U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_________________________________________
`
`Case IPR2017-00210
`Patent 7,116,710
`_________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`Apple v. California Institute of Technology
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_________________________________________
`
`Case IPR2017-00210
`Patent 7,116,710
`_________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 1
`
`A.
`
`Frey Anticipates Claims 1 and 3 ........................................................... 1
`
`I.
`
`II.
`
`1.
`
`2.
`
`Frey discloses the “partitioning” limitation ................................ 1
`
`Frey discloses “a block of data in the signal to be encoded”
`
` ..................................................................................................... 4
`
`3.
`
`Frey discloses a second encoder that has a “rate close to
`
`one” / “rate substantially close to one” ....................................... 5
`
`B.
`
`The Challenged Claims are Obvious ..................................................... 6
`
`1.
`
`Divsalar in view of Frey renders Claims 1-8 and 11-14
`
`obvious ........................................................................................ 6
`
`i.
`
`ii.
`
`Divsalar in view of Frey discloses the “partitioning” limitation 6
`
`It would have been obvious to combine Divsalar and Frey. ...... 6
`
`iii. Dr. Divsalar’s testimony confirms that it would have been
`
`obvious to combine Divsalar and Frey ..................................... 11
`
`2.
`
`Divsalar in view of Frey and Luby97 renders Claims
`
`15–17, 19–22, and 24–33 obvious ............................................ 13
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`Caltech fails to establish a nexus between its alleged
`
`objective evidence of non-obviousness and the claimed
`
`invention. ................................................................................... 14
`
`Long-felt need and failure of others ......................................... 15
`
`Industry praise and unexpected results ..................................... 16
`
`3.
`
`i.
`
`ii.
`
`iii. Commercial success .................................................................. 16
`
`C.
`
`Caltech Fails To Antedate Frey. .......................................................... 17
`
`1.
`
`Frey was publicly available before Caltech’s alleged
`
`conception date. ........................................................................ 17
`
`2.
`
`3.
`
`Caltech fails to corroborate its alleged date of conception. ...... 18
`
`Caltech fails to demonstrate diligence. ..................................... 21
`
`D.
`
`Caltech mischaracterizes the testimony of Professor Davis. .............. 22
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`III. CONCLUSION .............................................................................................. 26
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`
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`I.
`
`INTRODUCTION
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`The Patent Owner Response (“POR”) filed by Caltech fails to rebut
`
`Petitioner’s showing that the challenged claims are unpatentable. First, Caltech’s
`
`arguments are based on mischaracterizing the teachings of the Frey and Divsalar
`
`references. Second, Caltech’s alleged pre-filing activity fails to antedate the Frey
`
`reference. Third, Caltech has failed to demonstrate secondary considerations of
`
`non-obviousness. Finally, Caltech mischaracterizes the testimony of Petitioner’s
`
`expert, Prof. Davis.
`
`II. ARGUMENT
`A.
`
`Frey Anticipates Claims 1 and 3
`
`The POR repeats Caltech’s “partitioning” argument from its Patent Owner
`
`Preliminary Response (“POPR”), and argues Frey does not disclose the “block of
`
`data in the signal to be encoded” and the “rate” limitations. POPR, 19-22; POR,
`
`20-30. The Board should reject these arguments.
`
`1.
`
`Frey discloses the “partitioning” limitation
`
`Caltech argues that Frey’s Figure 2 caption, which refers to “codeword” bits,
`
`shows that the circles on the bottom are output, not input, bits, and that therefore
`
`partitioning of those circles does not meet the “partitioning” limitation. POR, 21-24.
`
`Caltech’s argument fails because Frey teaches that its code is systematic.
