Paper No. ___
`Filed: December 21, 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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`_____________________________
`
`
`
`PATENT OWNER’S COMBINED MOTION TO STRIKE
`AND MOTION TO EXCLUDE
`
`
`Filed: December 21, 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
`
`_____________________________
`
`
`
`PATENT OWNER’S COMBINED MOTION TO STRIKE
`AND MOTION TO EXCLUDE
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`
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`Case IPR2015-00059
`Patent 7,916,781
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
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`PRECISE STATEMENT OF RELIEF REQUESTED ................................. 1
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`STATEMENT OF REASONS FOR RELIEF REQUESTED ...................... 1
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`Statement of Material Facts ............................................................... 1
`A.
`B. Motion to Strike ................................................................................. 2
`1.
`Exhibit 1064 (Fradenburgh Declaration) .................................................. 2
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`New Theory of Unpatentability Relying on Divsalar as § 102(a)
`2.
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`Prior Art .................................................................................................. 6
`3.
`Exhibit 1076 (Jezek Declaration) ............................................................. 9
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`C. Motion to Exclude ........................................................................... 11
`1.
`Exhibits 1001-1004, 1007-1009, 1012, 1013, 1017-1021, 1023,
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`1030, 1032-1036, 1038-1040, 1043-1044, 1046-1056, 1058, 1059,
`1060 (¶¶ 13-29, 34-38 and 40-83), 1061-1063, 1065, and 1066...............11
`Exhibits 1031, 1041, 1042, 1057, and 1060 (¶¶ 30-33) ...........................12
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`2.
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`III. CONCLUSION ......................................................................................... 13
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`IV. APPENDIX ............................................................................................... 14
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`Case IPR2015-00059
`Patent 7,916,781
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`I.
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`PRECISE STATEMENT OF RELIEF REQUESTED
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`The Board authorized (Ex. 2031) Patent Owner (“Caltech”) to include in its
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`motion to exclude a motion to strike Petitioner’s Exhibits 1064 and 1076, and also
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`portions of Petitioner’s Reply to Patent Owner’s Response (Paper 29, “Pet.
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`Reply”), which raise a new theory of unpatentability contending that the Divsalar
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`reference constitutes prior art under § 102(a). 37 C.F.R. § 42.12(a) & (b).
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`Caltech also moves to exclude Petitioner’s Exhibits 1001-1004, 1007-1009,
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`1012, 1013, 1017-1021, 1023, 1030-1036, 1038-1044, 1046-1059, 1060 (¶¶ 13-38
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`and 40-83), 1061-1063, 1065, and 1066 for failing to meet the admissibility
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`requirements of the Federal Rules of Evidence. 37 C.F.R. § 42.64(c).
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`II.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A.
`1.
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`Statement of Material Facts
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`The petition asserts that Divsalar was “published by at least April 30,
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`1999 and available as prior art under 35 U.S.C. 102(b).” Paper 4 (“Pet.”) p. 2.
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`2.
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`The petition cites to Exhibit 1064, the declaration of Robin
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`Fradenburgh, in support of the assertion that Divsalar is available as prior art. Id.
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`3.
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`The petition cites no exhibit beyond Ex. 1064 to support the assertion
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`that Divsalar is prior art. See, generally, Pet.
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`4.
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`The petition does not mention 35 U.S.C. § 102(a), much less assert
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`that Divsalar is prior art under § 102(a). See, generally, Pet.
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`5.
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`The petition does not identify any other alleged publication date for
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`Divsalar beyond the assertion that it was “published by at least April 30, 1999.”
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`See, generally, Pet.
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`6.
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`On June 12, 2015, Caltech requested that Petitioner make Ms.
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`Fradenburgh available for cross-examination. Ex. 2025.
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`7.
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`2026-27.
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`8.
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`Petitioner did not provide Ms. Fradenburgh for cross-examination. Ex.
