throbber
Trials@uspto.gov
`571-272-7822
`
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` Paper 17
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`
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` Entered: June 30, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Case IPR2017-00211
`Patent 7,116,710 B1
`____________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`I.
`
`INTRODUCTION
`
`Petitioner, Apple, Inc. (“Apple”), filed a Petition (Paper 2, “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. 1101, “the ’710 patent”) pursuant to 35 U.S.C.
`
`§§ 311–319. Apple relies on the Declaration of James A. Davis, Ph.D.
`
`(Ex. 1106) with its Petition. Patent Owner, California Institute of
`
`Technology (“Caltech”), filed a Preliminary Response (Paper 16, “Prelim.
`
`Resp.”) to the Petition.
`
`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
`
`which provides that an inter partes review may not be instituted unless the
`
`information presented in the Petition “shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” After considering the Petition and
`
`associated evidence, we conclude that Apple has not demonstrated a
`
`reasonable likelihood that it would prevail in showing the unpatentability of
`
`the challenged claims of the ’710 patent.
`
`A. Related Proceedings
`
`The parties indicate that the ’710 patent was involved in the following
`
`active case, Cal. Inst. of Tech. v. Broadcom Ltd., No. 2:16-cv-03714 (C.D.
`
`Cal. filed May 26, 2016), and in concluded cases, Cal. Inst. of Tech. v.
`
`Hughes Commc’ns, Inc., No. 2:15-cv-01108 (C.D. Cal. filed Feb. 17, 2015);
`
`and Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., 2:13-cv-07245 (C.D. Cal.
`
`filed Oct. 1, 2013). Pet. 3–4, Paper 8, 2–3.
`
`The parties also identify co-pending cases IPR2017-00210 and
`
`IPR2017-00219, in which Apple has filed a petition for inter partes review
`
`
`
`
`2
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`of the ’710 patent. Pet. 3–4; Paper 8, 2–3. Inter partes review of the
`
`’710 patent was previously considered and denied in Hughes Network Sys.,
`
`LLC v. Cal. Inst. of Tech., IPR2015-00067 (PTAB April 27, 2015) (Paper
`
`18) (“IPR2015-00067”) and Hughes Network Sys., LLC v. Cal. Inst. of
`
`Tech., IPR2015-00068 (PTAB April 27, 2015) (“IPR2015-00068”). Finally,
`
`patents related to the ’710 patent were challenged in IPR2015-00059,
`
`IPR2015-00060, IPR2015-00061, and IPR2015-00081. Pet. 3–4.
`
`B. The ʼ710 Patent
`
`The ’710 patent describes the serial concatenation of interleaved
`
`convolutional codes forming turbo-like codes. Ex. 1101, Title [54]. It
`
`explains some of the prior art with reference to its Fig. 1, reproduced below.
`
`Figure 1 is a schematic diagram of a prior “turbo code” system. Id. at 2:14–
`
`15. The ’710 patent specification describes Figure 1 as follows:
`
`
`
`A standard turbo coder 100 is shown in FIG. 1. A block
`of k information bits is input directly to a first coder 102. A
`k bit interleaver 106 also receives the k bits and interleaves
`them prior to applying them to a second coder 104. The second
`coder produces an output that has more bits than its input, that
`3
`
`
`
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`is, it is a coder with rate that is less than 1. The coders 102,104
`are typically recursive convolutional coders.
`
`Three different items are sent over the channel 150: the
`original k bits, first encoded bits 110, and second encoded bits
`112. At the decoding end, two decoders are used: a first
`constituent decoder 160 and a second constituent decoder 162.
`Each receives both the original k bits, and one of the encoded
`portions 110, 112. Each decoder sends likelihood estimates of
`the decoded bits to the other decoders. The estimates are used
`to decode the uncoded information bits as corrupted by the
`noisy channel.
`
`Id. at 1:38–53(emphasis omitted).
`
`A coder 200, according to a first embodiment of the invention, is
`
`described with respect to Figure 2, reproduced below.
`
`Figure 2 of the ’710 patent is a schematic diagram of coder 200. Id. at 2:16–
`
`
`
`17.
