`
`Paper No. ___
`Filed: April 3, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2017-00211
`Patent No. 7,116,710
`
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`

`

`TABLE OF CONTENTS
`
`I.INTRODUCTION ................................................................................................ 1
`
`II.THE PRESENT PETITION RECYCLES PREVIOUS CHALLENGES
`PRESENTED TO THE OFFICE .................................................................. 2
`
`III.THE PETITION RELIES ON IMPROPER EVIDENCE AND
`UNSUBSTANTIATED ALLEGATIONS .................................................... 5
`
`A.
`
`B.
`
`C.
`
`The Petition Fails to Establish That the Frey Slides (Ex. 1113)
`Qualify as Prior Art............................................................................. 7
`The Petition Fails to Establish That the Pfister Slides Qualify as
`Prior Art ............................................................................................ 13
`The Testimony of Petitioner’s Expert Should be Accorded No
`Weight .............................................................................................. 16
`
`IV.THE PROPOSED GROUNDS OF CHALLENGE FAIL ................................ 18
`
`B.
`
`A. Ground 1 fails ................................................................................... 18
`1. The Frey Slides Do Not Anticipate 1 and 3 ................................... 18
`Ground 2 fails ................................................................................... 20
`1. Divsalar in view of the Frey Slides does not render obvious
`claims 1-8 and 11-14 ..................................................................... 20
`2. Undisclosed limitations in claim 11 and its dependent claims ........ 29
`Ground 3 fails ................................................................................... 30
`1. Divsalar in view of Frey Slides and further in view of Luby97
`nonetheless does not render obvious claims 15-17, 19-22, and
`24-33 ............................................................................................. 30
`D. Ground 4 fails ................................................................................... 35
`E.
`Ground 5 fails ................................................................................... 35
`
`C.
`
`V.CONCLUSION ................................................................................................. 36
`
`
`
`
`
`
`
`-i-
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`

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`I.
`
`INTRODUCTION
`
`The Board should not institute inter partes review (IPR) on claims 1-8, 10-
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`17, and 19-33 of U.S. Patent No. 7,116,710 (“the ’710 patent”) because petitioner
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`Apple Inc. (“Petitioner” or “Apple”) has not met its burden of showing that it has a
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`reasonable likelihood of prevailing on any of its proposed grounds of
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`unpatentability.
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`The petition should be denied at least because the Petitioner failed to
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`establish that all references in each of its grounds qualify as prior art. For example,
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`each of the grounds of challenge relies on the “Frey Slides,” which the petition
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`vaguely alleges were “presented” at a conference. The petition, however, leaves
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`both Caltech and the Board in the dark as to what particular prior art theory is
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`being advanced and whether it is even one commensurate in scope with statutory
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`restrictions on inter partes review under AIA §311 (i.e., review based on prior art
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`patents and printed publications). Assuming arguendo the Petitioner is asserting
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`the Frey Slides as a printed publication, the evidence of such is insufficient, as
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`Petitioner points to only a cryptic comment in an unsworn “report” lifted from a
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`different litigation proceeding, but which is inadmissible hearsay in this
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`proceeding. Other references, such as the Pfister Slides, (Ex. 1105), have similar
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`problems.
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`-1-
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`

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`Even assuming the references relied upon do qualify as prior art—which
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`Petitioner fails to establish—the proposed grounds of challenge fail to demonstrate
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`that each feature of claims 1-8, 10-17 and 19-33 of the ’710 patent is found in the
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`references.
`
`Accordingly, institution of inter partes review should be denied.
`
`II. THE PRESENT PETITION RECYCLES PREVIOUS
`CHALLENGES PRESENTED TO THE OFFICE
`
`The instant petition presents one in a series of challenges to the ’710 patent,
`
`but rehashes substantially the same art and arguments already presented to the
`
`Office and rejected by the Board. 35 U.S.C. § 325(d) (“In determining whether to
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`institute or order a proceeding under this chapter, chapter 30, or chapter 31, the
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`Director may take into account whether, and reject the petition or request because,
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`the same or substantially the same prior art or arguments previously were
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`presented to the Office.”) (emphasis added).
