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.
`____________________________
`
`IPR2015-00059 (Patent 7,916,781)
`____________________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`
`Patent Owner.
`____________________________
`
`IPR2015-00059 (Patent 7,916,781)
`____________________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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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.
`ARGUMENT ..................................................................................................................... 2
`II.
`A. PATENT OWNER’S CLAIM CONSTRUCTION ARGUMENTS LACK MERIT .. 2
`1. The First Encoding Operation Does Not Require Irregularity ................................ 2
`2. The Second Encoding Operation Does Not Require “Addition of a Previously
`Generated Parity Bit and More Than One Input Bit In Order to Generate a
`Second Parity Bit” ........................................................................................................ 8
`B. DIVSALAR ANTICIPATES CLAIMS 1 AND 2 ......................................................... 12
`1. Divsalar Receives a Block of Data in the Signal to be Encoded............................. 12
`2. Divsalar Fully Discloses the Claimed First Encoding Operation (Linear
`Transformation) ......................................................................................................... 13
`3. Divsalar Fully Discloses The Claimed Second Encoding Operation
`(Accumulation) ........................................................................................................... 13
`C. DIVSALAR IS PRIOR ART TO THE ‘781 PATENT ................................................ 14
`D. PETITIONER PROPERLY NAMED ALL REAL PARTIES IN INTEREST ........ 18
`1. EchoStar is Named as a Real Party In Interest ........................................................ 18
`2. Patent Owner Fails to Show that DISH is a Real Party-in-Interest ....................... 19
`III. CONCLUSION ............................................................................................................... 25
`IV. APPENDIX - UPDATED EXHIBIT LIST ................................................................... 26
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`I.
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`PRELIMINARY STATEMENT
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`Patent Owner effectively concedes that claims 1 and 2 as written are
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`anticipated by Divsalar. Its opposition therefore hinges on selective importation of
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`specification embodiments into the claims in an attempt to distinguish over
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`Divsalar. In particular, Patent Owner first contends that the language “linear
`
`transform operation” in claim 1 does not mean what it says, and instead “must
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`involve irregular repetition and scrambling of bits.” Paper 24 (PO Resp.) at 31.
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`Next, Patent Owner contends that the claim language “accumulation
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`operation” cannot be read literally, but instead “requires a specific type of
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`accumulation operation,” that entails “addition of a previously generated parity bit
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`and more than one input bit in order to generate a second parity bit.” Id. at 40-41,
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`45.
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` Patent Owner says that its constructions are required because the
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`“specification ‘repeatedly and consistently describes’” the claimed invention in
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`these ways. See e.g., id. at 34, 45.
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`As explained below, the specification does not support Patent Owner’s
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`arguments. However, even if the specification were as clear as Patent Owner
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`suggests, it would still be legally improper to use the specification to effectively re-
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`write the claims in an attempt to save them. See Phillips v. AWH Corp., 415 F.3d
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`1303, 1312 (Fed. Cir. 2005) (en banc) (quoting McCarty v. Lehigh Valley R.R. Co.,
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`160 U.S. 110, 116 (1895)) (“if we once begin to include elements not mentioned in
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`1
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`IPR2015-00059
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`the claim, in order to limit such claim . . . , we should never know where to stop.”).
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`Notably, Patent Owner has elected not to propose an amendment to the challenged
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`claims to restrict them in the manner it now proposes. See Microstrategy, Inc. v.
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`Zillow, Inc., IPR2013-00034, Paper No. 42 at *11–15 (PTAB Mar. 27, 2014) (“If
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`Patent Owner chooses not to avail itself of the opportunity to amend, it is
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`reasonable to accord the claims their scope under the broadest reasonable
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`construction . . . .”). Under the ordinary and plain meaning of the claims as
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`drafted, Divsalar anticipates.
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`Patent Owner’s procedural and evidentiary arguments are also without merit.
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`Patent Owner failed to present any evidence rebutting Petitioner’s evidence that
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`Divsalar was published before the effective filing date of the ‘781 Patent.
