsistent with a position taken by
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`Caltech. Petitioner’s request is an attempt to shift its burden to Caltech.
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`VII. PETITIONER’S REQUESTS ARE SPECULATIVE, BURDENSOME
`AND DOES NOT SATISFY THE GARMIN FACTORS
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`In addition to the issues discussed above, the requests are speculative,
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`unduly burdensome and do not satisfy additional Garmin factors. For example,
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`Petitioner cannot show that its requests are based on anything more than a mere
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`possibility and allegation that they will lead to information supporting Petitioner’s
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`publication allegation, and the requests are overly burdensome to Caltech, Dr.
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`Divsalar, and Dr. McEliece.
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`A. The requests are unnecessary and not supported by more than a
`mere possibility and by mere allegation
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`First, Petitioner fails to establish its requested discovery is necessary and
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`could not be generated by an equivalent means. Petitioner’s repeated contention
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`that it has already obtained evidence “establishing that the Divsalar Reference was
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`published and publicly available before the critical date” and that the requested
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`discovery is merely sought to “confirm that the Divsalar Reference is available as
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`prior art” undermines any argument that this discovery is required, let alone would
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`be useful, as required by the first Garmin factor. If, as Petitioner asserts, the
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`petition included sufficient evidence to establish the Divsalar Reference as 102(b)
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`prior art, the discovery requests are unnecessary and would not produce useful
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`information. See Garmin, IPR2012-00001, Paper 26 p. 7 (“‘useful’ means
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`favorable in substantive value to a contention of the party moving for discovery . . .
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`in contrast to ‘relevant’ and ‘admissible.’”). Moreover, as set forth above,
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`Petitioner could have continued its reliance on Ms. Fradenburgh’s testimony as
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`“other means,” including producing her for cross-examination.
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`Second, Petitioner’s requests are based entirely on speculation: Petitioner
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`has not shown that its discovery requests are based on anything more than a mere
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`possibility that they will yield relevant information. As with the requested
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`“Routine Discovery,” Petitioner’s sole support for arguing that its requests satisfy
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`the first Garmin factor is that Dr. Divsalar and Dr. McEliece list the Divsalar
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`Reference as a publication on their CVs and that the Divsalar Reference was listed
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`on an IDS. Motion pp. 6-7. As explained above, these arguments fail to indicate
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`the likely existence of information supporting Petitioner’s prior art contention. To
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`the extent that the CVs and IDS list dates associated with the Divsalar Reference,
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`they are the dates the Allerton Conference took place. As Caltech explained in its
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`response, the evidence (including testimony by Petitioner’s witnesses) shows that
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`the Divsalar Reference was not published at the time of the Conference. PO Resp.
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`pp. 21-24. The listing of the conference date on the conference proceedings is
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`merely an artifact of the Allerton process, where papers are submitted after the
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`conference and published some after that.
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`Petitioner’s requests are unnecessary and based on a mere hope that they
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`will yield useful information. This does not satisfy the first Garmin factor.
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`B.
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`The requests are unduly burdensome
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`The requests are unduly burdensome for numerous reasons, not the least of
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`which is Petitioner’s attempt to shift the burden of proving the Divsalar Reference
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`qualifies as a printed publication onto Caltech. As discussed above, Petitioner’s
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`failure to satisfy this burden itself when preparing the petition as well as its
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`subsequent disregard of its obligation to make the relevant witness available for
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`cross-examination demonstrates that the requests are not in the interest of justice.
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`Caltech should not be forced to bear the burden of discovery at this stage.
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`In addition, as Petitioner concedes in its motion, Petitioner has already taken
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`Dr. Divsalar’s deposition twice in the related district court litigation. Motion pp. 8-
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`9. Both of those depositions took place after Petitioner’s search for evidence,
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`which presumably occurred prior to filing the petition. In fact, as Petitioner admits
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`in the motion, the second deposition took place after Caltech filed its preliminary
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`response putting Petitioner on notice of the deficiencies in its evidence. Id. at 9 n.4.
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`That Dr. Divsalar was questioned in his role as an expert for the second deposition
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`is irrelevant. Petitioner has already had multiple discovery opportunities.