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`The present petition fails to offer any art or arguments substantially different
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`compared to what has already been presented to, and rejected by, the Board.
`
`Petitioner acknowledges that the’710 patent was already “challenged in two
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`petitions for inter partes review.” (Pet. p. 3.) The Board rejected both of those
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`petitions. See Hughes Network Systems, LLC v. California Institute of Tech., Case
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`No. IPR2015-00067, Paper 18 (Apr. 27, 015); see also Hughes Network Systems,
`
`LLC v. California Institute of Tech., Case No. IPR2015-00068, Paper 18 (Apr. 27,
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`-2-
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`

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`015). 1 Petitioner has also filed two more pending petitions challenging claims of
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`the ’710 patent. See IPR2017-00210; see also IPR2017-00219.2
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`One of the rejected Hughes IPRs, IPR2015-00067, similarly presented
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`grounds based on the references to Frey and Divsalar. Concurrent with the present
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`petition, this Petitioner filed an IPR petition (IPR2017-00210) based on the very
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`same Frey and Divsalar references and advancing substantially the same
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`arguments.
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`The present petition differs from the -00210 petition in that the Frey
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`reference, (Ex. 1102), has been replaced with the Frey Slides (Ex. 1113).3 But
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`Petitioner has not explained why either this petition or the -00210 petition
`
`
`1 Counsel for Petitioner Apple also represented Hughes in the previous Hughes
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`district court litigation.
`
`2 Accordingly, the ’710 patent has been challenged in five total IPR proceedings
`
`to date—thereby indicating patent owner harassment with serial petitions. See,
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`e.g., Ube Maxell Co., Ltd. v. Celgard, LLC, Case No. IPR2015-01511, Paper 10
`
`(Jan. 7, 2016) (denying institution of sixth petition under § 325(d)).
`
`3 Petitioner argues that the Frey paper (Ex. 1102) and the Frey Slides (Ex. 1113)
`
`provide substantially the same content. As such, it is unclear how petitioner
`
`believes that the present petition is meaningfully distinct from the -00210 petition
`
`or from the Hughes IPR2015-00067 case.
`
`-3-
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`

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`substantially differs either from each other, or from the rejected Hughes IPR, such
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`that the additional burden on Caltech and Board resources is reasonable. The Board
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`should deny the instant petition under a plain and ordinary reading of § 325(d)
`
`because it presents “the same or substantially the same prior art or arguments
`
`previously [] presented to the Office.” Cf. Maxell Co., Ltd., Case No. IPR2015-
`
`01511, Paper 10 at 15-16 (factoring in failure to explain the need for redundant
`
`proceeding).
`
`Accordingly, because the instant petition presents the same or substantially
`
`the same prior art or arguments previously presented to the Office and because
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`Petitioner appears to have used previously rejected petitions as a roadmap4 to
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`bolster its petition, with the effect of harassing Caltech, the Board should exercise
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`its authority under § 325(d) to deny the petition.
`
`
`4 In fact, Petitioner has already effectively had multiple bites at the apple in this
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`case. During the course of litigation, and after filing its IPR petitions, Petitioner
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`learned of certain critical defects in the petition materials. Petitioner then re-filed
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`different versions of the references on which its challenges relied in an effort to
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`cure those defects. See, e.g., Paper No. 15.
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`-4-
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`

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`III. THE PETITION RELIES ON IMPROPER EVIDENCE AND
`UNSUBSTANTIATED ALLEGATIONS
`
`Each of Petitioner’s five grounds can be denied on the basis that they rely on
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`references that have not been established as a prior art available for this
`
`proceeding.5
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`• Each of Grounds 1-5 rely on the Frey Slides (Ex. 1113), but nothing
`
`in the petition or elsewhere in the record establishes the Frey Slides
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`qualify as a “printed publication” or are otherwise available as prior
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`art in this IPR.
