U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_________________________________________
`
`Case IPR2017-00219
`Patent 7,116,710
`_________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`Apple v. California Institute of Technology
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_________________________________________
`
`Case IPR2017-00219
`Patent 7,116,710
`_________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`
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`I.
`
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 1
`
`A.
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`The Challenged Claims are Obvious ..................................................... 1
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`1.
`
`Divsalar in view of Luby renders claims 1-8 and 11-14
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`obvious ........................................................................................ 1
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`2.
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`Divsalar in view of Luby and Luby97 renders claims
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`15-17, 19-22, and 24-33 obvious .............................................. 13
`
`3.
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`Caltech fails to establish a nexus between its alleged
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`objective evidence of non-obviousness and the claimed
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`invention. ................................................................................... 14
`
`B.
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`Caltech Mischaracterizes the Testimony of Petitioner’s Expert,
`
`Prof. Davis. .......................................................................................... 17
`
`C.
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`Caltech Fails to Antedate Frey. ........................................................... 21
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`1.
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`Frey was publicly available before Caltech’s alleged
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`conception date. ........................................................................ 22
`
`2.
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`3.
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`Caltech fails to corroborate its alleged date of conception. ...... 23
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`Caltech fails to demonstrate diligence. ..................................... 26
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`III. CONCLUSION .............................................................................................. 27
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`- ii -
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`I.
`
`INTRODUCTION
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`The Patent Owner Response (“POR”) filed by Caltech fails to rebut
`
`Petitioner’s showing that the challenged claims are unpatentable. First, Caltech
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`mischaracterizes the teachings of Divsalar and Luby. Second, Caltech has failed to
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`demonstrate secondary considerations of non-obviousness. Third, Caltech
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`mischaracterizes the testimony of Petitioner’s expert, Prof. Davis. Finally,
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`Caltech’s alleged pre-filing activity fails to antedate the Frey reference.
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`II. ARGUMENT
`A. The Challenged Claims are Obvious
`1.
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`Divsalar in view of Luby renders claims 1-8 and 11-14 obvious
`
`The POR relies on the same arguments that the Board preliminarily
`
`rejected—irregularity, partitioning, and combinability—and should reject again.
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`POPR, 13-35; DI, 22.
`
`i.
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`Luby teaches irregular repetition of information bits
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`Caltech asserts that is unclear whether Luby’s irregular message nodes result
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`from irregular information bits, irregular parity bits, or both. See POR, 19-26.
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`Caltech is mistaken.
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`Luby teaches that its codes have “rate ½ with 16,000 message bits and 8,000
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`check bits.” Ex. 1204, 256. This means that each of Luby’s codewords contain
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`8,000 information bits and 8,000 parity bits. Luby’s Table 1 provides parameters for
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`- 1 -
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`
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`four codes. POR, 26. As Prof. Frey explains, the lambda values in Luby’s table
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`correlate to the number of nodes of each degree. The table below summarizes the
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`percentages and total number of each type of message node for two codes in Table 1.
`
`Code
`22
`
`14’
`
`
`
`Percentages of messages nodes of each degree
`Degree 5 Message Nodes: ~63% (~10,080 nodes)
`Degree 6 Message Nodes: ~23% (~3,680 nodes)
`Degree 27 Message Nodes: ~3% (~480 nodes)
`Degree 29 Message Nodes: ~4% (~640 nodes)
`Degree 30 Message Nodes: ~4% (~640 nodes)
`Degree 100 Message Nodes: ~3% (~480 nodes)
`Degree 3 Message Nodes: ~22% (~3,520 nodes)
`Degree 4 Message Nodes: ~61% (~9,760 nodes)
`Degree 21 Message Nodes: ~5% (~800 nodes)
`Degree 23 Message Nodes: ~12% (1,920 nodes)
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`Ex. 1265, ¶¶21-27.1
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`Prof. Frey explains that in implementations of Luby’s codes, the information
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`bits would have different degrees. For example, in Luby’s Code 22, some of the
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`information bits would have degree 100 and others would have degree 30. Similarly,
`
`in Luby’s Code 14’, some of the information bits would have degree 23 and others
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`would have degree 21. Ex. 1265, ¶¶28-29.
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`
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`1 After submitting his declaration, Dr. Davis relocated to Europe pursuant to a
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`Fulbright Global Scholar Award. As a result, he was unavailable to work on the
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`Reply. Petitioner’s Reply is instead supported by the Declaration of Dr. Frey.
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`Luby states that message nodes “with higher degree tend to their correct value
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`quickly.” Ex. 1204, 253. This would have led a POSA to preferentially use higher
`
`degrees for information bits. Because there are 8,000 information bits and fewer
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`than 8,000 messages nodes with higher degrees (e.g., only 1,920 nodes with degree
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`23 for Code 14’), it would have been impossible to use a single high degree for all
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`the information bits. Also, even if POSAs were to randomly assign information and
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`parity bits to particular nodes, it would have been highly unlikely for all the
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`information bits to have the same degree. Thus, POSAs would have understood that
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`Luby discloses information bits with different degrees. At a minimum, information
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`bits with different degrees would have been obvious, because having at least some
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`irregular information bits is one of only two possibilities (i.e., at least some
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`information bits with different degrees or all information bits with the same degree)
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`when the message nodes are irregular, as they are in Luby. Ex. 1265, ¶¶29-33.
`
`ii.
