Case No. IPR2017-00210
`Docket No.: 1033300-00287US1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Apple Inc.,
`Petitioner
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`v.
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`California Institute of Technology,
`Patent Owner
`________________________
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`IPR2017-00210
`Patent No. 7,116,710
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`__________________________
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`PETITIONER’S NOTICE OF APPEAL
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`Docket No.: 1033300-00287US1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`Apple Inc.,
`Petitioner
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`v.
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`California Institute of Technology,
`Patent Owner
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`IPR2017-00210
`Patent No. 7,116,710
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`__________________________
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`PETITIONER’S NOTICE OF APPEAL
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`Case No. IPR2017-00210; Docket No.: 1033300-00287US1
`Petitioner’s Notice of Appeal
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, VA 22314-5793
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`Pursuant to 35 U.S.C. §§ 141-44 and 319, and 37 C.F.R. § 90.2-90.3, notice
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`is hereby given that Petitioner Apple Inc. appeals to the United States Court of
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`Appeals for the Federal Circuit from the Final Written Decision entered
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`December 27, 2018 (Paper 77) in IPR2017-00210 (Exhibit A), and all prior and
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`interlocutory rulings related thereto or subsumed therein.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates
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`that the issues on appeal include, but are not limited to, whether the Patent Trial
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`and Appeal Board erred in determining that Petitioner had not established by a
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`preponderance of the evidence that claims 1 and 3 of the ’710 patent are
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`anticipated by Frey pursuant to 35 U.S.C. § 102(b); claims 1–8 and 11–14 of the
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`’710 patent would have been obvious over Divsalar and Frey; and claims 15–17,
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`19–22, and 24–33 of the ’710 patent would have been obvious over Divsalar, Frey,
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`and Luby97; and any finding or determination supporting or related to those issues,
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`as well as all other issues decided adversely to Petitioner in any orders, decisions,
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`rulings, and opinions.
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`Case No. IPR2017-00210; Docket No.: 1033300-00287US1
`Petitioner’s Notice of Appeal
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`Pursuant to 37 C.F.R. § 90.3, this Notice of Appeal is timely, having been
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`duly filed within 63 days after the date of the Final Written Decision.
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`A copy of this Notice of Appeal is being filed simultaneously with the Patent
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`Trial and Appeal Board, the Clerk’s Office for the United States Court of Appeals
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`for the Federal Circuit, and the Director of the Patent and Trademark Office.
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`Date: February 22, 2019
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` Respectfully submitted,
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`/Michael Smith/
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`Michael H. Smith
`Registration No. 71,190
`Counsel for Petitioner
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`Case No. IPR2017-00210; Docket No.: 1033300-00287US1
`Petitioner’s Notice of Appeal
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
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`addition to being filed electronically through the Patent Trial and Appeal Board’s
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`End to End (PTAB E2E), a true and correct original version of the foregoing
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`Petitioner’s Notice of Appeal is being filed by Express Mail (Express Mail Label
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`EF 183495755 US) on this 22nd day of February 2019, with the Director of the
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`United States Patent and Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 37 C.F.R. § 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
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`Rule 52(a),(e), I hereby certify that a true and correct copy of the foregoing
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`Petitioner’s Notice of Appeal is being filed in the United States Court of Appeals
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`for the Federal Circuit using the Court’s CM/ECF filing system on this 22nd day of
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`February 2019, and the filing fee is being paid electronically using pay.gov.
