Paper No. ___
`Filed: November 7, 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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`APPLE INC.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2017-00210
`Patent No. 7,116,710
`_____________________________
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
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`TABLE OF CONTENTS
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`Dr. Davis’s evasiveness during his deposition undermines his
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`The ’710 patent was conceived and reduced to practice by March
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`The petition fails to identify “a block of data in the signal to be
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`Frey does not disclose a second encoder that has a “rate close to
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`PETITIONER HAS NOT DEMONSTRATED FREY QUALIFIES AS
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`STATEMENT OF PRECISE RELIEF REQUESTED .................................. 1
`I.
`INTRODUCTION ........................................................................................ 1
`II.
`III. BACKGROUND OF THE ART ................................................................... 4
`A.
`Frey .................................................................................................... 6
`B.
`Divsalar .............................................................................................. 6
`C.
`Luby97 ............................................................................................... 7
`IV. DR. DAVIS’S TESTIMONY SHOULD BE GIVEN LITTLE
`WEIGHT ...................................................................................................... 8
`A. Dr. Davis’s testimony includes basic errors ........................................ 8
`B.
`Dr. Davis’s testimony is not independent .......................................... 11
`C.
`credibility.......................................................................................... 11
`V.
`PRIOR ART UNDER 35 U.S.C. § 102 ....................................................... 13
`A.
`20, 2000 ............................................................................................ 14
`VI. CLAIM CONSTRUCTION ........................................................................ 17
`“rate” ................................................................................................ 18
`A.
`B.
`“close to one”.................................................................................... 19
`VII. GROUND 1: CLAIMS 1 AND 3 ARE NOT ANTICIPATED BY
`FREY20
`A.
`encoded” as recited in claim 1 ........................................................... 20
`B.
`The petition fails to identify a “partitioning” step in claim 1 ............. 21
`C.
`one” or a “rate substantially close to one” ......................................... 24
`VIII. GROUND 2: DIVSALAR IN VIEW OF FREY DOES NOT RENDER
`CLAIMS 1-8 AND 11-14 OBVIOUS ......................................................... 30
`Legal Principles ................................................................................ 31
`A.
`B.
`The cited references do not disclose the “partitioning” step .............. 32
`C.
`and Frey ............................................................................................ 32
`1. Frey teaches that introducing irregularity generally leads to
`worse results ................................................................................. 32
`i.
`error problems than Berrou’s regular code .................... 35
`2. Frey and Divsalar are not “similar codes” ...................................... 39
`3. The petition’s proposed modification is not a “trivial change”....... 41
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`The petition fails to establish a motivation to combine Divsalar
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`Frey’s best irregular code had significantly worse
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`i
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`The petition does not provide a specific modification supported
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`The petition does not and cannot show a reasonable expectation
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`4. The petition’s single sentence “obvious to try” argument
`should be rejected ......................................................................... 43
`D.
`by Frey.............................................................................................. 44
`E.
`of success .......................................................................................... 46
`IX. GROUND 3: THE COMBINATION OF FREY, DIVSALAR, AND
`OBVIOUS .................................................................................................. 50
`There is no motivation to combine Frey, Divsalar and Luby97 ......... 50
`A.
`B.
`challenged claims .............................................................................. 51
`X. OBJECTIVE INDICIA OF NON-OBVIOUSNESSERROR! BOOKMARK NOT DEFINED.
`A. Nexus between the Objective Evidence and the ClaimsError! Bookmark not defined.
`B.
`Long-felt need and failure of others ... Error! Bookmark not defined.
`C.
`Industry Praise ................................... Error! Bookmark not defined.
`D. Unexpected Results............................ Error! Bookmark not defined.
`Commercial Success .......................... Error! Bookmark not defined.
`E.
`XI. CONCLUSION .......................................................................................... 52
`XII. APPENDIX ................................................................................................ 65
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`LUBY97 DOES NOT RENDER CLAIMS 15–17, 19–22, AND 24–33
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`The petition fails to explain how the combination discloses the
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`ii
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Apple, Inc. (“Petitioner”) filed a petition for inter partes review of claims 1-8,
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`10-17, and 19-33 of U.S. Patent No. 7,116,710 (the “’710 patent”, EX1001). The
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`Board issued its decision instituting trial (“Decision,” Paper 18) on three of the six
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`petitioned grounds and with respect to all but two of the challenged claims, claims
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`10 and 23. The patent owner (“PO” or “Caltech”) hereby requests that the Board
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`now issue a final written decision rejecting all grounds of challenge still remaining,
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`and to confirm that claims 1-8, 11-17, 19-22, and 24-33 are not unpatentable.
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`II.
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`INTRODUCTION
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` The ’710 patent claims inventions directed to a revolutionary class of
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`error-correction codes, dubbed “irregular repeat and accumulate codes,” or “IRA
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`codes,” which rivaled and surpassed the performance of the best known codes at that
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`time. No other code known at the time could boast linear encoding, linear decoding,
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`and performance near the theoretical Shannon limit.
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`Design of new error correction codes typically requires extensive
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`experimentation by experts in the field in order to identify a viable code structure,
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`create useable encoders and decoders, and demonstrate the capabilities of the code’s
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`performance. Even simple code structures require rigorous simulation and analysis
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`to determine whether they can be practically and reliably encoded and decoded, and
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`1
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`features that may improve performance in one code may have detrimental effects in
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`others.
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`In arguing that the instituted claims are unpatentable, Petitioner relies on two
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`prior art references: the Frey reference, which discloses an experimental irregular
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`turbocode with inconsistent and poor performance, and the Divsalar reference,
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`which describes a method of encoding using repeat accumulate (RA) codes. But the
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`petition does not establish that Frey is prior art to the ’710 patent in the first instance,
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`and all grounds of challenge necessarily fail for that reason alone. Further, neither
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`Frey nor Divsalar discloses every element of the encoding scheme claimed in the
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`’710 patent, comprising irregular repetition, permutation, and accumulation. For
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`example, Frey’s convolutional code is not an accumulator and does not have a rate
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`close to one—a fact that undermines the anticipation challenge in view of Frey. And
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`a person of ordinary skill in the art would not have been motivated by Frey to
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`incorporate irregular repetition into Divsalar because Frey’s disclosures omit
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`description of critical parameters, and emphasize the unpredictability of the results
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`and the need for further experimentation. In fact, many of Frey’s codes were
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`non-functional, and the single functional code identified in the paper exhibited
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`characteristics of a poorly performing code.
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`In the obviousness challenged, the petition fails to describe how or why a
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`person of ordinary skill in the art would have been motivated by Frey, which
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`2
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`describes overwhelmingly unsuccessful results in irregular turbocodes (and
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`expressly concedes the need for further experimentation), to make the repetition of
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`the information bits in the encoding described in Divsalar irregular. Frey’s irregular
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`turbocodes are fundamentally different from Divsalar’s codes in several ways, and
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`even if Frey’s irregular codes had exhibited superior performance (they do not),
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`there would be no reason to expect similar results in the context of in a completely
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`different type of code. Petitioner does not point to any teaching anywhere in the art
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`that would suggest making information bits in the Divsalar code irregular and
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`wholly lacks discussion of whether there would be any reasonable expectation of
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`success—a critical requirement of an obviousness inquiry under Graham v. John
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`Deere.
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`Instead, Petitioner provides only a conclusory assertion that such a
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`modification would be “trivial” or “simple” and does not even attempt to show any
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`reasonable expectation of success. Rather than apply any specific teaching in Frey
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`to Divsalar’s codes, the petition instead proposes a modification (which is not
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`described by Frey) of a Tanner graph illustrated in a non-prior art Ph.D. thesis of Dr.
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`Khandakar—an argument the Board already rejected in its institution decision.
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`Dr. Divsalar, the lead author of the Divsalar reference, has submitted a
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`declaration (EX2031) confirming that it is neither trivial nor obvious to modify the
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`code in Divsalar in the manner suggested by the petition. Dr. Mitzenmacher, a
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`3
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`co-author of the Luby papers, has also submitted a declaration (EX2004) explaining,
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`inter alia, why it would not have been apparent to a person of skill at the time of the
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`invention of IRA codes to apply irregularity (whether as a general concept, or as
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`specifically taught in Frey) to Divsalar codes with any reasonable expectation of
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`success. Moreover, the objective indicia of nonobviousness confirm that IRA
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`encoding and decoding methods and systems were groundbreaking developments
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`that overcame long recognized problems in previously known error correction
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`codes, and were widely hailed as a revolutionary invention.
