UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`
`Petitioners,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`
`Patent Owner.
`____________________________
`
`IPR2015-00060 (Patent 7,421,032)
`____________________________
`
`PETITIONERS’ REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`
`Petitioners,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`
`Patent Owner.
`____________________________
`
`IPR2015-00060 (Patent 7,421,032)
`____________________________
`
`PETITIONERS’ REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................................. 1
`I.
`INTRODUCTION ............................................................................................................................ .. 1
`II. LEGAL STANDARD ......................................................................................................................... 1
`LEGAL STANDARD ....................................................................................................................... .. 1
`III. ARGUMENT ....................................................................................................................................... 2
`III.
`ARGUMENT ..................................................................................................................................... .. 2
`IV. CONCLUSION ................................................................................................................................. 12
`IV.
`CONCLUSION ............................................................................................................................... .. 12
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Amazon.com v. Barnesandnoble.com,
`73 F. Supp. 2d 1228 (W.D. Wash 1999) .............................................................. 8
`
`Page(s)
`
`Arnold P’ship v. Dudas,
`362 F.3d 1338 (Fed. Cir. 2004) ............................................................................ 2
`
`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) .............................................................................. 8
`
`In re Gartside,
`203 F.3d 1305 (Fed. Cir. 2000) ............................................................................ 2
`
`In re Wyer,
`655 F.2d 221 (C.C.P.A. 1981) .............................................................................. 8
`
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed Cir. 2005) ............................................................................. 2
`
`STATUTES
`
`35 U.S.C. 102(a)(1) .................................................................................................... 7
`
`35 U.S.C. 102(a) and (b) ............................................................................................ 7
`
`35 U.S.C. § 102(a) ..................................................................................................... 3
`
`35 U.S.C. § 314(a) ..................................................................................................... 2
`
`35 U.S.C. § 324(a) ..................................................................................................... 2
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71(c) ................................................................................................... 2
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`37 C.F.R. § 42.71(d) and ............................................................................................ 1
`
`
`
`37 C.F.R. § 42.108(c) ................................................................................................. 2
`37 C.F.R. §42.108(c) ............................................................................................... ..2
`
`77 Fed. Reg. 48756, at 48765 .................................................................................... 2
`77 Fed. Reg. 48756, at 48765 .................................................................................. ..2
`
`
`
`I.
`
`INTRODUCTION
`In response to the Decision on Institution of Inter Partes Review entered
`
`April 27, 2015 (Paper No. 18) (“Decision”), Hughes Network Systems, LLC and
`
`Hughes Communications, Inc. (“Petitioner” or “Hughes”) submit this Request for
`
`Rehearing under 37 C.F.R. § 42.71(d) and respectfully request that the Patent Trial
`
`and Appeal Board (“Board”) reconsider its decision not to institute Inter Partes
`
`Review Proceedings on claims 1, 8, 10, 18, 19, and 22 of U.S. Patent No.
`
`8,284,833 (“the ’833 patent”) as requested under Grounds 1-5 in the Corrected
`
`Petition for Inter Partes Review of U.S. Patent No. 7,41,032 (Paper No. 4)
`
`(“Petition”).
`
`In the Decision, the Board denied institution of Inter Partes Review on all
`
`grounds. Petitioners respectfully submit that the Board erred in its decision as it
`
`overlooked or misapprehended important points and evidence in the Petition
`
`concerning why the Frey reference is a publication available for challenging the
`
`‘032 patent. In particular, the Board erred in its finding that the Petition did not
`
`show that the Frey reference was “available as a publication reference against the
`
`‘032 patent.” Decision at 15.
`
`II. LEGAL STANDARD
`A request for rehearing is appropriate when the requesting party believes
`
`“the Board misapprehended or overlooked” a matter that was previously addressed
`
`in the record. See 37 C.F.R. § 42.71(d). In reviewing such a request, the “panel
`
`
`
`1
`
`
`
`will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). An
`
`abuse of discretion occurs where the decision is based on an erroneous
`
`interpretation of the law, or on erroneous facts. See Star Fruits S.N.C. v. United
`
`States, 393 F.3d 1277, 1281 (Fed Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d
`
`1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir.