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`• Grounds 4 and 5 rely on the Pfister Slides (Ex. 1105), but the petition
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`never establishes the Pfister Slides as prior art to the ’710 patent.
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`A petitioner bears the burden of “mak[ing] a sufficient showing that [a
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`purported prior art reference] is a printed publication, i.e., that it was publicly
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`accessible.” Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper 11 at
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`5 For many of the cited references, the petition does not explain any particular
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`theory of how the cited references qualify as prior art. For example, the petition
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`generically states that the references “qualify as prior art under 35 U.S.C. §102,”
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`but fails to identify any particular subsection of §102. (Pet. p. 6.) This is
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`prejudicial since not all subsections of 35 U.S.C. §102 provide prior art that may
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`form a basis of challenge in an IPR.
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`-5-
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`

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`19-20 (Dec. 24, 2014) (citing In re Lister, 583 F.3d 1307, 1317) (Fed. Cir. 2009);
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`see also Nestle Oil Oyj v. Reg Synthetic Fuels, LLC, IPR2013-00578, Paper 54 at
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`15 (March 12, 2015). This burden must be satisfied in the petition. See, e.g.,
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`Symantec Corp. v. Trustees of Columbia University, IPR2015-00370, Paper 13 at 9
`
`(June 17, 2015) (denying institution for failure of proof on publication date in the
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`petition). Intelligent Bio-Systems, Inc. v. Illumina, Inc., 821 F.3d 1359, 1369 (Fed.
`
`Cir. 2016) (noting the “obligation for petitioners to make their case in their
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`petition”).
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`Public accessibility is a touchstone in determining whether a reference
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`constitutes a printed publication. See, e.g., In re Wyer, 655 F.2d 221, 227 (CCPA
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`1981). A reference is “publicly accessible” upon a satisfactory showing that: (1)
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`the “document has been disseminated”; or (2) “otherwise made available to the
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`extent that persons interested and ordinarily skilled in the subject matter or art
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`exercising reasonable diligence, can locate it….” Cordis Corp. v. Boston Scientific
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`Corp., 561 F.3d 1319, 1333 (Fed. Cir. 2009); Bruckelmyer v. Ground Heaters,
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`Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (quoting In re Wyer, 655 F.2d at 226);
`
`see also Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350
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`(Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186,
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`1194 (Fed. Cir. 2008)).
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`-6-
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`

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`As discussed below, Petitioner has not met its burden and has failed to
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`establish the cited references as prior art.
`
`A. The Petition Fails to Establish That the Frey Slides (Ex. 1113)
`Qualify as Prior Art
`
`Each of Petitioner’s five grounds relies on a set of slides purportedly
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`presented by Brendan Frey at the Allerton Conference in September 1999. (Pet.
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`pp. 29-31; Ex. 1113 (“Frey Slides”)). The petition, however, lacks the requisite
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`explanation and supporting evidence that the Frey Slides are prior art of any type,
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`let alone prior art available to serve as a basis of challenge in an inter partes
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`review.
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`The petition merely states that “[t]he Frey Slides (Ex. 1113) were presented
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`by Brendan Frey at the Allerton Conference in September, 1999.” (Pet. p. 29.)
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`The petition makes no specific assertion of the Frey Slides’ prior art status, nor
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`does explain how and why the Slides are believed prior art, nor does it discuss any
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`supporting evidence.6
`
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`6 In order to meet its burden, Petitioner must at least identify its position and
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`explain the evidence it believes supports its position; neither the Board nor Caltech
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`is responsible for operating on supposition. 37 C.F.R. § 42.22(a)(2) (petition must
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`include “a detailed explanation of the significance of the evidence.”). See also 35
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`-7-
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`

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`Assuming that Petitioner is asserting the Frey Slides as a “printed
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`publication,” nothing in the petition or corresponding materials substantiates the
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`Frey Slides as such. The petition merely directs reference to “Ex. 1117, p. 36.”
