`
`Paper No. ___
`Filed: April 3, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2017-00210
`Patent No. 7,116,710
`
`
`
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`

`

`TABLE OF CONTENTS
`
`B.
`C.
`
`I.INTRODUCTION ................................................................................................ 1
`II.THE PRESENT PETITION RECYCLES PREVIOUS CHALLENGES
`PRESENTED TO THE OFFICE .................................................................. 2
`III.THE PETITION RELIES ON IMPROPER EVIDENCE AND
`UNSUBSTANTIATED ALLEGATIONS .................................................... 6
`A.
`The petition provides no basis for overturning the Board’s
`previous disqualification of Frey as prior art ....................................... 8
`The petition fails to establish that Divsalar qualifies as prior art ....... 12
`The petition fails to establish that the Pfister Slides qualify as
`prior art ............................................................................................. 13
`Petitioner’s expert testimony should be accorded no weight ............. 17
`D.
`IV.THE PROPOSED GROUNDS OF CHALLENGE FAIL ................................ 18
`A. Ground 1 Fails .................................................................................. 18
`1. The petition fails to show Frey teaches “partitioning,” as
`required by claims 1 and 3 ............................................................ 19
`2. Frey Fails to Disclose Additional Downstream Limitations ........... 22
`Ground 2 Fails .................................................................................. 23
`1. Divsalar in view of Frey fails to disclose the “partitioning”
`limitation in claim 1 and its dependent claims ............................... 23
`2. Divsalar in view of Frey fails to disclose downstream
`limitations ..................................................................................... 28
`3. Petitioner’s motivation to combine Divsalar and Frey is
`insufficient and illogical ................................................................ 29
`4. Petitioner’s motivation to combine is further flawed because
`it relies on inadmissible hearsay .................................................... 33
`5. Undisclosed limitations in claim 11 and its dependent claims ........ 35
`Ground 3 Fails .................................................................................. 35
`1. Divsalar in view of Frey and further in view of Luby97 does
`not render obvious claims 15-17, 19-22, and 24-33 ....................... 35
`2. Insufficient rationale to combine ................................................... 36
`3. Undisclosed limitations in claim 15 and its dependent claims ........ 37
`4. Undisclosed limitations in claim 25 and its dependent claims ........ 39
`D. Ground 4 Fails .................................................................................. 40
`E.
`Ground 5 Fails .................................................................................. 41
`V.CONCLUSION ................................................................................................. 43
`VI.APPENDIX ..................................................................................................... 45
`
`B.
`
`C.
`
`-i-
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`

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`I.
`
`INTRODUCTION
`
`The Board should not institute inter partes review (IPR) on claims 1-8, 10-
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`17 and 19-33 of U.S. Patent No. 7,116,710 (“the ’710 patent”) because petitioner
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`Apple Inc. (“Petitioner”) has not met its burden of showing that it has a reasonable
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`likelihood of prevailing on any of its proposed grounds for unpatentability.
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`First, review should be denied on the basis that the present petition merely
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`recycles the very same art and arguments that have already been presented to the
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`Office and rejected by the Board in previous IPR challenges. Petitioner
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`acknowledges that the’710 patent was already “challenged in two petitions for
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`inter partes review” (Pet. p. 3.). The Board rejected both of those petitions. See
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`Hughes Network Systems, LLC and Hughes Comms., Inc. v. California Institute of
`
`Tech., Case No. IPR2015-00067, Paper 18 (Apr. 27, 2015); see also Hughes
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`Network Systems, LLC and Hughes Comms., Inc. v. California Institute of Tech.,
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`Case No. IPR2015-00068, Paper 18 (Apr. 27, 2015). The present petition
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`advances the same references and arguments, placing undue burden on Caltech and
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`wasting Board resources.
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`Second, the petition should be denied because the Petitioner fails to establish
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`that all references in each of its grounds qualify as prior art printed publications.
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`Third, even assuming the relied-upon references do qualify as prior art—
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`which Petitioner fails to establish—the proposed grounds of challenge fail to
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`-1-
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`demonstrate that each feature of claims 1-8, 10-17 and 19-33 of the ’710 patent is
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`found in the cited art.
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`Accordingly, institution of inter partes review should be denied.