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`Moreover, the file history and the inventor’s own public admissions establish
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`Divsalar as prior art. Patent Owner also never demonstrated that the petition failed
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`to name the proper real parties-in-interest. EchoStar was identified in the petition
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`in the manner required by published PTO guidance. As to DISH, there is no
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`evidence that DISH had any control, input, or even an interest in this proceeding.
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`II. ARGUMENT
`A.
`PATENT OWNER’S CLAIM CONSTRUCTION ARGUMENTS
`LACK MERIT
`1.
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`The First Encoding Operation Does Not Require
`Irregularity
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`Patent Owner argues that the claim language “first encoding operation being
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`2
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`a linear transform operation that generates L transformed bits” is “not so broad as
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`to encompass any linear transformation.” Paper 24 at 31 (emphasis in original).
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`Instead, Patent Owner argues, this operation “must involve irregular repetition and
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`scrambling of bits.” Id. This is purportedly “an essential aspect of the invention”
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`described in the patent specification. Id. at 31-40.
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`Patent Owner’s argument relies on the following two-step syllogism: (1) the
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`claimed first encoding operation corresponds to the “outer coder discussed
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`throughout the specification” (id. at 32 (citing Ex. 2024 ¶ 21); and (2) the “outer
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`coder must include irregular repetition of bits” (Paper 24 at 32 (citing Ex. 2024 ¶
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`22)). This is an improper attempt to redraft the claims by importing limitations
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`from the specification. As the Federal Circuit sitting en banc has cautioned,
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`“although the specification often describes very specific embodiments of the
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`invention, we have repeatedly warned against confining the claims to those
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`embodiments.” Phillips v. AWH Corp., 415 F.3d at 1323. See also Kara
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`Technology Inc. v. Stamps. com Inc., 582 F.3d 1341, 1347-48 (Fed. Cir. 2009)
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`(“The claims, not specification embodiments, define the scope of patent protection.
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`The patentee is entitled to the full scope of his claims, and we will not limit him to
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`his preferred embodiment or import a limitation from the specification.”)
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`(emphasis supplied). Similarly, the Federal Circuit “repeatedly and consistently
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`has recognized that courts may not redraft claims” in the guise of performing claim
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`construction. Chef America, Inc. v. Lamb-Weston, Inc., 358 F. 3d 1371, 1374 (Fed.
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`Cir. 2004) (“[W]e construe the claim as written, not as the patentees wish they had
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`written it.”).
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`As an initial matter, even Patent Owner’s expert (Dr. Golomb) admits that
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`the claim language “linear transformation” has an established meaning to persons
`
`skilled in the art, which does not require irregular repetition or scrambling of bits:
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`Q. Now, in general, if you were to talk about the linear
`transformation such as the one I just described to you, does that
`require irregular repetition of the k input bits?
`A.
`In the Abstract, you know, if you ask, in general, does a
`linear transformation require anything else, the answer would be no.
`Ex. 1073 (Golomb Dep. Tr.) at 27:14-29:21. Accord Ex. 1074 (Pfister Reply
`
`Decl.) ¶¶ 11-12.
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`This ends the inquiry, as even under the standard for claim construction used
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`in the district courts, Patent Owner’s arguments fail. The claim language the
`
`inventors elected to use (“linear transformation”) has an ordinary meaning to
`
`persons skilled in the art, as the Board has properly found. Paper 18 (Inst. Dec.) at
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`9-10. The additional limitations which Patent Owner now wishes to place on the
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`claim lack support in the claim language and should be rejected. This is especially
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`true in this forum, where the broadest reasonable interpretation standard is used.
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`See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1282
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`4
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`(Fed. Cir. 2015) (holding broadest reasonable interpretation standard “was properly
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`adopted by PTO regulation”).
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`Patent Owner’s construction suffers from several additional defects as well.
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`First, Patent Owner provides no rationale for importing the limitation from the
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`specification that the outer coder perform irregular repetition, but not the other
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`characteristics of the described outer coder, such as the outer coder’s particular
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`parameters shown in Table 1. (Ex. 1005 at 6:40-7:4). Patent Owner’s expert
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`contends that the claim language “first encoding operation” limits the claim to the
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`“outer coder” in the specification. Ex. 1073 (Golomb Dep. Tr.) at 57:2-16; Ex.