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`(Pet. p. 29.) No other evidence is submitted.7 Exhibit 1117 is the Expert Report of
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`Dr. Brendan Frey, which was not prepared under oath and was submitted in an
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`entirely different proceeding—the district court litigation between Patent Owner
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`and Hughes entities and Dish Network entities. (Pet. p. 29; Ex. 1117.) The cited
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`portion of Dr. Frey’s expert report contains one cryptic statement that he
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`“presented [Frey Slides] at the Allerton Conference in September 1999.” (Ex.
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`1117, p. 36.) No details about the presentation are provided. While two slides are
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`included in the text of the report (one of which differs from the corresponding slide
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`in Ex. 1113), no copy of the Frey Slides is attached to Dr. Frey’s Report.
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`Petitioner’s evidence fails for several reasons.
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`As an initial matter, Dr. Frey’s expert report, (Ex. 1117)—which is not a
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`declaration or statement made under oath—is inadmissible hearsay. Fed. R. Evid.
`
`
`U.S.C. §311(b) (limiting inter partes review to prior art patents and printed
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`publications).
`
`7 The petition does cite to Dr. Davis’s declaration (Ex. 1106, ¶71), but Dr.
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`Davis professes no personal knowledge regarding presentation of the Frey Slides
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`and instead merely parrots the same statements provided at p. 29 of the petition.
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`-8-
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`

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`801(c) defines hearsay as “a statement that: (1) the declarant does not make while
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`testifying at the current trial or hearing; and (2) the party offers in evidence to
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`prove the truth of the matter asserted in the statement.” The report is not testimony
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`at all (a report is notice, not testimony) and Dr. Frey has not appeared as a witness
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`in this proceeding. And Petitioner offers the report as evidence to prove the truth
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`of the matter asserted—that Dr. Frey presented the slides at the Allerton
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`Conference in September 1999. (Pet. p. 29; Ex. 1117 ¶ 114.) Hearsay is generally
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`inadmissible under Fed. R. Evid. 802 unless it falls under one of the exceptions
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`listed in Fed. R. Evid. 803.8 Petitioner does not contend that the statements in Dr.
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`Frey’s expert report qualify as one of the exceptions. Accordingly, Dr. Frey’s
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`expert report is inadmissible and cannot be used to substantiate the Frey Slides as a
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`prior art printed publication.9
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`8 Additionally, because the report is not testimony (for any proceeding) made
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`under oath or subject to the laws of perjury, it is inherently unreliable—thereby
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`providing another reason why Ex. 1117, at a minimum, should be given no weight.
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`9 Each of Grounds 2-5 also rely on inadmissible hearsay in support of Divsalar
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`(Ex. 1103). The petition (p. 31-32) cites to Ex. 1112, which is a declaration from a
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`librarian (Ms. Fradenburgh), submitted in the IPR2015-00059 case. Ms.
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`Fradenburgh is not a witness in this proceeding, and Petitioner offers the report as
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`evidence to prove the truth of the matter asserted—that Divsalar is 102(b) prior art
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`-9-
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`

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`Even if the Board chooses to consider Dr. Frey’s expert report, the report
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`still would not establish that Ex. 1113 is a printed publication. First, there is
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`insufficient evidence that the slides to which Dr. Frey’s expert report refers
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`correspond to Ex. 1113. Dr. Frey’s expert report states that he “prepared the “Frey
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`Slides … and presented them at the Allerton Conference in September, 1999.”
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`(Ex. 1117 ¶ 114.) But he does not cite any exhibit to his report containing the
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`“Frey Slides” to which he refers. Nor does the petition link the “Frey Slides”
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`discussed in Dr. Frey’s report with Ex. 1113. There is no evidence that the “Frey
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`Slides” discussed in Dr. Frey’s report are the same version of the slides in Ex.
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`111310, or whether Ex. 1113 represent slides he purportedly presented at the
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`September 1999 Allerton Conference. Therefore, the Board cannot conclude that
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`any of the information in Dr. Frey’s expert report necessarily corresponds to
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`Exhibit 1113, let alone whether that information is sufficient to substantiate Ex.
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`1113 as a printed publication. Temporal Power Ltd. v. Beacon Power, LLC,
`
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`to the ’710 patent. (Pet., pp. 31-32.) As such, Ex. 1112 is inadmissible hearsay.
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`Fed. R. Evid. 801(c). Ms. Fradenburgh’s availability as a witness, in fact, was a
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`source of significant contention in the Hughes IPR, when Ms. Fradenburgh refused
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`to appear for cross-examination following institution in the Hughes IPR.
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`10 While two slides are embedded in the text of Dr. Frey’s report, Slide 5 (Ex.
`
`1117, p. 36) is different than Slide 5 of Ex. 1113.
`
`-10-
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`

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`IPR2015-00146, Paper 10 at 8-9 (“Temporal does not provide sufficient evidence
`
`that the version of the Lazarewicz PowerPoint filed in this proceeding was the
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`version actually presented at the conference, much less evidence to support that
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`this particular version was available or distributed to the public interested in the
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`art.”) (finding that petitioner did not demonstrate sufficiently that PowerPoint
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`slides qualify as a prior art reference).
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`Second, regardless of whether Ex. 1113 is the same set of slides to which Dr.
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`Frey’s expert report refers, the content of the report is insufficient to establish that
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`Ex. 1113 qualifies as a prior art printed publication. Dr. Frey’s cryptic statement
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`that he presented the slides at the Allerton Conference in September 1999 is
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`woefully deficient regarding any relevant details. (Ex. 1117 ¶ 114.) Both the
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`Federal Circuit and the Board have instructed that the mere presentation of slides
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`accompanying an oral presentation at a professional conference is insufficient to
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`establish the presentation slides as a “printed publication.” In re Klopfenstein, 380
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`F.3d 1345, n. 4 (Fed. Cir. 2004); Temporal Power Ltd., IPR2015-00146 Paper 10
`
`at 10 (quoting In re Klopfenstein). Relevant “factors” for consideration include
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`whether documents were distributed or indexed, the length of time the display was
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`exhibited, evidence of who actually attended a presentation and the expertise of the
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`target audience, the existence (or lack thereof) of reasonable expectations that the
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`-11-
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`

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`material displayed would not be copied, and the simplicity or ease with which the
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`material displayed could have been copied. Id. at 1350.
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`In this instance, the record is devoid of any information or details of the
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`alleged presentation. Neither asserts that the Frey Slides were printed, distributed,
`
`or indexed. Neither states whether all or only some of the slides were discussed or
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`displayed, or how long the slides were displayed. Neither addresses how many
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`people, if anyone, actually attended the conference for Dr. Frey’s alleged
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`presentation. There is no information regarding the skill level of any attendees.
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`And neither addresses the existence (or lack thereof) of reasonable expectations
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`that the material displayed would not be copied or how easily they could have been
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`copied. This lack of evidence and explanation in the petition is incurable and fatal
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`to Petitioner’s reliance on the Frey Slides as prior art in this proceeding.
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`The Board has disqualified slides as prior art printed publications under
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`similar circumstances. See, e.g., Temporal Power Ltd., IPR2015-00146 at 10
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`(Dismissing a proffered PowerPoint as a printed publication where the Board was
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`“left with Temporal’s conclusory assertion that Lazarewicz PowerPoint qualifies as
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`a prior art printed publication because, purportedly, some version of it was
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`presented publically at the EESAT conference”). The Board should similarly
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`reject the Frey Slides here.