`
`II. THE PRESENT PETITION RECYCLES PREVIOUS
`CHALLENGES PRESENTED TO THE OFFICE
`
`The instant petition presents one in a series of challenges to the ’710 patent,
`
`but rehashes substantially the same art and arguments already presented to the
`
`Office and rejected by the Board in Case Nos. IPR2015-00067 and IPR2015-
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`00068. Accordingly, the Board should exercise its discretion in denying institution
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`on all grounds in the petition. 35 U.S.C. § 325(d) (“In determining whether to
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`institute or order a proceeding under this chapter, chapter 30, or chapter 31, the
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`Director may take into account whether, and reject the petition or request because,
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`the same or substantially the same prior art or arguments previously were
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`presented to the Office.”) (emphasis added).
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`The present petition fails to offer any art or arguments substantially different
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`from what has already been presented to, and rejected by, the Board. Petitioner
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`acknowledges that the’710 patent was already “challenged in two petitions for
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`inter partes review.” (Pet. p. 3.) The Board rejected both of those petitions. See
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`Hughes Network Systems, LLC v. California Institute of Tech., Case No. IPR2015-
`
`00067, Paper 18 (Apr. 27, 015); see also Hughes Network Systems, LLC v.
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`California Institute of Tech., Case No. IPR2015-00068, Paper 18 (Apr. 27, 015).
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`-2-
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`

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`Petitioner has also filed two more pending petitions challenging claims of the ’710
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`patent. See IPR2017-00211; see also IPR2017-00219.1
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`The present petition presents grounds based on the very same Frey and
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`Divsalar references and advancing substantially the same arguments as those in
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`one of the rejected Hughes IPRs. Compare IPR2015-00067, Paper 4 at 15-21
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`(challenging claim 1 as anticipated by Frey) with Pet. p. 34-42 (challenging claims
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`1 and 3 as anticipated by Frey); compare IPR2015-00067, Paper 4 at 21-41
`
`(challenging claims based on Frey in view of Divsalar) with Pet. p. 42-60
`
`(challenging claims based on Divsalar in view of Frey); compare IPR2015-00068,
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`Paper 4 at 14-43 (challenging claims based in part on Divsalar) with Pet. p. 34-74
`
`(challenging claims based in part on Divsalar). In addition, the claims of the ’710
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`patent challenged in the two prior proceedings are also challenged in the instant
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`petition. Compare IPR2015-00067 and IPR2015-00068 (challenging claims 1, 3-
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`6, 15-16, and 20-22); with Pet. p. 4 (challenging claims 1-8, 10-17, and 19-33).
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`Petitioner has not explained why this petition substantially differs either
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`from either of the Hughes petitions or either of the petitions filed concurrently with
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`
`1 Accordingly, the ’710 patent has been challenged in five total IPR proceedings
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`to date—thereby indicating patent owner harassment with serial petitions. See,
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`e.g., Ube Maxell Co., Ltd. v. Celgard, LLC, Case No. IPR2015-01511, Paper 10
`
`(Jan. 7, 2016) (denying institution of sixth petition under § 325(d)).
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`-3-
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`the present one, such that the additional burden on Caltech and Board resources is
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`reasonable. The Board should deny the instant petition under a plain and ordinary
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`reading of § 325(d) because it presents “the same or substantially the same prior art
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`or arguments previously [] presented to the Office.” Cf. Maxell Co., Ltd., Case No.
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`IPR2015-01511, Paper 10 at 15-16 (factoring in failure to explain the need for
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`redundant proceeding).
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`Although the instant petition challenges some claims that were not
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`challenged in the prior petitions, the Board has indicated this is not a determinative
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`factor and has denied institution under 35 U.S.C. § 325(d) under similar
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`circumstances. See, e.g., Ford Motor Co. v. Paice LLC, Case No. IPR2015-00767,
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`Paper 14 at 7 (PTAB Aug. 18, 2015) (“We also have considered Petitioner’s
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`arguments that because it presents a new set of claims, e.g., consisting of
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`previously challenged claims, but also including newly challenged claims, we must
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`consider the Petition…. We are not persuaded by this argument because the
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`express language of 35 U.S.C. § 325(d) does not mention claims as being a factor
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`in deciding whether to institute trial.”). See also Blue Coat Systems LLC v. Finjan,
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`Inc., Case No. IPR2016-01443, Paper No. 13 at 10 (serial petition being directed to
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`different claims denied institution under §325(d)).