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`I hereby certify that on February 22, 2019 I caused a true and correct copy of
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`the Petitioner’s Notice of Appeal to be served via e-mail on the following attorneys
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`of record:
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`Case No. IPR2017-00210; Docket No.: 1033300-00287US1
`Petitioner’s Notice of Appeal
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`Michael Rosato (mrosato@wsgr.com)
`Matthew Argenti (margenti@wsgr.com)
`Richard Torczon (rtorczon@wsgr.com)
`Kevin P.B. Johnson (kevinjohnson@quinnemanuel.com)
`Todd M. Briggs (toddbriggs@quinnemanuel.com)
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`/Michael Smith/
`____________________
`Michael H. Smith
`Registration No. 71,190
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`Case No. IPR2017-00210; Docket No.: 1033300-00287US1
`Petitioner’s Notice of Appeal
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`EXHIBIT A
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`ActiveUS 171497441
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`Trials@uspto.gov
`571-272-7822
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` Paper 77
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` Entered: December 27, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
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`Case IPR2017-00210
`Patent 7,116,710 B1
`____________
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`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
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`JEFFERSON, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2017-00210
`Patent 7,116,710 B1
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`I.
`INTRODUCTION
`Petitioner, Apple, Inc. (“Apple”), filed a Petition (Paper 5, “Pet.”)
`requesting an inter partes review of claims 1–8, 10–17, and 19–33 of U.S.
`Patent No. 7,116,710 B1 (Ex. 1001, “the ’710 patent”) pursuant to 35 U.S.C.
`§§ 311–319. Patent Owner, California Institute of Technology (“Caltech”),
`filed a Preliminary Response (Paper 17, “Prelim. Resp.”) to the Petition.
`We instituted an inter partes review on claims 1–8, 11–17, 19–22, and
`24–33 of the ’710 patent on certain grounds of unpatentability presented.
`(Paper 18, “Inst. Dec.”). Caltech filed a Patent Owner Response (Paper 35,
`“PO Resp.”), and Apple filed a Petitioner Reply (Paper 46, “Pet. Reply”).
`Caltech also filed a Sur-Reply (Paper 62, “PO Sur-Reply”), as was
`authorized by our Order of March 2, 2018 (Paper 55). An oral hearing was
`held on April 19, 2018, and a transcript of the hearing is included in the
`record. Paper 72 (“Tr.”).
`Apple filed a Declaration of James A. Davis, Ph.D. (Ex. 1006) with its
`Petition and a Declaration of Brendan Frey, Ph.D. (Ex. 1065) with its
`Reply. Caltech filed Declarations of Dr. Dariush Divsalar (Ex. 2031) and
`Dr. Michael Mitzenmacher (Ex. 2004) with its Response.
`As authorized in our Order of February 10, 2018 (Paper 48), Patent
`Owner filed a motion for sanctions related to Petitioner’s cross-examination
`of Patent Owner’s witnesses, Dr. Mitzenmacher (Paper 50) and Dr. Divsalar,
`and Petitioner filed an opposition (Paper 52).
`In light of the U.S. Supreme Court’s decision in SAS Institute, Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), we modified our Institution Decision to
`institute on all of the challenged claims and all of the grounds. Paper 69.
`Subsequently, the parties filed a joint motion to limit the Petitions to the
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`Patent 7,116,710 B1
`claims and grounds that were originally instituted. Paper 71. We granted
`their motion. Paper 73. As a result, the remaining instituted claims and
`grounds are the same as they had been at the time of the Institution Decision.
`See id. at 3.
`The one-year period normally available to issue a Final Written
`Decision was extended under 37 C.F.R. § 42.100(c). Papers 74, 75, 1–2.
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1–8, 11–17, 19–22, and 24–33 of the ’710 patent. For the reasons
`discussed below, Petitioner has not demonstrated by a preponderance of the
`evidence that claims that claims 1–8, 11–17, 19–22, and 24–33 are
`unpatentable.
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`A. Related Proceedings
`The parties indicate that the ’710 patent was involved in the following
`active case, Cal. Inst. of Tech. v. Broadcom Ltd., No. 2:16-cv-03714 (C.D.
`Cal. filed May 26, 2016), and in concluded cases, Cal. Inst. of Tech. v.
`Hughes Commc’ns, Inc., No. 2:15-cv-01108 (C.D. Cal. filed Feb. 17, 2015);
`and Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., 2:13-cv-07245 (C.D. Cal.