`
`Even under Caltech’s incorrect interpretation of Luby,
`Caltech’s argument regarding irregularity fails
`
`Caltech’s complaint that Luby does not disclose irregular information bits is
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`untrue and irrelevant. Applying Luby’s fundamental teaching—that irregular codes,
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`with message bits that have irregular degrees, outperform their regular
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`counterparts—to Divsalar results in codes that repeat information bits a different
`
`number of times. Ex. 1265, ¶¶34-35.
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`The simplest way for a POSA to incorporate Luby’s irregularity into Divsalar
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`would have been to modify Divsalar’s repeater to make it repeat some bits more than
`
`others. Pet., 37. Doing so would not have required modification of Divsalar’s other
`
`components, i.e., the interleaver and accumulator. Id., 37. Incorporating irregularity
`
`into Divsalar’s repeater would only have required repeating some bits more than
`
`others. By contrast, incorporating irregularity in Divsalar’s accumulator would have
`
`complicated the already simple accumulator. Ex. 1265, ¶36.
`
`This can be seen graphicly. Exhibit 1246 shows a Tanner graph for Divsalar’s
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`code for the case in which q=3. Exhibit 1247 shows the Tanner graph for Luby’s
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`Code 14.
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`U.S. Patent No. 7,116,710
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`Ex. 1246
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`Ex. 1247
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`The left sides of the Tanner graphs are similar, i.e., they both include nodes and a
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`random permutation. However, whereas Divsalar’s left nodes all have the same
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`degree, Luby’s do not. It would have been obvious for a POSA to use Luby’s
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`irregularity in Divsalar by making the degree of Divsalar’s information nodes
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`irregular, which exactly corresponds to repeating some bits more than others.
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`Ex. 1265, ¶37.
`
`Caltech argues that Luby’s irregularity is in the codeword bits and that using
`
`Luby’s irregularity in Divsalar would mean changing the degree of the parity nodes
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`
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`at the right side of Divsalar’s Tanner graph. See POR, 26-29. However, Caltech’s
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`approach would treat a POSA as an automaton. As explained above, a POSA would
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`have been motivated to modify Divsalar’s repeater. Similarly, changing the degree
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`of Divsalar’s left nodes such that it repeats bits a different number of times would
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`have been simple and obvious. Ex. 1265, ¶38.
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`Moreover, Frey actually used Luby’s teaching to irregularly repeat
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`information bits, which disproves Caltech’s charge of hindsight. Ex. 1202, 241. A
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`POSA reading Divsalar and Luby would have been motivated to do the same.
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`Ex. 1265, ¶¶39-40.
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`iii. Divsalar in view of Luby discloses the “partitioning”
`limitation
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`Divsalar in view of Luby partitions information bits into sub-blocks by
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`repeating some information bits more than others. DI, 20; Pet., 46-47. Ex. 1265,
`
`¶41.
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`The POR does not dispute that repeating bits a different number of times
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`would disclose partitioning them into different sub-blocks, or that such partition
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`would have been an obvious implementation of the irregular repeater of Divsalar in
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`view of Luby. See POR, 29-30. Instead, the sole argument Caltech makes in its
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`POR is that it is theoretically possible to “implement the modified Divsalar code
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`without partitioning.” POR, 29-30. Caltech’s argument fails. Ex. 1265, ¶42.
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`U.S. Patent No. 7,116,710
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`First, Caltech attempts to impose an inherency standard. The Petition did not
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`rely on a showing of inherency. Rather, the Petition showed repeating bits different
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`numbers of times discloses the “partitioning” limitation. That the irregular
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`repetition “de facto” causes partitioning or “defines the different sub-blocks of the
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`partition,” Pet., 46-47, does not impose an inherency requirement—rather, it shows
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`the disclosure and obviousness of the “partitioning” limitation in view of Divsalar
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`and Luby.
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`Second, Dr. Mitzenmacher’s argument that POSAs implementing Divsalar
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`and Luby could avoid partitioning by using a random number generator should be
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`rejected. Even if such a random number generator were used, because its output
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`sequence would be known in advance, that sequence would provide the partitioning,
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`i.e., it would define in advance which bits are repeated which number of times.
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`Ex. 1262, 381:3-382:13. Ex. 1265, ¶43.
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`Third, even if it were possible to alter Divsalar’s encoder to irregularly repeat
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`without partitioning, the combination of Divsalar and Luby would still disclose
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`partitioning. Dr. Mitzenmacher acknowledges his proposed implementation is
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`merely a hypothetical that “one could envision.” Ex. 2003, ¶94. He offers no
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`testimony that this implementation is a practical or likely implementation. Id. Dr.
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`Frey shows that it is not, and that repeating bits different numbers of times would
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`have partitioned the data as recited in the claims. Ex. 1265, ¶44.
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`U.S. Patent No. 7,116,710
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`iv. Caltech has failed to show that a POSA would not have
`combined Divsalar and Luby.
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`First, as the Caltech cannot and does not dispute, Luby plainly states that
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`irregularity could be used to design codes that are “far superior to any regular
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`code.” Ex. 1204, 257. Instead, Caltech urges an artificially narrow interpretation of
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`Luby. POR, 30-32, 35. POSAs would not have read Luby so narrowly. Rather,
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`POSAs would have been encouraged to use Luby’s irregularity in other codes. Frey
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`did exactly that and, noting the success of Luby, incorporated irregularity by
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`irregularly repeating information bits. