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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
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`Patent Owner.
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`—————————————————
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`Case IPR2017-00210
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`U.S. Patent No. 7,116,710
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`—————————————————
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`PETITIONER’S OPPOSITION TO
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`PATENT OWNER’S MOTION TO EXCLUDE
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`Case IPR2017-00210
`U.S. Patent No. 7,116,710
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` Table of Contents
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`Introduction .......................................................................................................... 1
`I.
`II. Argument ............................................................................................................. 2
`A. Exs. 1046, 1057, 1058, 1061, 1062, 1064, 1065, and 1068: Caltech’s
`Argument That These Are “New Evidence” For “New Arguments” Should Be
`Rejected .................................................................................................................. 2
`B. Exs. 1046, 1057-1058, 1061, 1065, and 1068: Caltech’s Claim To
`Prejudice Should Be Rejected Because (1) The Board Is Well Suited To Assign
`The Proper Weight to Evidence, (2) Caltech Has Had Ample Opportunity To
`Respond, and (3) Caltech Can Still Respond In Its Sur-Replies And Oral Hearing
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`7
`C. Exs. 1032-1034 and 1037: Supplemental Information Was Timely And
`Admissible Because It Was Properly Filed In Accordance With A Board Order
`And Supports The Position Taken In The Petition ................................................ 9
`D. Caltech’s Insinuations Regarding The Veracity Of Dr. Davis’s
`Unavailability Are Baseless And Rebutted By Sworn Testimony ....................... 12
`E. Caltech Chose Not To Depose Dr. Frey And Faces No Prejudice Because
`Dr. Frey Agreed With Dr. Davis’s Testimony, Considered Caltech’s Criticisms,
`And Stood Available For Cross-Examination. ..................................................... 12
`F. There Is No Cause To Exclude Ex. 1067 Because The Board Can Assign The
`Appropriate Weight To It ..................................................................................... 13
`G. Exs. 1013, 1029-1031, 1035, 1036, 1038-1045, 1047-1049, 1053, 1055,
`1059, and 1060 Are Properly In The Record For Consideration By The Board . 14
`III. Conclusion ......................................................................................................... 15
`
`
`ii
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`Case IPR2017-00210
`U.S. Patent No. 7,116,710
`I.
`Introduction
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`Caltech’s motion to exclude is yet another attempt by Caltech to distract
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`from the invalidity of the claims and avoid the Board’s consideration of the merits.
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`First, a motion to exclude is not the appropriate vehicle for objecting to the
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`scope of reply evidence. As the Board has “stated repeatedly”:
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`a motion to exclude is not a vehicle for arguing that Petitioner’s
`arguments and supporting evidence are outside the proper scope of a
`reply. A motion to exclude evidence for the purpose of striking or
`excluding an opponent’s brief and/or evidence that a party believes
`goes beyond what is permitted under 37 CFR § 42.23 is improper. An
`allegation that evidence does not comply with 37 CFR § 42.23 is not a
`sufficient reason under the Federal Rules of Evidence for making an
`objection and requesting exclusion of such evidence.
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`Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01979, Paper No. 62 at 66 (Mar.
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`15, 2017) (internal footnote citing five other cases to this effect omitted.).
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`Caltech’s brief merely rehashes arguments related to the scope of evidence
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`that it already made in its motion for sanctions (paper 50). Even if it were proper
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`for Caltech to raise these arguments again here (and it is not), Caltech’s motion
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`should still be denied because the challenged exhibits were properly submitted in
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`support of the Petition (paper 5) and in response to arguments made by Caltech in
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`its POR (paper 35). Petitioner has raised no new arguments, and instead Caltech
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`continues to mischaracterize legitimate rebuttals of its positions as “out of scope”
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`1
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`Case IPR2017-00210
`U.S. Patent No. 7,116,710
`(apparently out of a hope to avoid addressing their merits).
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`Second, Caltech’s repeated assertions of prejudice are baseless. Caltech has
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`knowingly elected not to use evidentiary tools at its disposal, including choosing
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`not to cross-examine Petitioner’s experts. In addition, the Board has already
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`generously accommodated Caltech by granting it leave to file a sur-reply and raise
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`its allegations that deposition questions exceeded the scope of direct testimony
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`through a motion for sanctions.
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`II. Argument
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`A. Exs. 1044-1049, 1057-1061, 1062, 1064, 1065, and 1068: Caltech’s
`Argument That These Are “New Evidence” For “New Arguments”
`Should Be Rejected
`Caltech argues that portions of the deposition transcripts of Dr.
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`Mitzenmacher (Ex. 1062) and Dr. Divsalar (Ex. 1064) as well as Exs. 1044-1049,
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`1057-1061, 1062, 1064, 1065, and 1068should be excluded under 35 CFR
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`§42.23(b) because the evidence “has no relevance to the witnesses’ direct
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`testimony” and because the deposition questions were “beyond the scope of
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`witness’s direct testimony.”1 Caltech is mistaken.
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`1 Caltech cites Intelligent Bio-Systems, Inc. v. Illumina Cambridge as purported
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`support for its exclusion argument. 821 F.3d 1359, 1370 (Fed. Cir. 2016).
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`However, Bio-Systems Inc. involved an actual shift in the petitioner’s theory of
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`2
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`U.S. Patent No. 7,116,710
`First, Caltech’s challenge should be rejected because it is an improper
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`attempt to challenge the scope of Petitioner’s evidence. Palo Alto Networks, Inc.,
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`IPR2015-01979, Paper No. 62 at 66 (Mar. 15, 2017).
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`Second, as explained in Petitioner’s Opposition to Patent Owner’s Motion
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`for Sanctions, the questions raised during the cross-examinations of Dr.
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`Mitzenmacher (Ex. 1062) and Dr. Divsalar (Ex.1064) were properly raised in
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`rebuttal of statements and opinions proffered by Caltech’s experts in declaration
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`testimony and in support of arguments made in the Petition. See Paper 52; Ex.
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`1074 (identifying the relevance for each challenged line of questioning).
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`For the same reasons, as discussed below, the exhibits used to cross-examine
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`and rebut the declaration testimony of Caltech’s experts (including Exs. 1044-
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`1049, 1057-1060, and 1068) as well as Dr. Frey’s declaration regarding these
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`exhibits (Ex. 1065) are also properly in the record. See Vibrant Media, Inc. v.
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`obviousness from using a reference as-is to modifying that reference. Id. at 1366
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`(“[T]he Reply presents new issues by changing the unpatentability rationale from
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`express reliance on Zavgorodny's deprotecting conditions, to asserting that those
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`conditions would have been obvious to modify.”) (citation omitted). Caltech can
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`identify no analogous situation in the present case because no new arguments and
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`no new theories of invalidity have been presented.
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`3
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`U.S. Patent No. 7,116,710
`General Electric Co., IPR2013-00170, Paper No. 56 at 31-32 (June 26, 2014)
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`(“[T]he mere fact that the rebuttal declaration includes evidence not discussed
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`specifically in the petition is insufficient to establish the impropriety of such
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`evidence, much less inadmissibility under the Federal Rules of Evidence. The very
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`nature of a reply is to respond to the opposition... The need for relying on evidence
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`not previously discussed in the petition may not exist until a certain point has been
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`raised in the patent owner response.”) (citations omitted).
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`For example, Caltech argues that Ex. 1046 “lacks relevance” because “the
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`petition never discusses reasonable expectation of success.” Mot. 2-3. In fact, the
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`Petition clearly explains that the modification of Divsalar would have been trivial,
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`showing that a person of ordinary skill in the art (“POSA”) would have had a
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`reasonable expectation of success. Pet. 44-45. Furthermore, it is irrelevant
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`whether the Petition expressly uses the words “reasonable expectation of success.”
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`Caltech’s POR asserts that “it would not have been apparent to a person of skill at
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`the time of the invention of IRA codes to apply irregularity (whether as a general
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`concept, or as specifically taught in Frey) to Divsalar codes with any reasonable
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`expectation of success.” POR 4. Dr. Divsalar’s declaration likewise asserts that
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`the proposed change is not a trivial change. Ex. 2031 ¶ 33 (“It would not have
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`been trivial or obvious to a person of ordinary skill to modify [the Divsalar] RA
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`code paper to create IRA codes.”). Petitioner is entitled to respond to these
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`4
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`U.S. Patent No. 7,116,710
`arguments in support of its contention that these modifications would have been
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`trivial. Petitioner’s demonstration of the simplicity of such a combination (as
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`originally argued) is not a new argument or theory of invalidity.
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`Caltech similarly argues that Ex. 1068 “must be excluded as it is a
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`completely new and untimely theory.” Mot. 3-4. Caltech is mistaken. Again, the
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`Petition argued that modifying Divsalar would have been simple to implement for
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`a POSA and that a POSA would have understood that doing so would improve
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`performance. Pet. 44-45, 48. Caltech challenged these contentions, and Petitioner
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`was thus entitled to rebuttal by showing that the modification would have been
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`simple and improved performance. See Ex 2031 ¶ 9; 33; Reply 9-11. No new
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`theories or arguments have been presented, and Petitioner was not required to
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`foresee every baseless argument Caltech might ultimately raise. See Volkswagen
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`Grp. of Am., Inc. v. Emerachem Holdings, LLC, IPR2014-01555, Paper No. 36 at 5
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`(Oct. 9, 2015) (“[A] petitioner legitimately may respond to arguments made in an
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`opposition….a petitioner does not have to anticipate all possible arguments which
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`a patent owner made present in an opposition on the merits.”).
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`Caltech also argues that Ex. 1068 tests Divsalar’s code in ways not presented
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`in the Petition. Mot. 3. Caltech is mistaken. The Petition explained that it would
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`have been obvious to modify Disvalar to use Frey’s repeater, “which repeats
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`different information bits different numbers of times.” Pet. 44-47. Dr.
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`5
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`U.S. Patent No. 7,116,710
`Mitzenmacher argued that a POSA would not have expected the proposed
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`modification of Divsalar to be successful and that it “would be expected to be
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`unworkable.” Ex. 2004 ¶ 108; 121. Petitioner was entitled to a rebut this
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`argument. Exhibit 1068 does so by showing that modifying Divsalar, as explained
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`in the Petition, was trivial and improves performance.
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`Caltech argues that Exs. 1057 and 1058 “have no relevance to the witnesses’
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`direct testimony.” Mot. 2. This is false. Dr. Divsalar testified that a POSA would
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`have been “deterred” from making the RA code irregular because doing so “would
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`drastically reduce the coding rate.” Ex. 2031 ¶ 36. Exs. 1057 and 1058 show how
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`the coding rate stays the same despite the change and therefore are properly in the
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`record to rebut Dr. Divsalar’s flawed testimony. Reply 12.
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`Caltech argues that Ex. 1061 (a 2005 paper by Dr. Divsalar) “has zero
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`relevance to any issues in this case.” Mot. 3. This is incorrect.2 Dr. Divsalar’s
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`declaration stated that “the irregular repeat accumulate (IRA) codes invented by
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`2 Evidence is relevant if “it has any tendency to make a fact more or less probable
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`than it would be without the evidence” and “the fact is of consequence in
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`determining the action.” Fed. R. Evid. 401; Apple Inc. v. DSS Tech. Mgmt., Inc.,
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`IPR2015-00369, Paper 40 at 36 (PTAB June 17, 2016) (“there is a low threshold
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`for relevancy.”) (citations omitted)
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`6
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`U.S. Patent No. 7,116,710
`Dr. Jin, Dr. Khandekar, and Dr. McEliece … are not a subset of the RA codes
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`described in my paper.” Ex. 2031 ¶ 13. In contrast, in 2005 (before he had a
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`reason to advocate for Caltech), Dr. Divsalar published Ex. 1061 in which he
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`agreed that a paper titled “Irregular repeat-accumulate codes” authored by Dr. Jin,
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`Dr. Khandekar, and Dr. McEliece “generalized the notion of RA codes by allowing
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`irregular repetition of the input bits.” Ex. 1061. Ex. 1061 thus impeaches Dr.
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`Divsalar’s declaration with his own prior inconsistent statement. The
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`inconsistency of these two statements demonstrates that Dr. Divsalar is providing a
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`biased opinion regarding the issues in this case. The priority date of the patent is
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`irrelevant to whether Dr. Divsalar’s statements are inconsistent and to whether he
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`is biased. Ultimately, the statement in Ex. 1061 was made before Dr. Divsalar was
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`hired as Caltech’s expert witness, and the statement in his declaration was made
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`after Dr. Divsalar was hired as Caltech’s expert witness. The credibility of
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`Caltech’s expert witness is of consequence in determining this action.
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`Caltech argues that Dr. Frey’s declaration (Ex. 1065) should be excluded
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`because it includes “portions discussing experimental data and attorney created
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`graphs/figures.” Mot. 4. But as discussed above, the data, graphs, and figures are
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`properly in the record because they rebut Caltech’s expert’s direct testimony.
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`Therefore, the sections of Ex. 1065 discussing these exhibits are proper.
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`B.
`Exs. 1044-1049, 1057-1061, 1062, 1064, 1065, and 1068: Caltech’s
`Claim To Prejudice Should Be Rejected Because (1) The Board Is Well
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`7
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`U.S. Patent No. 7,116,710
`Suited To Assign The Proper Weight to Evidence, (2) Caltech Has Had
`Ample Opportunity To Respond, and (3) Caltech Can Still Respond In
`Its Sur-Replies And Oral Hearing
`Caltech argues that Exs. 1044-1049, 1057-1061, 1062, 1064, 1065, and 1068
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`should be excluded as unduly prejudicial. Mot. 4. Caltech does not face any
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`legitimate prejudice, and there is no cause to exclude the challenged exhibits.
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`First, the Board “sitting as a non-jury tribunal, is well positioned to assign
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`appropriate weight to the evidence without the need for formal exclusion.”
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`Samsung Electronics Co., Ltd et al. v. Affinity Labs Of Texas, LLC, IPR2014-
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`00407, Paper No. 48 at 22 (July 20, 2015). Even if the evidence were likely to bias
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`laypersons on a jury (which it is not), the need to exclude such evidence would not
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`apply to experienced administrative judges. As the Board notes in Nichia Corp. v.
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`Emcore Corp., “[t]here is a strong public policy for making all information filed in
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`a non-jury, quasi-judicial administrative proceeding available to the public,
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`especially in an inter partes review which determines the patentability of claims in
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`an issued patent. It is better to have a complete record of the evidence submitted
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`by the parties than to exclude particular pieces.” IPR2012-00005, Paper No. 68 at
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`59 (Feb. 11, 2014).
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`Second, Caltech cannot credibly claim prejudice when it has abstained from
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`using evidentiary tools at its disposal. For example, rather than challenging Dr.
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`Frey’s testimony through cross-examination, Caltech seeks, instead, to exclude his
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`8
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`U.S. Patent No. 7,116,710
`entire declaration (Ex. 1065). Mot. 5-8. There is no basis to exclude Dr. Frey’s
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`declaration when Dr. Frey was available for deposition, and Caltech elected not to
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`cross-examine him. Similarly, Caltech now seeks to exclude the statements of
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`several declarants in connection with the Allerton Conference (which were served
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`on Caltech more than two months before its POR) instead of challenging their
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`opinions in cross-examination or addressing the evidence in its POR. Mot. 10.
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`Finally, Caltech has been amply accommodated by the Board, which has
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`granted it leave to file a sur-reply and to challenge the scope of deposition
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`questions through a motion for sanctions. The nature of the IPR proceeding
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`permits Petitioner (which has the burden to establish unpatentability), the last reply
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`prior to the oral hearing. Caltech appears to suggest that it faces prejudice because
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`it will not have the last word (despite having been granted a sur-reply).
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`Nonetheless, Caltech may still address all these issues at oral hearing.
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`For at least the reasons above, Petitioner respectfully submits that Caltech
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`faces no “undue prejudice” and should be denied its motion to exclude the
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`challenged exhibits.
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`C. Exs. 1032-1034 and 1037: Supplemental Information Was Timely
`And Admissible Because It Was Properly Filed In Accordance With A
`Board Order And Supports The Position Taken In The Petition
`Caltech argues that Declarations of Dr. Hajek, Dr. Basar, and Dr. Sreenivas
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`(Exs. 1032-1034) and the letter from Dr. Sreenivas (Ex. 1037) should be excluded
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`9
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`U.S. Patent No. 7,116,710
`for lack of relevance and undue prejudice. Mot. 9-10. Caltech further erroneously
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`argues that these exhibits support “an improper new argument.” Id.
