Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 77
`
`
`
` Entered: December 27, 2018
`
`
`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.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 77
`
`
`
` Entered: December 27, 2018
`
`
`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.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`I.
`INTRODUCTION
`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. Patent Owner, California Institute of Technology (“Caltech”),
`filed a Preliminary Response (Paper 17, “Prelim. Resp.”) to the Petition.
`We instituted an inter partes review on claims 1–8, 11–17, 19–22, and
`24–33 of the ’710 patent on certain grounds of unpatentability presented.
`(Paper 18, “Inst. Dec.”). Caltech filed a Patent Owner Response (Paper 35,
`“PO Resp.”), and Apple filed a Petitioner Reply (Paper 46, “Pet. Reply”).
`Caltech also filed a Sur-Reply (Paper 62, “PO Sur-Reply”), as was
`authorized by our Order of March 2, 2018 (Paper 55). An oral hearing was
`held on April 19, 2018, and a transcript of the hearing is included in the
`record. Paper 72 (“Tr.”).
`Apple filed a Declaration of James A. Davis, Ph.D. (Ex. 1006) with its
`Petition and a Declaration of Brendan Frey, Ph.D. (Ex. 1065) with its
`Reply. Caltech filed Declarations of Dr. Dariush Divsalar (Ex. 2031) and
`Dr. Michael Mitzenmacher (Ex. 2004) with its Response.
`As authorized in our Order of February 10, 2018 (Paper 48), Patent
`Owner filed a motion for sanctions related to Petitioner’s cross-examination
`of Patent Owner’s witnesses, Dr. Mitzenmacher (Paper 50) and Dr. Divsalar,
`and Petitioner filed an opposition (Paper 52).
`In light of the U.S. Supreme Court’s decision in SAS Institute, Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), we modified our Institution Decision to
`institute on all of the challenged claims and all of the grounds. Paper 69.
`Subsequently, the parties filed a joint motion to limit the Petitions to the
`2
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`claims and grounds that were originally instituted. Paper 71. We granted
`their motion. Paper 73. As a result, the remaining instituted claims and
`grounds are the same as they had been at the time of the Institution Decision.
`See id. at 3.
`The one-year period normally available to issue a Final Written
`Decision was extended under 37 C.F.R. § 42.100(c). Papers 74, 75, 1–2.
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1–8, 11–17, 19–22, and 24–33 of the ’710 patent. For the reasons
`discussed below, Petitioner has not demonstrated by a preponderance of the
`evidence that claims that claims 1–8, 11–17, 19–22, and 24–33 are
`unpatentable.
`
`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 case IPR2017-00219, in which
`Apple filed a petition for inter partes review 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
`
`
`
`
`3
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`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
`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
`4
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`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
`relationship between u and v is v=T0u, where T0 is an n×k
`matrix, and the rate1 of the coder is k/n.
`
`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
`
`
`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
`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.
`
`
`
`
`6
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`
`
`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.
`
`C. Challenged Claims
`Claims 1, 11, 15, and 25 of the ’710 patent are independent. Claims 1
`and 3 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;
`
`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.
`7
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`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.
`Ex. 1001, 7:14–25, 7:28–31.
`
`D. The Remaining Grounds of Unpatentability
`The following grounds of unpatentability remain at issue in this case
`(Inst. Dec. 31; Paper 72, 2–3):
`
`Reference(s)
`
`Frey3
`Frey and Divsalar4
`Frey, Divsalar, and
`Luby975
`
`Basis
`§ 102(a)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1 and 3
`1–8 and 11–14
`15–17, 19–22, and 24–33
`
`
`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).
`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”).
`8
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`II. ANALYSIS
`A. Claim Interpretation
`Because this inter partes review is based on a petition filed before
`November 13, 2018, we construe the claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b)
`(2016); see 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 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” and “rate” (claims 1 and 3)
`Petitioner argues that the broadest reasonable construction of “close to
`one” as recited in claims 1 and 3 is “within 50% of one.” Pet. 24. Petitioner
`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).