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`For these reasons, all of the remaining grounds of challenge must be denied.
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`III. BACKGROUND OF THE ART
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`The field of error correction coding has historically been characterized by
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`significant experimentation and unpredictable results. Since it is mathematically
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`impossible to prove the performance of most codes, researchers typically engage in
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`extensive trial-and-error and experimentation with various code structures to
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`determine whether new codes were capable of improved performance. Even when
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`well-performing codes are identified, the reasons for the improved performance are
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`often not understood. (EX2004, ¶¶37-60).
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`As Petitioner’s expert conceded during cross-examination:
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`What you would really like to be able to do is a formal
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`mathematical analysis of the strength of the codes that you
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`are working with, but that’s often really hard. So often
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`what the engineers in particular would do is … take a
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`variety of different [codes], run simulations and … then I
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`will get a general sense of what the [mathematical]
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`analysis would have shown me. … [I]t might even be
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`impossible to do the mathematical analysis.
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`EX2033 at 256:21-257:12 (emphasis added). Caltech’s expert, Dr. Mitzenmacher,
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`likewise explains that discoveries had to be made via extensive experimentation.
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`Codes were not viewed as interchangeable parts, where one property of an effective
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`code could be incorporated into other codes with similar results. In reality, a code’s
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`performance depended on its specific properties and constraints, and researchers
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`could not reasonably predict whether a particular modification would result in an
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`improvement. (EX2004, ¶37).
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`The unpredictability of the field is demonstrated by the very references
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`submitted by the petitioner, as well as the history of two particular classes of codes
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`that were considered to be the best known codes in the mid- to late-1990s:
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`turbocodes and Gallager codes. (EX2004, ¶¶38-47).
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`As such, new developments in the field of error correction coding have
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`frequently been the result of surprising breakthroughs during experimentation with
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`new classes of codes. The IRA codes claimed in the ’710 patent are no exception to
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`this phenomenon.
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`A.
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`Frey (EX1002)
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`Frey’s paper describes a code structure referred to as “irregular turbocodes”
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`that generally takes the form shown in Figure 2 of the paper. Contrary to Petitioner’s
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`assertions, however, Frey did not conclude “that introducing irregularity into
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`turbocodes improved their performance.” Pet. 48. Rather, Frey found that the
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`performance of his irregular turbocodes was highly sensitive to the permutation and
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`puncturing scheme used, and that “[f]inding a good [irregular degree] profile is not
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`trivial.” EX1002, p. 5; see also EX2031, ¶31. But Frey did not provide the
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`parameters he ultimately tested. Further, most of the irregular turbocodes tested by
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`Frey performed worse than Berrou’s original turbocode, and the one degree profile
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`(out of nine) that was not markedly worse was plagued with low weight codewords
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`and exhibited an error floor too high for any practical use. Indeed, Frey concludes
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`that additional research and experimentation is necessary to reduce the error floor.
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`EX1002, p. 7. At best, Frey confirms that the performance of new code structures is
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`unpredictable, and that adding irregularity to a code will, in most cases, result in
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`worse performance. (EX2004, ¶¶48-52)
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`B. Divsalar (EX1003)
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`Divsalar describes the work of Dr. Dariush Divsalar, along with two of the
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`inventors of the ’710 patent (Drs. McEliece and Jin), in developing repeat
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`accumulate (RA) codes. Compared to Frey, the Divsalar codes are an entirely
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`different class of codes with a distinct structure and different performance. EX2031
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`¶¶16-17, 24, 25, 31. (EX2004, ¶90)
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`RA codes as taught in Divsalar are nonsystematic codes, meaning that only
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`the encoded codeword bits are transmitted. RA codes always perform regular
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`repetition of information bits.1 As Dr. Divsalar explains, one of the key conclusions
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`in Divsalar was that repetition less than three would result in very poor performance.
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`See EX2031, ¶27; EX1003 at 6 (“It follows from (5.6) that an RA code can have
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`word error probability interleaving gain only if q >= 3.”). At a rate of 1/q (e.g., a
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`repeat degree of 4 results in a coding rate of ¼), RA codes are impractically slow.