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`Exs. 1032-1034 and 1037 were properly served in response to Caltech’s
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`objections to evidence and submitted in accordance with the Board’s express grant
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`of permission to file supplemental information. Paper 32. The Board previously
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`rejected Caltech’s challenge regarding the submission of these same exhibits
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`(Papers 23 and 32) as well as its motion for rehearing on this issue (Papers 36 and
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`42). Caltech now seeks to re-hash that same issue for a third time. The Board
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`should reject Caltech’s arguments for a third time.
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`Caltech erroneously contends that these exhibits “are cited to support an
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`improper new argument.” Mot. 11 (“[t]he petition claimed that Ex. 1002 was
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`‘published on or before March 20, 2000’… [Petitioner] changed its position to a
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`publication date of February 16, 2000.”). First, Caltech’s motion mischaracterizes
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`Petitioner’s Reply, which simply states that each of Exs. 1032-1034 “confirms that
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`the published conference proceedings would have shipped to conference attendees
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`on or around February 16, 2000” and taken together with Ex. 1037 “confirms that
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`Frey was publicly available in printed form no later than February 2000.” Reply
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`17 (emphasis added). Second, the Petition argued that Ex. 1002 was published “on
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`or before March 20, 2000.” Mot. 10. Of course, February 2000 is “on or before
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`March 20, 2000” and thus Petitioner has not submitted any new arguments.
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`10
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`U.S. Patent No. 7,116,710
`Furthermore, Caltech’s attempt to antedate the Frey reference shifted the
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`burden of production to Petitioner regarding the priority of Frey. Petitioner was
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`thus entitled to submit evidence in response to Caltech’s arguments. See Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015)
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`(“Dynamic did not have the burden of producing evidence relating to the Raymond
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`provisional application until after National Graphics made its argument regarding
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`reduction to practice. As a result, it was not necessary for Dynamic to prove in its
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`petition that Raymond was entitled to the filing date of its provisional
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`application.”); id. at 1379 (“The burden of production may entail ‘producing
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`additional evidence and presenting persuasive argument based on new evidence or
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`evidence already of record.’”) (citation omitted). Caltech further erroneously
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`contends that Ex. 1038 is “inconsistent” with Exs. 1032-1034 and 1037. However,
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`the February 21, 2000 bill of lading (Ex. 1038) only reinforces that “the conference
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`proceedings would have shipped to conference attendees on or around February
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`16, 2000” (Reply 17) and that “Frey was publicly available in printed form no later
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`than February 2000” (Reply 17) which is, as noted above, “on or before March 20,
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`2000” (Pet. 5). Again, no new arguments have been presented.
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`Caltech further argues that it “has no meaningful opportunity” to address this
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`evidence. Mot. 13. This is false. Exs. 1032-1034, 1037 were promptly served on
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`Patent Owner on July 14, 2017 in response to its objections, more than two months
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`11
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`U.S. Patent No. 7,116,710
`before its POR. Paper 22 at 2, 11. Thus, Caltech had ample opportunity to
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`consider these exhibits, and to depose the declarants, prior to filing its POR.
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`Caltech cannot credibly argue that it faces prejudice now when it chose not to
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`depose the declarants and also chose not to address these exhibits in its POR.
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`D. Caltech’s Insinuations Regarding The Veracity Of Dr. Davis’s
`Unavailability Are Baseless And Rebutted By Sworn Testimony
`In its efforts to distract from the merits of this case, Caltech resorts to a
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`baseless ad hominem attack on Dr. Davis’s integrity. Mot. 5-8.
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`As Dr. Davis explains in sworn testimony (Ex. 1073),3 he received the
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`Fulbright Global Award. The Fulbright is a prestigious academic exchange
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`program “designed to expand and strengthen relationships between the people of
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`the United States and citizens of other nations” that requires participants to “give
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`public talks, mentor students, and otherwise engage with the host community, in
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`addition to their primary research or teaching activities.”4 If Caltech disputes the
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`authenticity of Dr. Davis’s award and corresponding obligations, it was free to
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`cross-examine Dr. Davis on how his time was spent during the preparation of the
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`reply briefs.