`
`2024 ¶ 21 (“a person of ordinary skill in the art would understand that that ‘first
`
`encoding operation …’ recited in the claim refers to the ‘outer coder’”). However,
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`he was unwilling to concede that the claim was limited to the particular outer coder
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`in the specification; instead, he contended, there is “a lot of freedom in the
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`specifics of the outer coder.” Ex. 1073 at 56:24-57:24. This arbitrary manner of
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`selectively choosing some, but not all of the specification embodiments to restrict
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`the claim language is precisely the type of error that the Supreme Court long ago
`
`cautioned against. McCarty v. Lehigh Valley R.R. Co., 160 U.S. 110, 116 (1895))
`
`(“The difficulty is that if we once begin to include elements not mentioned in the
`
`claim in order to limit such claim and avoid a defense of anticipation, we should
`
`never know where to stop”).
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`Second, while the Patent Owner makes much of the fact that the
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`specification purportedly refers to the invention as an Irregular Repeat and
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`Accumulate (“IRA”) code (Paper 24 at 34), Patent Owner ignores the portion of
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`the specification where the inventors expressly defined IRA to encompass regular
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`repeat and accumulate codes. See, e.g., Ex. 1005 at 4:46-47. (“regular repeat and
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`accumulate (RA) codes can be considered nonsystematic IRA codes…”). Patent
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`Owner’s expert conceded that this portion of the specification conveys the idea that
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`“regular repetition is a degenerate case of irregular repetition.” (Ex. 1073 at 54:18-
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`55:11). Thus, the specification establishes that the inventors intended to
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`encompass regular repetition in their claims, as a class of irregular repetition. Ex.
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`1074 (Pfister Reply Decl.) ¶¶ 17-18.
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`Third, Patent Owner ignores the related patents in the priority chain of the
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`‘781 Patent, which reveal that the inventors knew how to claim irregularity when
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`that was intended. For instance, the parent ‘032 Patent included the limitation
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`“randomly chosen irregular repeats of the message bits” in claim 1. Ex. 1003 at
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`8:16-17 (emphasis supplied). Similarly, the grand-parent ‘710 Patent claimed a
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`“first coder operative to repeat said stream of bits irregularly and scramble the
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`repeated bits.” Ex. 1001 at 8:2-4 (emphasis supplied). The inventors understood
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`how to claim irregularity, and could have done so. They did not. By not including
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`that language in claim 1, the inventors showed an intent to claim broadly. Ex.
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`6
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`1074 (Pfister Reply Decl.) ¶¶ 13-14. Cf. Kara Tech., 582 F.3d at 1347 (holding
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`claims not limited to using a key, because “when the inventor wanted to restrict the
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`claims to require the use of a key, he did so explicitly”).
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`Fourth, Patent Owner’s argument ignores the file history and the doctrine of
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`claim differentiation. Claim 9, which depends from claim 6 (and indirectly from
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`claim 1), includes the limitation that information bits appear in a variable number
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`of subsets that are exclusively-OR summed when generating the transformed bits.
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`Ex. 1005 at 7:43-63. A person of ordinary skill in the art would understand this to
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`require irregularity. Ex. 1074 ¶ 16. Indeed, as originally drafted, this claim stated
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`that the “number of subsets in which the information bits appear is irregular.” Ex.
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`1006 at 24. After the examiner objected to this claim because “it is not clear what
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`constitutes the irregularity” (Ex. 1006 at 60), the inventors amended to replace the
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`word “irregular” with the current language of claim 9. Ex. 1006 at 82, 86.1 If, as
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`Patent Owner contends, claim 1 already included the requirement of irregular
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`repetition, claim 9 would be superfluous. Ex. 1074 ¶ 15. This confirms that claim
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`1 does not include a requirement of irregularity. Phillips, 415 F.3d at 1314-15
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`(“[T]he presence of a dependent claim that adds a particular limitation gives rise to
`
`a presumption that the limitation in question is not present in the independent
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`1 Patent Owner’s expert did not review or consider the file history in reaching his
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`opinions about the meaning of the claim terms. Ex. 1073 at 13:6-13:20.
