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.
`____________________________
`
`IPR2015-00067 (Patent 7,116,710)
`____________________________
`
`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 ......................................................................................................................... 2 
`LEGAL STANDARD ....................................................................................................................... .. 2
`III.  ARGUMENT ....................................................................................................................................... 3 
`III.
`ARGUMENT ..................................................................................................................................... .. 3
`IV.  CONCLUSION ................................................................................................................................. 13 
`IV.
`CONCLUSION ............................................................................................................................... .. 13
`
`
`

`
` 
`
`
`Cases 
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228 (W.D. Wash 1999) .......................................... 5 
`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) ................................................................... 2 
`In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994)) ............................................................................................... 5 
`In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000) ............................................................................. 2 
`In re Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981) ........................................................................................... 5 
`Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed Cir. 2005) ................................................... 2 
`TD Ameritrade v. Trading Techs. Int’l, Inc., CBM2014-00137 ................................................................... 2 
`Voter Verified, Inc. v. Premier Election Solutions, 698 F.3d 1374, at 1380-81 (Fed. Cir. 2012) ................ 5 
`Rules 
`
`35 U.S.C. § 314(a) ........................................................................................................................................ 2 
`35 U.S.C. § 324(a) ........................................................................................................................................ 2 
`37 C.F.R. § 42.108(c) .................................................................................................................................... 2 
`37 C.F.R. § 42.71(c) ...................................................................................................................................... 2 
`37 C.F.R. § 42.71(d) ................................................................................................................................. 1, 2 
`Regulations 
`
`77 Fed. Reg. 48756 ....................................................................................................................................... 2 
`MPEP § 2128(II)(A) ..................................................................................................................................... 5 
` 
`
`

`
`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, 3-6, 15, 16, 20, 21, and 22 of U.S. Patent No.
`
`7,116,710 (“the ’710 patent”) as requested under Grounds 1–5 in the Corrected
`
`Petition for Inter Partes Review of U.S. Patent No. 7,116,710 (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 not instituting on
`
`Grounds 1–5.
`
`The Board found that “Petitioner’s sole reference to the MacKay declaration
`
`(Pet. 2, citing Ex. 1060 ¶¶ 40–49) does not provide sufficient support for the
`
`contention that Frey was published to the interested public as of May 11, 2000.”
`
`Decision at 10. Petitioners respectfully submit that the Board overlooked or
`
`misapprehended important points and evidence in the Petition concerning why
`
`Frey is a publication available for challenging the ‘710 patent.
`
`
`
`
`
`1
`
`

`
`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 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).
`
`
`
`2
`
`

`
`III. ARGUMENT
`In the Decision, the Board states that “Petitioner’s sole reference to the
`
`MacKay declaration (Pet. 2, citing Ex. 1060 ¶¶ 40–49) does not provide sufficient
`
`support for the contention that Frey was published to the interested public as of
`
`May 11, 2000. Furthermore, the Petition provides insufficient testimony, evidence
`
`or argument with respect to the public accessibility of the MacKay website.”
`
`Decision at 10. Based on this finding, since each ground of the Petition was based
`
`on the Frey reference, the Board rejected Grounds 1–5 of the Petition without
`
`reaching the substance of the asserted prior art. Petitioner believes that the Board
`
`overlooked important unrebutted evidence that Frey was publically available on
`
`Dr. MacKay’s website by October 8, 1999.
`
`1.
`
`Frey Was Available to the Public by Publication on Dr. MacKay’s
`
`Websites.
`
`The Board’s decision initially focuses on whether the Frey reference was
`
`published in the printed proceedings of the Allerton conference or whether the
`
`reference was actually published at the conference, and stated that Petitioners “do
`
`not state that the Frey reference was published as part of the Allerton Conference.”
`
`Decision at 10. But, importantly, the Petition does 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. Instead, Petitioners rely on
`
`
`
`3
`
`

`
`Frey’s publication on a publicly available website. Rehearing is appropriate here
`
`because the Board overlooked or misapprehended this point.
`
`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
`
`Frey. Dr. MacKay states that he published Frey on his website and that it was
`
`available to the public no later than October 8, 1999. Specifically, 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 at ¶ 44, Petition at 2.
`
`In its decision not to institute, the Board appears to have created a new
`
`standard for public availability of materials published on the Internet that is squarly
`
`
`
`4
`
`