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`Given the significant overlap between the asserted art and corresponding
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`argument in the present petition compared to the previous Hughes petitions, it is
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`-4-
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`immaterial that the earlier petition was filed by a different party.2 See, e.g., Apple,
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`Inc. v. Limestone Memory Sys. LLC, Case No. IPR2016-01567, Paper 11 at 9-12
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`(PTAB Jan 18, 2017). In that proceeding, Apple similarly filed an IPR petition
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`following denial of a petition against the same patent that had been filed by an
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`unrelated party. The Board rejected Apple’s challenge to a claim based on §
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`325(d), noting Apple’s failure to “identify new arguments based on additional
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`references,” to “make persuasive assertions that differentiate its Petition from the
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`[earlier] Petition,” or to explain why the prior art relied upon by Apple “which is
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`substantially the same prior art as that previously presented, does not have the
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`earlier-noted deficiency.” Id. at 12.
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`Accordingly, because the present petition presents the same or substantially
`
`the same prior art and arguments previously presented to the Office, and because
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`Petitioner appears to have used previously rejected petitions as a roadmap3 to
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`2 Patent Owner notes that counsel for Petitioner in this case also served as
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`counsel for Hughes in the Hughes district court litigation.
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`3 In fact, Petitioner has already effectively had multiple bites at the apple in this
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`case. During the course of litigation, and after filing its IPR petitions, Petitioner
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`learned of certain critical defects in the petition materials. Petitioner then re-filed
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`different versions of the references on which its challenges relied in an effort to
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`cure those defects. See, e.g., Paper No. 16.
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`bolster its petition, with the effect of harassing Caltech, the Board should exercise
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`its authority under § 325(d) to deny the petition.
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`III. THE PETITION RELIES ON IMPROPER EVIDENCE AND
`UNSUBSTANTIATED ALLEGATIONS
`
`Each of Petitioner’s five grounds can be denied on the basis that they rely on
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`references that have not been established as a prior art available for this
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`proceeding.4
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`• Each of Grounds 1-5 rely on Frey (Ex. 1002), but nothing in the
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`petition or elsewhere in the record establishes that Frey qualifies as a
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`“printed publication” or is otherwise available as prior art in this IPR.
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`• Each of Grounds 2-5 rely on Divsalar (Ex. 1003), but the petition
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`never establishes that Divsalar qualifies as prior art to the ’710 patent
`
`as alleged.
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`4 For many of the cited references, the petition does not explain any particular
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`theory of how the cited references qualify as prior art. For example, the petition
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`generically states that the references “qualify as prior art under 35 U.S.C. §102,”
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`but fails to identify any particular subsection of §102. (Pet. at 6.) This represents a
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`failure to meet the most basic obligation associated with a petitioner’s burden since
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`not all subsections of 35 U.S.C. §102 provide prior art that may form a basis of
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`challenge in an IPR.
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`-6-
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`

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`• Each of Grounds 4 and 5 rely on the Pfister Slides (Ex. 1005), but the
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`petition never establishes that the Pfister Slides qualify as prior art to
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`the ’710 patent.
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`A petitioner bears the burden of “mak[ing] a sufficient showing that [a
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`purported prior art reference] is a printed publication, i.e., that it was publicly
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`accessible.” Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper 11 at
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`19-20 (Dec. 24, 2014) (citing In re Lister, 583 F.3d 1307, 1317) (Fed. Cir. 2009);
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`see also Nestle Oil Oyj v. Reg Synthetic Fuels, LLC, IPR2013-00578, Paper 54 at
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`15 (March 12, 2015). This burden must be satisfied in the petition. See, e.g.,
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`Symantec Corp. v. Trustees of Columbia University, IPR2015-00370, Paper 13 at 9
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`(June 17, 2015) (denying institution for failure of proof on publication date in the
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`petition). Intelligent Bio-Systems, Inc. v. Illumina, Inc., 821 F.3d 1359, 1369 (Fed.
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`Cir. 2016) (noting the “obligation for petitioners to make their case in their
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`petition”).
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`Public accessibility is a touchstone in determining whether a reference
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`constitutes a printed publication. See, e.g., In re Wyer, 655 F.2d 221, 227 (CCPA
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`1981). A reference is “publicly accessible” upon a satisfactory showing that the
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`document has been “made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it….” Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1333 (Fed.
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`-7-
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`

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`Cir. 2009); Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir.
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`2006) (quoting In re Wyer, 655 F.2d at 226); see also Kyocera Wireless Corp. v.