`
`The specification states that “coder 200 may include an outer coder
`
`202, an interleaver 204, and inner coder 206.” Id. at 2:34–35. It further
`
`states as follows:
`
`The outer coder 202 receives uncoded data. The data
`may be partitioned into blocks of fixed size, say k bits. The
`outer coder may be an (n,k) binary linear block coder, where
`n>k. The coder accepts as input a block u of k data bits and
`produces an output block v of n data bits. The mathematical
`
`
`
`
`4
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`relationship between u and v is v=T0u, where T0 is an n×k
`matrix, and the rate[1] of the coder is k/n.
`
`
`The rate of the coder may be irregular, that is, the value
`of T0 is not constant, and may differ for sub-blocks of bits in the
`data block. In an embodiment, the outer coder 202 is a repeater
`that repeats the k bits in a block a number of times q to produce
`a block with n bits, where n=qk. Since the repeater has an
`irregular output, different bits in the block may be repeated a
`different number of times. For example, a fraction of the bits in
`the block may be repeated two times, a fraction of bits may be
`repeated three times, and the remainder of bits may be repeated
`four times. These fractions define a degree sequence, or degree
`profile, of the code.
`
`
`The inner coder 206 may be a linear rate-1 coder, which
`means that the n-bit output block x can be written as x=TIw,
`where TI is a nonsingular n×n matrix. The inner coder 210 can
`have a rate that is close to 1, e.g., within 50%, more preferably
`10% and perhaps even more preferably within 1% of 1.
`
`
`Id. at 2:41–64 (emphasis omitted). Codes characterized by a regular repeat
`
`of message bits into a resulting codeword are referred to as “regular repeat,”
`
`whereas codes characterized by irregular repeat of message bits into a
`
`resulting codeword are referred to as “irregular repeat.” The second
`
`(“inner”) encoder 206 performs an “accumulate” function. Thus, the two-
`
`step encoding process illustrated in Figure 2, including a first encoding
`
`(“outer encoding”) followed by a second encoding (“inner encoding”),
`
`results in either a “regular repeat accumulate” (“RRA”) code or an “irregular
`
`
`1 The “rate” of an encoder refers to the ratio of the number of input bits to
`the number of resulting encoded output bits related to those input bits. See
`Pet. 9.
`
`5
`
`
`
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`repeat accumulate (“IRA”) code, depending upon whether the repetition in
`
`the first encoding is regular or irregular.
`
`Figure 4 of the ’710 patent, reproduced below, shows an alternative
`
`embodiment in which the first encoding is carried out by a low density
`
`generator matrix.
`
`
`
`Figure 4 of the ’710 patent is a schematic of an irregular repeat and
`
`accumulate coder using a low density generator matrix (LDGM)2 coder. Id.
`
`at 2:20–21, 3:24–25, 3:51–54. The LDGM coder “performs an irregular
`
`repeat of the k bits in the block, as shown in FIG. 4.” Id. LDGM codes are
`
`a special class of low density parity check codes that allow for less encoding
`
`and decoding complexity. LDGM codes are systematic linear codes
`
`generated by a “sparse” generator matrix. No interleaver (as in the Figure 2
`
`embodiment) is required in the Figure 4 embodiment because the LDGM
`
`provides scrambling otherwise provided by the interleaver.
`
`
`2 A “generator” matrix (typically referred to by “G”) is used to create
`(generate) codewords. A parity check matrix (typically referred to by “H”)
`is used to decode a received message.
`6
`
`
`
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`C. Illustrative Claims
`
`Apple challenges claims 1–8, 10–17, and 19–33 of the ’710 patent, of
`
`which claims 1, 11, 15, and 25 are independent. Pet. 22. 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;
`
`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.
`
`The method of claim 1, wherein said first encoding is
`3.
`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. 1101, 7:14–25, 7:28–31.