`
`Ex. 1002, Abstract; Ex. 2004, ¶¶ 90, 99, 112. In a systematic code, the information
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`bits are part of the codeword. Ex. 1006, ¶ 31; Ex. 1062, 28:8-11. That is, in a
`
`systematic code, the information bits are the input to the code, and they also form
`
`part of the output. Therefore, far from showing that the circles on the bottom are not
`
`input bits, Frey’s Figure 2 caption merely identifies the circles at the bottom as
`
`information bits, which are part of the codeword. Ex. 1065, ¶22.1
`
`Caltech’s argument is also rebutted by its own POPR, which states that each
`
`circle at the bottom of Frey’s Figure 1 represents an “individual systematic bit” (i.e.,
`
`an information bit),2 POPR, 20, and that “Figure 2 of Frey is simply a different
`
`illustration of the exact same individual bit copying process of Figure 1,” POPR, 21
`
`(emphasis removed). The POPR identifies these information bits in Figure 1 with a
`
`red arrow:
`
`
`
`1 After submitting his declaration, Dr. Davis relocated to Europe pursuant to a
`
`Fulbright Global Scholar Award. As a result, he was unavailable to work on the
`
`Reply. Petitioner’s Reply is instead supported by the Declaration of Dr. Frey.
`
`2 It is undisputed that Frey’s Fig. 1 shows irregular repetition of the systematic bits,
`
`and that the “systematic” bits are information bits. Ex. 1064, 198:25-199:5,
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`207:21-25.
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`POPR, 20. Caltech’s admission that Figures 1 and 2 show the same bit copying
`
`process confirms that the circles at the bottom of Frey’s Figure 2 represent
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`information bits that are input to the encoder. Ex. 1065, ¶23.
`
`Caltech’s argument is also contrary to its acknowledgement that “Frey’s
`
`convolutional code is subsequent to the repetition step, and parity bits are the output
`
`of the convolutional code.” POR, 23. In other words, Caltech acknowledges that the
`
`input to Frey’s code are the bits that are repeated, and the parity bits of Frey’s code
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`are generated by the convolutional coder. Thus, a person of ordinary skill in the art
`
`(“POSA”) would have understood that Figure 1 and Figure 2 of Frey show a row of
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`information bits (blue) at the bottom, followed by a permuter (orange), and a
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`convolutional code (red). This again shows that the circles at the bottom of Frey’s
`
`Figure 2 represent information bits.
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`Ex. 1065, ¶¶24-25.
`
`The POR also incorrectly argues Frey does not show how the bits are received
`
`into the encoder. POR, 22-23. Frey expressly discloses in Figure 2 that input bits
`
`are partitioned into sub-blocks f1, f2, f3, … , fD and then input into repeaters Rep 2,
`
`Rep 3, … , Rep D. Pet., 36; Ex. 1002, 242, 245. Caltech’s expert Dr. Mitzenmacher
`
`does not dispute this. Ex. 1062, 380:14-381:2. Ex. 1065, ¶26.
`
`Additionally, Dr. Mitzenmacher’s argument that a POSA could avoid
`
`partitioning by using a random number generator should be rejected. Ex. 2004,
`
`¶¶68-69. This argument is contrary to Frey’s teaching to partition the input bits into
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`sub-blocks f1 through fD. Moreover, Dr. Mitzenmacher admitted that his random
`
`number generator would output a sequence that is known in advance, Ex. 1062,
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`381:3-382:13, which would perform partitioning by defining in advance of repeating
`
`which bits are repeated which number of times. Ex. 1065, ¶27.
`
`2.
`
`Frey discloses “a block of data in the signal to be encoded”
`
`First, contrary to Caltech’s argument that the Petition does not “identify” the
`
`block of data, POR, 20, the Petition explains that the “circles at the bottom of Figure
`
`2 represent information bits in the data block.” Pet., 37. Thus, not only does Frey
`
`expressly disclose “a block of data in the signal to be encoded”—which PO does not
`
`dispute, POR, 20—but the Petition specifically identifies the block of data. Ex.
`
`1065, ¶¶28-29.