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`Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc.
`
`v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).
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`Caltech demonstrates in the sections below that Petitioner has not met its
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`burden. Accordingly, the Board can reject the entire petition on this basis alone.
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`A. The petition provides no basis for overturning the Board’s
`previous disqualification of Frey as prior art
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`Each of Petitioner’s five grounds relies on an article by Frey et al., (Ex. 1002
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`(“Frey”)5), but the petition lacks sufficient evidence that Frey is actually a prior art
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`printed publication as of the date it asserts, March 20, 2000. The petition asserts
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`that Frey was “published in the Proceedings of the 37th Allerton Conference on
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`Communication, Control and Computing” (“the Allerton Conference”) and that the
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`“conference proceedings were published on or before March 20, 2000.” (Pet. p.
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`25.)
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`The Board previously disqualified Frey against the ’710 patent in one of the
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`Hughes IPRs. IPR2015-00067, Paper 18 at 8-11. In finding Hughes’s evidence
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`insufficient, the Board noted that “although the first page of the Frey reference
`
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`5 The Petitioner does not identify the subpart of 35 U.S.C. § 102 under which
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`Frey qualifies as a prior art.
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`-8-
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`indicates that it was prepared for the 37th Allerton Conference in 1999, the pages
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`of [the exhibit] do not indicate that it was taken from an Allerton Conference
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`published proceeding….” Id. at 10 (internal citations omitted). Accordingly,
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`“[b]ecause each of [Hughes’s] asserted grounds of unpatentability is based, in part,
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`on Frey, and Petitioner has not met its burden of establishing that Frey is a ‘printed
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`publication’ and, thus, satisfies the statutory requirement of 35 U.S.C. § 311(b),
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`[Hughes] has not shown a reasonable likelihood of prevailing on the asserted
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`grounds.” Id. at 11.
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`Rather than rely on a co-author declaration as the Hughes petitioner did,6
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`Petitioner here cites to a second and separate document, (Ex. 1015), in alleging the
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`March 20, 2000 publication date of Ex. 1002. (Pet. p. 25). Ex. 1015 is purported
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`to be a copy of a “Table of Contents” associated with the Allerton conference
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`proceedings, which the petition identifies as “showing a library stamp of March 20,
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`6 In IPR2015-00067, the Hughes petitioner submitted declarations from both
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`Drs. Frey and MacKay, who are listed as authors to the Frey paper. Hughes
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`conceded that the paper was not made available at the conference, as Dr. Frey
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`admitted in his declaration that the paper was submitted to the Allerton
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`organization sometime after the conference. This is consistent with the Allerton
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`conference procedure, where papers are submitted after the conference and, if
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`accepted, published sometime later. See, e.g., Exs. 2001, 2002.
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`-9-
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`2000”.7 (Pet. p. 25.) Other than the “Table of Contents,” no content of the
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`proceedings are provided by Petitioner.
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`As an initial matter, Caltech does not concede either the sufficiency or the
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`admissibility (e.g., authenticity) of Petitioner’s evidence. The “date stamp”
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`Petitioner references is an unidentified, non-descript and otherwise blank page
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`presented as the last page in Ex. 1015. (Ex. 1015, p. 16.) Petitioner has also
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`submitted Replacement Exhibit 1002, which purports to contain the same
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`otherwise blank and non-descript page as its last page (p.9). Certain differences
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`are apparent in the images between the two documents. And the “date stamp” is
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`illegible in both documents—e.g., it is not clear whether the year is 2000 as stated
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`in the petition or some other year (e.g., 2008). At best, the “date stamp” is
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`inadmissible hearsay.
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`Besides apparent evidentiary issues and deficiencies in content, Petitioner
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`has failed to demonstrate that any content of Ex. 1002 or Ex. 1015 was publicly
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`accessible. Petitioner does not demonstrate the significance of the document’s
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`purported library stamping of March 20, 2000. Petitioner provides no witness or
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`librarian declaration, or any other explanation. As such, illegibility aside, the date
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`7 The petition also cites to Dr. Davis’s declaration (Ex. 1006 ¶63). Pet at 25.
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`Dr. Davis’s declaration offers no further information or value, as it merely parrots
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`the language found in the petition. (Ex. 1006, ¶63.)