`
`2000). Abuse also occurs “if a factual finding is not supported by substantial
`
`evidence, or if the decision represents an unreasonable judgment in weighing
`
`relevant factors.” TD Ameritrade v. Trading Techs. Int’l, Inc., CBM2014-00137,
`
`Paper No. 34 (Feb. 2, 2015) at 3.
`
`Under 35 U.S.C. § 314(a), in order for an inter partes review to be instituted
`
`by the Board, the Petitioner need only show a “reasonable likelihood that the
`
`petitioner would prevail.” Accord 37 C.F.R. § 42.108(c). As discussed in the Trial
`
`Practice Guide, this is a “somewhat flexible standard.” 77 Fed. Reg. 48756, at
`
`48765. In contrast, the institution standard for a post-grant review or covered
`
`business method review is the higher “more likely than not that at least 1
`
`[claim]...is unpatentable” standard. 35 U.S.C. § 324(a).
`
`III. ARGUMENT
`In the Decision, the Board states that Dr. MacKay’s Declaration “does not
`
`provide sufficient corroboration that the Frey paper was actually published no later
`
`than a particular date that he now recalls 15 years later.” Decision at 14–15.
`
`Based on this finding, the Board did not consider the substance of Petitioners’
`
`
`
`2
`
`
`
`argument under Grounds 1–5. Petitioners respectfully submit that the Board
`
`overlooked important unrebutted evidence that corroborates the publication date of
`
`Frey. The Board further declined to institute review of claim 1, 8, 10, 18, 19, and
`
`22 under Grounds 6–9. Petitioners further submit that the Board misapprehended
`
`Petitioners’ arguments with respect to the combination of Divsalar and Luby with
`
`respect to these Grounds.
`
`1.
`
`The October 8, 1999 Publication Date is both Unrebutted and
`
`Corroborated by Documentation Provided by Dr. MacKay.
`
`The Board’s decision focused incorrectly on whether Frey was published in
`
`the printed proceedings of the Allerton conference or whether the reference was
`
`actually published at the conference. Decision at 15. But, Petitioners do not rely
`
`on publication of the Allerton proceedings or presentation at the Allerton
`
`conference itself as the basis for the Frey reference being a printed publication.
`
`The Petition stated that “Exhibit 1012 - ‘Irregular Turbocodes’ by B.J. Frey and
`
`D.J.C. MacKay (“Frey”), published at least by October 8, 1999 and available as
`
`prior art under 35 U.S.C. § 102(a); see also Ex. 1060 at ¶¶ 40-49.” Petition at 2.
`
`The cited Exhibit 1060 is the Declaration of David J.C. MacKay, the co-author of
`
`the Frey reference.
`
`Dr. MacKay testified that he published Frey on his website and that it was
`
`available to the public no later than October 8, 1999. Ex. 1060 at ¶ 44, Petition at
`
`2. That publication date is based not solely on Dr. MacKay’s memory, but also on
`
`3
`
`
`
`concrete evidence in the form of the “last modified date” listed for Frey on Dr.
`
`MacKay’s own website. Dr. MacKay states:
`
`I published the article “Irregular Turbocodes” on my website
`no later than October 8, 1999. This is based on my recollection
`and information indicating the website paper was last
`modified on the MacKay Canadian and Cambridge Websites
`on this same date as shown in Exhibit 1040. The file name for
`the irregular turbocodes paper was “itc-al.ps.Z” which stands
`for Irregular Turbo Codes Allerton; “ps” stands for the
`document format “postscript” and “Z” stands for a UNIX
`compression
`file
`format. A copy of
`the “Irregular
`Turbocodes” paper as published on October 9, 1999 is filed
`herewith as Exhibit 1012.
`
`Ex. 1060, ¶ 44 (emphasis supplied); Petition at 2. As noted above, Dr. MacKay’s
`
`recollection and corroboration of the publication date is supported by unrebutted
`
`documentary evidence, in the form of a list of files that were available on his
`
`websites. Dr. MacKay’s listing of last modified dates for files on his websites
`
`corroborates his testimony that the last modified date for Frey (under the filename
`
`“itc-al.ps.Z”) is October 8, 1999:
`
`
`
`4
`
`
`
`
`
`Ex. 1040 at 1; Ex. 1044, ¶ 60; Petition at 2.