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`claim.”).
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`Finally, Patent Owner’s proposal that the claim be limited to “irregular
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`repetition of input bits” reintroduces the issue of claim indefiniteness raised during
`
`ex parte prosecution. See Ex. 1006 at 60. Patent Owner’s distinguished expert
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`struggled to define the contours of irregular repetition during cross examination.
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`Ex. 1073 at 31:20-36:19. He was shown two linear transformation examples (Ex.
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`1200) and asked whether either or both would satisfy Patent Owner’s proposed
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`claim construction. While admitting that both examples were clearly “linear
`
`transformation operations,” he had difficulty determining whether they satisfied
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`the claim under the Patent Owner’s proposed construction. Id. at 34:21-35:2.
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`After reviewing the specification, he would not “give a clear opinion on example
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`(b)”. Id. 32:10-33:6; 36:11-19. He later concluded that example (b) was not
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`“irregular” before reversing course. Cf. id. at 37:6-10 with 50:2-9.
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`Accordingly, Patent Owner’s proposed construction of the “first encoding
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`operation” element should be rejected.
`
`2.
`
`The Second Encoding Operation Does Not Require
`“Addition of a Previously Generated Parity Bit and More
`Than One Input Bit In Order to Generate a Second Parity
`Bit”
`
`As with the first limitation of claim 1, Patent Owner again attempts to
`
`narrow the written claim language, this time by restricting it to “a specific type of
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`accumulation operation.” Paper 24 at 40-41. According to Patent Owner, “the
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`specific accumulator design the specification discloses is a key element of the
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`invention.” Id. at 41. Once again, however, Patent Owner’s argument runs afoul
`
`of the basic rule against importing specification embodiments to limit the claims.
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`Kara Tech. Inc., 582 F.3d at 1348 (“The patentee is entitled to the full scope of his
`
`claims, and we will not limit him to his preferred embodiment or import a
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`limitation from the specification into the claims.”).
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`Even if it were appropriate to limit claim language to embodiments in the
`
`specification, Patent Owner’s proposed construction should be rejected because it
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`is starkly inconsistent with the description of the invention in the specification. By
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`way of background, Patent Owner and its expert contend that the “inner coder”
`
`described in the specification “corresponds to the ‘second encoding operation’” of
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`the claim. Paper 24 at 41; Ex. 2024 (Golomb Decl.) ¶ 37. Thus, Patent Owner
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`argues that the claim should be limited to the inner coder embodiment of the
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`specification, which purportedly requires “addition of a previously generated parity
`
`bit and more than one input bit in order to generate a second parity bit.” Paper 24
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`at 45; Ex. 2024 (Golomb Decl.) ¶ 47.
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`However, Patent Owner’s construction excludes the accumulator “inner
`
`coder” embodiment described in the specification, as even Patent Owner’s expert
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`admits. The very first embodiment of the “inner coder” described in the
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`specification is defined as follows:
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`Ex. 1005 at 3:3-23. This embodiment (which is identical to the inner coder
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`described in the Divsalar reference (cf. Ex. 1011 at 7)), would be excluded under
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`Patent Owner’s proposed construction. Ex. 1073 (Golomb Dep. Tr.) at 74:6-75:25
`
`(“it doesn’t meet the claim language for this patent”); Ex. 1074 ¶¶ 20-24. This
`
`alone
`
`is enough
`
`to reject Patent Owner’s proposal. Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)(noting that a claim
`
`construction that excludes a preferred embodiment “is rarely, if ever, correct”).
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`Moreover, Patent Owner’s argument is based on a flawed understanding of
`
`the specification. Patent Owner makes much of an “annotated” version of Figure 3
`
`that appears in Dr. Golomb’s declaration. E.g. Paper 24 at 42; Ex. 2024 ¶ 40.