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`-10-
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`on the stamp might, at best, merely indicate when the library received the
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`document but does not necessarily provide any information regarding when a
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`document was catalogued or shelved. (See Ex. 1015 at 1 (referring to “DATE
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`RECEIVED STAMP”)). In other words, an unexplained stamp does not explain or
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`establish that a document has been “made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising reasonable
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`diligence, can locate it….” Cordis Corp. v. Boston Scientific Corp., 561 F.3d
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`1319, 1333 (Fed. Cir. 2009)
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` The insufficiency of an unexplained and uncorroborated library stamp in
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`meeting a petitioner’s burden of proof in this regard has been previously
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`acknowledged by the Board. See, e.g., Apple Inc. v. DSS Technology
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`Management, Inc., Case IPR2015-00369, Paper 9 at 11 (“[The Board]
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`acknowledge[s] that the cover page of Barber includes a stamp reading
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`‘ARCHIVES MASSACHUSETTS INSTITUTE OF TECHNOLOGY APR 11
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`1996 LIBRARIES.’ That stamped date, however, would appear to be a hearsay
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`statement to the extent that it would be offered for its truth. Further, even if Apple
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`could establish either that the statement is excluded from hearsay or that an
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`exception to the rule against hearsay should apply, such that we would admit the
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`stamped date as evidence of when the thesis was archived, the stamp foes not
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`establish when, if ever, the thesis became publicly accessible.”) (internal citations
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`-11-
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`omitted).). Petitioner’s evidence in this case is insufficient and unexplained in the
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`petition. Accordingly, Ex. 1015 cannot establish Frey as a printed publication
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`under 35 U.S.C. § 102 as of March 20, 2000. The illegible date stamp in
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`Replacement Exhibit 1002, which Petitioner has not relied upon, is similarly
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`insufficient.
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`Since each of the asserted grounds rely on Frey, all of the asserted grounds
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`can be denied at least for the petition’s failure to establish Frey as available prior
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`art.
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`B.
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`The petition fails to establish that Divsalar qualifies as prior
`art
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`Each of Grounds 2-5 in the petition rely on Divsalar (Ex. 1003). The
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`petition identifies Divsalar as prior art under 35 U.S.C. §102(b), relying on two
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`sources of support: (1) a Board decision in IPR2015-00059 involving a different
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`Caltech patent; and (2) Ex. 1012, which is a declaration from a librarian (Ms.
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`Fradenburgh) that Hughes submitted in the IPR2015-00059 case. (Pet., p. 28.)
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`First, Ms. Fradenburgh is not a witness in this proceeding, and Petitioner
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`offers the report as evidence to prove the truth of the matter asserted—that
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`Divsalar is 102(b) prior art to the ’710 patent. As such, Ex. 1012 is inadmissible
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`hearsay. Fed. R. Evid. 801(c) (defining hearsay as “a statement that: (1) the
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`declarant does not make while testifying at the current trial or hearing; and (2) the
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`party offers in evidence to prove the truth of the matter asserted in the statement”).
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`-12-
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`Ms. Fradenburgh’s availability as a witness, in fact, was a source of significant
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`contention in the Hughes IPR, when Ms. Fradenburgh refused to appear for cross-
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`examination following institution in the Hughes IPR.
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`Second, even if considered, Ex. 1012 is woefully deficient in content. Ex.
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`1012 ¶ 6 refers to an “acquisition record,” said to be attached as “Exhibit A,” but
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`no Exhibit A is attached. At paragraph 9, Ms. Fradenburg states she has reviewed
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`the reference in Exhibit B, yet no Exhibit B is attached. While an email is attached
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`to the declaration, it contains only several pages with numerous unexplained dates
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`and data entries. The declaration also does not address whether the reference was
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`catalogued or indexed in the library system.
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`Third, Petitioner here misapprehends the scope of the Board’s decision in
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`IPR2015-00059. The Board’s decision to apply Divsalar as prior art relied at least
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`partially on a waiver theory. See, e.g., IPR2015-00059, Paper 42, p. 31 (denying
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`Caltech’s motion to strike Ms. Fradenburgh’s testimony on the basis of no timely
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`evidentiary objection). No such waiver theory applies in the present case. Ex.
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`1012 is inadmissible hearsay here, a point Caltech will vigorously pursue.
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`C. The petition fails to establish that the Pfister Slides qualify as
`prior art
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`Each of Grounds 4 and 5 in the petition relies on the Pfister Slides (Ex.