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`Second, the POR argues that the reference to “block length” cited in the
`
`Petition refers to the output length and thus fails to disclose a block of data in the
`
`signal to be encoded. POR, 20. Caltech mischaracterizes Frey’s disclosure. Frey
`
`discloses a “block length N=10,000, … rate ½” code. Pet., 35-36 (quoting Ex. 1002,
`
`425). POSAs would have understood that a rate ½ code with an output length of
`
`10,000 bits would have an input block length of 5,000 bits (rate 1/2 x 10,000 =
`
`5,000). Therefore, Frey discloses “a block of data in the signal to be encoded.” Ex.
`
`1065, ¶30.
`
`3.
`
`Frey discloses a second encoder that has a “rate close to one” /
`“rate substantially close to one”
`
`Frey discloses a second encoder that has a rate of 2/3. Pet., 39-42. The POR
`
`does not dispute that a rate of 2/3 is “close to one” or “substantially close to one.”
`
`POR, 24-30. Nor does the POR dispute that Frey expressly states the second coder
`
`has a “convolutional code rate of R’ = 2/3.” Ex. 1002, 245. Instead, the POR argues
`
`the rate should be calculated in an unconventional manner that ignores the
`
`systematic bits. POR, 24-25. Caltech’s unconventional rate calculation is contrary
`
`to the express disclosure of Frey. Ex. 1002, 425; Ex. 1006., ¶¶119-120. Ex. 1065,
`
`¶31.
`
`Caltech admits that the rate is 2/3 if the systematic bits are considered. POR,
`
`26. POSAs would have understood that the output of the second encoder in Frey
`
`includes both systematic and parity bits because that is the only way to achieve the
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`expressly-disclosed “rate of R’ = 2/3.” Dr. Mitzenmacher concedes that
`
`convolutional codes can be systematic. Ex. 2004, 39, n.5. Had Frey intended the
`
`output to include only the parity bits, he would not have stated that the rate is 2/3.
`
`Ex. 1065, ¶32.
`
`B.
`
`The Challenged Claims are Obvious
`1.
`
`Divsalar in view of Frey renders Claims 1-8 and 11-14 obvious
`
`The POR relies on the same two arguments—partitioning and
`
`combinability—that the Board preliminarily rejected and should reject again.
`
`POPR, 30-49; DI, 26-27.
`
`i.
`
`Divsalar in view of Frey discloses the “partitioning”
`limitation
`
`The POR simply cross-references its argument for Frey alone, POR, 32,
`
`which should be rejected for the reasons above. Ex. 1065, ¶33.
`
`ii.
`
`It would have been obvious to combine Divsalar and
`Frey.
`
`The Petition demonstrated that it would have been obvious to combine
`
`Divsalar and Frey for multiple reasons. Pet., 42-48. The POR does not dispute
`
`many of Petitioner’s reasons, and the few arguments the POR makes have no merit.
`
`Ex. 1065, ¶¶34-36.
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`First, the POR does not dispute Divsalar and Frey are in the same field. Dr.
`
`Divsalar also admitted one searching for turbocodes could find both Frey and
`
`Divsalar. Ex. 1064, 236:1-5. Ex. 1065, ¶37.
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`Second, the POR does not dispute that Frey teaches “irregular turbocode
`
`clearly performs better” in at least some cases. Ex. 1002, 246. Instead, the POR
`
`merely argues that irregularity does not lead to improved performance in all cases.
`
`POR at 35-36. This finding would not dissuade a POSA from using irregularity. It
`
`merely means that the irregular turbo code performs better for some if not all
`
`applications. Ex. 1065, ¶38.
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`This is clearly shown in the annotated Frey Figure 4:
`
`
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`POR, 36. Ex. 1065, ¶38.
`
`This graph shows that the irregular code performs better in noisy channels and
`
`the regular turbocode performs better in less noisy channels. Both are desirable, just
`
`for different applications. The POR does not dispute this. E.g., POR at 37. Indeed,
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`Frey explicitly discloses a performance gain for the irregular code. Ex. 1002, 246.
