Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 18
`
`
`
` Entered: June 30, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Case IPR2017-00210
`Patent 7,116,710 B1
`____________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 18
`
`
`
` Entered: June 30, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Case IPR2017-00210
`Patent 7,116,710 B1
`____________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`INTRODUCTION
`I.
`Petitioner, Apple, Inc. (“Apple”), filed a Petition (Paper 5, “Pet.”)
`requesting an inter partes review of claims 1–8, 10–17, and 19–33 of U.S.
`Patent No. 7,116,710 B1 (Ex. 1001, “the ’710 patent”) pursuant to 35 U.S.C.
`§§ 311–319. Apple relies on the Declaration of James A. Davis, Ph.D.
`(Ex. 1006) with its Petition. Patent Owner, California Institute of
`Technology (“Caltech”), filed a Preliminary Response (Paper 17, “Prelim.
`Resp.”) to the Petition.
`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted unless the
`information presented in the Petition “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” After considering the Petition and
`associated evidence, we conclude that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`claims 1–8, 11–17, 19–22, and 24–33 of the ’710 patent.
`
`A. Related Proceedings
`The parties indicate that the ’710 patent was involved in the following
`active case, Cal. Inst. of Tech. v. Broadcom Ltd., No. 2:16-cv-03714 (C.D.
`Cal. filed May 26, 2016), and in concluded cases, Cal. Inst. of Tech. v.
`Hughes Commc’ns, Inc., No. 2:15-cv-01108 (C.D. Cal. filed Feb. 17, 2015);
`and Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., 2:13-cv-07245 (C.D. Cal.
`filed Oct. 1, 2013). Pet. 3, Paper 8, 2–3.
`The parties also identify co-pending cases IPR2017-00211 and
`IPR2017-00219, in which Apple has filed a petition for inter partes review
`
`
`
`
`2
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`of the ’710 patent. Pet. 3; Paper 8, 2–3. Inter partes review of the
`’710 patent was previously considered and denied in Hughes Network Sys.,
`LLC v. Cal. Inst. of Tech., IPR2015-00067 (PTAB April 27, 2015) (Paper
`18) (“IPR2015-00067”) and Hughes Network Sys., LLC v. Cal. Inst. of
`Tech., IPR2015-00068 (PTAB April 27, 2015) (“IPR2015-00068”). Finally,
`patents related to the ’710 patent were challenged in IPR2015-00059,
`IPR2015-00060, IPR2015-00061, and IPR2015-00081. Pet. 3.
`
`B. The ʼ710 Patent
`The ’710 patent describes the serial concatenation of interleaved
`convolutional codes forming turbo-like codes. Ex. 1001, Title. It explains
`some of the prior art with reference to its Fig. 1, reproduced below.
`
`
`Figure 1 is a schematic diagram of a prior “turbo code” system. Id. at 2:14–
`15. The ’710 patent specification describes Figure 1 as follows:
`
`A standard turbo coder 100 is shown in FIG. 1. A block
`of k information bits is input directly to a first coder 102. A
`k bit interleaver 106 also receives the k bits and interleaves
`them prior to applying them to a second coder 104. The second
`coder produces an output that has more bits than its input, that
`3
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`is, it is a coder with rate that is less than 1. The coders 102,104
`are typically recursive convolutional coders.
`Three different items are sent over the channel 150: the
`original k bits, first encoded bits 110, and second encoded bits
`112. At the decoding end, two decoders are used: a first
`constituent decoder 160 and a second constituent decoder 162.
`Each receives both the original k bits, and one of the encoded
`portions 110, 112. Each decoder sends likelihood estimates of
`the decoded bits to the other decoders. The estimates are used
`to decode the uncoded information bits as corrupted by the
`noisy channel.
`Id. at 1:38–53(emphasis omitted).
`A coder 200, according to a first embodiment of the invention, is
`described with respect to Figure 2, reproduced below.
`
`
`Figure 2 of the ’710 patent is a schematic diagram of coder 200. Id. at 2:16–
`17.