`filed Oct. 1, 2013). Pet. 3, Paper 8, 2–3.
`The parties also identify co-pending case IPR2017-00219, in which
`Apple filed a petition for inter partes review of the ’710 patent. Pet. 3;
`Paper 8, 2–3. Inter partes review of the ’710 patent was previously
`considered and denied in Hughes Network Sys., LLC v. Cal. Inst. of Tech.,
`IPR2015-00067 (PTAB April 27, 2015) (Paper 18) (“IPR2015-00067”) and
`Hughes Network Sys., LLC v. Cal. Inst. of Tech., IPR2015-00068 (PTAB
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`Patent 7,116,710 B1
`April 27, 2015) (“IPR2015-00068”). Finally, patents related to the ’710
`patent were challenged in IPR2015-00059, IPR2015-00060, IPR2015-
`00061, and IPR2015-00081. Pet. 3.
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`B. The ʼ710 Patent
`The ’710 patent describes the serial concatenation of interleaved
`convolutional codes forming turbo-like codes. Ex. 1001, Title. It explains
`some of the prior art with reference to its Fig. 1, reproduced below.
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`Figure 1 is a schematic diagram of a prior “turbo code” system. Id. at 2:14–
`15. The ’710 patent specification describes Figure 1 as follows:
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`A standard turbo coder 100 is shown in FIG. 1. A block
`of k information bits is input directly to a first coder 102. A
`k bit interleaver 106 also receives the k bits and interleaves
`them prior to applying them to a second coder 104. The second
`coder produces an output that has more bits than its input, that
`is, it is a coder with rate that is less than 1. The coders 102,104
`are typically recursive convolutional coders.
`Three different items are sent over the channel 150: the
`original k bits, first encoded bits 110, and second encoded bits
`112. At the decoding end, two decoders are used: a first
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`Patent 7,116,710 B1
`constituent decoder 160 and a second constituent decoder 162.
`Each receives both the original k bits, and one of the encoded
`portions 110, 112. Each decoder sends likelihood estimates of
`the decoded bits to the other decoders. The estimates are used
`to decode the uncoded information bits as corrupted by the
`noisy channel.
`Id. at 1:38–53(emphasis omitted).
`A coder 200, according to a first embodiment of the invention, is
`described with respect to Figure 2, reproduced below.
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`Figure 2 of the ’710 patent is a schematic diagram of coder 200. Id. at 2:16–
`17.
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`The specification states that “coder 200 may include an outer coder
`202, an interleaver 204, and inner coder 206.” Id. at 2:34–35. It further
`states as follows:
`The outer coder 202 receives uncoded data. The data
`may be partitioned into blocks of fixed size, say k bits. The
`outer coder may be an (n,k) binary linear block coder, where
`n>k. The coder accepts as input a block u of k data bits and
`produces an output block v of n data bits. The mathematical
`relationship between u and v is v=T0u, where T0 is an n×k
`matrix, and the rate1 of the coder is k/n.
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`1 The “rate” of an encoder refers to the ratio of the number of input bits to
`the number of resulting encoded output bits related to those input bits. See
`Pet. 9.
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`Patent 7,116,710 B1
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`The rate of the coder may be irregular, that is, the value
`of T0 is not constant, and may differ for sub-blocks of bits in the
`data block. In an embodiment, the outer coder 202 is a repeater
`that repeats the k bits in a block a number of times q to produce
`a block with n bits, where n=qk. Since the repeater has an
`irregular output, different bits in the block may be repeated a
`different number of times. For example, a fraction of the bits in
`the block may be repeated two times, a fraction of bits may be
`repeated three times, and the remainder of bits may be repeated
`four times. These fractions define a degree sequence, or degree
`profile, of the code.