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`Exhibits 1001-1004, 1007-1009, 1012, 1013, 1017-1021, 1023, 1030,
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`1032-1036, 1038-1040, 1042-1044, 1046-1056, 1059, 1061-1063, 1065, and 1066,
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`and paragraphs 13-29, 34-38 and 40-83 of Exhibit 1060, are not cited in any of
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`Petitioner’s filings to date in this proceeding.
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`B. Motion to Strike
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`
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`1.
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`Exhibit 1064 (Fradenburgh Declaration)
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`Exhibit 1064 is a declaration submitted by Ms. Fradenburgh, identified as a
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`librarian at the University of Texas, Austin. Ex. 1064 p. 1. The exhibit is the sole
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`evidence cited in the petition to support the assertion that Divsalar qualifies as
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`§ 102(b) prior art. Pet. p. 2. Caltech’s preliminary response explained that the
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`Fradenburgh declaration is insufficient to support Petitioner’s contention that
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`Divsalar constitutes a publicly available prior art printed publication under
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`§ 102(b). See Paper 13 (“Prelim. Resp.”) pp. 19-23; PO Resp. (Paper 24) pp. 24-
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`27; PO Opp. to Pet. Mot. for Discovery (Paper 28) pp. 4. Petitioner, however,
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`refused to make Ms. Fradenburgh available for cross-examination, thereby failing
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`to comply with the relevant rules and practice guide governing this proceeding and
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`prejudicing Caltech’s ability to produce a complete record for the Board to form an
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`accurate understanding of the testimony. Hence, the Board should strike her
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`declaration.
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`Caltech’s preliminary response notified Petitioner that Caltech disputes the
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`sufficiency of the Fradenburgh declaration on the public accessibility issue. Prelim.
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`Resp. pp. 19-23. After institution, Caltech asked to cross-examine Ms.
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`Fradenburgh to explore this insufficiency. Caltech emailed Petitioner on June 12,
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`2015 requesting the dates of her availability for cross examination. Ex. 2025.
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`Petitioner did not respond until nearly a month later, when it stated that it could not
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`provide Ms. Fradenburgh and informed Caltech it must seek a subpoena
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`compelling her to appear. Ex. 2026. In response to a follow-up Caltech email
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`inquiring as to the circumstances of her unavailability, Petitioner replied that it had
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`learned “late last week” that she would not appear voluntarily.1 Ex. 2027. Caltech
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`immediately requested that Petitioner take the necessary steps to make Ms.
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`Fradenburgh available for cross-examination or formally withdraw her testimony.
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`Ex. 2028.
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`
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`1 Ms. Fradenburgh’s declaration lacks a statement acknowledging that she may
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`be subject to cross-examination and agreeing to make herself available for the
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`same. Ex. 1064.
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`Rather than withdraw Ms. Fradenburgh’s testimony, Petitioner remained
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`silent on the issue until after Caltech filed its Patent Owner response, in which
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`Caltech again pointed out the numerous flaws in the Fradenburgh declaration as
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`well as Petitioner’s failure to make Ms. Fradenburgh available for cross-
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`examination. PO Response pp. 24-27. Shortly after Caltech’s response, Petitioner
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`sought additional discovery seeking for new proofs that Divsalar might be prior art.
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`See Petitioner’s Motion for Discovery (Paper 25). In doing so, Petitioner
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`acknowledged it could have made Ms. Fradenburgh available for cross-
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`examination, but chose not to do so.
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`During a teleconference with the Board on Petitioner’s discovery request,
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`Petitioner admitted that it could have produced her if it had chosen to do so:
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`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,
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`we already have her direct testimony by declaration, which does
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`establish a publication date of this document that’s, you know, well
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`within the critical time period.
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`Ex. 2030 at 18:17-22. Petitioner’s position is that it was capable of producing Ms.
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`Fradenburgh for cross-examination, but did not do so because it saw no benefit to
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`itself. In Petitioner’s view, if Caltech wanted to cross-examine Ms. Fradenburgh,
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`compelling her to appear was Caltech’s problem. Id. at 19:1-7.