`
`The specification states that “coder 200 may include an outer coder
`202, an interleaver 204, and inner coder 206.” Id. at 2:34–35. It further
`states as follows:
`The outer coder 202 receives uncoded data. The data
`may be partitioned into blocks of fixed size, say k bits. The
`outer coder may be an (n,k) binary linear block coder, where
`n>k. The coder accepts as input a block u of k data bits and
`produces an output block v of n data bits. The mathematical
`
`
`
`
`4
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`relationship between u and v is v=T0u, where T0 is an n×k
`matrix, and the rate[1] of the coder is k/n.
`
`
`The rate of the coder may be irregular, that is, the value
`of T0 is not constant, and may differ for sub-blocks of bits in the
`data block. In an embodiment, the outer coder 202 is a repeater
`that repeats the k bits in a block a number of times q to produce
`a block with n bits, where n=qk. Since the repeater has an
`irregular output, different bits in the block may be repeated a
`different number of times. For example, a fraction of the bits in
`the block may be repeated two times, a fraction of bits may be
`repeated three times, and the remainder of bits may be repeated
`four times. These fractions define a degree sequence, or degree
`profile, of the code.
`
`
`The inner coder 206 may be a linear rate-1 coder, which
`means that then-bit output block x can be written as x=TIw,
`where TI is a nonsingular n×n matrix. The inner coder 210 can
`have a rate that is close to 1, e.g., within 50%, more preferably
`10% and perhaps even more preferably within 1% of 1.
`
`Id. at 2:41–64 (emphasis omitted). Codes characterized by a regular repeat
`of message bits into a resulting codeword are referred to as “regular repeat,”
`whereas codes characterized by irregular repeat of message bits into a
`resulting codeword are referred to as “irregular repeat.” The second
`(“inner”) encoder 206 performs an “accumulate” function. Thus, the two-
`step encoding process illustrated in Figure 2, including a first encoding
`(“outer encoding”) followed by a second encoding (“inner encoding”),
`results in either a “regular repeat accumulate” (“RRA”) code or an “irregular
`
`
`1 The “rate” of an encoder refers to the ratio of the number of input bits to
`the number of resulting encoded output bits related to those input bits. See
`Pet. 9.
`
`5
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`repeat accumulate (“IRA”) code, depending upon whether the repetition in
`the first encoding is regular or irregular.
`Figure 4 of the ’710 patent, reproduced below, shows an alternative
`embodiment in which the first encoding is carried out by a low density
`generator matrix.
`
`
`
`Figure 4 of the ’710 patent is a schematic of an irregular repeat and
`accumulate coder using a low density generator matrix (LDGM)2 coder. Id.
`at 2:20–21, 3:24–25, 3:51–54. The LDGM coder “performs an irregular
`repeat of the k bits in the block, as shown in FIG. 4.” Id. LDGM codes are
`a special class of low density parity check codes that allow for less encoding
`and decoding complexity. LDGM codes are systematic linear codes
`generated by a “sparse” generator matrix. No interleaver (as in the Figure 2
`embodiment) is required in the Figure 4 embodiment because the LDGM
`provides scrambling otherwise provided by the interleaver.
`
`
`2 A “generator” matrix (typically referred to by “G”) is used to create
`(generate) codewords. A parity check matrix (typically referred to by “H”)
`is used to decode a received message.
`6
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`C. Illustrative Claims
`Apple challenges claims 1–8, 10–17, and 19–33 of the ’710 patent, of
`which claims 1, 11, 15, and 25 are independent. Pet. 21. Claims 1, 3, 11,
`15, and 25 are illustrative of the claims at issue and are reproduced below:
`1. A method of encoding a signal, comprising:
`obtaining a block of data in the signal to be encoded;
`partitioning said data block into a plurality of sub-blocks,
`each sub-block including a plurality of data elements;
`first encoding the data block to from a first encoded data
`block, said first encoding including repeating the data elements
`in different sub-blocks a different number of times;
`interleaving the repeated data elements in the first encoded
`data block; and
`second encoding said first encoded data block using an
`encoder that has a rate close to one.
`3.
`The method of claim 1, wherein said first encoding is
`carried out by a first coder with a variable rate less than one, and
`said second encoding is carried out by a second coder with a rate
`substantially close to one.
`11. A method of encoding a signal, comprising:
`receiving a block of data in the signal to be encoded, the
`data block including a plurality of bits;
`first encoding the data block such that each bit in the data
`block is repeated and two or more of said plurality of bits are
`repeated a different number of times in order to form a first
`encoded data block; and
`second encoding the first encoded data block in such a way
`that bits in the first encoded data block are accumulated.