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`The inner coder 206 may be a linear rate-1 coder, which
`means that then-bit output block x can be written as x=TIw,
`where TI is a nonsingular n×n matrix. The inner coder 210 can
`have a rate that is close to 1, e.g., within 50%, more preferably
`10% and perhaps even more preferably within 1% of 1.
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`Id. at 2:41–64 (emphasis omitted). Codes characterized by a regular repeat
`of message bits into a resulting codeword are referred to as “regular repeat,”
`whereas codes characterized by irregular repeat of message bits into a
`resulting codeword are referred to as “irregular repeat.” The second
`(“inner”) encoder 206 performs an “accumulate” function. Thus, the two-
`step encoding process illustrated in Figure 2, including a first encoding
`(“outer encoding”) followed by a second encoding (“inner encoding”),
`results in either a “regular repeat accumulate” (“RRA”) code or an “irregular
`repeat accumulate (“IRA”) code, depending upon whether the repetition in
`the first encoding is regular or irregular.
`Figure 4 of the ’710 patent, reproduced below, shows an alternative
`embodiment in which the first encoding is carried out by a low density
`generator matrix.
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`Figure 4 of the ’710 patent is a schematic of an irregular repeat and
`accumulate coder using a low density generator matrix (LDGM)2 coder. Id.
`at 2:20–21, 3:24–25, 3:51–54. The LDGM coder “performs an irregular
`repeat of the k bits in the block, as shown in FIG. 4.” Id. LDGM codes are
`a special class of low density parity check codes that allow for less encoding
`and decoding complexity. LDGM codes are systematic linear codes
`generated by a “sparse” generator matrix. No interleaver (as in the Figure 2
`embodiment) is required in the Figure 4 embodiment because the LDGM
`provides scrambling otherwise provided by the interleaver.
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`C. Challenged Claims
`Claims 1, 11, 15, and 25 of the ’710 patent are independent. Claims 1
`and 3 are illustrative of the claims at issue and are reproduced below:
`1. A method of encoding a signal, comprising:
`obtaining a block of data in the signal to be encoded;
`partitioning said data block into a plurality of sub-blocks,
`each sub-block including a plurality of data elements;
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`2 A “generator” matrix (typically referred to by “G”) is used to create
`(generate) codewords. A parity check matrix (typically referred to by “H”)
`is used to decode a received message.
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`Patent 7,116,710 B1
`first encoding the data block to from a first encoded data
`block, said first encoding including repeating the data elements
`in different sub-blocks a different number of times;
`interleaving the repeated data elements in the first encoded
`data block; and
`second encoding said first encoded data block using an
`encoder that has a rate close to one.
`3.
`The method of claim 1, wherein said first encoding is
`carried out by a first coder with a variable rate less than one, and
`said second encoding is carried out by a second coder with a rate
`substantially close to one.
`Ex. 1001, 7:14–25, 7:28–31.
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`D. The Remaining Grounds of Unpatentability
`The following grounds of unpatentability remain at issue in this case
`(Inst. Dec. 31; Paper 72, 2–3):
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`Reference(s)
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`Frey3
`Frey and Divsalar4
`Frey, Divsalar, and
`Luby975
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`Basis
`§ 102(a)
`§ 103(a)
`§ 103(a)
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`Claims Challenged
`1 and 3
`1–8 and 11–14
`15–17, 19–22, and 24–33
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`3 Brendan J. Frey and David J.C. MacKay, Irregular Turbocodes,
`PROCEEDINGS OF THE 37TH ALLERTON CONFERENCE ON COMMUNICATION,
`CONTROL, AND COMPUTING (1999) at 241–248 (Ex.1002, “Frey).
`4 Dariush Divsalar, et al., Coding Theorems for “Turbo-Like” Codes,
`PROCEEDINGS OF THE THIRTY-SIXTH ANNUAL ALLERTON CONFERENCE ON
`COMMUNICATION, CONTROL, AND COMPUTING, Sept. 23–25, 1998, at 201–
`209 (Ex. 1003, “Divsalar”).