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`Ex. 1065, ¶¶38-39.
`
`Dr. Mitzenmacher’s deposition revealed he applied an unduly narrow,
`
`outcome driven reading of the Frey reference. Although Frey explicitly states that it
`
`achieved “clearly better” results with irregular codes, Dr. Mitzenmacher maintained
`
`that Frey does not provide encouragement to experiment with irregular codes.
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`Ex. 1062, 400:13-23. Ex. 1065, ¶¶35, 40.
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`Third, the POR does not dispute (and Dr. Divsalar confirmed) that Divsalar
`
`and Frey have the same basic structure: a repeater as the first (outer) encoder, an
`
`interleaver/permuter, and a convolutional encoder as the second (inner) encoder.
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`Ex. 1064, 58:13-21, 239:7-11, 242:21-25, 243:17-20. Instead, the POR purports to
`
`identify differences between their repeaters and convolutional encoders. Ex. 1065,
`
`¶41.
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`These differences are insignificant—the POR fails to identify any ways in
`
`which they affect combinability of Divsalar and Frey. Rather, as shown in the
`
`Petition and discussed below, applying Frey’s teaching of irregularity to Divsalar
`
`was trivial. Ex. 1064, 69:8-18. Ex. 1065, ¶41.
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`Fourth, the POR does not dispute that Divsalar could be made irregular by
`
`modifying the repeater to repeat information bits different numbers of times, nor
`
`does the POR dispute that Divsalar could be made irregular by modifying its Tanner
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`U.S. Patent No. 7,116,710
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`graph by redistributing a few edges. Instead, the POR contends that such
`
`modifications were not sufficiently described and would not necessarily result in
`
`desired performance for particular applications or have a reasonable expectation of
`
`success. POR, 41-50. These arguments should be rejected. Ex. 1065, ¶42.
`
`As Caltech concedes, rigorous mathematical analysis of codes is difficult, and,
`
`as a result, POSAs routinely developed codes by experimentation. POR, 4.
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`Encouraged by Frey’s results, POSAs would have been motivated to use Frey’s
`
`irregularity in Divsalar. Indeed, this is exactly what Dr. Frey suggested to Dr.
`
`Divsalar in an email dated December 8, 1999. Ex. 1035, App. A; Ex. 1064, 185:5-8.
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`The Petition showed that POSAs would have had a reasonable expectation of
`
`success because it was trivial to modify Divsalar to make it irregular by repeating
`
`some of the information bits more than others, which meets the limitations of the
`
`claimed invention. Pet., 44-47. Intelligent Bio-Sys., Inc. v. Illumina Cambridge
`
`Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (“The reasonable expectation of success
`
`requirement refers to the likelihood of success in combining references to meet the
`
`limitations of the claimed invention.”). Dr. Mitzenmacher agreed that simply
`
`repeating the first two bits in Divsalar “q+10” times and the rest “q” times would
`
`make the code irregular. Ex. 1062, 153:11-154:8. Ex. 1065, ¶¶35, 43.
`
`A POSA’s reasonable expectation of success is further illustrated below with
`
`a Tanner graph representation of Divsalar. Ex. 1046. Caltech’s expert was unable to
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`identify any inaccuracies with this graph. Ex. 1062, 417:16-418:5. All that is
`
`required to make Divsalar’s code irregular is to rearrange the edges for information
`
`nodes u1 to uk so that some nodes have different numbers of edges than other nodes,
`
`like the information nodes shown at the bottom of Fig. 1 of Frey.3
`
`
`
`Ex. 1002, Fig. 1
`
`
`
`
`
`
`
`
`
`Ex. 1046
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`Ex. 1065, ¶44.