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`Indeed, RA codes cannot achieve code rates sufficiently high for most practical
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`applications, and they were never intended to be competitive error correction
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`codes—they were designed as a research tool. EX2031, ¶¶16-32; EX2004, ¶57.
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`C. Luby97 (EX1011)
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`Luby97 describes a methodology for generating codewords using a “carefully
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`chosen [irregular] degree sequence” on a bipartite graph. EX1011, p. 151. A
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`bipartite graph is divided into two distinct sets of nodes: message nodes or variable
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`nodes, representing the codeword that is transmitted; and check nodes, representing
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`1 Every repeated bit in an RA code is separately accumulated to generate a new
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`parity bit; in IRA codes, subsets of information bits are combined using an XOR
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`operation or modulo-2 addition, and the sums are then accumulated. EX2031, ¶30.
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`constraints on the message nodes. In the graph, message nodes may only be
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`connected to variable nodes, and vice versa. The degree of a node refers to the
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`number of edges connecting that node to other nodes. In Luby’s irregular graphs,
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`some message nodes (i.e., codeword bits) have different degrees than others. Luby
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`thereby teaches certain sets of codewords based on irregular graphs. (EX2004,
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`¶¶53-55)
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`IV. DR. DAVIS’S TESTIMONY SHOULD BE GIVEN LITTLE WEIGHT
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`Petitioner relies on a declaration from Dr. Davis that should be given little
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`weight. As discussed below, Dr. Davis showed a general lack of knowledge about
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`relevant work in this field and the very references he cites, his declaration does not
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`appear to reflect his own independent work and opinions, and he was evasive and
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`unresponsive to straightforward questions asked during his deposition.
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`A. Dr. Davis’s testimony includes basic errors
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`The Federal Circuit has found that basic technical errors are an important clue
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`to witness credibility. See, e.g., Merck & Co. v. Teva Pharm. USA, Inc., 347 F.3d
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`1367, 1371 (Fed. Cir. 2003) (holding pharmaceutical testimony of a chemist to be
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`less credible compared to the testimony of pharmacologists and noting chemist
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`made errors that those in the art would have considered basic). Here, Dr. Davis
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`could not answer basic questions about Berrou, the seminal paper on turbocodes,
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`without rereading the entire article. EX2033, 54:17-60:3. He could not give an
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`opinion on what “irregular” meant in the field, and implied such information was
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`unhelpful or extraneous to the Board. Id., 87:7-89:16.
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`In his testimony on Frey, he ignored and/or failed to appreciate various
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`aspects of the reference. He did not consider Frey's puncturing of parity bits despite
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`Frey’s teaching puncturing as a necessity to keep the overall rate of the code
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`constant. Id., 148:5-14; 150:3-10. Dr. Davis also displayed a curious lack of
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`knowledge regarding Frey’s discussion of its error floor, mistakenly thinking Frey
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`used the term “flattening effect” to refer to the top flat portion of the regular code's
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`graph. Id., 162:20-163:8, 165:3-166:18; see also EX2034 at 1 (cited at Frey p. 6 and
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`equating “flattening of the error-curve” and “the so-called ‘error floor’”); EX2030
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`(Wikipedia entry for “error floor”). The possibility of an error floor did not even
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`cross his mind when asked why Frey’s irregular code did not show a lower BER than
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`Berrou for high SNR—he speculated that perhaps Frey “didn't run the irregular one
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`as much as he ran the regular one.” EX2033, 162:20-163:8. Despite acknowledging
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`that error floors are undesirable, he confirmed that he did not at all consider Frey’s
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`error floor in his obviousness analysis. Compare id. 166:8-10 with 261:20-262:18.
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`Moreover, he testified as to his belief that Frey’s Figure 2 does not depict parity bits
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`in its bottom row of nodes despite Frey teaching exactly the opposite. Compare id.
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`at 112:9-12 (“[N]one of those [nodes] would be considered parity bits.”) with
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`EX1002 at 2 (describing “connecting each parity bit to a degree 1 codeword bit”).
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`Although the petition and Dr. Davis rely on Frey, Dr. Davis displayed a striking
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`unfamiliarity with the reference.