`5 Luby, M. et al., Practical Loss-Resilient Codes, PROCEEDINGS OF THE
`TWENTY-NINTH ANNUAL ACM SYMPOSIUM ON THEORY OF COMPUTING,
`May 4–6, 1997, at 150–159 (Ex. 1011, “Luby97”).
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`Patent 7,116,710 B1
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`II. ANALYSIS
`A. Claim Interpretation
`Because this inter partes review is based on a petition filed before
`November 13, 2018, we construe the claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b)
`(2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). In applying a broadest reasonable construction, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). Any special definition for a claim term must be set forth in
`the specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`1. “close to one” and “rate” (claims 1 and 3)
`Petitioner argues that the broadest reasonable construction of “close to
`one” as recited in claims 1 and 3 is “within 50% of one.” Pet. 24. Petitioner
`argues that this is consistent with the ’710 patent specification, which states
`that the inner code 210 of Figure 1, “can have a rate that is close to one, e.g.,
`within 50%, more preferably 10% and perhaps even more preferably within
`1% of 1.” Pet. 24–25 (quoting Ex. 1001, 2:62–64 and citing Ex. 1006,
`¶¶ 102–103).
`Patent Owner argues that the term “close to one” does not need to
`need to be construed (PO Resp. 19), but argues that the “term ‘rate’ in the
`context of an encoder would be ‘the ratio of the number of input bits to the
`number of output bits’” (id. at 18 (citing Ex. 2004 ¶¶ 59–60)). Citing the
`testimony of Mr. Mitzenmacher, Patent Owner argues that “there is no
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`dispute that ‘rate’ should be construed as ‘the ratio of the number of input
`bits to the number of output bits.’” PO Resp. 19; see Ex. 2033, 43:18–44:7;
`Ex. 2004 ¶¶ 59–60. Further, Patent Owner argues that the ’710 patent
`explains that the rate of the coder is the number of input bits divided by the
`number of output bits. PO Resp. 18; Ex. 1001, 2:44–47, 2:59–61.
`We agree with the parties determining that “close to one” as recited in
`claims 1 and 3 is construed as “within 50% of one.”
`With respect to “rate,” Petitioner does not challenge Patent Owner’s
`argument, which is supported by the ’710 specification. See Pet. Reply 5
`(discussing rate). Accordingly, we agree that “rate” is construed as “the
`ratio of the number of input bits to the number of output bits.”
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`B. Frey’s Status as Prior Art
`Petitioner contends Frey qualifies as a prior art printed publication
`under 35 U.S.C. § 102(a) relative to the May 18, 2000, filing date of the
`provisional application to which the ’710 patent claims priority. Pet. 5–6;
`see also Ex. 1001, [60]. Specifically, Petitioner asserts that Frey was
`“published in the Proceedings of the 37th Allerton Conference on
`Communication, Control and Computing” and that the “conference
`proceedings were published on or before March 20, 2000.” Id. at 25 (citing
`Ex. 1015 (showing stamps from the Cornell University Library and the table
`of contents for the conference) and Ex. 1006 ¶ 63).
`Patent Owner contends that Petitioner has not established that Frey is
`prior art under 35 U.S.C. § 102(a). PO Resp. 13–17. Specifically, Patent
`Owner argues that Petitioner is bound by its assertion in the Petition that
`March 20, 2000, is the publication date for Frey. PO Resp. 15 (citing
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`Pet. 25). Patent Owner also argues that the invention of the ’710 patent was
`conceived prior to March 20, 2000, and reduced to practice with reasonable
`diligence. PO Resp. 14–17 (citing Perfect Surgical Techniques, Inc. v.
`Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016)). Patent Owner
`cites testimony from Dr. Hue Jin, a co-inventor and various
`contemporaneous records in support of its attempt to antedate the alleged
`March 20, 2000, publication date for Frey.