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`In addition, Dr. McEliece has been a professor in emeritus status at Caltech
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`for eight years and is not a current employee. Moreover, Hughes has already
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`acknowledged that there are issues regarding Dr. McEliece’s health. Ex. 2030 at
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`14:1-6. Subjecting Dr. McEliece to discovery is therefore unduly burdensome.
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`Further, the requests themselves are overbroad and unduly burdensome. For
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`example, the definition of “Divsalar Reference” is not limited to the article
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`included in the Proceedings of the 1998 Allerton Conference and extends to any
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`“document” bearing the title “Coding Theorems for ‘Turbo-Like’ Codes’ by
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`Dariush Divsalar, Hui Jin, and Robert McEliece. Paper 25 p. 3. Based on this
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`definition it appears Petitioner is attempting to expand its prior art printed
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`publication assertion beyond the document submitted as Exhibit 1011 and casting a
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`net for anything else that might turn up. In addition, Document Request 1 seeks
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`information relating to the submission of the Divsalar Reference for publication,
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`which is irrelevant to establishing when the article was actually published.
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`The discovery requests are unduly burdensome on multiple fronts. It cannot
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`be in the interest of justice to subject Caltech and the proposed witnesses to a
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`fishing expedition designed to compensate for Petitioner’s failure to meet its
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`evidentiary burden in the petition and to comply with the Board’s discovery rules.
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`VIII. PETITIONER’S DISCOVERY REQUESTS ILLUSTRATE ITS
`MISAPPREHENSION OF THE UNDERLYING LEGAL ISSUE
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`The underlying legal issue is whether the Divsalar Reference was a 102(b)
`
`printed publication available as asserted. The touchstone of the analysis is public
`
`availability. See SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed.
`
`Cir. 2008) (requiring “a satisfactory showing that such document has been
`
`disseminated or otherwise made available to the extent that persons interested and
`
`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
`
`locate it”). Yet, Petitioner now argues that information about the public availability
`
`-14-
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`Case IPR2015-00059
`Patent 7,916,781
`
`of the Divsalar Reference (a third-party publication) is uniquely in Caltech’s
`
`hands.
`
`Petitioner conceded during the teleconference authorizing its motion that it
`
`had “exhausted what we think are the other means that are available to us to prove
`
`this up.” Ex. 2030 at 15:9-11. In particular, Petitioner confessed that it had
`
`searched for other librarians to provide testimony as in the Fradenburgh declaration
`
`but was unable to find a single witness to support the petition.. Id. at 15:18-21 (“In
`
`the course of preparing the petition, we did attempt to find other librarians to
`
`provide a declaration voluntarily and were not successful.”).
`
`For the purposes of the discovery requests, Petitioner’s admitted inability to
`
`find any other evidence indicating the Divsalar Reference was published prior to
`
`May, 1999 indicates the discovery is unlikely to yield the fruitful information. For
`
`the purposes of the underlying legal issue – public availability as asserted in the
`
`petition – Petitioner’s arguments here underscore the fact that the petition fails to
`
`establish the Divsalar Reference as a 102(b) printed publication as alleged.
`
`IX. CONCLUSION
`
`For the foregoing reasons Petitioner’s Motion for Discovery should be
`
`-15-
`
`denied.
`
`
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`
`
`Respectfully submitted,
`
`
`Date: September 17, 2015
`
`
`
`
`
`
`/Michael T. Rosato/
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`-16-
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`X. APPENDIX
`EXHIBIT
`NO.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`
`2008
`
`2009
`
`2010
`2011
`
`2012
`
`2013
`
`2014
`
`DESCRIPTION
`
`Aline Roumy et al., Design Methods for Irregular Repeat-
`Accumulate Codes, IEEE Transactions on Information Theory, vol.
`50, Aug. 8, 2004.
`Frank Kienle et al., A Synthesizable IP Core for DVB-S2 LDPC
`Code Decoding, IEEE, 2005.
`Marco Gomes et al., Factorizable Modulo M Parallel Architecture
`for DVB-S2 LDPC Decoding, Proceedings of the 6th Conference on
`Telecommunications, CONFTELE, 2007.
`Motion to Amend, California Institute of Technology v. Hughes
`Communications Inc. et al., No. 2:13-cv-07245-MRP (C.D. Cal.
`Sept. 30, 2014).
`Answer, California Institute of Technology v. Hughes
`Communications Inc. et al., No. 2:13-cv-07245-MRP (C.D. Cal.