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`1005). The Pfister Slides are a set of slides that were allegedly presented at the
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`Allerton Conference. (Pet. p. 32; Ex. 1005; Ex. 1020, p. 3.) The petition offers no
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`specific explanation and identifies no particular theory as to how or why the Pfister
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`Slides qualify as prior art for this proceeding. The petition generically asserts that
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`slides were presented in the month of “September 1999,” but does not assert the
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`Pfister Slides constitute a “printed publication.” (Pet. p. 36); see 35 U.S.C.
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`§311(b) (limiting IPRs to challenges based on patents and printed publications).
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`The Pfister Slides, and corresponding Grounds 4 and 5, can be rejected for this
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`reason alone.
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`Assuming Petitioner is asserting the Pfister slides as a “printed publication,”
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`nothing in the petition or corresponding materials substantiates those slides as
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`such.
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`First, without corresponding explanation, the petition merely directs the
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`Board to the declaration of Professor Paul H. Siegel, (Ex. 1020). (Pet. p. 32.) The
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`Board should disregard any information presented in Ex. 1020 because none of it is
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`discussed or explained in the petition. 37 C.F.R. § 42.6(a)(3) (expressly
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`prohibiting incorporation by reference of arguments from one document into
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`another document); DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999)
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`(incorporation by reference “amounts to a self-help increase in the length of the …
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`brief”) (“A brief must make all arguments accessible to the judges, rather than ask
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`them to play archaeologist with the record.”).
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`-14-
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`Second, assuming that Ex. 1005 is the set of slides to which professor Siegel
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`refers, his declaration still would not provide evidence that Ex. 1005 qualifies as a
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`prior art printed publication. The content of Professor Siegel’s declaration is
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`woefully deficient regarding any relevant details. (Ex. 1020.) Both the Federal
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`Circuit and the Board have instructed that the mere presentation of slides
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`accompanying an oral presentation at a professional conference is insufficient to
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`establish the presentation slides as a “printed publication.” In re Klopfenstein, 380
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`F.3d 1345, n. 4 (Fed. Cir. 2004); Temporal Power Ltd., IPR2015-00146 Paper 10
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`at 10 (quoting In re Klopfenstein). Relevant “factors” for consideration include
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`whether documents were distributed or indexed, the length of time the display was
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`exhibited, evidence of who actually attended a presentation and the expertise of the
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`target audience, the existence of reasonable expectations that the material
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`displayed would not be copied, and the simplicity or ease with which the material
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`displayed could have been copied. Id. at 1350.
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`In this instance, the record is devoid of any information or details of the
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`alleged presentation. Professor Siegel declares that he presented the slides at the
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`1999 Allerton Conference, (Ex. 1020 ¶ 6), and that the conference in general “was
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`open to the public for attendance” (id. ¶ 5). Neither the petition nor Professor
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`Siegel’s declaration provides any real information about the alleged presentation,
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`other than to allege that some presentation occurred. Neither asserts that the
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`Pfister slides were distributed to anyone, in any way, or were indexed with the
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`conference. Neither states whether all or just some of the slides were
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`displayed/discussed, or how long any of the slides were displayed. Neither
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`addresses how many people, if anyone, actually attended the presentation session
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`of the conference and the skill level of the actual attendees. And neither addresses
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`the existence of reasonable expectations that the material displayed would not be
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`copied or how easily they could have been copied. Dr. Siegel also provides no
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`support showing how and when the 1999 Allerton conference and proceedings
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`were publicized, and provides no explanation of how he knows that the
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`proceedings were “generally known to those who were interested in topics relating
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`to error-correcting codes and iterative decoding.” (Ex. 1020 ¶ 5.)
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`Such information is critical to establishing the Pfister Slides as a printed
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`publication, assuming Petitioner is even making this assertion in the first place.
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`Moreover, Petitioner’s burden must be satisfied in its petition. The lack of
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`evidence and explanation in the Petition, however, is incurable and fatal to
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`Petitioner’s reliance on the Pfister Slides as prior art in this proceeding.
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`Indeed, as noted above, the Board has disqualified slides as prior art printed
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`publications under similar circumstances. See, e.g., Temporal Power Ltd.,
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`IPR2015-00146 at 10-11. The Board should similarly reject the Pfister Slides here.
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`Accordingly, the Board should deny Grounds 4 and 5 on the additional basis
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`that Petitioner has not established the Pfister Slides as a prior art printed
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`publication.