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`According to Patent Owner, the dotted line annotations show the claimed
`
`accumulation operation. Dr. Golomb’s annotations show an encoder with a
`
`characteristic rate equal to ‘a’. Paper 24 at 43-45; Ex. 1073 (Golomb Dep. Tr.) at
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`74:6-75:25; Ex. 1074 ¶ 25. But the parameter ‘a’ in the patent is always a number
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`greater than one. Ex. 2024 (Golomb Decl.) ¶¶ 45-46, 61 (“Not only does the
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`specification state that higher values of ‘a’ are preferable to lower values, but
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`Table 1 does not even present a=1 as an option”; “a=4, the best code;” “’a’ is
`
`greater than one”). The problem for Patent Owner is that the inner coder is
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`consistently described in the patent specification as having rate ‘1’. Ex. 1005 at
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`2:7-8; Ex. 1073 at 70:3-9. Specifically, the inner coder can have a rate that is
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`“close to 1” and “more preferably within 1% of 1”. Ex. 1005, 2:65-3:2. Nothing
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`suggests the rate should exceed 1, and certainly not by 400%. See id.
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`Accordingly, the annotations proposed by Dr. Golomb are flawed. Instead, the
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`inner coder of the specification is better understood by the following annotations:
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`Ex. 1074 (Pfister Reply Decl) ¶ 26.
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`
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`These annotations show a rate-1 accumulator, exactly as described in the
`
`patent specification. Ex. 1074 ¶ 27. Moreover, the accumulator shown in these
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`annotations does not “require addition of a previously generated parity bit and
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`more than one input bit in order to generate a second parity bit,” as Patent Owner’s
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`construction of the accumulation operation would require. Instead, the annotated
`
`accumulator simply accumulates the bits output by the first encoding operation,
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`exactly as recited in the claim, and described by the formulas appearing in column
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`3 of the Patent. Ex. 1074 ¶ 23; Ex. 1005 3:7-23.
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`Accordingly, Patent Owner’s construction of the second encoding operation
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`should be rejected.
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`B. DIVSALAR ANTICIPATES CLAIMS 1 AND 2
`1.
`Divsalar Receives a Block of Data in the
`Signal to be Encoded
`
`Patent Owner argues that Dr. Pfister “modifies the requirement of the claim,
`
`changing it from receiving a ‘block of data in the signal to be encoded” to
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`obtaining a ‘block of data from a signal to be encoded.” Paper 24 at 46. To the
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`contrary, Dr. Pfister recites the proper claim language and explains how Divsalar
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`discloses this element. Ex. 1010 ¶¶ 141-43. He further explains that it is “not
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`possible to perform the encoding and decoding methods of Divsalar without first
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`obtaining the block of data in the signal to be encoded.” Id. ¶ 143 (emphasis
`
`supplied). Patent Owner provides no evidence or argument to the contrary. Thus,
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`Dr. Pfister’s testimony on this point remains unrebutted. Moreover, the petition
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`itself maps the claim language onto Divsalar’s disclosures (i.e. Divsalar’s
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`“information block of length N”). Paper 4 (Pet.) at 13-14. Accordingly, this
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`element is present in Divsalar.
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`2.
`
`Divsalar Fully Discloses the Claimed First Encoding
`Operation (Linear Transformation)
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`As to the claimed “first encoding operation,” Patent Owner’s argument is
`
`premised on its baseless assumption that this claim requires irregularity. E.g.
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`Paper 24 at 50 (“Divsalar discloses only regular repetition and not irregular
`
`repetition.”). Patent Owner provides no argument that Divsalar fails to disclose
`
`this element under the correct construction of the claim adopted by the Board.
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`As explained previously, Patent Owner’s claim construction position is
`
`flawed. Nothing in the challenged claims requires irregular repetition. For this
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`reason, Patent Owner’s arguments at to this element lack merit.
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`3.