`
`Patent Owner offered no evidence or argument to rebut either Dr. MacKay’s
`
`memory of publishing the article or his corroborating evidence of the listing of
`
`files with corresponding last modified dates for those files. Instead, Patent Owner
`
`merely argued that there was insufficient proof:
`
`In paragraph 44 of Ex. 1060, the declarant states that he
`published the Frey article on his website “no later than Oct. 8,
`1999.” In the same paragraph he states that he published the
`paper by October 9, 1999. Dubiously, he states that the date of
`publication was based on his own recollection of 15 years ago,
`but he also refers to a “screenshot” (i.e., Ex. 1040) taken on an
`unknown date which is said to show Frey listed as “itc-
`al.ps.Z,” where “al” is said to stand for Allerton (even though
`5
`
`
`
`
`
`other documents listed are really named “Allerton”). Ex. 1040
`does not present any image of any website, but is an
`unexplained list of files. No proof is provided that any file in
`Ex. 1040 represents authentic MacKay website content. No
`proof is offered that itc-al.ps.Z is Frey. No copy of itc-al.ps.Z
`is provided or cited in the petition. No screenshot is provided
`of the declarant’s website that is contemporaneous with or
`prior to the critical date that shows “itc-al.ps.Z” or the Frey
`article.
`
`Response at 22–23.
`
`Many of these statements from Patent Owner’s Preliminary Response are
`
`demonstrably untrue. For example, Dr. MacKay plainly states that Exhibit 1012 is
`
`a copy of “itc-al.ps.Z.” Ex. 1060, ¶ 44; Petition at 2. Likewise, the Patent Owner’s
`
`allegation that “[n]o proof is provided that any file in Ex. 1040 represents authentic
`
`MacKay website content” is squarely at odds with Dr. MacKay’s statements that
`
`“[t]he screenshot [in Exhibit 1040] shows last modified date of various files that
`
`were placed on the MacKay Websites” and “the last modified date of the files
`
`shown in Exhibit 1040 represents a date certain by which the paper, software or
`
`abstract was in fact on the MacKay Websites and available for download to the
`
`general public.” Ex. 1060, ¶ 17.
`
`Patent Owner offered no evidence or argument to show that Dr. MacKay’s
`
`testimony and corroborating evidence were incorrect. The unrebutted testimony of
`
`Dr. MacKay, as corroborated by the last modified timestamps in Ex. 1040
`
`6
`
`
`
`establishes publication of Frey on Dr. MacKay’s websites no later than October 8,
`
`1999. The Board overlooked or misapprehended this argument and evidence of
`
`Frey’s publication date.
`
`2.
`
`Frey Was Publically Available on Dr. MacKay’s Website.
`
`Dr. MacKay states that he published the Frey reference on his website and
`
`that it was available to the public no later than October 8, 1999. Ex. 1060 at ¶ 44,
`
`Petition at 2. Patent Owner offers no argument or evidence that persons of
`
`ordinary skill in the art would not be able to find Frey on Dr. MacKay’s websites
`
`or that others employed with Patent Owner could not or did not find it. In denying
`
`institution, the Board appears to have created an entirely new standard for public
`
`availability of internet materials that is notably inconsistent with current Patent
`
`Office policy and Federal Circuit law.
`
`The MPEP leaves no doubt that articles published on the Internet, such as
`
`Dr. MacKay’s publication of Frey, are publically available prior art.
`
`An electronic publication, including an on-line database or
`Internet publication,
`is considered
`to be a “printed
`publication” within the meaning of 35 U.S.C. 102(a)(1) and
`pre-AIA 35 U.S.C. 102(a) and (b) provided the publication
`was accessible to persons concerned with the art to which the
`document relates.
`
`
`
`7
`
`
`
`MPEP § 2128(II)(A) (citing In re Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981),
`
`Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228 (W.D. Wash 1999), and
`
`In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994)).