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`D.
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`Petitioner’s expert testimony should be accorded no weight
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`Should the Board review the grounds of challenge, any review should
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`attribute little, if any, weight to the declaration of Petitioner’s expert Dr. Davis,
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`submitted as Ex. 1006. As an initial matter, it is unclear precisely what aspects of
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`Dr. Davis’s declaration represent his own generated opinion testimony as opposed
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`to content that has simply been adopted from other sources. For example, Dr.
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`Davis’s declaration presents large swaths of content that have been literally copied
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`from Dr. Frey’s expert report, (Ex. 1017), a document generated for an entirely
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`different litigation proceeding and produced nearly two years prior to Dr. Davis’s
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`declaration in this case. (Compare Ex. 1006, ¶¶ 22-46, with Ex. 1017, ¶¶ 35-53,
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`55, 57-60, 63.) Perhaps the original material was not prepared for a Board
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`proceeding, as numerous paragraphs fail to cite to a single reference or shred of
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`evidence in support of the proffered commentary. 37 CFR § 42.65(a) (“Expert
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`testimony that does not disclose the underlying facts or data on which the opinion
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`is based is entitled to little or no weight.”). In addition, Dr. Davis does not credit
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`Dr. Frey’s report as a source of this content. When Dr. Davis does reference the
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`Frey report, he simply repeats unsupported hearsay in the report without purporting
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`to have any personal knowledge of the subject matter. (See, e.g., Ex. 1006, ¶ 281.)
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`Apart from the content copied from the Frey Report, the vast majority of the
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`remaining commentary is a near-verbatim recitation of the conclusory arguments
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`included within the Petition. (E.g., compare Pet. at 42-45, with Ex. 1006, ¶¶128-
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`31; compare Pet. at 48, with Ex. 1006, ¶¶ 136-37). See Kinetic Techs., Inc. v.
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`Skyworks Solutions, Inc., Case No. IPR2014-00529, Paper 8 at 15 (P.T.A.B. Sept.
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`23, 2014) (“Merely repeating an argument from the Petition in the declaration of a
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`proposed expert does not give that argument enhanced probative value.”); Corning
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`Inc. v. DSM IP Assets B.V., Case No. IPR2013-00048, Paper 94 at 33 (P.T.A.B.
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`May 9, 2014) (finding that an expert’s verbatim repeating of attorney argument
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`warrants “little weight in the absence of objective evidentiary support”).
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`Accordingly, Dr. Davis’s declaration should be accorded little, if any, weight.
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`IV. THE PROPOSED GROUNDS OF CHALLENGE FAIL
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`A. Ground 1 Fails
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`Regardless of whether Frey is disqualified as available prior art, the petition
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`fails to establish Frey anticipates claim 1. For example, Frey at least fails to teach
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`or suggest the claim 1 limitation “partitioning said blocks of data into a plurality of
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`sub-blocks, each sub-block including a plurality of data elements.”
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`1.
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`The petition fails to show Frey teaches “partitioning,” as
`required by claims 1 and 3
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`The ‘710 patent specification illustrates the claimed data partitioning and
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`encoding. For example, the specification, referring to Fig. 2, discloses an
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`embodiment where “[t]he outer coder 202 receives the uncoded data [which] may
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`be partitioned into blocks of fixed size, say k bits. The outer coder may be an (n,k)
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`binary linear block coder, where n>k.” (Ex. 1001 at 2:41-44.) Additionally, “[t]he
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`coder accepts as input a block u of k data bits and produces an output block v of n
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`data bits.” (Id. at 2:44-45.) Moreover, “[t]he rate of the coder may be irregular, . .
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`. and may differ for sub-blocks of bits in the data block. In an embodiment, the
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`outer coder 202 is a repeater that repeats the k bits in a block a number of times q
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`to produce a block with n bits, where n=qk.” (Id. at 2:48-52; see also id. at 1:59-64
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`(“The data block is apportioned into two or more sub-blocks, and bits in different
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`sub-blocks are repeated a different number of times according to a selected degree
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`profile.”), Fig. 2.) The bits output from the outer coder are also “scrambled before
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`they are input to the inner coder 206,” where the scrambling operation “may be
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`performed by the interleaver 204.” (Id. at 3:18-20.)
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`The petition does not explain how Frey teaches partitioning a block of data
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`into sub-blocks including a plurality of data items, and encoding