`
`
`
`
`7
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`15. A coder comprising:
`a first coder having an input configured to receive a stream
`of bits, said first coder operative to repeat said stream of bits
`irregularly and scramble the repeated bits; and
`a second coder operative to further encode bits output from
`the first coder at a rate within 10% of one.
`25. A coding system comprising:
`a first coder having an input configured to receive a stream
`of bits, said first coder operative to repeat said stream of bits
`irregularly and scramble the repeated bits;
`a second coder operative to further encode bits output from
`the first coder at a rate within 10% of one in order to form an
`encoded data stream; and
`a decoder operative to receive the encoded data stream and
`decode the encoded data stream using an iterative decoding
`technique.
`Ex. 1001, 7:14–25, 7:28–31, 7:49–589, 8:1–6, 8:32–41.
`
`D. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth the grounds of
`unpatentability of claims 1–8, 10–17, and 19–33 of the ’710 patent as
`follows (see Pet. 34–74):
`
`Reference(s)
`Frey3
`
`Basis
`§ 102(a)
`
`Claim(s) Challenged
`1 and 3
`
`
`3 Brendan J. Frey and David J.C. MacKay, Irregular Turbocodes,
`PROCEEDINGS OF THE 37TH ALLERTON CONFERENCE ON COMMUNICATION,
`CONTROL, AND COMPUTING (1999) at 241–248 (Ex.1002, “Frey).
`
`
`
`
`8
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`Reference(s)
`Frey and Divsalar4
`Frey, Divsalar, and
`Luby975
`Frey, Divsalar, and
`Pfister Slides6
`Frey, Divsalar, Luby97,
`and Pfister Slides
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Claim(s) Challenged
`1–8 and 11–14
`
`15–17, 19–22, and 24–33
`
`10
`
`23
`
`II. ANALYSIS
`A. Claim Interpretation
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
`
`
`4 Dariush Divsalar, et al., Coding Theorems for “Turbo-Like” Codes,
`PROCEEDINGS OF THE THIRTY-SIXTH ANNUAL ALLERTON CONFERENCE ON
`COMMUNICATION, CONTROL, AND COMPUTING, Sept. 23–25, 1998, at 201–
`209 (Ex. 1003, “Divsalar”).
`5 Luby, M. et al., Practical Loss-Resilient Codes, PROCEEDINGS OF THE
`TWENTY-NINTH ANNUAL ACM SYMPOSIUM ON THEORY OF COMPUTING,
`May 4–6, 1997, at 150–159 (Ex. 1011, “Luby97”).
`6 Pfister, H., et al, The Serial Concatenation of Rate-1 Codes Through
`Uniform Random Interleavers, Presentation at Allerton Conference, Sept.
`22–24, 1999 (Ex. 1005, “Pfister Slides”).
`9
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`1. “close to one” (claims 1 and 3)
`Apple argues that the broadest reasonable construction of “close to
`one” as recited in claims 1 and 3 is “within 50% of one.” Pet. 24. Apple
`argues that this is consistent with the ’710 patent specification, which states
`that the inner code 210 of Figure 1, “can have a rate that is close to one, e.g.,
`within 50%, more preferably 10% and perhaps even more preferably within
`1% of 1.” Pet. 24–25 (quoting Ex. 1001, 2:62–64 and citing Ex. 1006,
`¶¶ 102–103). Caltech does not provide an express claim construction.
`For purposes of this Decision, we agree with Apple, determining that
`“close to one” as recited in claims 1 and 3 is construed as “within 50% of
`one.”
`
`B. Discretion to Institute Under 35 U.S.C. § 325(d)
`“Congress did not mandate that an inter partes review must be
`instituted under certain conditions. Rather, by stating that the Director—and
`by extension, the Board—may not institute review unless certain conditions
`are met, Congress made institution discretionary.” Intelligent Bio-Systems,
`Inc. v. Illumina Cambridge Ltd., Case IPR2013-00324, slip op. 4 (PTAB
`Nov. 21, 2013) (Paper 19). The Board’s discretion is guided by 35 U.S.C.