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`-12-
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`Accordingly, the Board should deny all grounds on the basis that Petitioner
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`has not established Frey Slides as a prior art printed publication.
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`B.
`
`The Petition Fails to Establish That the Pfister Slides Qualify
`as Prior Art
`
`Each of Petitioner’s Grounds 4 and 5 relies on the Pfister Slides, (Ex. 1105).
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`The Pfister Slides are a set of slides that was allegedly presented at the Allerton
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`Conference. (Pet. p. 36; Ex. 1105; Ex. 1120, p. 3.) As with the Frey Slides, the
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`petition offers no specific explanation and identifies no particular theory as to how
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`or why the Pfister Slides are believed to qualify as prior art for this proceeding.
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`The petition generically asserts that slides were presented in the month of
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`“September 1999,” but does not assert the Pfister Slides constitute a “printed
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`publication.” (Pet., p. 36); see 35 U.S.C. §311(b).
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`Assuming that Petitioner is asserting the Pfister Slides as a “printed
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`publication,” nothing in the petition or corresponding materials substantiates the
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`Pfister Slides as such.
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`First, without corresponding explanation, the petition merely directs the
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`Board to Ex. 1120, which is a declaration by Professor Paul H. Siegel. (Pet. p. 36.)
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`The Board should disregard any information presented in Ex. 1120 because none
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`of it is discussed or explained in the petition. 37 C.F.R. § 42.6(a)(3) (expressly
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`prohibiting incorporation by reference of arguments from one document into
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`another document); DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999)
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`-13-
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`(incorporation by reference “amounts to a self-help increase in the length of the . . .
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`brief”) (“A brief must make all arguments accessible to the judges, rather than ask
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`them to play archaeologist with the record.”).
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`Second, even if the Board chooses to consider Professor Siegel’s
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`declaration, his declaration still would not provide evidence that Ex. 1105 qualifies
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`as a prior art printed publication. Both the petition and the declaration are
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`essentially devoid of any details surrounding the alleged presentation of materials.
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`Professor Siegel declares that he presented the slides at the 1999 Allerton
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`Conference, (Ex. 1120 ¶ 6), and that the conference in general “was open to the
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`public for attendance.” (Id. ¶ 5). As discussed above, the Federal Circuit and the
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`Board, however, have noted that the mere presentation of slides accompanying an
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`oral presentation at a professional conference does not establish such slides as a
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`‘printed publication.’” In re Klopfenstein, 380 F.3d 1345, n. 4 (Fed. Cir. 2004);
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`Temporal Power Ltd., IPR2015-00146 Paper 10 at 10 (quoting In re Klopfenstein).
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`In this instance, neither the petition nor Professor Siegel’s declaration
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`provides any real information about the alleged presentation, other than to allege
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`that some presentation occurred. Neither asserts that the Pfister slides were
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`distributed to anyone, in any way or were indexed with the conference. Neither
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`states whether all or just some of the slides were displayed/discussed, or how long
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`any of the slides were displayed. Neither addresses how many people, if anyone,
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`-14-
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`actually attended the presentation session of the conference and the skill level of
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`the actual attendees. And neither addresses the existence of reasonable
`
`expectations that the material displayed would not be copied or how easily they
`
`could have been copied. Dr. Siegel also provides no support showing how and
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`when the 1999 Allerton conference and proceedings were publicized, and provides
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`no explanation of how he knows that the proceedings were “generally known to
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`those who were interested in topics relating to error-correcting codes and iterative
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`decoding.” (Ex. 1120 ¶ 5.)
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`Such information is critical to establishing the Pfister Slides as a printed
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`publication, assuming Petitioner is even making this assertion in the first place.
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`Moreover, Petitioner’s burden must be satisfied in its petition. The lack of
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`evidence and explanation in the Petition, however, is incurable and fatal to
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`Petitioner’s reliance on the Pfister Slides as prior art in this proceeding.