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`E. Caltech Chose Not To Depose Dr. Frey And Faces No Prejudice
`Because Dr. Frey Agreed With Dr. Davis’s Testimony, Considered
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`3 Caltech did not object to Petitioner’s request to file this Exhibit (See Paper 53).
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`4 https://awards.cies.org/content/fulbright-global-scholar-award. Ex. 1075.
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`12
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`Caltech’s Criticisms, And Stood Available For Cross-Examination
`Caltech argues that Dr. Frey’s declaration (Ex. 1065) should be excluded
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`because Caltech had no “meaningful opportunity” to cross-examine Dr. Frey and
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`that it was prejudiced “because Dr. Frey has not addressed or considered Dr.
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`Davis’s cross-examination testimony.” Mot. 6. Caltech’s arguments are baseless.
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`First, Dr. Frey states unequivocally that he has “reviewed the Petition and
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`declaration of Dr. Davis and agree[s] with their explanation of why the instituted
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`claims are invalid.” Ex. 1065 ¶ 16. Caltech claims that Dr. Frey somehow did not
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`consider its criticism of Dr. Davis. But Dr. Frey’s declaration specifically states
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`that he reviewed Caltech’s POR, which purports to identify Dr. Davis’s supposed
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`admissions, and this did not alter Dr. Frey’s opinion. Id. at ¶ 12.
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`Caltech was free to depose Dr. Frey regarding the cross-examination
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`transcript of Dr. Davis and the arguments it put forth regarding Dr. Davis in its
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`POR, but chose not to do so. Caltech abstained from using the evidentiary tools
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`available to it, and cannot now claim that it is prejudiced by the evidence that it
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`otherwise chose not to challenge. Additionally, any alleged prejudice from a
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`change of experts has already been specifically addressed by the Board granting
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`Caltech a sur-reply. Therefore, Caltech was not prejudiced.
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`F.
`There Is No Cause To Exclude Ex. 1067 Because The Board Can
`Assign The Appropriate Weight To It
`Caltech argues that Ex. 1067 (a decision from Judge Pfaelzer in the case
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`13
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`California Institute of Technology v. Hughes Communications Inc., No. 2:13-cv-
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`07245-MRPJEM, 2015 WL 11089495 (C.D. Cal. May 5, 2015)) should be
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`excluded. Mot. 13. Ex. 1067 is relevant to rebutting Caltech’s arguments
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`regarding secondary considerations, which rest entirely on the incorrect premise
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`that the DVB-S2 standard practices the claims. Reply 14. The Board is well suited
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`to assign the proper weight to evidence and there is no cause to exclude Ex. 1067.
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`G. Exs. 1013, 1029-1031, 1035, 1036, 1038-1045, 1047-1049, 1053,
`1055, 1059, and 1060 Are Properly In The Record For Consideration By
`The Board
`Caltech moves to exclude Exs. 1013, 1029-1031, 1035, 1036, 1038-1045,
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`1047-1049, 1053, 1055, 1059, and 1060 because “[t]hese exhibits are not cited in
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`the petition or Petitioner’s reply and are therefore not relevant to any instituted
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`grounds of review.” Mot. 14. Exs. 1029-1031, 1035, 1036, and 1038-1043 are all
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`relevant to the publication dates of the Frey and Divsalar references.5 As the
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`Board noted, “Divsalar is relevant to a claim in which the trial has been instituted,
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`and therefore, so is evidence directed to its status as prior art…we wish to consider
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`the totality of evidence concerning the publication date.” Paper 32 at 3. Similarly,
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`5 In fact, the Board specifically noted that “Petitioner provides sufficient evidence
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`that the Exs. 1027-1041 as supplemental information are relevant to Petitioner’s
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`contentions.” Paper 32 at 4.
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`14
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`U.S. Patent No. 7,116,710
`the Board noted that “evidence directed to Frey’s status as prior art is relevant.”
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`Id. Ex. 1053 was referenced by name in footnote 5 of Petitioner’s Reply and
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`appears in cited portions of the Jin Transcript. Reply 20; Ex. 1063 98:16-106:13.