`With respect to conception, Patent Owner argues that the declaration
`of Dr. Jin (Ex. 2020) with corroborating exhibits supports prior conception
`of the invention and removes Frey as prior art. Dr. Jin is a co-inventor and
`provides testimony and supporting documents that Patent Owner contends
`show that by early March 2000 the inventors “had developed the Irregular
`Repeat Accumulate code of the ’710 patent, including an outer coder that
`could be generalized as a low-density generator matrix (LDGM), permitting
`elimination of an interleaver and focus on irregularity, and an inner coder
`comprising an accumulator.” PO Resp. 15–16 (citing Ex. 2020 ¶¶ 5–7; Ex.
`2022; Ex. 2031 ¶¶ 13–15). Specifically, Patent Owner argues that in early
`March 2000, Dr. Jin created and ran simulations using files and code that
`reflected the structure identical to the IRA code of Figure 3 in the ’710
`patent. PO Resp. 16 (Ex. 2020 ¶¶ 8–14). Moreover, Patent Owner avers
`that actual reduction to practice occurred on March 20, 2000, when a
`simulation ran using the irregular degree profile written on March 13, 2000.
`PO Resp. 16 (citing Ex. 2020 ¶¶ 8, 15–18). Patent Owner asserts that the
`inventors proceeded diligently to constructive reduction to practice on
`May 18, 2000, which is the filing date for the ’710 patent. PO Resp. 16–17;
`Ex. 1001, [22].
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`In reply, Petitioner attempts to show that Frey was published even
`earlier—February 2000—based on testimony “from former co-chairs of the
`conference at which Frey was presented” regarding the shipment of
`conference proceedings. Pet. Reply 17 (citing Exs. 1032–1034). Petitioner
`also argues that Patent Owner’s evidence does not corroborate the alleged
`date conception or demonstrate sufficient diligence. Id. at 18–22. Patent
`Owner’s conception date, Petitioner argues, relies improperly on
`uncorroborated testimony from a co-inventor where corroboration beyond
`the inventor is necessary to avoid self-serving testimony. Pet. Reply 18
`(Singh v. Burke, 317 F.3d 1334, 1340–41 (Fed. Cir. 2003)). Petitioner also
`argues that Patent Owner’s documents and testimony fail to support Patent
`Owner’s dates because (1) Exhibit 2022 is an unwitnessed excerpt from an
`inventor’s notebook that fails to show a key feature of the invention (Pet.
`Reply 19); (2) the parameter files and software files cited as part of the pre-
`March 20, 2000, activity are undated or uncertain, at best, as to the date the
`files or software were run or updated (id. at 19–20 (discussing Exhibits
`2025, 2027, 2029 (undated parameter files) and Exhibits 2023, 2024, 2026,
`and 2028 (simulation software files)). See also Pet. Reply 20 n.5 (arguing
`that the inventor’s testimony regarding parameter files is the sole support for
`the dates for those files and that such testimony is not consistent or reliable).
`In its sur-reply, Patent Owner asserts that Petitioner’s shifting
`publication date is improper as untimely and prejudicial. PO Sur-Reply 2.
`1. Printed Publication Analysis
`We look to the underlying facts to make a legal determination as to
`whether a reference is a printed publication. Suffolk Techs., LLC v. AOL
`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
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`IPR2017-00210
`Patent 7,116,710 B1
`given reference qualifies as a prior art “printed publication” involves a case-
`by-case inquiry into the facts and circumstances surrounding its disclosure to
`members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
`2004). The key inquiry is whether the reference was made “sufficiently
`accessible to the public interested in the art” before the critical date. In re
`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221,
`226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a
`satisfactory showing that such document has been disseminated or otherwise
`made available to the extent that persons interested and ordinarily skilled in
`the subject matter or art exercising reasonable diligence, can locate it.”
`Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)
`(citation omitted).