`§ 325(d), which provides, in part that:
`MULTIPLE PROCEEDINGS -- . . . In determining whether to
`institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially
`
`
`
`
`10
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`the same prior art or arguments previously were presented to the
`Office.7
`Accordingly, institution of an inter partes review is discretionary. See, e.g.,
`NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4,
`2016) (Paper 9).
`Caltech asserts that the instant petition presents substantially the same
`prior art and arguments presented to the Board in Case Nos. IPR2015-00067
`and IPR2015-00068, both previously denied institution. Prelim. Resp. 2–6.
`Based on the facts and circumstances of this case, we decline to exercise our
`discretion under 35 U.S.C. § 325(d).
`We begin by noting that Apple was not a party to the prior IPRs and
`was sued for infringement of the ’710 patent by Caltech in May of 2016,
`which was after the decisions denying institution in IPR2015-00067 and
`IPR2015-00068. Pet. 3. Although not determinative, this factor weighs in
`favor of not exercising our discretion. In addition, Apple challenges
`additional claims not argued in IPR2015-00067 and IPR2015-00068. In
`IPR2015-00067, we did not reach the merits of the Petitioner’s grounds for
`unpatentability with respect to Frey and Divsalar. Case IPR2015-00067, 3–
`5 (Paper 18); see, e.g., Case IPR2015-00067, Paper 4 at 15–21 (challenging
`claim 1); Pet. 24–42 (challenging claims 1 and 3). Thus, although Frey and
`Divsalar were asserted in IPR2015-00067 and IPR2015-00068, the present
`case includes a different petitioner, challenging additional claims, and
`
`
`7 Although this provision appears in Chapter 32 of the Patent Act, which is
`directed to post-grant reviews, by its terms it is applicable also to
`proceedings under Chapter 31, which covers inter partes review
`proceedings.
`
`11
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`presenting arguments that were not addressed on their merits in IPR2015-
`00067. Accordingly, we decline to deny Apple’s petition pursuant to the
`discretion in 35 U.S.C. § 325(d).
`
`C. Printed Publication Prior Art and Apple’s Expert Testimony
`Caltech contends that Apple has not established that Frey, Divsalar,
`and the Pfister Slides qualify as prior art. Prelim. Resp. 6–17. We address
`each of these allegations in turn below.
`1. Frey (Ex. 1002)
`Apple asserts that Frey was “published in the Proceedings of the 37th
`Allerton Conference on Communication, Control and Computing” and that
`the “conference proceedings were published on or before March 20, 2000.”
`Pet. 25 (citing Ex. 1015 (showing stamps from the Cornell University
`Library and the table of contents for the conference) and Ex. 1006 ¶ 63).
`Caltech asserts that the petition lacks sufficient evidence that Frey is actually
`a prior art printed publication as of the date Apple asserts, March 20, 2000.
`Prelim. Resp. 8.
`In a prior petition filed by another petitioner (Hughes
`Communications Inc.) against the ’710 patent, we found that the petitioner
`did not establish Frey as a prior art printed publication because the petitioner
`failed to provide any evidence or argument in support of their contention
`regarding the source of the printed publication or its distribution as part of
`the conference proceedings. IPR2015-00067 at 8–11 (Paper 18). In
`IPR2015-00067, we did not find the petitioner’s reliance on the declaration
`of the co-authors, Dr. MacKay and Dr. Frey, to be persuasive as it did not
`address the purported publication date and distribution of the paper in the
`
`
`
`
`12
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`Allerton conference proceedings as Petitioner alleged. Id.
`In the present case, Apple offers no declaration and instead relies on
`the bare submission of a copy of the cover of the proceeding, table of
`contents of the proceeding, and library stamped pages from the proceeding
`all in support of their contention that proceeding is a prior art printed
`publication. Pet. 25.
`Without conceding the admissibility of Apple’s evidence in support of
`Frey, Caltech questions the legibility of the alleged library date stamp and
`the sufficiency of the unexplained and unsupported library stamp to meet
`Apple’s burden. Prelim. Resp. 10–11.
`We look to the underlying facts to make a legal determination as to
`whether a reference is a printed publication. Suffolk Techs., LLC v. AOL
`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
`given reference qualifies as a prior art “printed publication” involves a case-
`by-case inquiry into the facts and circumstances surrounding its disclosure to
`members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
`2004). The key inquiry is whether the reference was made “sufficiently
`accessible to the public interested in the art” before the critical date. In re
`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221,
`226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a
`satisfactory showing that such document has been disseminated or otherwise
`made available to the extent that persons interested and ordinarily skilled in
`the subject matter or art exercising reasonable diligence, can locate it.”
`Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)
`(citation omitted).
`
`
`
`
`13
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`At this stage, we find Apple’s support for the printed publication
`status of Frey to be sufficient to move forward to a trial. We note that the
`questions raised by Caltech’s evidentiary arguments questioning Apple’s
`exhibits are relevant inquiries, which, after development of the full record,
`will be evaluated in reaching a final decision regarding the printed
`publication and prior art status of Frey.
`Based on the record at this stage and the information from Apple that
`purports to show that Frey was received at Cornell University Library as of
`March 20, 2000 (Ex. 1015, Ex. 1002), we find that Apple presents sufficient
`evidence at this stage of the proceeding to support Frey as a prior art printed
`publication. This Decision on Institution is not a final decision on the status
`of Frey as printed publication or prior art to the ’710 patent.
`2. Divsalar (Ex. 1003)
`With respect to Divsalar, Apple relies on the Board’s prior final
`written decision in a related case that found that Divsalar qualifies as prior
`art under 35 U.S.C. § 102(b) because the balance of evidence appeared to
`show that it was published before the effective filing date of the ’710 patent.
`Pet. 28 (citing Hughes Network Sys. v. Cal. Inst. of Tech., Case IPR2015-
`00059, slip op 13–22 (PTAB April 21, 2016) (Paper 42)) (“IPR2015-00059
`FWD”). In the present case, Apple relies on the same declaration from a
`librarian prepared for use in Case IPR2015-00059 as evidence that Divsalar
`was publicly available by April 30, 1999, in the University of Texas library.
`See Ex. 1012 (Declaration of Fradenburgh) ¶ 7.
`Caltech argues that Apple “misapprehends the scope of the Board’s
`prior decision in IPR2015-00059,” which did not find Divsalar to be a prior
`art printed publication based solely on the Fradenburgh Declaration (Ex.
`14
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`1012). Prelim. Resp. 13. We agree with Caltech that our previous
`determination regarding the prior art status of Divsalar was made under the
`particular factual and procedural circumstances of that case. Specifically,
`our Final Written Decision in IPR2015-00059 relied, in part, on Caltech’s
`waiver of its objection to the Fradenburgh declaration and the failure to
`move to strike the declaration. See IPR2015-00059 FWD at 31 (denying
`Caltech’s motion to strike Ms. Fradenburgh’s testimony on the basis of no
`timely evidentiary objection); Prelim. Resp. 13. Furthermore, our findings
`in IPR2015-00059 relied on additional evidence, properly before the Board,
`in support of Divsalar as a prior art printed publication.
`Based on the evidence at this stage of the proceeding, Divisalar
`appears to be part of conference proceedings related to the 37th Allerton
`Conference held September 23–25, 1998. Ex. 1003, 1. The Fradenburgh
`declaration provides some evidence that Divsalar was available to the public
`on April 30, 1999.” See Ex. 1012, 2. Although we find that Apple presents
`sufficient evidence at this stage of the proceeding to meet the burden that
`Divsalar is a prior art printed publication for purposes of this Decision, we
`expect that Apple’s evidence in support of Divsalar’s prior art status will be
`more completely evaluated in the context of a trial based on the complete
`record in this case.
`
`3. Pfister Slides (Ex. 1005)
`Apple contends that Paul Siegel presented the Pfister Slides at the
`Allerton Conference in September 1999. Pet. 32 (citing Declaration of Paul
`Siegel, Ex. 1020, 3). Caltech correctly argues that Apple’s Petition is devoid
`of any explanation or argument as to why or how the Pfister Slides qualify
`as prior art. Prelim. Resp. 13–14. Indeed, Apple’s petition makes no
`15
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`attempt to show how the Pfister Slides qualify as a “printed publication”
`under 35 U.S.C. § 311(b), which limits IPRs to challenges based on patents
`and printed publications.
`With respect to slide presentations, Federal Circuit case law and a
`prior opinion from our Board have found that the mere presentation of slides
`at a professional conference is not per se a prior art printed publication.
