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`Paper No. ___
`Filed: August 16, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`—————————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————————————————
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`APPLE INC.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
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`—————————————————
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`Case IPR2017-00210
`Patent 7,116,710
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`—————————————————
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
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`Case IPR2017-00210
`Patent 7,116,710
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`I.
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`INTRODUCTION
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`On August 4, 2017, Apple, Inc. (“Petitioner”) filed a Motion to Submit
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`Supplemental Information under 37 C.F.R. § 42.123(a) (Paper 22) (“Motion”).
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`Petitioner seeks to introduce 15 exhibits that were previously served on Patent
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`Owner as Supplemental Evidence. Patent Owner California Institute of
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`Technology (“Caltech”) opposes Petitioner’s motion. On August 11, 2017, the
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`Board by email granted an unopposed request for extension until August 16, 2017
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`for filing this Opposition.
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`The requested supplemental evidence relates to purported publication of the
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`Frey and Divsalar references. Petitioner was already given one chance to modify
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`the evidence relied upon in the petition on these issues when it was allowed to
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`enter substitute exhibits prior to institution. See Papers 13, 16. Now, Petitioner
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`seeks a third opportunity to present evidence that should have been included in the
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`petition. This is remarkable considering Petitioner recycled previous petitions
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`where the public availability of the Frey and Divsalar references was at issue.
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`What’s more, Petitioner makes clear that the new evidence is intended to
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`shift the case away from the grounds presented in the petition by presenting a
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`myriad of possible publication dates. For example, the petition asserts a publication
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`date of March 20, 2000 for Frey. Yet the Motion asserts that the various exhibits in
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`the requested supplemental information demonstrate publication in February 2000,
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`Patent 7,116,710
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`January 2000, October 1999, or even the year 1999 generally. As such, these
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`exhibits are not only internally contradictory so as to create an evidentiary mess,
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`but irrelevant to the March 20, 2000 date stated in the petition.
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`Finally, Petitioner has candidly acknowledged that it is attempting to
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`preempt potential arguments in the Patent Owner Response. Petitioner expressly
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`stated in the July 26, 2017 conference call with the Board its concern that Caltech
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`might attempt to antedate the alleged March 20, 2000 publication date asserted in
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`the petition regarding Frey. The Board, however, has previously explained that
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`submitting supplemental information as a vehicle to preempt a possible position
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`the Patent Owner may take is impermissible. Medtronic, Inc. v. Endotach LLC,
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`IPR2014-00100, Paper 18 at 4 (PTAB Apr. 21, 2014) (“[S]ubmitting supplemental
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`information under 37 C.F.R. § 42.123(a) as a vehicle to respond to a possible
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`position that another party may take in the future is improper.”). Presenting
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`publication dates as moving targets with evolving theories of unpatentability is
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`prejudicial to Caltech, is improper use of supplemental information, and should be
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`denied.
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`II. LEGAL STANDARD
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`Even if the requirements of 37 C.F.R. § 42.123(a) for filing the motion are
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`satisfied, the Board is not required to grant the motion. Redline Detection, LLC v.
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`Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015). Instead, the “guiding
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`Patent 7,116,710
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`principle” for the Board is to “ensure efficient administration of the Office and the
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`ability of the Office to complete IPR proceedings in a timely manner.” Id.
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`The Board has denied supplementation proffered to change the evidence
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`presented in the petition, or to “bolster” a challenge based on feedback gleaned
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`from the institution decision. Redline Detection, Paper 24 at 4; see also Mitsubishi
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`Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 30 at 5-6 (PTAB Nov. 28,
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`2014) (citing ZTE v. Contentguard Holdings, Inc., IPR2013-00139, Paper 27 at 3
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`(PTAB July 30, 2013)); Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-
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`00106, Paper 24 at 4 (PTAB Aug. 5, 2013), aff’d, 811 F.3d 435 (Fed. Cir. 2015)).
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`The use of supplemental information as a vehicle to reply to arguments
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`made in a preliminary response or as an attempt to preempt possible arguments a
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`Patent Owner might take during trial is not permitted either. VTech Commc’ns, Inc.
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`v. Spherix Inc., IPR2014-01432, Paper 12 at 3 (PTAB, Jan. 21, 2015); see also
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`Medtronic, IPR2014-00100, Paper 18 at 4 (PTAB Apr. 21, 2014).