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`Indeed, as noted above, the Board has disqualified slides as prior art printed
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`publications under similar circumstances. See, e.g., Temporal Power Ltd.,
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`IPR2015-00146 at 10-11. The Board should similarly reject the Pfister Slides here.
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`Accordingly, the Board should deny Grounds 4 and 5 on the additional basis
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`that Petitioner has not established the Pfister Sides as a prior art printed
`
`publication.
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`-15-
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`C. The Testimony of Petitioner’s Expert Should be Accorded No
`Weight
`
`Should the Board review the grounds of challenge, any review should
`
`attribute little, if any, weight to the declaration of Petitioner’s expert Dr. Davis,
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`submitted as Ex. 1106. As an initial matter, it is unclear precisely what aspects of
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`Dr. Davis’ declaration represent his own generated opinion testimony as opposed
`
`to content that has simply been adopted from other sources. For example, Dr.
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`Davis’ declaration presents large swaths of content that have been literally copied
`
`from Dr. Frey’s expert report, (Ex. 1117), a document generated for an entirely
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`different litigation proceeding and produced nearly two years prior to Dr. Davis’
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`declaration in this case. (Compare Ex. 1106, ¶¶ 22-46, with Ex. 1117, ¶¶ 35-53,
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`55, 57-60, 63.) Perhaps the original material was not prepared for a Board
`
`proceeding, as numerous of these paragraphs fail to cite to a single reference or
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`shred of evidence in support of the proffered commentary. 37 CFR § 42.65(a)
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`(“Expert testimony that does not disclose the underlying facts or data on which the
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`opinion is based is entitled to little or no weight.”). Dr. Davis does not credit Dr.
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`Frey’s report as a source of this content. When Dr. Davis does reference the Frey
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`report, he simply repeats unsupported hearsay in the report without purporting to
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`have any personal knowledge of the subject matter. (See, e.g., Ex. 1106 ¶ 281.)
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`Apart from the content copied from the Frey Report, the vast majority of the
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`remaining commentary is a near-verbatim recitation of the conclusory arguments
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`included within the Petition. (Compare, e.g., Pet. at 46-49, with Ex. 1106 ¶¶278-
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`82; compare Pet. at 49-50, with Ex. 1106 ¶¶ 283-84). Edmund Optics, Inc. v.
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`Semrock, Inc., IPR2014-00583, Paper 50, at 8 (Sep. 9, 2015) (“In the instant case,
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`the experts’ testimony does little more than repeat, without citation to additional
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`evidence, the conclusory arguments of their respective counsel.”); see also Kinetic
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`Techs., Inc. v. Skyworks Solutions, Inc., IPR2014-00529, Paper 8, at 15 (Sep. 23,
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`2014) (“Merely repeating an argument from the Petition in the declaration of a
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`proposed expert does not give that argument enhanced probative value.”).
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`Moreover, where evidence is cited, Dr. Davis’s declaration adds confusion
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`by referring to different exhibits compared to those cited in the petition. For
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`example, the petition lists Exhibits 1101-1124 (Pet. at “Table of Exhibits”), which
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`appear to correspond to the exhibits made of record. Dr. Davis’s declaration,
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`however, fails to cite to any of these exhibit numbers—and utilizes a different
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`numbering scheme instead. At a minimum, Petitioner’s citations to inappropriate
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`documents places undue burden on the reader to search and compare different
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`documents submitted in different proceedings. Corning Inc. v. DSM IP Assets
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`B.V., IPR2013-00049, Paper 88 at 14 (2014) (“The Board will not scour the record
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`in search of evidence relevant to a particular issue, nor will it attempt to fit
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`evidence together into a coherent explanation that supports an argument. Such
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`activities are the province of advocacy.”) (citing Stampa v. Jackson, 78 USPQ2d
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`-17-
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`1567, 1571 (BPAI 2005) and Ernst Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d
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`110, 111-12 (2d Cir. 1999)); Lam Research Corp. v. Flamm, IPR2015-01766,
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`Paper 7 at 19 (2016) (“A brief must make all arguments accessible to the judges,
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`rather than ask them to play archaeologist with the record.”) (quoting DeSilva v.