`Patent Owner argues that the term “close to one” does not need to
`need to be construed (PO Resp. 19), but argues that the “term ‘rate’ in the
`context of an encoder would be ‘the ratio of the number of input bits to the
`number of output bits’” (id. at 18 (citing Ex. 2004 ¶¶ 59–60)). Citing the
`testimony of Mr. Mitzenmacher, Patent Owner argues that “there is no
`9
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`dispute that ‘rate’ should be construed as ‘the ratio of the number of input
`bits to the number of output bits.’” PO Resp. 19; see Ex. 2033, 43:18–44:7;
`Ex. 2004 ¶¶ 59–60. Further, Patent Owner argues that the ’710 patent
`explains that the rate of the coder is the number of input bits divided by the
`number of output bits. PO Resp. 18; Ex. 1001, 2:44–47, 2:59–61.
`We agree with the parties determining that “close to one” as recited in
`claims 1 and 3 is construed as “within 50% of one.”
`With respect to “rate,” Petitioner does not challenge Patent Owner’s
`argument, which is supported by the ’710 specification. See Pet. Reply 5
`(discussing rate). Accordingly, we agree that “rate” is construed as “the
`ratio of the number of input bits to the number of output bits.”
`
`B. Frey’s Status as Prior Art
`Petitioner contends Frey qualifies as a prior art printed publication
`under 35 U.S.C. § 102(a) relative to the May 18, 2000, filing date of the
`provisional application to which the ’710 patent claims priority. Pet. 5–6;
`see also Ex. 1001, [60]. Specifically, Petitioner 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.” Id. at 25 (citing
`Ex. 1015 (showing stamps from the Cornell University Library and the table
`of contents for the conference) and Ex. 1006 ¶ 63).
`Patent Owner contends that Petitioner has not established that Frey is
`prior art under 35 U.S.C. § 102(a). PO Resp. 13–17. Specifically, Patent
`Owner argues that Petitioner is bound by its assertion in the Petition that
`March 20, 2000, is the publication date for Frey. PO Resp. 15 (citing
`
`
`
`
`10
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`Pet. 25). Patent Owner also argues that the invention of the ’710 patent was
`conceived prior to March 20, 2000, and reduced to practice with reasonable
`diligence. PO Resp. 14–17 (citing Perfect Surgical Techniques, Inc. v.
`Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016)). Patent Owner
`cites testimony from Dr. Hue Jin, a co-inventor and various
`contemporaneous records in support of its attempt to antedate the alleged
`March 20, 2000, publication date for Frey.
`With respect to conception, Patent Owner argues that the declaration
`of Dr. Jin (Ex. 2020) with corroborating exhibits supports prior conception
`of the invention and removes Frey as prior art. Dr. Jin is a co-inventor and
`provides testimony and supporting documents that Patent Owner contends
`show that by early March 2000 the inventors “had developed the Irregular
`Repeat Accumulate code of the ’710 patent, including an outer coder that
`could be generalized as a low-density generator matrix (LDGM), permitting
`elimination of an interleaver and focus on irregularity, and an inner coder
`comprising an accumulator.” PO Resp. 15–16 (citing Ex. 2020 ¶¶ 5–7; Ex.
`2022; Ex. 2031 ¶¶ 13–15). Specifically, Patent Owner argues that in early
`March 2000, Dr. Jin created and ran simulations using files and code that
`reflected the structure identical to the IRA code of Figure 3 in the ’710
`patent. PO Resp. 16 (Ex. 2020 ¶¶ 8–14). Moreover, Patent Owner avers
`that actual reduction to practice occurred on March 20, 2000, when a
`simulation ran using the irregular degree profile written on March 13, 2000.
`PO Resp. 16 (citing Ex. 2020 ¶¶ 8, 15–18). Patent Owner asserts that the
`inventors proceeded diligently to constructive reduction to practice on
`May 18, 2000, which is the filing date for the ’710 patent. PO Resp. 16–17;
`Ex. 1001, [22].
`
`11
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`In reply, Petitioner attempts to show that Frey was published even
`earlier—February 2000—based on testimony “from former co-chairs of the
`conference at which Frey was presented” regarding the shipment of
`conference proceedings. Pet. Reply 17 (citing Exs. 1032–1034). Petitioner
`also argues that Patent Owner’s evidence does not corroborate the alleged
`date conception or demonstrate sufficient diligence. Id. at 18–22. Patent
`Owner’s conception date, Petitioner argues, relies improperly on
`uncorroborated testimony from a co-inventor where corroboration beyond
`the inventor is necessary to avoid self-serving testimony. Pet. Reply 18
`(Singh v. Burke, 317 F.3d 1334, 1340–41 (Fed. Cir. 2003)). Petitioner also
`argues that Patent Owner’s documents and testimony fail to support Patent
`Owner’s dates because (1) Exhibit 2022 is an unwitnessed excerpt from an
`inventor’s notebook that fails to show a key feature of the invention (Pet.
`Reply 19); (2) the parameter files and software files cited as part of the pre-
`March 20, 2000, activity are undated or uncertain, at best, as to the date the
`files or software were run or updated (id. at 19–20 (discussing Exhibits
`2025, 2027, 2029 (undated parameter files) and Exhibits 2023, 2024, 2026,
`and 2028 (simulation software files)). See also Pet. Reply 20 n.5 (arguing
`that the inventor’s testimony regarding parameter files is the sole support for
`the dates for those files and that such testimony is not consistent or reliable).
`In its sur-reply, Patent Owner asserts that Petitioner’s shifting
`publication date is improper as untimely and prejudicial. PO Sur-Reply 2.
`1. Printed Publication Analysis
`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
`12
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`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).
`Petitioner has put forth date stamp evidence that a copy of the
`conference proceedings including Frey was at least received in the Cornell
`University Library by March 20, 2000. Ex. 1015, 16. Petitioner also put
`forth a declaration of Pamela Stansbury, an employee in the Original
`Cataloging Unit of the Cornell University Library, who testifies that, based
`upon her review of library records and her knowledge of standard operating
`procedures, Frey was “publicly available at the Cornell University Library as
`of March 20, 2000.” Ex. 1031 ¶ 4; see also Paper 22, 5 (Petitioner’s motion
`to submit supplemental information, which includes a description of
`Exhibit 1031); Paper 32 (granting Petitioner’s motion to submit
`supplemental information). Patent Owner does not dispute that Frey was
`publicly available as of March 20, 2000. See PO Resp. 15. Based on
`Petitioner’s evidence, we determine that Frey qualifies as a prior art printed
`publication as of March 20, 2000.
`
`13
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`We need not consider Petitioner’s purported evidence of an even
`earlier publication date (see Pet. Reply 17–18), because we determine below
`that Patent Owner’s evidence is insufficient to antedate Frey’s March 20,
`2000, publication date.
`2. Patent Owner’s Attempt to Antedate Frey
`We now consider Patent Owner’s arguments attempting to antedate
`Frey by showing an earlier conception date and diligent reduction to
`practice. Regarding the type of proof required to corroborate inventor
`testimony on conception and reduction to practice, the Federal Circuit has
`stated:
`It is well established that when a party seeks to prove conception
`via the oral testimony of a putative inventor, the party must
`proffer evidence corroborating that testimony. . . . There is no
`particular formula that an inventor must follow in providing
`corroboration of his testimony of conception. Rather, whether a
`putative inventor's testimony has been sufficiently corroborated
`is determined by a ‘rule of reason’ analysis, in which ‘an
`evaluation of all pertinent evidence must be made so that a sound
`determination of the credibility of the inventor's story may be
`reached.’ However, that ‘rule of reason’ analysis does not alter
`the requirement of corroboration of an inventor's testimony.
`Evidence of the inventive facts must not rest alone on the
`testimony of the inventor himself.
`Singh, 317 F.3d 1240–41 (internal citations omitted) (quoting Price v.
`Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)). With respect to priority and
`antedating a reference, the Federal Circuit has stated the following regarding
`burdens and required documentary support:
`When the issue of priority concerns the antedating of a
`reference, the applicant is required to demonstrate, with sufficient
`documentation, that the applicant was in possession of the later-
`claimed invention before the effective date of the reference.
`14
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`Demonstration of such priority requires documentary support,
`from which factual findings and inferences are drawn, in
`application of the rules and law of conception, reduction to
`practice, and diligence. The purpose is not to determine priority
`of invention—the province of the interference practice—but to
`ascertain whether the applicant was in possession of the claimed
`invention sufficiently to overcome the teachings and effect of an
`earlier publication of otherwise invalidating weight.
`In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphases added); see
`also Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d
`1004, 1008 (Fed. Cir. 2016) (citing Steed). “The principles are legal, but the
`conclusions of law focus on the evidence, for which the Board’s factual
`findings are reviewed for support by substantial evidence.” Steed, 802 F.3d
`at 1316; see also NFC Tech., LLC v. Matal, 871 F.3d 1367, 1371 (Fed. Cir.
`2017).
`Upon review of the parties’ evidence and argument, we are faced with
`conception evidence that is not corroborated and fails to show full
`possession of the entire invention. See PO Resp. 15–16 (Ex. 2020 ¶¶ 3–4;
`Ex, 2031 ¶¶ 13–15). The evidence Patent Owner cites are general directions
`to consider irregular outer codes (Ex. 2021) and an unwitnessed inventor
`notebook entry (Ex. 2022). Patent Owner does not provide sufficient
`corroboration for these exhibits or sufficient explanation that these
`documents show possession of the invention. In re Steed, 802 F.3d at 1316.
`Indeed, Patent Owner’s arguments do not point to any particular date of
`conception, but merely states that it was “before” March 20, 2000, based on
`these uncorroborated documents (Ex. 2021; Ex. 2022). PO Resp. 15–16.
`When pressed to establish a date, Patent Owner points only to early March
`dates, but does not point to a date by which possession was established.
`15
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`Tr. 37:9–38:12 (discussing conception and reduction to practice dates).
`Based on the full record before us, Patent Owner has not provided sufficient
`and persuasive corroborated evidence of conception prior to March 20,
`2000, based on the Exhibits 2020, 2021 and 2022.
`Patent Owner’s antedating argument further posits that in early
`March, March 10 and March 20, 2000, simulations refelecting the structure
`of Figure 3 of the ’710 patent were produced. PO Resp. 15–16. (citing Ex.
`2020 ¶¶ 8–15). To evaluate this arugment, Patent Owner relies on inventor
`testimony interpreting uncorroborated parameter and software files . PO
`Resp. 15–16. (citing Ex. 2020 ¶¶ 8–15); see, e.g., Ex. 2023; Pet. Reply 20
`n.5. In particular, Patent Owner’s arguments rely on the testimony of Dr. Jin
`to establish the dates of creation of parameter files and simulation programs
`along with the dates these programs would have been run based on Dr. Jin’s
`regular practices regarding changelogs for the program files. PO Resp. 15–
`17; Ex. 2020 ¶¶ 3–19.
`We agree with Petitioner that on their face, the parameter files about
`which Mr. Jin testifies are undated. Pet. Reply 19 (Exhibits 2025, 2027,
`2029 (undated parameter files)). Dr. Jin testifies to his typical practices of
`noting significant changes in the logs and relies on that practice and file
`metadata to establish the date the simulations were run and the invention
`was reduced to practice. PO Resp. 16 (asserting that March 20, 2000 was
`when the undated degree profiles written on March 13, 2000, were run in the
`simulation); Ex. 2020 ¶¶ 8, 15–18. Yet the undated files do not corroborate
`Dr. Jin’s testimony on the relevant dates.