`Petitioner has put forth date stamp evidence that a copy of the
`conference proceedings including Frey was at least received in the Cornell
`University Library by March 20, 2000. Ex. 1015, 16. Petitioner also put
`forth a declaration of Pamela Stansbury, an employee in the Original
`Cataloging Unit of the Cornell University Library, who testifies that, based
`upon her review of library records and her knowledge of standard operating
`procedures, Frey was “publicly available at the Cornell University Library as
`of March 20, 2000.” Ex. 1031 ¶ 4; see also Paper 22, 5 (Petitioner’s motion
`to submit supplemental information, which includes a description of
`Exhibit 1031); Paper 32 (granting Petitioner’s motion to submit
`supplemental information). Patent Owner does not dispute that Frey was
`publicly available as of March 20, 2000. See PO Resp. 15. Based on
`Petitioner’s evidence, we determine that Frey qualifies as a prior art printed
`publication as of March 20, 2000.
`
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`Patent 7,116,710 B1
`We need not consider Petitioner’s purported evidence of an even
`earlier publication date (see Pet. Reply 17–18), because we determine below
`that Patent Owner’s evidence is insufficient to antedate Frey’s March 20,
`2000, publication date.
`2. Patent Owner’s Attempt to Antedate Frey
`We now consider Patent Owner’s arguments attempting to antedate
`Frey by showing an earlier conception date and diligent reduction to
`practice. Regarding the type of proof required to corroborate inventor
`testimony on conception and reduction to practice, the Federal Circuit has
`stated:
`It is well established that when a party seeks to prove conception
`via the oral testimony of a putative inventor, the party must
`proffer evidence corroborating that testimony. . . . There is no
`particular formula that an inventor must follow in providing
`corroboration of his testimony of conception. Rather, whether a
`putative inventor's testimony has been sufficiently corroborated
`is determined by a ‘rule of reason’ analysis, in which ‘an
`evaluation of all pertinent evidence must be made so that a sound
`determination of the credibility of the inventor's story may be
`reached.’ However, that ‘rule of reason’ analysis does not alter
`the requirement of corroboration of an inventor's testimony.
`Evidence of the inventive facts must not rest alone on the
`testimony of the inventor himself.
`Singh, 317 F.3d 1240–41 (internal citations omitted) (quoting Price v.
`Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)). With respect to priority and
`antedating a reference, the Federal Circuit has stated the following regarding
`burdens and required documentary support:
`When the issue of priority concerns the antedating of a
`reference, the applicant is required to demonstrate, with sufficient
`documentation, that the applicant was in possession of the later-
`claimed invention before the effective date of the reference.
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`IPR2017-00210
`Patent 7,116,710 B1
`Demonstration of such priority requires documentary support,
`from which factual findings and inferences are drawn, in
`application of the rules and law of conception, reduction to
`practice, and diligence. The purpose is not to determine priority
`of invention—the province of the interference practice—but to
`ascertain whether the applicant was in possession of the claimed
`invention sufficiently to overcome the teachings and effect of an
`earlier publication of otherwise invalidating weight.
`In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphases added); see
`also Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d
`1004, 1008 (Fed. Cir. 2016) (citing Steed). “The principles are legal, but the
`conclusions of law focus on the evidence, for which the Board’s factual
`findings are reviewed for support by substantial evidence.” Steed, 802 F.3d
`at 1316; see also NFC Tech., LLC v. Matal, 871 F.3d 1367, 1371 (Fed. Cir.
`2017).
`Upon review of the parties’ evidence and argument, we are faced with
`conception evidence that is not corroborated and fails to show full
`possession of the entire invention. See PO Resp. 15–16 (Ex. 2020 ¶¶ 3–4;
`Ex, 2031 ¶¶ 13–15). The evidence Patent Owner cites are general directions
`to consider irregular outer codes (Ex. 2021) and an unwitnessed inventor
`notebook entry (Ex. 2022). Patent Owner does not provide sufficient
`corroboration for these exhibits or sufficient explanation that these
`documents show possession of the invention. In re Steed, 802 F.3d at 1316.