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`Divsalar Fully Discloses The Claimed
`Second Encoding Operation (Accumulation)
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`As to the claimed “second encoding operation,” Patent Owner’s argument is
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`again premised on an incorrect claim construction, as explained above. Nothing in
`
`the claim requires “the addition of multiple input bits to a previously calculated
`
`sum in the steps of its accumulation operation.” Cf. Paper 24 at 52. Instead, the
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`claim merely requires an accumulation performed on the output of the first
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`encoding operation. Ex. 1005 at 7:32-38.
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`Moreover, the preferred embodiment of the claimed “inner coder”
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`corresponds exactly with the accumulation operation disclosed in Divsalar.
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`Indeed, the language used to describe the preferred “inner coder” accumulator of
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`the ‘781 Patent bears striking similarity to Divsalar:
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`‘781 Patent (Ex. 1005), Col. 3:5-23
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`
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`Divsalar (Ex. 1011), p. 7.
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`
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`Accordingly, Divsalar discloses this element.
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`C. DIVSALAR IS PRIOR ART TO THE ‘781 PATENT
`Divsalar was presented and published in connection with the Allerton
`
`Conference held in September 1998, and was publicly available to interested
`
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`members of the public by at least April 30, 1999. Ex. 1011; Ex. 1064. It was co-
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`authored by Robert McEliece, a co-inventor of this patent. Ex. 1011. Patent
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`Owner presents no evidence to the contrary, instead ignoring the substantial
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`additional evidence in the record establishing the public availability of Divsalar—
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`including the inventors’ own admissions.
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`First, the inventors admitted Divsalar was prior art as of September 1998
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`during prosecution. Ex. 1006 (File History) at 4. And, at least one inventor (Dr.
`
`McEliece) lists the Divsalar reference as a “Publication” in his CV. Ex. 1075 at
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`¶ 228 (available at http://www.systems.caltech.edu/EE/Faculty/rjm/biblio.pdf).
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`Second, the unrebutted evidence shows that Divsalar was published, indexed
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`and available to any member of the interested public as of at least April 30, 1999.
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`Robin Fradenburgh, a University of Texas librarian for over thirty-one years,
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`testified unequivocally that the Library’s records show that the Divsalar “reference
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`was made available to members of the public on 1999-04-30.” Ex. 1064 at ¶¶ 2-3,
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`7. This was corroborated by documentation from the Library’s files. Id. at 6. The
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`declaration also corroborates Divsalar itself, which states that it was presented at
`
`the “Thirty Sixth Annual Allerton Conference” held Sept. 23-25, 1998. Ex. 1011
`
`at 1-2. Notably, Allerton is “one of the main conferences in the field of
`
`information theory and communications.” Ex. 1010 ¶ 29. Indeed, other evidence
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`of record corroborates the publication of Divsalar before the effective filing date of
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`the ‘781 Patent. For instance, David MacKay published several papers citing to
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`Divsalar prior to the effective filing date of the ‘781 Patent. See, e.g. Ex. 1041 at
`
`2, 11 (citing Divsalar); Ex. 1042 at 1, 3 (citing Divsalar); Ex. 1060 ¶¶ 30-33
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`(MacKay Decl. re. Exs. 1041 & 1042). Moreover, Dr. Pfister’s paper presented at
`
`the next-year’s Allerton Conference in September 1999 cited Divsalar’s paper
`
`from the prior year. Ex. 1057 at 11 (Reference [4]); Ex. 1010 ¶ 32 & n.22.
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`Similarly, a paper published by Viterbi & Viterbi in a 1999 edition of the Annals
`
`of Telecommunications made conspicuous reference to Divsalar, including in the
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`abstract. Ex. 1031 at 1 (Abstract), 5 (Reference [5]); Ex. 1010 ¶ 32 & n.22. Thus,
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`the unrebutted evidence of record shows that Divsalar was publicly available by
`
`the end of the 1998 Allerton conference in September 1998 and was being built
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`upon by persons skilled in the art. See MIT v. AB Fortia, 774 F.2d 1104, 1109
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`(Fed. Cir. 1985) (paper delivered orally at conference to persons skilled in the art,
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`and later distributed to six people constitutes printed publication).