`
`The Federal Circuit’s decisions also support this Office’s practice of treating
`
`articles available on the internet as printed publications. In Voter Verified, Inc. v.
`
`Premier Election Solutions, the Federal Circuit upheld a holding that an article was
`
`“publically available,” and therefore qualified as prior art, when it was made
`
`available on a website. 698 F.3d 1374, at 1380–81 (Fed. Cir. 2012).
`
`As noted above, Dr. MacKay’s unrebutted testimony establishes that both
`
`his websites, and specifically Frey, were available and accessible to the public and
`
`to persons with an interest in the field. Ex. 1060 at ¶ 44; Petition at 2. In his
`
`declaration, Dr. MacKay also explained that the websites hosting Frey were
`
`established and maintained to distribute his articles to persons with an interest in
`
`the field. Ex. 1060 at ¶ 10–23. These statements provide further support for Dr.
`
`MacKay’s statements that Frey was publically available as of October 8, 1999.
`
`Therefore unrebutted evidence establishes that Frey was publically available
`
`by October 8, 1999. Petitioners therefore request rehearing and that the Board
`
`institute review on Grounds 1–5 at least because the Board overlooked or
`
`misapprehended the Petitioners’ argument and evidence that that Frey was publicly
`
`available prior to the ‘032 patent’s priority date.
`
`
`
`8
`
`
`
`3.
`
`New Evidence Known to Patent Owner Further Demonstrates That
`
`Frey was Publically Available
`
`Critically, while Patent Owner criticizes the publication of Frey, it never
`
`directly asserted that Frey was not published or was not generally available to the
`
`public. Nor could they. In the co-pending District Court case, Patent Owner
`
`produced an email from Dr. Frey dated December 8, 1999 discussing the already
`
`published Frey article Irregular Turbocodes. Ex. 1067 (Declaration of Aaron
`
`Thompson) at ¶ 3; Ex. 1068 at page 52. While Patent Owner has been in
`
`possession of this email since 1999 (and the knowledge that Frey was published),
`
`Hughes’ District Court counsel did not receive it until January 13, 2015 after the
`
`filing of the Petition, but still prior to the Patent Owner’s Preliminary Response
`
`filed two weeks later on January 28, 2015. Id.
`
`Patent Owner's counsel then deposed and cross-examined Dr. Frey on March
`
`10, 2015 regarding the publication of Frey, the December 8, 1999 email, and
`
`additional evidence of corroboration offered in the District Court case. Ex. 1069
`
`at pages 1-8. In the December 8, 1999 email from Dr. Frey to Dr. Divsalar, the
`
`author of Divsalar (Ex. 1011), Dr. Frey states "I'd like to get back to work on the
`
`irregular turbocodes and win some world records. Have you had a chance to look
`
`through the Allerton paper?" Ex. 1068 at page 52, lines 1 to 11.
`
`Dr. Frey confirmed in sworn testimony and in response to Patent Owner’s
`
`questioning that the December 8, 1999 reference was to the "Irregular Turbocodes"
`
`9
`
`
`
`paper, Ex. 1012, and that the paper came out either at the September 1999
`
`conference or "sometime after that" but clearly before December 8, 1999. Ex.
`
`1069 at 238:1-22. The reason for the email was that as of that time, Divsalar and
`
`others including the inventors were known by Dr. Frey to have worked on RA
`
`codes and Frey was interested in collaborating on "extending and combining work"
`
`with Divsalar and McEliece. Ex. 1069 at 240:2-21.
`
`McEliece, Jin and Khandekar, the alleged inventors of the challenged
`
`patents claim to have invented irregular RA codes no earlier than March 7, 2000—
`
`some four months after Dr. Frey emailed Dr. Divsalar about the same thing. Ex.
`
`1068 at page 52.
`
`At a minimum, this strongly corroborates that Frey was published and
`
`“available as a publication” as of the October 8, 1999 as stated in the MacKay
`
`Declaration and provides independent corroboration of that date a month later in
`
`December, 1999.
`
`4.
`
`Petitioner Relied on Divsalar, not Luby, to Show Summing the
`
`Current Parity Bit with a Prior Parity Bit.
