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`Paper No. ___
`Filed: March 19, 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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`_____________________________
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`APPLE INC.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2017-00210
`Patent No. 7,116,710
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`
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`_____________________________
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`
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`PATENT OWNER’S SURREPLY
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`
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`TABLE OF CONTENTS
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`I.STATEMENT OF PRECISE RELIEF REQUESTED .......................................... 1
`II.ARGUMENT ...................................................................................................... 1
`A.
`Petitioner fails to establish Frey is prior art ......................................... 1
`B.
`Frey does not inherently disclose “partitioning said data block” ......... 2
`C.
`Petitioner’s attempt to re-write Frey should be rejected ...................... 3
`D.
`There is no motivation to combine Divsalar and Frey ......................... 4
`E.
`Reasonable expectation of success was never addressed ..................... 5
`F.
`The new experimental data should be rejected .................................... 6
`G. New attorney-generated Tanner graphs ............................................... 7
`III.CONCLUSION .................................................................................................. 8
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`-i-
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`In view of new argument and evidence submitted in Petitioner’s Reply
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`briefing, the Board (Papers 51, 53, 55) authorized a short sur-reply but prohibited
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`submission of rebuttal evidence.
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`The POR explains, inter alia, that the petition case is based on an inaccurate
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`and incomplete assessment of the cited references, fails to account for the
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`significant unpredictability in the field, and wholly lacks any discussion of
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`reasonable expectation of success. Such deficiencies are simply incurable in the
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`Reply. Moreover, the only proposed modification to an RA code in the petition is
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`directed to the non-prior art Dr. Khandekar thesis and is wholly disconnected from
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`the cited references—selecting a repetition profile that is undermined by express
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`disclosure in Divsalar and the testimony of Petitioner’s own witness. POR 46-49.
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`Yet, the Reply materials are replete with untimely and improper new argument and
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`evidence—including submission of newly generated experimental data, attorney-
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`generated Tanner graphs, and a declaration from a new witness. And the Reply (2)
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`provides no reasonable justification for replacing Dr. Davis with a new witness,
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`who remains available for deposition in the United States. EX1073, ¶3.
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`Accordingly, the Reply materials should be disregarded and given no weight.
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`II. ARGUMENT
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`A.
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`Petitioner fails to establish Frey is prior art
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`The only specific date identified in the petition regarding Frey’s alleged
`-1-
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`
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`publication is “March 20, 2000.” Pet. 25. Petitioner now asserts that Frey was
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`published by February 2000 on the basis of allegedly being shipped “on or around
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`February 16, 2000.” Reply 17. This improper pivot to a new publication theory is
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`precisely the concern Caltech identified in its Request for Rehearing. Paper 36.
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`The Board found Caltech’s concerns at the time to be premature, thereby
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`confirming the petition had not asserted any date other than March 20, 2000, and
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`declined to “speculat[e] as to what Petitioner may do in the future.” Paper 42, 3.
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`The new publication theory should be rejected as untimely and unduly prejudicial.
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`Even if considered, the new evidence does not establish Petitioner’s new
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`publication date of February 16, 2000. The destination of the alleged shipment
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`was the conference hosts, not members of the public. Id. From there, it would
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`have had to further travel elsewhere (e.g. Cornell), and then be made accessible to
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`the public—none of of those critical facts are addressed by Petitioner.
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`B.
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`Frey does not inherently disclose “partitioning said data block”
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`The Reply (1) misstates the POR argument. Cf. POR at 21-24. Frey makes it
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`clear that the bottom circles of Figure 2 are codeword bits, something
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`misapprehended by Dr. Davis. EX1002, p. 244; see also POR at 21; EX2004 ¶65.
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`And the Reply still does not explain why mere disclosure of repetition would
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`necessarily constitute “partitioning said data block into a plurality of sub-blocks.”
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`Cf. POR 23-24. Disproving an unsubstantiated inherency theory is not Caltech’s
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`-2-
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`burden, yet Dr. Mitzenmacher’s testimony on this point remains unrebutted. 1
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`C.
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`Petitioner’s attempt to re-write Frey should be rejected
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`The Reply (5) argues that Frey states its convolutional code has a rate of 2/3,
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`and urges the Board accept the raw number without consideration of what that
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`number means in the context of Frey, or how it compares to a conventional rate
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`calculation. But Dr. Davis conceded that the rate equations in Frey are erroneous.
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`EX2033, 14. Dr. Mitzenmacher explained that the number “2/3” is only achieved
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`by misapplying a systematic calculation to a non-systematic component, where the
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`repeated bits are treated as both input and output to the convolutional code. POR
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`25-28. But Frey’s convolutional code is a non-systematic component that outputs
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`only parity bits (Dr. Davis agreed) and the rate of the convolutional code must be
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`at least 2 when applying the conventional rate interpretation (i.e., input/output).
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`The Reply (5-6) now advances a new theory claiming that Frey’s
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`convolutional code’s output “includes both systematic and parity bits.” But this
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`conclusory assertion is at odds with the express disclosure of Frey and Dr. Davis
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`testimony. Frey describes its convolutional code as outputting only parity bits.
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`1 The Reply (5) accuses Caltech of mischaracterization, but then immediately
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`agrees with Caltech’s characterization—i.e., that “block length N” (EX1002, p.
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`245) refers to “output length,” not input. Even if the number of information bits is
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`in an output codeword is 5,000, this not a disclosure of the format of the data input.
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`-3-
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`
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`This is clearly illustrated in Figure 1 of Frey (see also, POR 25 (annotated Fig. 1))
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`showing only parity bits being output. Dr. Davis confirmed that the convolutional
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`code only outputs parity bits. EX2033, 128:8-10 (“Q. So the convolutional coder
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`in the 4th picture outputs 10 parity bits; do you agree? A. Yes, it does.”); Id. at
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`131:1-5. Had the Frey paper intended its convolutional code to output something
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`other than parity bits, it would not have described that coder as outputting only
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`parity bits. The Reply’s attempt to rewrite Frey’s disclosure should be rejected.
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`D. There is no motivation to combine Divsalar and Frey
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`Caltech’s POR pointed out the petition ignored Frey’s disclosure that its
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`codes performed either very poorly or not at all. The Reply (7) newly argues that
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`Frey shows improvement “in at least some cases” and misstates Caltech’s
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`argument. Eight of the nine profiles Frey tested were unworkable. POR 32-34.
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`The ninth profile exhibited an error floor an order of magnitude worse than
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`Berrou’s—which a POSA would view as rendering that code unusable as a
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`practical matter—and, as a whole, underperformed compared to Berrou’s code.2
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`POR 35-39. The petition does not address any of this, and as explained (e.g., POR
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`38-39), the petition’s selective reading of Frey and failure to account for Frey’s
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`2 Reply (7) attempts to “make lemonade” out of Frey’s poor results by newly
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`asserting the Frey code would perform better in a noisy channel only application,
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`but fails to establish such applications even exist.
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`-4-
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`disclosure of unpredictability and poor results underscores a defective inquiry
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`under Graham. Such a deficiency cannot be cured with new argument in Reply.
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`Moreover, Petitioner fails to rebut the fact that Frey is a non-enabling
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`disclosure—a fact that critically undercuts the asserted obviousness challenge. As
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`Dr. Mitzenmacher explains, Frey fails to provide sufficient detail regarding several
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`parameters it identifies as having a critical effect on coding error. As such, a
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`POSA could not reproduce the results of Frey, let alone improve the codes, without
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`extensive experimentation. See, e.g., EX2004 ¶¶52, 95; POR 6, 37-38. Petitioner
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`provides no response to this or to Frey’s express call for further experimentation.
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`The theory of obviousness based on a purported email between Dr. Frey and
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`Dr. Divsalar (Reply 12) is irrelevant and merely an attempt to prejudice Caltech—
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`and was already rejected in the Board’s institution decision. Paper 18, p. 25. Dr.
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`Divsalar was not working on RA codes at the time. EX1064 187:14-16. A more
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`reasonable interpretation might be Dr. Frey seeking guidance as to how he might
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`make his codes functional—consistent with the non-enabling paper’s call for
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`further investigation. EX1002, 7. Even viewed in a light most favorable to
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`Petitioner, a non-public communication is irrelevant to the perspective of a POSA.
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`E. Reasonable expectation of success was never addressed
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`The POR (3-5, 31, 46-47) points out that the petition materials wholly lack
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`discussion of reasonable expectation of success or the (now conceded)
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`-5-
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`unpredictability in the field. See, e.g., Federal Register Vol. 77, No 157 at 48767
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`(improper Reply). As such, any discussion of reasonable expectation of success
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`presented in the Reply (e.g., 9-11) is improperly new and should be ignored. 3
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`F.