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`Petitioner’s failure to provide Ms. Fradenburgh flouts the rule providing
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`such cross-examination as routine discovery. 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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`Trial Practice Guide states that the burden of producing a witness for cross-
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`examination 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. The burden to provide its own declarant for
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`cross-examination falls entirely on Petitioner, not on Caltech.
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`Under these circumstances, striking the direct testimony is the appropriate
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`sanction. A recent Board decision clearly holds that the party presenting a
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`witness’s direct testimony must make the witness available, including, if necessary,
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`seeking leave for a subpoena under 35 U.S.C. § 24. FLIR Systems, Inc. v. Leak
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`Surveys, Inc., IPR2014-00411, Paper 113 pp. 14-16 (September 3, 2015)
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`(excluding a declaration sua sponte where party presenting the witness’s direct
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`testimony refused cross-examination). Other Board decisions reach similar
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`conclusions. See, e.g., HTC Corp. and HTC America, Inc. v. NFC Tech., LLC,
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`IPR2014-01198, Paper 41 (Nov. 6, 2015) (“To the extent that our Rules governing
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`routine discovery do not cover specifically striking a declaration, where cross-
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`examination is unavailable, we exercise our authority to strike such a declaration
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`under 37 C.F.R. § 42.12(a) and (b).”); John’s Lone Star Dist., Inc. v. Thermolife
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`Int’l., LLC, IPR2014-01201, Paper 31 (“By refusing to make [declarant] available
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`for cross-examination, Petitioner has failed to comply with an applicable rule in
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`this proceeding, entirely to Patent Owner’s detriment. Thus, an appropriate action
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`is to expunge Exhibit 1029. 37 C.F.R. § 42.12(a)(1), (b)(2).”).
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`Whether the witness in question is a party witness or a third-party to the
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`proceeding makes no difference. 77 Fed. Reg. 48761; see also HTC Corp.,
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`IPR2014-001198, Paper 41 pp. 4-5 (“Patent Owner is responsible for the
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`availability of its chosen declarants, regardless whether or not they are employed
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`by Patent Owner.”). Petitioner cannot rely on the fact that it does not control Ms.
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`Fradenburgh to seek benefit from her testimony to gain institution, yet escape
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`procedurally routine cross-examination of that same testimony when deficiencies
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`are noted at trial. The Board should strike Exhibit 1064 in its entirety.
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`
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`2.
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`New Theory of Unpatentability Relying on Divsalar as
`§ 102(a) Prior Art
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`As explained above, Caltech has maintained throughout this proceeding that
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`the record fails to support Petitioner’s contention that Divsalar constitutes § 102(b)
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`prior art. Nevertheless, Petitioner failed to make its sole petition-stage witness on
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`this issue available for cross-examination and instead sought additional discovery
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`to remedy the deficiencies in its petition. Having failed to obtain additional
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`discovery, in its reply, Petitioner now shifts to a new theory and argues for the first
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`time that Divsalar constitutes § 102(a) prior art. The Board should strike this new
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`argument.
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`The petition makes clear that Divsalar is asserted as § 102(b) prior art,
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`stating that the reference was “published by at least April 30, 1999 and available as
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`prior art under 35 U.S.C. § 102(b).” Pet. p. 2. The petition identifies no other
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`alleged date of publication and no other statutory basis for asserting Divsalar as
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`prior art. Caltech, therefore, directed its arguments and proofs to this ground. See
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`PO Resp. pp. 20-27.
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`In its reply, Petitioner argues for the first time that Divsalar is available
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`under § 102(a) rather than § 102(b). Pet. Reply. pp. 14-16. Specifically, Petitioner
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`for the first time cites to four exhibits (Ex. 1031, 1041, 1042, 1057) it contends
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`“corroborate[] the publication of Divsalar before the effective filing date of the
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`‘781 patent.” Id. at 15-16. None of these exhibits, or the corresponding provisions
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`of Dr. McKay’s declaration, were ever cited in the petition. None of these exhibits,
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`or the testimony of Petitioner’s declarant Dr. McKay, comport with Petitioner’s
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`original § 102(b) theory of unpatentability. Each of the exhibits is newly advanced
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`by Petitioner as admittedly post-dating the “April 30, 1999” publication date
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`originally asserted in the petition. See Ex. 1060 (MacKay) ¶ 30 (asserting Ex. 1041
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`was posted to a website on July 16, 1999), ¶ 31 (asserting Ex. 1042 was posted to a
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`website on June 2, 1999); Ex. 1057 (bearing May 11, 2000 stamp); Ex. 1031
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`(stating on its face only “1999” and citing to unknown “Divsalar” reference).