`
`Moreover, Dr. Frey’s simulation confirms that using Frey’s irregularity in
`
`Divsalar would not have been difficult, and a POSA would have had a reasonable
`
`expectation of success. Exhibit 1068 demonstrates that an irregular version of
`
`Divsalar’s code, in which half the bits are repeated three times and the other half are
`
`
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`3 Specifically, Frey’s Figure 1 shows two information nodes with four edges (repeat
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`4) and six information nodes with two edges (repeat 2).
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`repeated seven times, outperforms the original. These results show that POSAs
`
`would have had a reasonable expectation of success obtaining a functional IRA
`
`coder, and would have easily obtained a coder with improved performance. Ex.
`
`1065, ¶¶45-57.
`
`Fifth, the POR does not dispute that the benefits of irregularity had been
`
`demonstrated in multiple prior art references. Ex. 1065, ¶58.
`
`iii. Dr. Divsalar’s testimony confirms that it would have
`been obvious to combine Divsalar and Frey
`
`Dr. Divsalar’s declaration should be disregarded because he did not do the
`
`work necessary to form an obviousness opinion. First, Dr. Divsalar purports to
`
`provide an opinion of non-obviousness, but he did not review any materials related
`
`to obviousness, including his (almost 20-year-old) paper, any of the patents or
`
`claims, any prior art, or any of Petitioner’s explanations of why the claims are
`
`obvious. Ex. 2031, ¶¶9-10, 33; Ex. 1064, 38:9-44:11. He also worked less than six
`
`hours on the case prior to his deposition, showing the declaration was not
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`well-considered. Ex. 1064, 14:10-17.
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`Second, Dr. Divsalar is biased. He has been employed by Caltech for
`
`decades, was paid twice his normal salary for work on this case, and considers
`
`inventor Dr. McEliece a friend. Id., 7:1-4, 10:2-10, 11:20-15:21.
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`Third, Dr. Divsalar’s declaration is inconsistent with his own prior
`
`statements. In a 2005 publication, Dr. Divsalar stated that IRA codes “generalized
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`the notion of RA codes by allowing irregular repetition of input bits.” Id.,
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`257:21-260:12; Ex. 1061. As Petitioner has explained, IRA codes are no more than
`
`an obvious generalization of Divsalar’s RA code.
`
`Finally, the basis for Dr. Divsalar’s opinion that POSAs would not have made
`
`his RA code irregular is because it would decrease the code rate. Ex. 2013, ¶36.
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`However, Dr. Divsalar conceded that his code can be made irregular without altering
`
`the rate, and “there are a very large number of ways” to do so. Ex. 1064, 101:12-22,
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`104:9-19, 105:5-13; Exs. 1057-1058. For example, he confirmed that modifying a
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`rate 1/5 RA code to repeat half the bits three times and the other half seven times
`
`would not change the rate. Id. That is the same example used by Dr. Frey to
`
`demonstrate that irregular versions of Divsalar outperform the original. Ex. 1065,
`
`¶59.
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`Moreover, Dr. Divsalar’s deposition confirms a POSA would have been
`
`motivated to combine Divsalar and Frey. Dr. Divsalar confirmed that he received an
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`email from Dr. Frey on December 8, 1999 (prior to the alleged priority date) in
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`which Dr. Frey suggested “it would be interesting to extend the work that you and
`
`Bob [McEliece] have done to the case of irregular turbocodes.” Ex. 1064,
`
`183:15-186:20. Dr. Divsalar confirmed that Dr. Frey’s reference to “irregular
`
`turbocodes” was a reference to Frey, which Dr. Divsalar had received by December
`
`1999. Id. Ex. 1065, ¶60.
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`Dr. Divsalar additionally confirmed that RA codes in Divsalar could be made
`
`irregular by rearranging the edges for information nodes so that some nodes have
`
`different numbers of edges than other nodes. Ex. 1064, 95:7-101:22. This
`
`demonstrates it would have been simple for POSAs to modify the RA code in
`
`Divsalar to arrive at the claimed IRA code. Dr. Divsalar’s suggestion that Tanner
`
`graphs were innovative is also incorrect. Ex. 2031, ¶15. Tanner graphs were a
`
`standard technique for representing codes, including turbo-like codes, and in fact,
`
`Frey used such graphs to represent the irregular code Dr. Frey suggested applying to
`
`Divsalar. Ex. 1065, ¶61.