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`III. PROCEDURAL HISTORY
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`Petitioner’s motion for supplemental information represents its third attempt
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`to provide support for its grounds of unpatentability. See Motion at 10; see
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`generally POPR at 2-6. The petition materials initially relied upon a draft version
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`of the Frey paper allegedly distributed over the Internet—a theory previously
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`rejected by the Board. See Ex. 1002 (original); see also Hughes Communications,
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`Inc. v. California Institute of Technology (IPR2015-00067, “Hughes”), Paper 18 at
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`8-11. As to Divsalar, the petition relies on the Declaration of Robin Fradenburgh
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`(Ex. 1012), recycled from the Hughes case, to support the alleged public
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`accessibility of the reference.
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`Prior to institution, the Petitioner requested permission to replace certain
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`exhibits including Frey and Divsalar with new exhibits, and filed a motion to that
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`effect the day before the Preliminary Response was due. Paper 13. The Board
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`granted the motion, which significantly delayed the proceeding. The newly-
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`submitted evidence included a copy of Frey (Ex. 1002, replacement) which the
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`petition alleges was published on March 20, 2000 based on a library stamp in the
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`document. See Pet. at 25. The original copy of the Divsalar exhibit (Ex. 1003,
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`original) was also replaced (Ex. 1003, replacement).
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`Following institution, Petitioner requested a conference call with the Board.
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`During the call, Petitioner admitted that it intended to submit Exs. 1027–1041 as
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`supplemental information at least in part because it anticipated that Patent Owner
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`would show that the invention claimed in the ’710 patent was invented prior to the
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`alleged March 20, 2000 publication date of Frey. The request was granted and
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`Petitioner’s Motion followed.
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`IV. ARGUMENT
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`A. Petitioner Has Failed to Demonstrate That Exhibits 1027–1041
`Are Relevant to an Instituted Claim
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`The exhibits submitted by Petitioner are confusing, duplicative, and contain
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`speculation and hearsay. Furthermore, they fail to support the specific allegations
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`made in the petition regarding publication dates of Frey and Divsalar. Petitioner’s
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`motion promises to turn the present proceeding into an evidentiary morass.
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`Exs. 1027-1030: Exhibits 1027 and 1028 are identified as library records
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`that allegedly show a 1999 date of publication for the conference proceedings
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`containing Frey. Motion at 5. Petitioner relies on the declaration of Theodore Fons
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`(Ex. 1030) in support. These documents are irrelevant to the March 20, 2000 date
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`asserted in the petition, but are an improper attempt to materially alter the petition
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`theory and preempt an argument Petitioner believes Caltech may make later.
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`Exhibits 1027, 1028 and 1030 additionally create confusion rather than any
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`clarity, and will waste Caltech and Board resources. For example, in his
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`declaration, Mr. Fons observes that the date “1999” was entered into a field by
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`WorldCat, and possibly copied by JPL at an unknown later date. Ex. 1030, ¶21.
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`Mr. Fons offers conjecture as to the thoughts of unknown cataloguers but concedes
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`a “date was not present in place where imprint information is normally found and
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`used for cataloging.” Ex. 1030, ¶19. However, this opinion is speculation on the
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`part of Mr. Fons and hearsay. Indeed, the simplest explanation is that the “1999” in
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`the date field reflects the conference date, at which Frey gave a presentation but no
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`paper was distributed (it is uncontested that no Frey paper was distributed at the
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`conference, as Dr. Frey previously testified (see Paper 17 at 9 n.6)). Moreover, an
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`alleged 1999 publication date for Frey contradicts other arguments and evidence
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`relied on by Petitioner. See, e.g., Motion at 7 (arguing that Ex. 1038 shows the
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`1999 Proceedings were not even shipped to the Allerton Conference before late
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`February, 2000).
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`Exhibit 1029 is a library record from WorldCat allegedly showing that the
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`conference proceedings containing Divsalar were published in June of 1999. First,
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`this is irrelevant to the Fradenburgh declaration’s alleged publication at the
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`University of Texas, or the asserted March 30, 1999 public accessibility case as
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`stated in the petition. Second, the petition asserts Divsalar solely as 102(b) prior art
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`based on the asserted March 30, 1999 date. Pet. at 28.1 However, Ex. 1029 serves
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`1 Petitioner has conceded an effective filing date of May 18, 2000 for the ’710
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`patent claims. Pet. at 28. Additionally, the Fradenburgh Declaration lists a date of
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`“1999-04-30,” not March 30, 1999, as asserted in the petition. Ex. 1012 at 2.
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`as an implicit acknowledgment by Petitioner that the unpatentability case as stated
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`in the petition was not sufficiently substantiated. That does not permit Petitioner,
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`however, to use supplemental information to advance an alternate theory.
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`Ex. 1031: Exhibit 1031, the affidavit of Pamela Stansbury, is the sole piece
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`of evidence provided by Petitioner that actually discusses the alleged March 20,
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`2000 publication of Frey. However, Petitioner has failed to sufficiently explain
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`why this testimony was not provided either with the original petition, or when
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`changing the exhibits after filing. Petitioner should not be permitted to change the
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`evidence and have yet another attempt to substantiate arguments as made in the
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`petition. Petitioner’s asserted basis for its relevance—that it allegedly “rebuts
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`Patent Owner’s argument that the date of the library stamp is 2008 rather than
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`2000,”—is misplaced. There is no reason why legible copies were not earlier
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`provided. Crestron Electronics, Inc. v. Intuitive Building Controls, Inc., IPR2015-
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`01379, Paper 34 (2016) (“We agree with Patent Owner that Petitioner should have
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`appreciated the poor quality images of the original [reference] and sought to
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`remedy the situation much earlier in this proceeding.”). If Petitioner wishes to
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`provide legible copies it should provide legible copies—not a declaration seeking
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`to bolster its deficient petition case under the guise of a legibility issue.
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`Exs. 1032–1035: Exhibits 1032–1034 are declarations by three Allerton
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`conference chairs and Exhibit 1035 is a declaration by Brendon Frey. The
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`conference chairs’ declarations speculate, roughly 20 years later, as to expected
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`“timelines associated with the 36th and 37th Allerton Conferences.” Motion at 5.
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`Not one of the four witnesses, however, purports to have actual knowledge specific
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`to the actual alleged publication of the 37th Proceedings. Instead, each repeats the
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`same speculation about when the Proceedings might have been shipped.
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`Dr. Frey’s declaration (Ex. 1035) adds significant confusion, and is not
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`relevant to the Cornell library stamp on Frey or the instituted ground as it discusses
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`a different alleged publication than the previously identified March 20, 2000 date.
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`Dr. Frey reverts to a different theory compared to what is stated in the petition—
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`the alleged internet posting of the draft version of Frey. For example, Dr. Frey
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`discusses the alleged posting of the electronic draft Frey paper on Dr. MacKay’s
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`website. See Ex. 1035, ¶¶17-18. Moreover, Petitioner disavowed that draft Frey
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`paper and pled for relief by arguing that filing the draft Frey paper was a clerical
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`error due to an associate not following instructions. Paper 13 at 4. Petitioner should
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`not be allowed to reintroduce the admittedly erroneous document, and advance a
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`different and previously rejected theory, after trial has been instituted. Petitioner
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`should not be permitted to circumvent the standards for gaining institution (and
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`avoid 325(d) arguments) through a supplemental information submission.
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`Ex. 1036: Exhibit 1036, the Allerton website from 1999, is not relevant to
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`the date of publication of the Frey paper. The only basis for relevance suggested is
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`that Ex. 1036 lists a due date (September 24) for papers. However, this does not
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`indicate a date of publication. Indeed, its relevance is further undermined by the
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`testimony of Dr. Frey that he finished his paper on September 29 and submitted it
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`“within a couple of weeks of that.” Ex. 1035, ¶17.
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`Exs. 1037 and 1038: Both documents address Frey but are irrelevant to the
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`petition theory. Exhibit 1037 is an email dated December 8, 1999. The email
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`relates only to the placing of an order for future publication and speculations of the
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`Allerton conference chairs regarding how long after that date printed copies of the
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`conference proceedings might have been shipped.
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`Exhibit 1038 is allegedly “a bill of lading for the 37th Annual Allerton
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`Conference Proceedings with a ship date of February 21, 2000.” However, no
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`witness has authenticated this exhibit—only unsubstantiated attorney argument is
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`provided. There is no indication how a shipment could have been made on a
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`federal holiday, no indication of a date when this alleged shipment was received is
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`present on the form, nor does it indicate how much time would have passed
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`between any request and subsequent mailing to the public.