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`Patent Owner carefully avoids making an affirmative statement that Divsalar
`
`is not a prior art publication. Instead, it merely challenges availability of Divsalar
`
`under 35 U.S.C. § 102(b). However, this Trial was instituted on ground 1 of the
`
`petition, which challenges claims 1 and 2 on the basis that each is “anticipated by
`
`Divsalar.” Paper 4 (Pet.) at 3. Patent Owner fails to address why Divsalar would
`
`not be a publication under, for example, § 102(a).
`
`
`
`16
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`
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`IPR2015-00059
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`Finally, Patent Owner’s arguments regarding the UT Librarian should be
`
`rejected. As shown in the emails cited by Patent Owner, Petitioner attempted to
`
`arrange for the deposition of Ms. Fradenburgh as requested by Patent Owner. Ex.
`
`2027 at 1-2. However, Ms. Fradenburgh would not appear without a subpoena. Id.
`
`Since Ms. Fradenburgh and University of Texas Library are third-parties,
`
`Petitioner does not have the unilateral ability to compel their testimony. Id. In
`
`light of the circumstances, Petitioner suggested the proper procedure, as
`
`established by the Board’s order in Marvell Semiconductor, Inc. v. Intellectual
`
`Ventures I LLC (IPR2014-00553, Paper 28 (PTAB April 8, 2015)) would be for
`
`the Patent Owner to simply seek a subpoena to compel the deposition.2 Patent
`
`
`2 Patent Owner’s citation to the Trial Practice Guide for the proposition that
`
`Petitioner has the “burden of producing a witness for deposition” is misplaced.
`
`Paper 24 at 27. That portion of the TPG addresses only the issue of “Witness
`
`Expenses.” 77 Fed. Reg. 48,756, 48,761 (“TPG”) (§ I(F)(1)(b)) (emphasis
`
`supplied). The relevant section of the TPG addressing compelled testimony
`
`appears three paragraphs later and states: “[a] party can request authorization to
`
`compel testimony under 35 U.S.C. § 24.” Id. Because Patent Owner refused to
`
`proceed with the compelled deposition of Ms. Fradenburgh, no expenses were
`
`incurred that would need to be allocated pursuant to TPG § I(F)(1)(b).
`
`
`
`
`
`17
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`
`
`IPR2015-00059
`
`Owner refused, and made no attempt to compel Ms. Fradenburgh’s testimony.
`
`Moreover, Patent Owner has made no showing that such a deposition would have
`
`been helpful to its position, in view of the substantial unrebutted evidence of
`
`record that Divsalar is prior art.
`
`D.
`
`PETITIONER PROPERLY NAMED ALL REAL PARTIES IN
`INTEREST
`
`In the Response, Patent Owner reiterates its unfounded allegations, first
`
`raised in its preliminary response, that Petitioner has not identified each real party-
`
`in-interest (“RPII”). Paper 24 at 2-20. These stale arguments should be rejected.
`
`EchoStar is Named as a Real Party In Interest
`
`1.
`In its Institution Decision, the Board found that EchoStar Corporation and
`
`Hughes Satellite Systems Corporation are real parties-in-interest. Paper 18 at n.1.
`
`Thus, the Board necessarily determined that these non-parties were adequately
`
`named as RPII in the Petition’s “Real Parties-in-Interest” section. As Petitioner
`
`previously explained, EchoStar is named as a RPII in compliance with the PTO’s
`
`published guidance in the Federal Register. Ex. 2016 at 18:7-21 (discussing 69
`
`Fed. Reg. 49,960, 49, 975 (Aug. 12, 2004)). While a petition must “identif[y] all
`
`real parties in interest,” (35 U.S.C. § 312(a)), no magic words are required.
`
`Motorola Mobility LLC v. Intellectual Venture II LLC, IPR2014-00504, Paper 12
`
`at 7-8 (PTAB Sept. 10, 2014) (“35 U.S.C. § 312(a)(2) does not specify the form
`
`and manner of such identification.”). Patent Owner’s arguments to the contrary
`
`
`
`18
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`
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`IPR2015-00059
`
`lack support in the statute or rules and should be rejected.3
`
`2.