`
`2.
`
`Divsalar in view of Frey and Luby97 renders Claims 15–17,
`19–22, and 24–33 obvious
`
`The Petition showed that, to the extent Divsalar and/or Frey alone do not
`
`disclose receiving “streams” of bits, it would have been obvious to incorporate this
`
`feature of Luby97. Pet., 61-62. The POPR argued that the Petition did not
`
`sufficiently identify reasons to combine and did not sufficiently explain the
`
`disclosure. POPR at 35-40. The Board preliminarily rejected these arguments in the
`
`Institution Decision. DI at 28-30. The POR simply repeats these arguments, and
`
`fails to identify any reasons the Board should reach a different conclusion now.
`
`POR at 50-52. Ex. 1065, ¶62.
`
`Caltech also argues that the LDGM limitation of claims 20 and 28 is not
`
`explained. But the Petition explains how Divsalar and Frey both teach that
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`limitation for claim 7, and Caltech failed to identify anything missing from the
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`Petition’s explanation. Ex. 1065, ¶62.
`
`3.
`
`Caltech fails to establish a nexus between its alleged objective
`evidence of non-obviousness and the claimed invention.
`
`The Federal Circuit has explained that “[f]or objective evidence of secondary
`
`considerations to be accorded substantial weight, its proponents must establish a
`
`nexus between the evidence and the merits of the claimed invention.” Merck & Cie
`
`v. Gnosis S.P.A., 808 F.3d 829, 837 (Fed. Cir. 2015) (citation omitted). Caltech fails
`
`to establish such a nexus.
`
`Caltech’s nexus argument rests entirely on its contention that the DVB-S2
`
`standard practices the claimed invention. POR, 53-55. It does not. Judge Pfaelzer
`
`of the Central District of California addressed this issue in her summary judgment
`
`opinion. Ex. 1067. She explained that “[t]he DVB-S2 standard does not appear to
`
`require repetition of bits.” Id., *4. As Judge Pfaelzer found, the DVB-S2 standard
`
`does not satisfy the limitations of the ’710 patent, which require repetition of
`
`information bits.4 Ex. 1065, ¶¶63-64.
`
`
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`4 While Judge Pfaelzer’s analysis relates to related Patent No. 7,421,032, it applies
`
`equally to the ’710 patent, which also requires repetition of information bits. E.g.,
`
`Ex. 1001, 7:19-21.
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`Caltech presents no evidence beyond what was available to Judge Pfaelzer.
`
`Its expert, Dr. Mitzenmacher, relied solely on evidence regarding the DVB-S2
`
`standard itself, Ex. 2004, ¶¶130-137; he admitted that he did not review any
`
`implementation of the DVB-S2 standard. Ex. 1062, 443:17-445:10.
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`Without the requisite nexus to the challenged claims, Caltech’s objective
`
`evidence is entitled to no weight. See Merck, 808 F.3d at 837.
`
`i.
`
`Long-felt need and failure of others
`
`Caltech’s suggestion that IRA codes represent the endpoint of the
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`development of certain error correction codes development is false. POR, 55-58.
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`Information theorists have long sought new codes that performed closer to the
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`Shannon Limit. That search drove the development of LDPC codes, turbocodes, RA
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`codes, and IRA codes. At no time was there a “long-felt need” for IRA codes.
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`Rather, there is always a present need for the next improvement to code performance.
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`Similarly, the codes that came before IRA codes were not “failures.” Rather, they
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`were improvements on what came before. IRA codes were at most a predictable and
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`incremental step in this process. Ex. 1065, ¶65.