`Feb. 10, 2014).
`EchoStar Corporation, Annual Report (Form 10-K) (Feb. 21, 2014).
`EchoStar – Executive Management,
`http://www.echostar.com/Company/Executives.aspx (last visited
`Jan. 9, 2015).
`Cleo Millender-Belmonte, https://www.linkedin.com/pub/cleo-
`millender-belmonte/9/b72/b11 (last visited Jan. 23, 2015).
`DISH Network Corporation, Annual Report (Form 10-K) (Feb. 21,
`2014).
`EchoStar Corporation, Annual Report (Form 10-Q) (Nov. 6, 2014).
`Request for Approval of Substitution or Withdrawal of Counsel,
`California Institute of Technology v. Hughes Communications Inc.
`et al., No. 2:13-cv-07245-MRP (C.D. Cal. Dec. 30, 2014).
`Defendants’ Invalidity Contentions, California Institute of
`Technology v. Hughes Communications, Inc. et al., No. 2:13-cv-
`07245-MRP-JEM (C.D. Cal. May 15, 2014).
`Certified Copy, Reporter’s Transcript of Proceedings, California
`Institute of Technology v. Hughes Communications, Inc., et al., No.
`CV 13-07245 MRP (C.D. Cal. Apr. 7, 2014).
`Defendants’ Preliminary Election of Asserted Prior Art, California
`
`-17-
`
`
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`Case IPR2015-00059
`Patent 7,916,781
`
`EXHIBIT
`NO.
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`
`
`DESCRIPTION
`
`Institute of Technology v. Hughes Communications Inc. et al., No.
`2:13-cv-07245-MRP (C.D. Cal. Jul. 8, 2014).
`
`Email from PTAB to E. Williams, M. Rosato, G. Guy and M.
`Argenti (Feb. 25, 2015).
`Transcript of PTAB Board Meeting, Hughes et al. v. California
`Institute of Technology (Feb. 25, 2015).
`Email from PTAB to M. Rosato, M. Argenti, E. Williams and G.
`Guy (Mar. 25, 2015).
`Attachment from Email from M. Argenti to E. Williams and G.
`Guy (Apr. 2, 2015).
`Email from M. Argenti to E. Williams and G. Guy (Apr. 2, 2015).
`
`Email from M. Rosato to E. Williams and G. Guy (June 11, 2015).
`
`Email from M. Rosato to E. Williams, G. Guy and S. Liquori (June
`12, 2015).
`Fifty-Third Annual Allerton Conference on Communication,
`Control, and Computing – Call for Papers (obtained from
`https://publish.illinois.edu/cslallertonconference/files/2015/04/53rd-
`Allerton-Call-Papers-April-17-2015-AN_MD.pdf).
`“Submit a Paper – Allerton Conference” (obtained from
`http://allerton.csl.illinois.edu/papers/submit-a-paper).
`Declaration of Solomon W. Golomb, Ph.D. in Support of Patent
`Owner’s Response to Inter Partes Review of U.S. Patent No.
`7,916,781.
`Email from M. Rosato to E. Williams and G. Guy (June 12, 2015).
`
`Email from E. Williams to M. Rosato and M. Argenti
`(July 7, 2015).
`Email from E. Williams to M. Rosato, M. Argenti and R. Torczon
`(July 9, 2015).
`Email from M. Rosato to E. Williams, G. Guy and B. Bowling
`(July 9, 2015).
`Curriculum Vitae of Solomon W. Golomb
`
`Transcript of Conference Call, Hughes et al. v. California Institute
`of Technology (Sept. 4, 2015).
`
`
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`Case IPR2015-00059
`Patent 7,916,781
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing Patent Owner’s Opposition to Petitioner’s Motion
`for Discovery and corresponding Exhibit No. 2030 were served on this 17th day of
`September, 2015, on the Petitioner at the correspondence address of the Petitioner
`
`Respectfully submitted,
`
`
`
`/Michael T. Rosato/
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`as follows:
`
`Eliot D. Williams
`G. Hopkins Guy
`BAKER BOTTS LLP
`1001 Page Mill Road
`Palo Alto, CA 94304
`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
`
`
`
`
`
`Date: September 17, 2015
`
`
`
`
`
`-19-
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