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`A similar incomplete and cursory analysis of Divsalar is reflected in Dr.
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`Davis’ direct testimony. For example, Dr. Davis proposes modifying an RA code
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`discussed in the Khandakar thesis such that half the information bits are modified
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`from degree 3 repeat to degree 2 repeat. A key conclusion of Divsalar, however, was
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`that any repeat less than three would result in very poor performance. See EX1003
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`at 6 (“It follows from (5.6) that an RA code can have word error probability
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`interleaving gain only if q >= 3.”); EX2031 ¶¶27, 31.
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`His unfamiliarity with the actual teachings of very references upon which he
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`relies, as well as with the actual knowledge in the relevant art, compels him to use
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`hindsight to define irregularity in terms of Caltech’s claims. The testimony of Dr.
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`Davis should be discounted accordingly.3
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`3 Dr. Davis’s errors and unfamiliarity with the key references should also be
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`considered in view of his admission that none of his publications related to
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`repeat-accumulate codes, turbocodes, or irregular codes in general. EX2033,
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`27:4-28:9. He also testified that he never attended the Allerton Conference on
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`Communication, Control and Computing because “the work that I do in coding
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`theory wasn’t being presented at that conference.” Id., 32:14-22.
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`B. Dr. Davis’s testimony is not independent
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`While the petition and expert declaration are expected to be consistent, expert
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`testimony that simply tracks and repeats the petition is entitled to little weight.
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`Wowza Media Sys., LLC v. Adobe Sys., Inc., IPR2013-00054, Paper 16, 4 (2013).
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`Here, the petition and the Davis declaration show striking similarity, including the
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`same language. For example, the sections discussing Ground 1 of the ’423 petition
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`are nearly identical. Compare ’423 Pet., 31-50, with EX1104, ¶¶86-138. In addition,
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`significant portions of Dr. Davis’s declaration were copied wholesale from Dr.
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`Frey’s unsworn report in a completely different litigation proceeding and produced
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`nearly two years prior to Dr. Davis’s declaration in this case. Compare EX1006, ¶¶
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`22-46, with EX1017, ¶¶ 35-53, 55, 57-60, 63. Dr. Davis further candidly admitted
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`that it was the lawyers who were in control “to decide what was going to be included
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`in the declaration” even before he was given a draft. Id., 12:10-16. This significantly
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`undercuts the independence and objectivity of Dr. Davis’s testimony.
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`C. Dr. Davis’s evasiveness during his deposition undermines his
`credibility
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`In 10X Genomics, Inc. v. Univ. of Chicago, the Board explained that expert
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`evasiveness or unresponsiveness during cross examination would reduce the weight
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`of the expert’s direct testimony. IPR2015-01157, Paper 30, 2 (2016). During his
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`deposition, Dr. Davis repeatedly refused to provide meaningful answers to
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`straightforward questions about the field of error coding that should have easily been
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`answerable by one of ordinary skill at the time. For example, he evaded questions
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`on whether Berrou’s Figure 5 showed a relationship between bit error rate and
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`signal-to-noise ratio despite the axes being clearly labeled as such. Id., 56:19-57:6,
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`58:19-59:3.
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`Regarding “irregular,” a key term in this trial, he avoided answering whether
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`his definition of irregular was the conventional meaning of “irregular” as generally
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`used in the field of error correction codes. Id., 66:10-68:4. He avoided answering
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`where the prior art provided a definition of “irregular” that was the same as his
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`definition. Id., 72:17-75:18. He avoided answering what definition of “irregular” he
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`would use in the field of error correction codes generally. Id., 78:18-81:12. He
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`avoided answering whether his definition of “irregular” was consistent with the
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`definition used with Tanner graphs. Id., 83:21-87:6. He avoided answering whether
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`Frey teaches reducing repetition to achieve irregular repetition of information bits (it
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`does not). Id., 136:3-137:1. His unresponsiveness during cross-examination on this
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`pivotal term is striking and warrants discounting his testimony.
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`Other striking instances of evasiveness include his avoidance of answering
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`whether Frey’s Figure 3(b) graph shows data points for the range of 8-12 degrees.