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`Caltech’s argument also fails because it focuses on the alleged success of IRA
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`codes in general, not the claimed invention. IRA codes are not equivalent to the
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`claimed invention. Named inventor Jin testified during deposition that there are
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`multiple forms of IRA codes. Ex. 1063, 60:7-14. The claimed invention is one type
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`- 15 -
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`of IRA code. Caltech makes no effort to prove that the features claimed in the ’710
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`patent are what drove the alleged success of IRA codes.
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`ii.
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`Industry praise and unexpected results
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`Caltech’s evidence of alleged industry praise and unexpected results is also
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`irrelevant because it relies on IRA codes and DVB-S2 without establishing a nexus.
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`iii. Commercial success
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`Caltech’s claim of “widespread adoption of IRA codes” similarly fails. POR,
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`61. The only communication standard it identifies is DVB-S2, which, as detailed
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`above, has been found not to use the claimed invention.
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`Caltech’s reliance on a single license to establish commercial success is
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`equally unavailing. Caltech has not entered the license into the record, and the little
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`evidence Caltech has introduced shows that the license was taken to settle litigation.
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`Ex. 2017. In such circumstances, affirmative evidence of a nexus between the
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`claimed invention and the license is “specifically require[d] . . . because it is often
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`‘cheaper to take licenses than to defend infringement suits.’” Iron Grip Barbell Co.
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`v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004) (citation omitted).
`
`Caltech has presented no such affirmative evidence.
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`- 16 -
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`C. Caltech Fails To Antedate Frey.
`
`Caltech alleges that (1) Frey was publicly available no earlier than March 20,
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`2000 (POR, 13); and (2) the invention of the ’710 patent was conceived prior to
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`March 20, 2000 (id. at 14-17). Caltech is wrong on both counts.
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`1.
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`Frey was publicly available before Caltech’s alleged
`conception date.
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`Caltech alleges that the invention of the ’710 patent was first conceived in
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`early-March 2000. POR, 15. Even if true, Frey remains prior art. It was publicly
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`available no later than February 2000.
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`Caltech previously challenged the prior art status of Frey. POPR, 8-12.
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`Petitioner subsequently received permission (Paper 32) to file supplemental
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`information. Among the exhibits filed are declarations from former co-chairs of the
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`conference at which Frey was presented. Exs. 1032-1034. Each confirms that the
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`published conference proceedings would have shipped to conference attendees on or
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`around February 16, 2000. Ex. 1032, ¶ 12; Ex. 1033, ¶ 12; Ex. 1034, ¶ 12. Their
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`testimony is supported by Exhibit 1037, the December 8, 1999 purchase order for
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`the conference proceedings. This evidence is unrebutted and, taken together,
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`confirms that Frey was publicly available in printed form no later than February
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`2000.
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`Caltech’s suggestion that Petitioner is somehow bound to a March 20, 2000
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`publication date for Frey is without merit. POR, 15. As the Board has found, “the
`- 17 -
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`
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`Petition’s Table of Exhibits identifies Frey as ‘published on or before March 20,
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`2000.” Paper 32, 4 (emphasis added). Moreover, Caltech had ample opportunity to
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`address Frey’s February 2000-public availability and has failed to do so.
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`2.
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`Caltech fails to corroborate its alleged date of conception.
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`Caltech presents multiple exhibits in an attempt to corroborate the testimony
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`of inventor Jin that “[he] had conceived of the [IRA] code that is described and
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`claimed in the ’710 patent” in “early 2000.” Ex. 2020, ¶5. Corroboration is required
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`where a patentee seeks to rely on an inventor’s testimony to establish conception
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`because the inventor may be tempted to testify in an unjustifiably self-serving
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`manner. Singh v. Burke, 317 F.3d 1334, 1340-41 (Fed. Cir. 2003).
`
`
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`
`
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`.
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`None of the exhibits corroborates Jin’s testimony.