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`Petitioner’s reply at this stage pivots to an entirely new § 102(a) theory of
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`unpatentability, a theory never previously advanced, is untimely and improper.
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`Petitioner never contended Divsalar was § 102(a) art in the petition, and so
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`Caltech has been denied the chance to scrutinize the exhibits specifically, or to
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`explore the new § 102(a) issue generally, to pursue relevant discovery, and respond
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`to the new contention. For example, Ex. 1031 provides no specific publication date
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`and cites to a “Divsalar” reference making no mention of the Allerton Conference
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`(Ex. 1031, p. 10). Exs. 1041 and 1042 are unpublished manuscripts purportedly
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`posted on Dr. McKay’s personal webpage. Caltech had no opportunity to explore
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`the sufficiency of Dr. MacKay’s testimony, which was not cited or discussed in the
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`petition and irrelevant to the institution decision. Ex. 1057 includes a stamp listing
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`the date “11 May 2000,” but that stamp is largely illegible and of unknown origin
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`and significance. Additionally, Ex. 1057 is incomplete—the document is partially
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`redacted and missing several pages. Even if the date “11 May 2000” in Ex. 1057
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`was demonstrated as a publication date for the Divsalar reference (which it has
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`not), the uncontested priority date for the ’781 patent (i.e., May 18, 2000) is only
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`days later. Ex. 1005 p. 1. To the extent it would have been necessary, Caltech was
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`denied the chance to present evidence antedating any § 102(a) publication date.
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`In fact, even in its reply brief Petitioner never identifies any particular
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`asserted date of publication for its new § 102(a) contention. Thus, in addition to
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`being belated and untimely, Petitioner’s new theory lacks the requisite specificity.
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`Caltech would be unable to meaningfully respond to Petitioner’s new and
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`amorphous theory of unpatentability even if the schedule in this proceeding
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`allowed it.
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`Perhaps anticipating that it would be criticized for belatedly raising a new
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`prior art theory in its response, Petitioner asserts that the instituted ground of
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`“anticipation” covers all aspects of § 102 generally, and that “Patent Owner fails to
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`address why Divsalar would not be a publication under, for example, § 102(a).”2
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`Pet. Reply p. 16. Petitioner’s attempts to shift the burden to Caltech are unavailing.
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`Petitioner’s asserted case is determined by the contents of its petition, not based on
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`whether Caltech did or did not anticipate some new theory of patentability arising
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`at the reply stage. The petition asserted only that Divsalar was published “by April
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`30, 1999,” and Petitioner only asserted Divsalar as a § 102(b) reference. The Board
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`should deny the attempt to switch theories to § 102(a) at this late stage and should
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`strike the argument. Autoquip, Inc. v. Graco Minnesota Inc., IPR2013-00452,
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`Paper 18 p. 17 (Jan. 14, 2015) (§§ 102(b) and 102(a) are not fungible).
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`3.
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`Exhibit 1076 (Jezek Declaration)
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`Exhibit 1076 is a declaration submitted by Timothy Jezek, identified as in-
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`house counsel for petitioner Hughes Network Systems, LLC. Petitioner earlier
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`presented an identical declaration as Exhibit 1070 in support of Petitioner’s Reply
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`Brief Regarding Identification of Real Parties-in-Interest. At the time, Caltech
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`2 Despite Petitioner’s suggestion to the contrary, the Board’s institution decision
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`correctly interpreted Petitioner’s theory of unpatentability as specifically based on
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`the purported availability of Divsalar as prior art under 102(b). ID pp. 10-11
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`(“Petitioner states that Divsalar was ‘published no later than April 30, 1999 at the
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`University of Texas library.’ . . . The acquisition record of the University of Texas
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`indicating acquisition in April 1999 lends credence to the actual presentation and
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`publication of the paper at the September 1998 Allerton Conference.”).
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`asked the Board to expunge the unauthorized exhibit or to authorize cross
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`examination of Mr. Jezek. Petitioner opposed any relief. Paper 21 pp. 2-3. The
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`Board expunged Exhibit 1070. Id. p. 4.
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`Caltech’s preliminary response put Petitioner on notice that Caltech disputes
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`whether the petition properly identifies all real parties-in-interest. Prelim. Resp. pp.
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`3-14. Petitioner plainly believed as early as March 2015, well before institution,
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`that the Jezek declaration might rebut the evidence Caltech submitted with its
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`preliminary response on the issue. See Paper 15 p. 5 (citing Ex. 1070). Yet once
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`trial was instituted, Petitioner never requested authorization to file a motion to
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`submit supplemental information pursuant to 37 C.F.R. § 42.123, which would
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`have allowed Caltech to address the Jezek declaration in its last substantive paper,
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`the Patent Owner response. Instead, Petitioner maximized the prejudice to Caltech
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`by reserving the Jezek declaration until Caltech could no longer respond with its
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`own argument or evidence.
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`Petitioner had its chance to properly submit the Jezek declaration – twice.
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`Petitioner could have requested authorization to file the Jezek declaration in March
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`2015. It did not. After the declaration was expunged, Petitioner could have timely
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`filed a request to submit supplemental information. It did not. Petitioner’s inclusion
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`of the Jezek declaration with its reply converts the sanction of the Board’s previous
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`ruling on the exhibit into another attempt to prejudice Caltech, by presenting this
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`evidence when the rules no longer permit Caltech to respond with argument and
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`evidence. The Board should not endorse Petitioner’s abuse of process and instead
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`should strike the exhibit. 37 C.F.R. § 42.12(a)(6) & (b)(2). Alternatively, the Board
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`should expunge the Jezek declaration as an unauthorized motion pursuant to 37
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`C.F.R. § 42.123.
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`C. Motion to Exclude
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`
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`1.
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`Exhibits 1001-1004, 1007-1009, 1012, 1013, 1017-1021, 1023,
`1030, 1032-1036, 1038-1040, 1043-1044, 1046-1056, 1058,
`1059, 1060 (¶¶ 13-29, 34-38 and 40-83), 1061-1063, 1065,
`and 1066
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`Caltech respectfully requests that the Board exclude Exhibits 1001-1004,
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`1007-1009, 1012, 1013, 1017-1021, 1023, 1030, 1032-1036, 1038-1040, 1043-
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`1044, 1046-1056, 1058, 1059, 1061-1063, 1065, and 1066, as well as paragraphs
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`13-29, 34-38, and 40-83 of Exhibit 1060. These exhibits and paragraphs are not
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`discussed, relied upon, or cited in the petition or anywhere else in the record.
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`Caltech objected to these exhibits as irrelevant and unduly prejudicial. Ex. 2032
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`pp. 1-3.
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`Evidence is relevant under FRE 401 if it has a “tendency to make a fact
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`more or less probable than it would be without the evidence.” FRE 401. None of
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`these exhibits are even cited in the record, and so they are not relevant to the
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`instituted ground of review or any other aspect of this proceeding. Even if evidence
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`were probative, the Board should exclude it if the danger of confusion or undue
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`prejudice substantially outweighs its probative value. FRE 403. As Petitioner does
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`not discuss, rely upon, or cite these exhibits, they cannot be relevant to the
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`proceeding, but they create confusion and have no probative value. Consideration
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`of them would be unduly prejudicial. The Board should exclude them. See SK
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`Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 49 p. 49 (excluding
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`exhibits not cited in proceeding).
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`2.