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`The new experimental data should be rejected
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`The new experimental data (EX1068) and corresponding testimony
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`(EX1065) and argument (Reply 10-11) should be disregarded for a number of
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`reasons. First, the material is improper as presenting an entirely new theory of
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`unpatentability. The petition only proposed modifying a repeat-three RA code
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`such that information bits are repeated 2 and 4 times, which Caltech addressed in
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`detail (e.g., POR 44-49). Petitioner now abandons this theory and pivots to a new
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`one—repeating information bits 3 and 7 times. Reply 10-11.
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`Second, the experimental data materials are not contemporaneous with the
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`“relevant time” and irrelevant to the understanding of a POSA. It is completely
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`irrelevant what Dr. Frey claims he could do in the year 2018 when armed with
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`Caltech’s patent disclosures and publications, Dr. Jin’s original coding work,
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`comtemporary resources, and some 18 years of post-filing date knowledge. The
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`materials present zero reflection of the environment in 1999-2000, and provide no
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`3 The Reply (9) is also confusing in acknowledging that modifying error
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`correction codes was difficult, unpredictable, and in need of experimental support,
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`yet asserting that fundamental redesign of Divsalar would have been “trivial.”
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`-6-
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`information as to why a POSA would make the proposed modification 18 years ago
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`or reasonably expected success at that time. 4 It is pure improper hindsight.
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`Had Petitioner presented the experimental data in the petition, Caltech’s
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`witnesses would have been able to provide rebuttal testimony explaining its
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`unreliability—including numerous technical flaws, evident cherry-picking of
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`parameters, and unexplained selection of a single degree profile that in no way
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`flows from any art reference at issue in this case. For example, the Reply materials
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`provide no justification for the Eb/No Gaussian noise parameters highlighted in ¶47
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`of Dr. Frey’s declaration (-.8, .1, .8), which differ from the “plot” depicted in the
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`graphs in ¶53 (data points between Eb/No 0.2 and 0.8). While the “plot” in ¶53
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`forms the basis of Petitioner’s comparison, the origin of the plotted points is
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`entirely unknown and inconsistent with the identified simulation parameters (¶53
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`does not even assert the “plot” was generated from the identified simulation).
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`EX1068 is misleadingly presented as a single document when it is, in fact, an
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`amalgamation of five independent documents. The new data is untimely,
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`unexplained, unreliable and fails to comply with 37 C.F.R. §42.65.
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`G. New attorney-generated Tanner graphs
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`Petitioner relies on new exhibits 1046, 1057, and 1058, which purport to be
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`4 E.g., Dr. Frey (¶45) used Matlab, a software program that received over 35
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`version updates since May 2000. See https://en.wikipedia.org/wiki/MATLAB.
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`-7-
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`new Tanner graph representations. These graphs are not in the petition and should
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`be rejected as untimely. Moreover, the argument (Reply 9-10) is logically flawed.
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`Simply because Petitioner’s lawyers generated similarly-styled graphs in preparing
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`the Reply in no way demonstrates that the underlying codes reasonably would have
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`been combined 18 years ago or that a POSA would have expected such a
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`modification to be successful in improving error-correction.
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`Furthermore, the new “Tanner graph” exhibits are erroneous and tainted
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`with impermissible hindsight. Prior to Caltech’s IRA patents, Tanner graphs were
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`conventionally presented as bipartite graphs depicting the relationship between a
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`codeword and parity check equations. See, e.g., EX1006 ¶¶55-56; EX1004 p. 253.
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`Instead of merely describing a relationship between a codword and parity check
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`equations, Caltech’s inventors provided a Tanner graph depiction in a novel way to
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`represent the process of encoding in the IRA code. See ’710 patent, Fig. 3;
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`EX2031 ¶15. Petitioner does not provide any evidence that a POSA would have
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`applied Caltech’s novel Tanner graph representation to any code at the time. As
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`Dr. Divsalar explained, and Petitioner does not rebut, the Tanner graph
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`representations provided in Caltech’s patents were a significant contribution to the
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`field. EX2031 ¶15, 26; EX1064 81:6-23.
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`III. CONCLUSION
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`Accordingly, the Reply materials should be given no weight.
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`-8-
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`Date: March 19, 2018
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`Respectfully submitted,
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`
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-9-
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Surreply was served on this 19th
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`day of March, 2018, on the Petitioner at the electronic service addresses of the
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`Petitioner as follows:
`
`
`Richard Goldenberg
`Dominic Massa
`Michael H. Smith
`James M. Dowd
`Mark D. Selwyn
`Arthur Shum
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`james.dowd@wilmerhale.com
`mark.selwyn@wilmerhale.com
`arthur.shum@wilmerhale.com
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`Date: March 19, 2018
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`Respectfully submitted,
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`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-10-
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