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`Id., 138:21-140:9. He was unresponsive for seven pages of transcript regarding the
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`simple question of whether puncturing would lead to a lower rate relative to a code
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`without puncturing (Frey states puncturing is critical for rate reduction). Id.,
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`152:12-159:14; see EX1002, pp. 2-3 (“[S]ome extra parity bits must be punctured.”).
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`Finally, he was evasive on the self-evident question of whether Ping depicts a
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`Tanner graph (it does not). Id., 269:21-272:12.
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`The contrast between cross-examination and redirect further confirms that Dr.
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`Davis did not act as an independent expert. Redirect occurred after a break during
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`which Dr. Davis had a “discussion about the substance of the testimony and the
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`general nature of the redirect” with Apple’s counsel. Id., 275:9-13. This discussion
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`enabled Dr. Davis to be far more responsive and direct for Apple’s counsel. This
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`witness behavior is precisely the sort of behavior the Board has condemned in
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`decisions like 10X Genomics. These shenanigans are inimical to the efficiency of
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`Board proceedings and the integrity of the patent system. The appropriate response
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`is to accord little or no weight to the direct and redirect testimony of Dr. Davis.
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`V.
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`PETITIONER HAS NOT DEMONSTRATED FREY QUALIFIES AS
`PRIOR ART UNDER 35 U.S.C. § 102
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`The only specific date for Frey asserted in the petition is March 20, 2000,
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`based exclusively on a copy of Frey containing a library stamp purporting to show
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`that date. Although Petitioner was subsequently granted authorization to file
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`supplemental information, no other date was asserted or corroborated in the
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`petition.2 It is well-established that inter partes review proceedings do not
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`contemplate notice-type pleading where generic statements made in a petition are
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`permitted modification and development later in the proceeding. Should Petitioner
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`be permitted to later assert a date other than March 20, 2000, Caltech will seek the
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`appropriate opportunity to respond, including taking corresponding discovery and
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`submitting rebuttal evidence.
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`Since both Grounds 1 and 2 rely on Frey, each ground fails at least on the
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`basis that Frey does not constitute prior art under §102 as has been asserted.
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`A. The ’710 patent was conceived and reduced to practice by March
`20, 2000
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`Even assuming Frey was published on March 20, 2000, the ’710 patent was
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`conceived and reduced to practice on or before that date. EX2020, ¶¶3-19. Because
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`the petition relies on Frey for all grounds of challenge, this warrants rejection of all
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`grounds.
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`A patent owner may antedate a reference by showing prior conception with
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`reasonable diligence from before the date of the reference until reduction to practice.
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`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed.
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`Cir. 2016). A variety of activities may corroborate an inventor's testimony of
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`2 The Board’s order issued on October 27th (Paper 32), and supplemental
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`information was filed on October 31, after the close of discovery. §42.53(d)(2).
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`reasonable diligence and such corroborating evidence is considered as a whole under
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`a rule of reason. Id. at 1007-08. “A patent owner need not prove the inventor
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`continuously exercised reasonable diligence throughout the critical period; it must
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`show there was reasonably continuous diligence.” Id. at 1009. Filing an application
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`is a constructive reduction to practice. Id. at 1013. In Perfect Surgical, the gap from
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`the initial invention report to filing the application was over three months. Id. at
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`1007.
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`As noted above, Petitioner is bound to the March 20, 2000 date that it asserts
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`for Frey (EX1002). Pet. 25; see also Oka v. Youssefyeh, 849 F.2d 581, 584 (Fed. Cir.
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`1988) (proof directed to a date range only proves the last date). The Caltech
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`inventors conceived the invention to practice before March 20, 2000 and diligently
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`reduced it to practice. EX2020, ¶¶3-19.
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`A declaration from co-inventor Hui Jin (EX2020) with corroborating exhibits
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`supports prior conception and diligence to a reduction to practice. In 1999-2000,
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`co-inventor Professor Robert McEliece supervised graduate student/co-inventors
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`Hui Jin and Aamod Khandekar. EX2020 ¶¶3-4; EX2031 ¶¶13-15. By early March
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`2000, they had developed the Irregular Repeat Accumulate code of the ’710 patent,
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`including an outer coder that could be generalized as a low-density generator matrix
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`(LDGM), permitting elimination of an interleaver and focus on irregularity, and an
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`inner coder comprising an accumulator. EX2020 ¶¶5-7; EX2021 ; EX2022; EX2031
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`
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`15
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`¶¶13-15. Jin built on irregular degree profiles he had started in February 2000 to
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`develop code for simulating the invention between early March and April 2000.