`
`D. The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth the grounds of
`
`unpatentability of claims 1–8, 10–17, and 19–33 of the ’710 patent as
`
`follows (see Pet. 37–76):
`
`
`
`
`7
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`Reference(s)
`
`Basis
`
`Claim(s) Challenged
`
`Frey Slides3
`
`Frey Slides and Divsalar4
`Frey Slides, Divsalar, and
`Luby975
`Frey Slides, Divsalar, and
`Pfister Slides6
`Frey Slides, Divsalar,
`Luby97, and Pfister Slides
`
`§ 102(a)
`
`§ 103(a)
`
`1 and 3
`
`1–8 and 11–14
`
`§ 103(a)
`
`15–17, 19–22, and 24–33
`
`§ 103(a)
`
`§ 103(a)
`
`10
`
`23
`
`II. ANALYSIS
`
`A. Printed Publication Prior Art
`
`Caltech contends that Apple has not established that the Frey Slides
`
`and Pfister Slides are prior art printed publications. Prelim. Resp. 7–15. We
`
`address each of these issues below.
`
`1. Frey Slides (Ex. 1113) & Pfister Slides (Ex 1105)
`
`Apple asserts that the Frey Slides were presented at an Allerton
`
`Conference but otherwise makes few arguments establishing the Frey Slides
`
`
`3 Brendan J. Frey and David J.C. MacKay, Irregular Turbo-Like Codes,
`Presentation at Allerton Conference, September 1999 (Ex.1113, “Frey
`Slides”).
`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. 1103, “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. 1111, “Luby97”).
`6 Pfister, H., et al, The Serial Concatenation of Rate-1 Codes Through
`Uniform Random Interleavers, Presentation at Allerton Conference, Sept.
`22–24, 1999 (Ex. 1105, “Pfister Slides”).
`8
`
`
`
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`as a prior art printed publication. Pet. 29. Apple’s entire statement on the
`
`Frey Slides reads as follows:
`
`The Frey Slides (Ex. 1113) were presented by Brendan Frey at
`the Allerton Conference in September, 1999. The Frey Slides
`contain the material upon which the Frey paper, published in the
`Allerton 1999 conference proceedings, is based. (See Ex. 1117,
`p. 36). (Ex. 1106, ¶71.)
`
`Pet. 29. Apple relies on an unsworn expert report produced by Dr. Brendan
`
`Frey (Ex. 1117) produced in related district court litigation to support its
`
`contention that the Frey Slides are a printed publication.
`
`Caltech argues that Apple’s petition “lacks the requisite explanation
`
`and supporting evidence that the Frey Slides are prior art of any type . . .
`
`available to serve as a basis of challenge in an inter partes review.” Prelim.
`
`Resp. 7. We agree.
`
`Under 35 U.S.C. § 311(b), IPR challenges are limited to patents and
`
`printed publications. We look to the underlying facts to make a legal
`
`determination as to whether a reference is a printed publication. Suffolk
`
`Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The
`
`determination of whether a given reference qualifies as a prior art “printed
`
`publication” involves a case-by-case inquiry into the facts and circumstances
`
`surrounding its disclosure to members of the public. In re Klopfenstein, 380
`
`F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference
`
`was made “sufficiently accessible to the public interested in the art” before
`
`the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re
`
`Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly
`
`accessible’ upon a satisfactory showing that such document has been
`
`disseminated or otherwise made available to the extent that persons
`
`
`
`
`9
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`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). With respect to
`
`slide presentations, Federal Circuit case law and a prior opinion from our
`
`Board have found that the mere presentation of slides at a professional
`
`conference is not per se a prior art printed publication. Klopfenstein, 380
`
`F.3d at 1349 n.4; Temporal Power Ltd. v. Beacon Power, LLC, Case
`
`IPR2015-00146, slip op. at 8–11 (PTAB April 27, 2015) (Paper 10).
`
`We agree with Caltech that the expert report of Dr. Frey from a prior
`
`related district court litigation is insufficient evidence to establish whether
`
`the Frey Slides are a printed publication. See Prelim. Resp. 8. The portion
`
`of the report cited by Apple merely states that Dr. Frey “prepared the Frey
`
`Slides . . . in collaboration with David MacKay and presented them at the
`
`Allerton Conference in September, 1999.” Ex. 1117, 38 (¶ 114); Pet. 29.