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`Exhibits 1031, 1041, 1042, 1057, and 1060 (¶¶ 30-33)
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`Caltech respectfully requests that the Board exclude Exhibits 1031, 1041,
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`1042, and 1057, as well as paragraphs 30-33 of Exhibit 1060. These exhibits were
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`filed with the petition but were not cited, discussed, or otherwise relied on in the
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`petition. Caltech timely objected to the exhibits within ten business days of
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`institution, based on FRE 401 and 403. Ex. 2032 pp. 2-3. Petitioner then relied on
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`the exhibits for the first time in its reply. Pet. Reply p. 16. Caltech timely served
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`renewed objections to these exhibits, still based on FRE 401 and 403, to provide
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`updated reasoning for the objections in view of Petitioner’s new reliance on them.
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`Paper 30 pp. 2-3.
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`Petitioner relies on Exhibits 1031, 1041, 1042, 1057 and 1060 (¶¶ 30-33) in
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`its reply to support its improper and belated argument that Divsalar is § 102(a)
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`prior art. Pet. Reply p. 16. The petition does not assert Divsalar as § 102(a) prior
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`art, and as discussed above, these exhibits do not support the asserted April 30,
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`1999 publication date, so each of these exhibits cannot be relevant to the instituted
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`ground of review as they have no tendency to make a fact more or less probable
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`than it would be without the evidence. Each exhibit, therefore, should be excluded
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`under FRE 401. Consideration of Petitioner’s belated 102(a) contention and these
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`exhibits would be unduly prejudicial to Caltech given its inability to respond.
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`Additionally, as discussed above in Section II.B.2., Exhibits 1031, 1041, 1042,
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`1057 and 1060 (¶¶ 30-33) are untimely relied upon and unreliable, and more likely
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`to mislead or confuse than have probative value. Each of these exhibits should also
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`additionally be excluded pursuant to FRE 403.
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`Petitioner’s use of uncited exhibits as a repository for future arguments
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`underscores why exclusion is often necessary (in contrast to simply giving the
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`exhibit no weight). Leaving excludable exhibits in the official record enables
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`repurposing the exhibits to support new arguments at a later stage, such as on any
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`future appeal. The present case warrants actual exclusion.
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`III. CONCLUSION
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`For the foregoing reasons, Caltech’s motion to strike and exclude should be
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`Respectfully submitted,
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`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`
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`granted.
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`Date: December 21, 2015
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`IV. APPENDIX
`EXHIBIT
`NO.
`2001
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`DESCRIPTION
`
`Aline Roumy et al., Design Methods for Irregular Repeat-
`Accumulate Codes, IEEE Transactions on Information Theory, vol.
`50, Aug. 8, 2004.
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
`
`2012
`
`2013
`
`2014
`
`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
`
`-14-
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`EXHIBIT
`NO.
`
`DESCRIPTION
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`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.H. 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.H.
`Guy (Mar. 25, 2015).
`Attachment from Email from M. Argenti to E. Williams and G.H.
`Guy (Apr. 2, 2015).
`Email from M. Argenti to E. Williams and G.H. Guy (Apr. 2,
`2015).
`Email from M. Rosato to E. Williams and G.H. Guy (June 11,
`2015).
`Email from M. Rosato to E. Williams, G.H. 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.H. 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.H. 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).
`
`-15-
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`EXHIBIT
`NO.
`2031
`
`2032
`
`DESCRIPTION
`
`Email from PTAB to M. Rosato, M. Argenti, R. Torczon, E.
`Williams and G.H. Guy (Nov. 12, 2015)
`Patent Owner’s Notice of Objection to Evidence in IPR2015-00059
`(May 11, 2015)
`
`-16-
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing Patent Owner’s Combined Motion to Strike and
`
`Motion to Exclude and corresponding Exhibit Nos. 2031 and 2032 were served on
`
`this 21st day of December, 2015, on Petitioner at the correspondence address of
`
`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`Petitioner 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: December 21, 2015
`
`
`
`
`
`-17-
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