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`DiLeonardi, 181 F.3d 865, 866-67 (7th Cir 1999)).
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`IV. THE PROPOSED GROUNDS OF CHALLENGE FAIL
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`A. Ground 1 fails
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`1.
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`The Frey Slides Do Not Anticipate 1 and 3
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`As set forth above, Petitioner has not established Frey Slides as a prior art
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`printed publication, and the Board should deny Ground 1 on that basis alone.
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`Nonetheless, regardless of whether the Frey Slides is disqualified as
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`available prior art, the petition fails to establish the Frey Slides anticipate claim 1.
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`Patent Owner notes that Petitioner appears to be asserting that the Frey Slides
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`alone anticipates claim 1, but tacitly admits the Frey Slides lack relevant content
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`by pivoting a different document in the Frey paper (Ex. 1102)—which it does not
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`include in its asserted ground—to fill in content of the Frey Slides. (Pet. p. 29
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`(“Using the same procedure described in the Frey paper, the Frey Slides show how
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`known, regular codes can be ‘irregularized,’ step by step:”) (showing images from
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`Frey Slides); id. p. 30 (“Also, using a diagram identical to Figure 2 of the Frey
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`paper (described above), the Frey Slides show how irregular turbocodes can be
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`implemented via irregular operation.”).) Petitioner is improperly relying on the
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`-18-
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`Frey paper, which it does not assert in its ground, to fill in content the petition
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`tacitly admits is missing from the Frey Slides. It is evident by this fact alone that
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`the Frey Slides do not anticipate claims 1 and 3.
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`Nevertheless, even if the Frey Slides contained the same disclosure as the
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`Frey paper, the Frey Slides still would fail to teach or suggest all limitations of
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`claims 1 and 3, e.g., partitioning a block of data into sub-blocks including a
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`plurality of data items, and encoding the partitioned data as specifically recited in
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`claim 1.
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`The ’710 patent specification illustrates data partitioning and encoding. For
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`example, the specification, referring to Fig. 2, recites an embodiment where “[t]he
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`outer coder 202 receives the uncoded data [which] may be partitioned into blocks
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`of fixed size, say k bits. The outer coder may be an (n,k) binary linear block coder,
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`where n>k.” (Ex. 1101 at 2:41-44.) Additionally, “[t]he coder accepts as input a
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`block u of k data bits and produces an output block v of n data bits.” (Ex. 1101 at
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`2:44-45.) Moreover, “[t]he rate of the coder may be irregular, . . . and may differ
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`for sub-blocks of bits in the data block. In an embodiment, the outer coder 202 is a
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`repeater that repeats the k bits in a block a number of times q to produce a block
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`with n bits, where n=qk.” (Id. at 2:48-52; see also id. at 1:59-64 (“The data block
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`is apportioned into two or more sub-blocks and bits in different sub-blocks are
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`repeated a different number of times according to a selected degree profile.”), Fig.
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`-19-
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`2.) The bits output from the outer coder are also “scrambled before they are input
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`to the inner coder 206,” where the scrambling operation “may be performed by the
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`interleaver 204.” (Id. at 3:18-20.)
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`The petition asserts that the Frey Slides anticipate claim 1, but the petition
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`fails to show that the Frey Slides teach or suggest each and every element of claim
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`1. A number of aspects of claim 1 are inadequately addressed in the petition and
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`missing from the Frey Slides, some of which are addressed below.
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`a)
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`The Frey Slides Fail to Disclose Additional
`Downstream Limitations
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`Because the petition fails to demonstrate that the Frey Slides disclose the
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`“partitioni