`
`Neither Apple nor the Frey report provide any details about the presentation
`
`or address issues relevant to determining if the slides are a prior art printed
`
`publication. See, e.g., Klopfenstein, 380 F.3d at 1349–50.
`
`At best, Apple establishes only that a presentation took place; Apple
`
`fails to provide sufficient evidence or argument regarding the ease with
`
`which the audience attending the Frey Slides presentation could access the
`
`slides before, during or after the presentation. See, e.g., Klopfenstein, 380
`
`F.3d at 1350 (addressing slide presentation); Temporal Power Ltd.,
`
`IPR2015-00146 at 8–11. Although we give the unsworn report of Dr. Frey
`
`little to no weight, even if we fully considered Dr. Frey’s report, Apple’s
`
`petition is devoid of any information or argument supporting whether the
`
`Frey Slides presented in support of the petition (Ex. 1113) are the same
`
`10
`
`
`
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`slides discussed in Dr. Frey’s unsworn report, which does not include a copy
`
`of the full presentation. See Pet. 29; Ex. 1117, 38–39. On the record before
`
`us, Apple’s evidence is insufficient to establish whether the Frey Slides
`
`qualify as a printed publication.
`
`Apple’s evidence and argument regarding the prior art printed
`
`publication status of the Pfister Slides (Ex. 1105) is also insufficient.
`
`See Pet. 36; Prelim. Resp. 13–15. Apple contends that Paul Siegel presented
`
`the Pfister Slides at the Allerton Conference in September 1999, relying on a
`
`declaration from Mr. Siegel that does not support whether the Pfister Slides
`
`are a printed publication. Pet. 36 (citing Declaration of Paul Siegel,
`
`Ex. 1120, 3). Mr. Siegel’s declaration in its entirety does not address the
`
`factors cited in In re Klopfenstein as to whether the slides in question qualify
`
`as a printed publication. See Ex. 1120. As such, Apple makes no attempt to
`
`explain the manner in which the Pfister Slides were published or how the
`
`Pfister Slides were made accessible to the relevant public.
`
`Based on the foregoing, Apple fails to meet the burden imposed under
`
`§ 314(a) to establish in its Petition a reasonable likelihood of success, which
`
`includes making a threshold showing that the Frey Slides and Pfister Slides
`
`are prior art printed publications. We find that Apple has not demonstrated a
`
`likelihood of showing that the grounds based on the Frey Slides and Pfister
`
`Slides render the challenged claims unpatentable.
`
`Because each of the grounds asserted in the present case rely on the
`
`Frey Slides (and two of those grounds also rely on the Pfister Slides), we
`
`find that Apple has failed to demonstrate reasonable likelihood that it would
`
`prevail in showing the unpatentability of the challenged claims of the
`
`
`
`
`11
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`’710 patent based on the Frey Slides or the Pfister Slides. Accordingly, we
`
`do not institute trial on any of the grounds asserted in Apple’s petition.
`
`III. CONCLUSION
`
`For the foregoing reasons, we are not persuaded that Petitioner has
`
`met its burden of showing a reasonable likelihood of prevailing in
`
`demonstrating that claims 1–8, 10–17, and 19–33 of the ’710 patent are
`
`unpatentable.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby denied as to all grounds raised in the Petition for the reasons stated
`
`above and no trial is instituted.
`
`
`
`
`
`
`
`
`12
`
`

`

`IPR2017-00211
`Patent 7,116,710 B1
`
`
`For PETITIONER:
`
`Richard Goldenberg
`Richard.goldenberg@wilmerhale.com
`
`Brian Seeve
`Brian.seeve@wilmerhale.com
`
`
`For PATENT OWNER:
`
`Michael Rosato
`mrosato@wsgr.com
`
`Matthew Argenti
`margenti@wsgr.com
`
`Richard Torczon
`rtorczon@wsgr.com
`
`
`
`
`
`
`
`
`
`
`13
`
`

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