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`EX2020 ¶8. By March 10, 2000, Jin had created simulations reflecting a structure
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`identical to the IRA code depicted in Figure 3 of the ’710 patent. Id. ¶¶ 8-14. Jin
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`then ran a simulation on March 20, 2000 using those files and applying an irregular
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`degree profile that had been written on March 13, 2000, representing a reduction to
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`practice of the invention. Id. at ¶ 8; see also ¶¶ 15-18. A simulation is an actual
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`reduction to practice when it is used to test the sufficiency of an embodiment with all
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`of the claimed elements. Taskett v. Dentlinger, 344 F.3d 1337, 1338-39, 1341 (Fed.
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`Cir. 2003) (“financial authorization” tested with a dummy account); Scott v. Finney,
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`34 F.3d 1058, 1060-63 (Fed. Cir. 1994) (testing of the novel portion of the device
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`was sufficient); Williams v. NASA, 463 F.2d 1391, 1397-1400 (CCPA 1972) (testing
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`of novel subcomponent of a satellite system).
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`The inventors also proceeded to a constructive reduction to practice. On May
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`18, 2000, less than two months after the successful simulation, the inventors filed
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`provisional application 60/205,095 . EX2035. The inventors were diligent in moving
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`from conception to reduction to practice. The time from the McEliece email (March
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`7) to filing (May 18), slightly more than two months, compares favorably to the
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`almost-four months in Perfect Surgical (February 9 to May 1), and dated work
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`product from the inventors confirms diligence. For example, by April 11, 2000, Jin
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`
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`16
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`

`

`
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`had created a second irregular degree profile, used to prepare the data discussed in
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`the provisional. EX2020 ¶ 19. By May 12, 2000, Jin had developed the data shown
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`on provisional-application page 21 as a slide presentation. Id.; EX2035 at 23.
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`Caltech patent counsel conveyed the presentation to outside counsel, which filed the
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`provisional on May 18, 2000. The diligence of the inventors is all the more apparent
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`when factoring in their busy academic schedules at a top research institution.
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`EX2020, ¶¶3-4. As the court in Perfect Surgical clarified, “an inventor overseeing a
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`study [need] not record its progress on a daily, weekly, or even monthly basis” and
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`any diligence analysis “must weigh the collection of evidence over the entire critical
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`period”. 841 F.3d at 1009. The record here shows reasonable diligence to both the
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`actual reduction to practice on March 20 (13 days) and the constructive reduction to
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`practice on May 18 (72 days, including 10 weekends). Taken as a whole, the
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`evidence of record shows conception prior to the earliest date asserted for Frey,
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`coupled with reasonable diligence to two reductions to practice. Frey cannot be
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`considered prior art to the involved claims under §102(a).
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`VI. CLAIM CONSTRUCTION
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`A claim subject to inter partes review receives the broadest reasonable
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`construction or interpretation in light of the specification of the patent in which it
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`appears (“BRI”). See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
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`
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`17
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`

`
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`S. Ct. 2131, 2142-45 (2016). Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
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`1298 (Fed. Cir. 2015).
`
`A.
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`“rate”
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`The limitation “rate” appears in challenged claims 1-3, 12, 15, 19, 21, 24, 25,
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`29, and 33, and in those claims refers to the “rate” of the claimed inner encoder.
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`Petitioner did not propose that this term be construed. A person of ordinary skill in
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`the art, in view of the specification, would understand that the broadest reasonable
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`interpretation of the term “rate” in the context of an encoder would be “the ratio of
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`the number of input bits to the number of output bits.” (EX2004, ¶¶59-60)
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`Both the intrinsic and extrinsic evidence in the record support this
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`construction. The ’710 patent explains that a “coder accepts as input a block u of k
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`data bits and produces an output block v of n data bits.” EX1001, 2:44-45. The
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`patent then describes “the rate of the coder [a]s k/n.” Id. 2:47; see also 2:59-61
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`(describing inner coder as “rate-1” ac