`Indeed, Patent Owner’s arguments do not point to any particular date of
`conception, but merely states that it was “before” March 20, 2000, based on
`these uncorroborated documents (Ex. 2021; Ex. 2022). PO Resp. 15–16.
`When pressed to establish a date, Patent Owner points only to early March
`dates, but does not point to a date by which possession was established.
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`IPR2017-00210
`Patent 7,116,710 B1
`Tr. 37:9–38:12 (discussing conception and reduction to practice dates).
`Based on the full record before us, Patent Owner has not provided sufficient
`and persuasive corroborated evidence of conception prior to March 20,
`2000, based on the Exhibits 2020, 2021 and 2022.
`Patent Owner’s antedating argument further posits that in early
`March, March 10 and March 20, 2000, simulations refelecting the structure
`of Figure 3 of the ’710 patent were produced. PO Resp. 15–16. (citing Ex.
`2020 ¶¶ 8–15). To evaluate this arugment, Patent Owner relies on inventor
`testimony interpreting uncorroborated parameter and software files . PO
`Resp. 15–16. (citing Ex. 2020 ¶¶ 8–15); see, e.g., Ex. 2023; Pet. Reply 20
`n.5. In particular, Patent Owner’s arguments rely on the testimony of Dr. Jin
`to establish the dates of creation of parameter files and simulation programs
`along with the dates these programs would have been run based on Dr. Jin’s
`regular practices regarding changelogs for the program files. PO Resp. 15–
`17; Ex. 2020 ¶¶ 3–19.
`We agree with Petitioner that on their face, the parameter files about
`which Mr. Jin testifies are undated. Pet. Reply 19 (Exhibits 2025, 2027,
`2029 (undated parameter files)). Dr. Jin testifies to his typical practices of
`noting significant changes in the logs and relies on that practice and file
`metadata to establish the date the simulations were run and the invention
`was reduced to practice. PO Resp. 16 (asserting that March 20, 2000 was
`when the undated degree profiles written on March 13, 2000, were run in the
`simulation); Ex. 2020 ¶¶ 8, 15–18. Yet the undated files do not corroborate
`Dr. Jin’s testimony on the relevant dates.
`Under the rule of reason, we require corroborating evidence sufficient
`to support Dr. Jin’s testimony that early March, either March 10 or March
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`Patent 7,116,710 B1
`20, 2000, was the reduction to practice date. PO Resp. 16; see Tr. 38:4–11.
`Yet the documents put forth by Patent Owner to allegedly support Dr. Jin’s
`testimony are not probative evidence on their own; they too rely on Dr. Jin’s
`testimony for interpretation. See, e.g. Ex. 2020 ¶¶ 3–19 (discussing
`Ex. 2023–2029). We also note that Patent Owner has not submitted the
`metadata Dr. Jin relies on to establish the dates in his testimony. See Ex.
`2020 ¶¶ 15–18. And, even if we were to credit the existence of the
`metadata, we find that Dr. Jin’s testimony establishes that his practices
`regarding changelog dating for programs did not always reflect whether the
`contents of the files were altered after the change date. Pet. Reply 20 n.5
`(citing Ex. 1063). Absent other corroborating evidence, Dr. Jin’s testimony
`about metadata and about his usual practices is not sufficient to establish the
`date on which the simulation was run as the reduction to practice date. PO
`Resp. 16.
`Upon review of the parties’ evidence and argument, Patent Owner’s
`evidence is not sufficient to establish conception in early March 2000 or an
`actual reduction to practice date of March 20, 2000, by a preponderance of
`the evidence. Although we agree that the evidence shows activity in the
`form of an email (Ex. 2021) and an inventor notebook entry (Ex. 2022), both
`of these documents require interpretation
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