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`Additionally, Exs. 1013, 1044, 1045, 1047-1049, 1055, 1059, and 1060 were
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`originally included as part of declarations and transcripts in this case and Petitioner
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`submits that they should remain in order to maintain a complete record. Exhibit
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`1013 was discussed in Dr. Davis’s declaration (Ex. 1006). Exs 1044, 1045, and
`
`1047-1049 were discussed in the deposition of Dr. Mitzenmacher (Ex. 1062).
`
`Exhibit 1055 was discussed during the deposition of Dr. Jin (Ex. 1063). Exs. 1059
`
`and 1060 were discussed in the deposition of Dr. Divsalar (Ex. 1064). Therefore,
`
`these exhibits are properly on the record.
`
`III. Conclusion
`
`For at least the reasons discussed above, Caltech’s motion to exclude should
`
`be denied in its entirety.
`
`
`
`Respectfully submitted,
`
`Date: March 19, 2018
`
`
`
`/Richard Goldenberg/
`
`
`
`
`
`
`
`
`
`Richard Goldenberg (Reg. No. 38,895)
`
`
`15
`
`
`
`Case IPR2017-00210
`U.S. Patent No. 7,116,710
`
`Exhibit
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`Exhibit List
`
`Description
`
`U.S. Patent 7,116,710
`Frey, B. J. and MacKay, D. J. C., “Irregular Turbocodes,” Proc.
`37th Allerton Conf. on Comm., Control and Computing,
`Monticello, Illinois, published on or before March 20, 2000
`D. Divsalar, H. Jin, and R. J. McEliece, “Coding theorems for
`"turbo-like" codes,” Proc. 36th Allerton Conf. on Comm.,
`Control and Computing, Allerton, Illinois, pp. 201-10, March,
`1999
`Luby, M. et al., “Analysis of Low Density Codes and Improved
`Designs Using Irregular Graphs,” STOC ’98, pp. 249-59,
`published in 1998
`Pfister et al., “The Serial Concatenation of Rate-1 Codes
`Through Uniform Random Interleavers” (Exhibit 1 to the Siegel
`Declaration)
`Declaration of Professor James Davis, Ph.D. (“Davis
`Declaration”)
`Gallager, R., Low-Density Parity-Check Codes, Monograph,
`M.I.T. Press, 1963
`Berrou et al., “Near Shannon Limit Error-Correcting Coding and
`Decoding: Turbo Codes," ICC ’93, Technical Program,
`Conference Record 1064, Geneva 1993
`MacKay, D. J. C, and Neal, R. M. “Near Shannon Limit
`Performance of Low Density Parity Check Codes,” Electronics
`Letters, vol. 32, pp. 1645-46, 1996
`Benedetto, S. et al., Serial Concatenation of Block and
`Convolutional Codes, 32.10 Electronics Letters 887-8, 1996
`Luby, M. et al., “Practical Loss-Resilient Codes,” STOC ’97,
`1997
`Declaration of Robin Fradenburgh Concerning the “Proceedings,
`36th Allerton Conference on Communications, Control, and
`Computing” Reference
`
`16
`
`
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1023
`
`1024
`
`1025
`
`Case IPR2017-00210
`U.S. Patent No. 7,116,710
`Frey, B. J. and MacKay, D. J. C., “Irregular Turbo-Like Codes”
`presented at the 1999 Allerton Conference on Communications,
`Control, and Computing.
`Prosecution History of the ’710 Patent, Response Dated May 5,
`2005
`Table of Contents of Proceedings of the 37th Allerton
`Conference on Communication, Control and Computing from
`September 22-24, 1999
`Joint Claim Construction Statement (Case No. 2:13-cv-07245,
`Dkt. No. 47)
`Expert Report of Dr. Brendan Frey (Case No. 2:13-cv-07245)
`Aamod Khandekar, “Graph-based Codes and Iterative
`Decoding,” Thesis submitted June 10, 2002
`Richardson, Shokrollahi, and Urbanke, “Design of Provably
`Good Low-Density Parity Check Codes”
`Declaration of Paul H. Siegel
`U.S. Provisional Application No. 60/205,095
`Mitzenmacher, M. “Studying balanced allocations with
`differential equations,” Combinatorics, Probability & Computing
`8.5, pp. 473-482, September 1999
`Barg et al., “Linear-time Binary Codes Correcting Localized
`Erasures,” IEEE Transactions on Information Theory 45.7, pp.
`2545-2550, November 1999
`Shokrollahi, “New Sequences of Linear Time Erasure Codes
`Approaching the Channel Capacity,” Applied Algebra, Algebraic
`Algorithms and Error-Correcting Codes, pp. 65-76, 1999
`Declaration Of Richard Goldenberg In Support Of Unopposed
`Motions To Submit Replacement Exhibits Pursuant To 37 C.F.R.
`§ 42.104(c)
`Declaration Of Jonathan Barbee In Support Of Unopposed
`Motions To Submit Replacement Exhibits Pursuant To 37 C.F.R.
`§ 42.104(c)
`Declaration of James M. Dowd in Support of Motion for
`Admission Pro Hac Vice
`
`1020
`1021
`1022
`
`1026
`
`1027
`
`17
`
`
`
`1029
`
`1030
`1031
`
`1032
`
`1033
`
`1034
`
`Case IPR2017-00210
`U.S. Patent No. 7,116,710
`1028
`Declaration of Mark D. Selwyn in Support of Motion for
`Admission Pro Hac Vice
`OCLC Record of Proceedings of the 36th Allerton Conference on
`Communication, Control and Computing, indicating the 36th
`Allerton Conference Proceeding was published by June 3, 1999
`Declaration of Library Expert Theodore A. Fons
`Affidavit of Pamela Stansbury (an employee in the Original
`Cataloging Unit of the Cornell University Library)
`Affidavit from Dr. Bruce Hajek (a six-time co-chair of the
`Allerton Conference, including the 36th Allerton Conference and
`the 37th Allerton Conference)
`Affidavit from Dr. Tamer Başar (a six-time co-chair of the
`Allerton Conference, including the 36th Allerton Conference)
`Affidavit from Dr. Ramavarapu Sreenivas (a two-time co-chair of
`the Allerton Conference, including the 37th Allerton Conference)
`Declaration of Dr. Brendan Frey
`A Screen Capture of an Archived Version of the Website for the
`37th Annual Allerton Conference, dated September 9, 1999
`A Purchase Order for the 37th Allerton Conference Proceedings,
`dated December 8, 1999
`A Bill of Lading for the 37th Annual Allerton Conference
`Proceedings, with a ship date of February 21, 2000
`An Excerpt from the Deposition of Dr. Steven Wicker (Case No.
`2:13-cv-07245)
`An Excerpt from the Deposition of Dr. Rüdiger Urbanke (Case
`No. 2:13-cv-07245)
`Jafar A. Alzubi, Omar A. Alzubi, and Thomas M. Chen, Forward
`Error Correction Based on Algebraic-Geometric Theory (2014)
`MARC Record of Proceedings of the 37th Allerton Conference
`on Communication, Control and Computing, indicating the 37th
`Allerton Conference Proceeding was published in 1999
`BEACON Record of Proceedings of the 37th Allerton
`Conference on Communication, Control and Computing,
`
`1035
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`18
`
`
`
`1044
`
`1045
`1046
`1047
`1048
`1049
`1050
`1051
`1052
`1053
`1054
`1055
`
`Case IPR2017-00210
`U.S. Patent No. 7,116,710
`indicating the 37th Allerton Conference Proceeding was
`published in 1999
`Tanner Graph for Code Described by Fig. 2 of U.S. Patent No.
`7,116,710
`Block Diagram of Accumulator
`Tanner Graph for Code Described by Divsalar
`Tanner Graph for Code Described by Luby98 Code 14
`Tanner Graph for Code Described by Ping
`Tanner Graph for Code Described by MacKay Profile 93y
`Confidential IRA.cpp with metadata
`Confidential IRA.h with metadata
`Confidential IRAsimu.cpp with metadata
`Confidential IRAsimu.cpp with metadata
`Confidential GetInter.cpp with metadata
`Confidential Excerpts from the Deposition of Dr. Hui Jin (Case
`No. 16-cv-3714)
`Intentionally Left Blank
`Tanner Graph for Code Described by Divsalar (q=5)
`Tanner Graph for IRA Code
`Systematic Version of Divsala