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`Exs. 1039 and 1040: Exhibits 1039 and 1040 each contain testimony from
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`the Hughes litigation and are irrelevant here. Petitioner relies on Ex. 1039 as
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`allegedly showing that the deponent in that case, Dr. Wicker, was “reasonably sure
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`that the irregular turbo codes paper, Frey ’99, was indeed published as part of the
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`proceedings of the Allerton conference.” Motion at 8 (citing Ex. 1039 at 157:2–5).
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`However, Dr. Frey concedes that the paper was not published at the conference.
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`Ex. 1035, ¶ 17. Moreover, the exhibits are irrelevant to the March 20, 2000 date.
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`Petitioner relies on Ex. 1040 as allegedly demonstrating that “Dr. Urbanke
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`suggested that people in the field were looking at Divsalar in 1999.” Motion at 8
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`(citing Ex. 1040 at 168:4–21). First, this extrinsic deposition of a different witness
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`is irrelevant to the testimony relied on in the petition as alleged demonstrating
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`publication and related issues raised in the preliminary response, i.e., whether Ms.
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`Fradenburg is a witness available for cross-examination in this proceeding, or
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`whether her library made the reference publicly available and, if so, when.
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`Additionally, Petitioner improperly characterizes the cited testimony. It is the
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`attorney taking the deposition, not Dr. Urbanke, who discusses the Divsalar paper.
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`Given the significant length of this deposition transcript (383 pages) and
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`voluminous content having nothing to with the publication of Divsalar, Petitioner’s
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`failure to identify content relevant to an instituted ground, and Petitioner’s
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`mischaracterization of Dr. Urbanke’s testimony, submission as supplemental
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`information should be denied.
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`Ex. 1041: Exhibit 1041 is irrelevant to the asserted March 20, 2000 date and
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`provides no contemporaneous evidence regarding Frey’s publication as it is a copy
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`of a book published in 2014. Ex. 1041 at 4. Motion at 8. Moreover, as Petitioner
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`admits, the book describes 1999 as the date of some presentation, not publication
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`of a paper. Id., Ex. 1041 at 36. And the book adds confusion rather than clarity as
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`the dates cited in the book are internally inconsistent. Ex. 1041 at 68 (ref. 4).
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`B. Petitioner Should Not Be Allowed a Third Reformulation
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`Petitioner chose not to previously submit any of the evidence it now seeks to
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`introduce. Given the unique history of the present case, including the previous
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`Hughes cases and the fact that this petitioner was already granted the extraordinary
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`relief of replacing its petition documents with different ones, the Board should
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`decline to exercise its discretion in allowing yet another attempt to address issues
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`that should have been identified and addressed previously. Allowing the petitioner
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`multiple opportunities to supplement, and even alter, its petition case long after the
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`petition filing is inefficient, wastes resources, is prejudicial to Caltech, and is
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`contrary to the “guiding principle” for the Board to “ensure efficient administration
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`of the Office and the ability of the Office to complete IPR proceedings in a timely
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`manner.” Redline Detection, 811 F.3d at 435.
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`C. The Motion is an Improper Vehicle to Change the Petition’s
`Alleged Dates of Publication
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`Exs. 1027-1041 are irrelevant to the asserted March 20, 2000 publication
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`date for Frey. Petitioner has admitted that its purposes in submitting these exhibits
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`include an attempt to head off a potential argument by Caltech of prior invention.
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`See Section III, supra (discussing the July 26, 2017 Conference Call). This
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`represents an improper use of supplemental information to modify the arguments
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`made in the petition. Medtronic, IPR2014-00100, Paper 18 at 4; see also Intelligent
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`Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“[u]nlike
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`district court litigation — where parties have greater freedom to revise and develop
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`their arguments over time and in response to newly discovered material — the
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`expedited nature of IPRs bring[s] with it an obligation for petitioners to make their
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`case in their petition to institute.”). The Board should deny the use of supplemental
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`information for such purposes.
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`V. CONCLUSION
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`For the reasons described above, the Board should deny Petitioner’s Motion
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`to Submit Exhibits 1027-1041 as Supplemental Information.
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`Date: August 16, 2017
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Opposition to Petitioner’s Motion
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`to Submit Supplemental Information was served on this 16th day of August, 2017,
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`on the Petitioner at the correspondence address of the Petitioner as follows:
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`Richard Goldenberg
`Brian M. Seeve
`Dominic Massa
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`richard.goldenberg@wilmerhale.com
`brian.seeve@wilmerhale.com
`dominic.massa@wilmerhale.com
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`Date: August 16, 2017
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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