`Klopfenstein, 380 F.3d at 1349 n.4; Temporal Power Ltd. v. Beacon Power,
`LLC, Case IPR2015-00146, slip op. at 8–11 (PTAB April 27, 2015) (Paper
`10).
`
`In the present case, Apple cites to a specific page of Mr. Siegel’s
`declaration that does not support its conclusion that the Pfister Slides were
`presented and qualify as a printed publication. Pet. 32 (citing Ex. 1020, 3).
`Mr. Siegel’s declaration in its entirety does not address the factors cited in In
`re Klopfenstein as to whether the slides in question qualify as a printed
`publication. See Ex. 1020. Apple’s petition and Mr. Siegel’s declaration
`merely support the assertion that a presentation took place, but fail to
`provide sufficient evidence or argument regarding whether the Pfister Slides
`were published or how the Pfister Slides were made accessible to the
`relevant public, among other issues raised by slide presentations. See, e.g.,
`Klopfenstein, 380 F.3d at 1350 (addressing slide presentation); Temporal
`Power Ltd., IPR2015-00146 at 8–11.
`With respect to the Pfister Slides, Apple fails to meet the burden
`imposed under § 314(a) to establish in its Petition a reasonable likelihood of
`success, which includes, among other things, making a threshold showing
`that the Pfister Slides are a prior art printed publication. Based on Apple’s
`Petition and supporting evidence, we find that it has not met that burden
`16
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`with the Pfister Slides. Accordingly, we find that Apple has not
`demonstrated a likelihood of showing that grounds based on the Pfister
`Slides render the challenged claims unpatentable.
`4. Apple’s Expert Testimony
`Caltech argues that we should accord the declaration testimony of
`Dr. Davis (Ex. 1006) little or no weight because it appears to be copied from
`the expert report of Dr. Frey (Ex. 1017), which was produced as part of
`related litigation. Prelim. Resp. 17–18 (citing Ex. 1006 ¶¶ 22–46; Ex. 1017
`¶¶ 35–53, 55, 57–60, 63). Caltech further argues that testimony of Dr. Davis
`fails to cite sufficient references and evidence in support of the proffered
`testimony and repeats the petition’s argument. Prelim. Resp. 17–18.
`Caltech’s argument and evidence at this stage of our inquiry do not
`provide a sufficient basis to disregard Dr. Davis’s testimony in its entirety or
`accord it little weight. Dr. Davis’s testimony in inter partes review is
`subject cross-examination and will be afforded its due weight subject to
`rebuttal evidence and argument. Accordingly, we do not discount
`Dr. Davis’s testimony for purposes of this Decision.
`
`D. Anticipation by Frey of Claim 1 and 3
`Apple contends that Frey anticipates the limitations of independent
`claim 1 and dependent claim 3 of the ’710 patent. Pet. 34–42 (citing
`Ex. 1006 ¶¶ 106–126).
`
`1. Frey (Ex. 1002)
`Frey describes adding irregularity to turbocodes with systematic bits
`that participate in varying numbers of parity check equations. Ex. 1002, 1
`
`
`
`
`17
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`(Abstract). Frey discloses how a turbocode is made irregular, showing a
`graphical representation in the fifth image of Figure 1, provided below.
`
`
`
`
`Figure 1, excerpted above, shows the systemic bits at the bottom with 2 or 4
`lines going into the permuter. The fifth image of Figure 1 “shows how a
`turbocode can be made irregular by ‘tying” some of the systematic bits
`together, i.e., by having some systematic bits replicated more than once.”
`Ex. 1002, 3. Frey states that the fifth image of Figure 1 “illustrates one way
`the [] turbocode can be made irregular. Some of the systematic bits are
`‘tied’ together, in effect causing some systematic bits to be replicated more
`than once.” Id. at 2. Frey further discloses “that too [sic] keep the rate of
`the overall code fixed at 1/2, some extra parity bits must he punctured.” Id.
`In describing the decoding of irregular turbocodes, Frey provides a
`graphical model for the irregular turbocode shown in Figure 2, below.