`
`Patent Owner Fails to Show that DISH is a Real Party-in-
`Interest
`
`The key to the RPII inquiry is “the relationship between a party and a
`
`[PTAB trial] proceeding; RPI does not describe the relationship between parties.”
`
`Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., IPR2014-01288, Paper 13 at 11
`
`(PTAB Feb. 20, 2015) (emphasis in original). Thus, “the ‘real party-in-interest’
`
`may be the petitioner itself, and/or it may be the party or parties at whose behest
`
`the petition has been filed.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,759 (Aug. 14, 2012) (“TPG”) (emphasis supplied). The question is
`
`whether an unnamed party “funds and directs and controls an IPR” petition or
`
`whether that other party is “litigating through a proxy.” TPG at 48,760 (emphasis
`
`
`3 Medtronic v. Robert Bosch Healthcare (IPR2014-00607, Paper 56 (Mar. 16,
`
`2015)) is easily distinguished. Paper 24 at 6-7. There, the real party-in-interest
`
`section of that petition stated only as follows: “Medtronic, Inc., is the real party-in-
`
`interest for petitioner.” IPR2014-00607, Paper 1 at 3. Unlike Medtronic, the
`
`petition here expressly identified EchoStar. Critically, unlike the present
`
`proceeding, in Medtronic, the undisclosed real party in interest (Cardiocom) had
`
`previously filed its own petitions where it identified itself as the real party in
`
`interest. Medtronic, Paper 56 at 3.
`
`
`
`19
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`
`
`IPR2015-00059
`
`supplied); Aruze Gaming at 12. See also RPX Corporation v. Virnetx Inc.,
`
`IPR2014-00171, Paper 48 at 7 (PTAB June 5, 2014) (stating that petitioner “may
`
`not receive a suggestion [to challenge the patent] from another party . . . and be
`
`compensated by that party for the filing . . . .” (quoting In Re Guan et al. Inter
`
`Partes Reexam., 95/001,045; 2008 WL 10682851 (May 26, 2008))). The Board
`
`generally accepts the Petitioner’s identification of real parties-in-interest at the
`
`time of filing the Petition. See 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012).
`
`RPII and privity “describe distinct concepts with differing effects under the
`
`statute . . . .” Aruze Gaming, at 7. The legislative history of the AIA confirms that
`
`“[p]rivity is essentially a shorthand statement that collateral estoppel is to be
`
`applied in a given case.” See TPG, at 48,759. The factors for determining whether
`
`collateral estoppel should be applied (and therefore establish privity) are recited in
`
`Taylor v. Sturgell, 553 U.S. 880 (2008). Those factors are not sufficient to show
`
`RPII status. This is so because “[t]he notion of ‘privity’ is more expansive,
`
`encompassing parties that do not necessarily need to be identified in the petition as
`
`‘a real party-in-interest.’” TPG, at 48,759. Accordingly, Patent Owner’s argument
`
`directed to mere privity under the Taylor factors is insufficient to show RPII status.
`
`See Wavemarket Inc., IPR2014-00199, Paper 34 at 5 (PTAB Aug. 11, 2014)
`
`(“[S]ince the notion of privity is more expansive than real party-in-interest, Patent
`
`Owner’s evidence is not sufficient . . . .”).
`
`
`
`20
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`
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`IPR2015-00059
`
`Patent Owner fails to show that these petitions were filed at the behest of
`
`DISH, as required to find that DISH is an RPII. Inexplicably, Patent Owner
`
`continues pressing these arguments despite failing to present any evidence of
`
`infringement by any DISH product in the district court litigation. Ex. 1076 (Jezek
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`Decl.) ¶ 11. While DISH was initially named as a party defendant, Patent Owner
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`failed to present any evidence of infringement. Ex. 1071 at 7-8. This complete
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`failure of proof led to entry of summary judgment against Patent Owner,
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`dismissing all claims against DISH’
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