`
`The Decision declined to grant review under Ground 6 because Luby “does
`
`not describe a parity bit being computed by summing information bits and another
`
`parity bit.” Decision at 21. However, the Petition relied on Divsalar, not Luby, as
`
`disclosing the this summing element. For example, with respect to Ground 6,
`
`asserting invalidity over Divsalar and Luby, the Petition states:
`
`10
`
`
`
`Divsalar describes an encoder with two stages of encoding
`with a second encoding that is rate one. As discussed above in
`Ground 1, this limitation is met by Divsalar for regular
`encoding. The bits accumulated by Divsalar’s accumulator
`are not “randomly chosen irregular repeats of the message
`bits.”
`
`Petition at 45–46; Ex. 1010 at ¶¶ 193–94. With respect to Ground 1, the Petition
`
`states:
`
` The mathematical transform of Divsalar’s rate-1 accumulator
`is described in by a set of equations that can be written
`compactly as
` for
`. [Ex. 1010 at ¶ 66].
`From
`this set of equations, one can compute
`that
`. Id. By changing the names of the variables
` and
`, a person of ordinary
`(e.g., mapping
`skill in the art world have the equation from the second
`. Id.
`limitation for the case of
`
`Petition at 45; Ex 1010, ¶ 66. In response, Patent Owner simply argued that Luby
`
`did not perform the summation of a current parity bit, which was not Petitioner’s
`
`contention. Patent Owner incorrectly alleged that “Petitioner does not propose any
`
`combination of Divsalar and Luby, but rather argues that Luby alone would meet
`
`all the limitations of this element [1[b]].” Response at 54. To the contrary, the
`
`Petition relied on both Divsalar and Luby for element 1[b] in this ground. Petition
`
`at 45–46; Ex. 1010 at ¶¶ 193–194. That the Petition specifically relied on Luby for
`
`
`
`11
`
`
`
`the irregular summation of message bits does not detract from the Petition’s
`
`reliance on Divsalar for the summation of bits, as shown above. Petition at 45–46;
`
`Ex. 1010 at ¶¶ 193–194.
`
`Petitioners therefore request rehearing and that the Board institute review on
`
`Grounds 6, and 7–9, which also rely on the combination of Divsalar and Luby
`
`because the Board overlooked or misapprehended the Petitioners’ argument that
`
`Divsalar, instead of Luby, discloses the summing element of the ‘032 claims.
`
`
`
`IV. CONCLUSION
`For the reasons discussed above, Petitioners therefore request that the Board
`
`grant this request for rehearing of Grounds 1-7 as laid out in the Petition, and grant
`
`inter partes review for claim 1 over Frey and Divsalar (Ground 1); claims 1, 8, and
`
`10 over Frey, Divsalar, and Luby (Ground 3); claims 18, 19, and 22 over Frey,
`
`Divsalar, and Kschischang (Ground 4); claims 18, 19, and 22 over Frey, Divsalar,
`
`Kschischang, and Hall (Ground 5); claims 1 and 8 over Divsalar and Luby
`
`(Ground 6); claims 18 and 22 over Divsalar, Luby and Kschischang (Ground 7);
`
`claims 18 and 22 over Divsalar, Luby and Ping (Ground 8); and claim 19 over
`
`Divsalar, Luby and Kschischang, and Ping (Ground 9).
`
`
`
`
`
`
`
`12
`
`
`
`May 27, 2015
`
`
`
`
`
` /Eliot D. Williams/
`
`
`
`
`
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7510
`
`Attorneys for Petitioners, Hughes Network
`Systems, L.L.C. and Hughes
`Communications, Inc.
`
`
`
`13
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
`27th day of May, 2015, a complete and entire copy of the foregoing
`PETITIONERS’ REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. §
`42.71(d), including exhibits and testimony relied upon, were served on the Patent
`Owner at the correspondence address of record in the proceeding:
`Michael T. Roseto
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`
`Matthew A. Argenti
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`margenti@wsgr.com
`
`
`
`
`May 27, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Eliot D. Williams/
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7510
`
`Attorneys for Petitioners, Hughes Network
`Systems, L.L.C. and Hughes
`Communications, Inc.
`
`14
`
`
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