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`Exhibit 2021 is a March 7, 2000 e-mail from McEliece to Jin and Khandekar,
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`in which he suggests they “consider . . . whether irregular LDGM outer codes gain
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`us anything.” Id. (emphasis added). McEliece’s suggestion to consider using an
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`irregular LDGM is insufficient to demonstrate the “definite and permanent idea of
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`the complete and operative invention” necessary to constitute conception. Cooper v.
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`Goldfarb, 154 F.3d 1321, 1327 (Fed.Cir. 1998). “[A] general goal or research plan”
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`- 18 -
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`
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`is not sufficient to constitute conception. Burroughs Wellcome Co. v. Barr Labs.,
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`Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
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`Exhibit 2022 is an unwitnessed excerpt from McEliece’s notebook that
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`suggests investigating making LDGM codes irregular. Ex. 2022, 22. This is
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`insufficient to establish conception. See Cooper, 154 F.3d at 1327. Moreover, the
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`irregularity described in Exhibit 2022 is different from that claimed in the ’710
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`patent. As inventor Jin confirmed, in the Tanner graph in the notebook, … the
`
`information nodes has constant degree but the check nodes have irregular
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`degree.” Ex. 1063, 60:7-14; Ex. 2022, 22. What McEliece suggests in Exhibits
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`2021 and 2022 thus lacks the key feature of the claimed IRA codes: irregular
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`repetition of information bits. See Ex. 1063, 65:16-18. Inventor Jin confirmed this
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`deficiency, testifying that “irregular repetition of information bits” is the first of the
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`four elements of the invention, and that McEliece is only “showing the last three
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`elements.” Id. at 68:5-69:25.
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`Exhibits 2023-2029 likewise fail to corroborate Jin’s testimony and fail to
`
`establish conception or reduction to practice as of any particular date.
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` Exhibits 2025, 2027, and 2029 are “parameter” files and a “makefile”
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`allegedly created by Jin. Each is undated. Caltech has presented no evidence
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`of any date on which these files existed.
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`- 19 -
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`
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
` Exhibits 2023, 2024, 2026, and 2028 are software files allegedly created by
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`Jin. Caltech relies on certain pre-March 20, 2000, dates included within the
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`text of these exhibits.
`
`
`
`
`
`. Therefore, it is
`
`impossible to know what was included in the code before March 20, 2000,
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`and what was added later.5 Also, critically, these exhibits are agnostic as to
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`whether the code simulated by the software files is an RA code or an IRA
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`code. They rely on the undated parameter files—Exhibits 2025 and 2029—to
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`make this determination. Ex. 1063, 189:7-9, 200:20-204:14. Therefore, these
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`
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`5
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`
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`
`
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`in the metadata indicate what the files contained as of a particular date.
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` Instead, only the later dates
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`- 20 -
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`files show no more than that Jin was in possession of software files that could
`
`simulate an RA code (not an IRA code)
`
`
`
`.
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`3.
`
`Caltech fails to demonstrate diligence.
`
`As detailed above, the software files relied upon by Caltech to attempt to
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`show actual reduction to practice, POR, 15-16, lack reliable dates to prove when
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`features were added to the software. The same is true with respect to diligence.
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`With the exception of the file creation dates and last modified dates, there is no
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`evidence to demonstrate what work was done on the software and when it was done.
`
`Caltech’s remaining argument is that the 2+ months between the alleged
`
`conception date and the filing date6 “compares favorably to the almost-four months”
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`examined in the Federal Circuit’s decision in Perfect Surgical Techniques, Inc. v.
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`Olympus America, Inc., 841 F.3d 1004 (2016). POR, 16. Caltech mischaracterizes
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`that case. The court did not find diligence by the inventor. The Federal Circuit
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`regularly finds a lack of diligence where, as here, the inventor fails to provide
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`
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`6 Patent Owner references in passing certain conduct by its patent counsel. POR at
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`17. However, it presents no evidence of when counsel received a disclosure of the
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`invention. In re Enhanced Sec. R
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