`
`at odds with 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, qualify as “publically available”:
`
`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.
`
`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 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 that
`
`was “publically available,” and therefore qualified as prior art, when it was made
`
`available by a website. 698 F.3d 1374, at 1380–81 (Fed. Cir. 2012).
`
`2.
`
`Dr. MacKay’s Websites Were Available to the Public.
`
`As noted above, Dr. MacKay’s testimony establishes that his websites, and
`
`specifically Frey, were available 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
`
`
`
`5
`
`

`
`distribute his articles to those with an interest in the field, which are referred to as
`
`the “MacKay Websites” in his declaration. Ex. 1060 at ¶ 10–23. It was these
`
`websites that Dr. MacKay referred to in the discussion at paragraph 44, as cited in
`
`the Petition on page 2.
`
`Specifically, Dr. MacKay provided testimony that his websites were both
`
`publically available and that persons of ordinary skill would look to his websites
`
`for information on information theory. Dr. MacKay states:
`
`In the regular course of the business of my research
`18.
`in information theory, I would include indications of when the
`publication was made in these documents. These documents
`would be made available to the public for download via the
`Internet. Searching on popular search engines for topics such
`as Gallager, or even my name alone would bring up my home
`pages and publications and links to the source code.
`
`19. I regularly communicated the address of my MacKay
`Cambridge Website, http://wol.ra.phy.cam.ac.uk/mackay/ (or,
`from
`November
`2001,
`http://www.inference.phy.cam.ac.uk/mackay/),
`in electronic
`communication, papers, and presentations that I made. For
`example, the following papers published in print or handed out
`as printed publications at conferences also contained the
`reference to my website. Examples include the “Irregular
`Turbocodes” article and the “Gallager Codes--Recent Results”
`article (Exhibits 1012 and 1048, respectively) which both
`have the MacKay Cambridge Website listed under my name.
`6
`
`
`
`

`
`Note that this is not an email address but the location of my
`website and publications.
`
`20. It is my intent and therefore my belief that my work and
`articles published on the MacKay Websites are indexed and
`searchable through the Internet and through any number of
`search engines including Google. In the 1990’s and into
`2000’s, the domain for my website is generally associated
`with academic research namely through Cambridge University
`and specifically through the Inference Group both of which
`were associated with information theory in general and with
`work on coding.
`
`Ex. 1060, ¶ 18–20. These sections of Dr. MacKay’s declaration provide further
`
`support for his testimony at paragraph 44 that Frey was published by October 8.
`
`1999. Ex. 1060 at ¶ 44, Petition at 2. Moreover, 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.
`
`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 Frey was published
`
`and publicly available prior toy the ‘710 patent’s priority date.
`
`
`
`7
`
`

`
`The October 8, 1999 Publication Date is both Unrebutted and Corroborated
`
`by Documentation Provided by Dr. MacKay.
`
`The Board’s decision incorrectly focused on whether the Frey reference 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 Frey.
`
`Instead, Dr. MacKay states 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 concrete evidence in the form of the “last modified date” listed for Frey
`
`on Dr. MacKay’s own website. Dr. MacKay testified:
`
`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
`8
`
`
`
`

`
`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; 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:
`
`
`
`9
`
`
`
`

`
`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
`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 are demonstrably untrue. For example, Dr.
`
`MacKay plainly states that Exhibit 1012 is a copy of “itc-al.ps.Z.” Ex. 1060, ¶ 44;
`
`10
`
`

`
`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
`
`statements and evidence were incorrect. The unrebutted testimony of Dr. MacKay,
`
`as corroborated by the last modified timestamps in Ex. 1040 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.
`
`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
`
`11
`
`

`
`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
`
`fling 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 (Exh. 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 (Frey Expert Report) 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"
`
`paper, Exh. 1012, and that the paper came out either at the September 1999
`
`conference or "sometime after that" but clearly before December 8, 1999. Exhibit
`
`1069, 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.
`
`
`
`12
`
`

`
`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. Exh
`
`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.
`
`IV. CONCLUSION
`For the reasons discussed above, Petitioners respectfully request that the
`
`Board grant this request for rehearing of Grounds 1–5 as laid out in the Petition,
`
`and grant inter partes review for claims 1, 3-6, 15, 16, 20-22 of the ‘710 Patent.
`
`
`
`
`
`
`
`13
`
`

`
`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
`
`
`
`
`
`

`
`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.
`
`15
`
`