`
`
`
`
`18
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`
`
`Figure 2 shows irregular turbocodes where fd —the fraction of the codeword
`where each bit is repeated d times. Ex. 1002, 4. Frey discloses that “an
`irregular turbocode has the form shown [above] in Fig. 2, which is a type of
`‘trellis-constrained code’” where “fd is the fraction of codeword bits that
`have degree d and D is the maximum degree.” Id. at 2. Frey further
`discloses that “[e]ach codeword bit with degree d is repeated d times before
`being fed into the permuter. Several classes of permuter lead to linear-time
`encodable codes. In particular, if the bits in the convolutional code are
`partitioned into ‘systematic bits’ and ‘parity bits’, then by connecting each
`parity bit to a degree 1 codeword bit, we can encode in linear time.” Id. at 2.
`2. Analysis
`For claim 1, Apple contends that Frey discloses “a method of
`encoding a signal” (Pet. 34–35), “obtaining a block of data in the signal to
`be encoded” (id. at 35–36), and “partitioning said data block into a plurality
`of sub-blocks, each sub-block including a plurality of data elements” (id. at
`36–37).
`Apple argues that Figure 2 of Frey shows that “Frey partitions the
`information bits into groups, where the bits in each group have the same
`19
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`degree (i.e., bits within the same subgroup are all repeated the same number
`of times).” Id. at 36. Apple asserts that
`groups of information bits [shown in Frey, Figure 2] labeled f2,
`f3,…, fD represent sub-blocks into which the data block is
`partitioned. Thus, the bits that are repeated twice (f2) constitute
`one sub-block, the bits that are repeated three times (f3) constitute
`a second sub-block, and so on. Each of these sub-blocks contains
`a plurality of bits (or “data elements”), as required by the claim.
`(Ex. 1006, ¶113.)
`Pet. 37.
`Caltech argues that Apple misreads Frey, which only discloses
`individual systematic bits shown in Figure 1. See Prelim. Resp. 20. These
`bits are copied at different rates to produce sets of bits that are permuted. Id.
`Caltech contends that Frey discloses individual bit operations and not
`partitioning into blocks of data, and sub-blocks as recited in claim 1. Id.
`Apple, Caltech argues, cites Figure 2 of Frey without sufficient explanation
`for how the labels f2, f3, . . . fD represent sub-blocks into which the data
`block is partitioned. Id. At 21 (citing Pet. 37). Caltech asserts that Figure 2
`of Frey is an individual bit copying process described in Figure 1. Id. Thus,
`Caltech contends, “[r]ather than describing partitioning of data in to sub-
`blocks including a plurality of data elements, Frey, including the limited
`provisions cited in the petition, teaches merely repeating its systemic bits on
`an individual basis.” Id. at 22.
`Caltech also argues that in the grounds based on the combination of
`Frey and Divsalar, Apple’s argument for Frey teaching the limitations of
`claim 1 acknowledges that Apple considers Frey to inherently teach the
`partitioning limitations of claim 1. Id. at 20 n.8 (citing Pet. 52). Apple’s
`argument applying Frey to claim 1 in the obviousness grounds is that
`20
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`irregular coding schemes such as those taught in Frey “de facto partition
`information bits into sub-blocks” whenever they encode bits a different
`number of times. Pet. 52 (citing Ex. 1006 ¶ 147 and stating “in particular
`that an encoding method that meets the ‘different number of times’
`limitation of claim 1 necessarily meets the ‘partitioning’ limitation”).
`On the record before us, Apple has presented sufficient evidence that
`Frey discloses partitioning the information into blocks and sub-blocks.
`Neither party has sought a construction of “partition” or “block” as used in
`independent claim 1 (and in dependent claim 16). At this stage of the
`proceeding, Caltech’s argument that Frey is directed to bit-based individual
`repeating and not the partitioning of data in sub-blocks and blocks does not
`undercut Apple’s evidence and argument that a person of ordinary skill in
`the art would understand Frey to disclose partitioning of blocks into sub-
`blocks under an ordinary meaning as recited in the claims. Pet. 20–21, 52;
`Ex. 1002, 2–4; Ex. 1006 ¶¶ 111–115, 147. Thus, on this record, we find that
`Apple has presented sufficient information that Frey discloses the
`partitioning limitations of claims 1 and 3.
`Apple has adequately shown, at this stage of the proceeding, that Frey
`discloses each of the limitations of the challenged claims; specifically the
`encoding of a block of data limitation (Pet. 34–35),
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