`Under the rule of reason, we require corroborating evidence sufficient
`to support Dr. Jin’s testimony that early March, either March 10 or March
`16
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`20, 2000, was the reduction to practice date. PO Resp. 16; see Tr. 38:4–11.
`Yet the documents put forth by Patent Owner to allegedly support Dr. Jin’s
`testimony are not probative evidence on their own; they too rely on Dr. Jin’s
`testimony for interpretation. See, e.g. Ex. 2020 ¶¶ 3–19 (discussing
`Ex. 2023–2029). We also note that Patent Owner has not submitted the
`metadata Dr. Jin relies on to establish the dates in his testimony. See Ex.
`2020 ¶¶ 15–18. And, even if we were to credit the existence of the
`metadata, we find that Dr. Jin’s testimony establishes that his practices
`regarding changelog dating for programs did not always reflect whether the
`contents of the files were altered after the change date. Pet. Reply 20 n.5
`(citing Ex. 1063). Absent other corroborating evidence, Dr. Jin’s testimony
`about metadata and about his usual practices is not sufficient to establish the
`date on which the simulation was run as the reduction to practice date. PO
`Resp. 16.
`Upon review of the parties’ evidence and argument, Patent Owner’s
`evidence is not sufficient to establish conception in early March 2000 or an
`actual reduction to practice date of March 20, 2000, by a preponderance of
`the evidence. Although we agree that the evidence shows activity in the
`form of an email (Ex. 2021) and an inventor notebook entry (Ex. 2022), both
`of these documents require interpretation by the inventor relative to the
`reduction to practice inquiry and Patent Owner has not provided persuasive
`evidence showing possession of the invention of the ’710 patent. Weighing
`the evidence from the co-inventor Dr. Jin in its entirety, we are not
`persuaded that the evidence sufficiently shows reduction to practice of the
`invention by March 20, 2000. Dr. Jin’s testimony as an inventor in this
`instance lacks sufficient corroborating evidence. Ex. 2020 ¶¶ 3–19. On the
`17
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`full record, Patent Owner’s evidence is not sufficient to establish conception
`in early March 2000 or that March 20, 2000 is the date of actual reduction to
`practice.
`Thus, on the full record, Patent Owner fails to establish sufficient
`evidence that the invention was conceived and reduced to practice before
`Frey’s March 20, 2000, publication date. PO Resp. 15; Ex. 2020 ¶¶ 3–19.
`Accordingly, we determine that Frey qualifies as a prior art prior art printed
`publication under 35 U.S.C. § 102(a).
`
`C. Level of Ordinary Skill in the Art
`Petitioner cites Dr. Davis’s testimony that “[a] person of ordinary skill
`in the art is a person with a Ph.D. in mathematics, electrical or computer
`engineering, or computer science with emphasis in signal processing,
`communications, or coding, or a master’s degree in the above area with
`at least three years of work experience in this field at the time of the alleged
`invention.” Pet. 23 (citing Ex. 1006, ¶ 95). Patent Owner expresses no
`position on the level of ordinary skill in the art, but its declarant,
`Dr. Mitzenmacher, applies the same standard advanced by Petitioner.
`Ex. 2004 ¶ 58.
` We determine that Petitioner’s proposed definition comports with the
`qualifications a person would have needed to understand and implement the
`teachings of the ’710 patent and the prior art of record. Accordingly, we
`apply Petitioner’s definition of the level of ordinary skill in the art.
`
`D. Anticipation by Frey of Claim 1 and 3
`Petitioner contends that Frey anticipates the limitations of independent
`claim 1 and dependent claim 3 of the ’710 patent. Pet. 34–42 (citing
`18
`
`
`
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`Ex. 1006 ¶¶ 106–126). Patent Owner disputes Petitioner’s contentions. PO
`Resp. 20–30; PO Sur-Reply 2–4.
`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
`(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.
`
`
`
`
`19
`
`
`
`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
`To anticipate a patent claim under 35 U.S.C. § 102, “a reference must
`describe, either expressly or inherently, each
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
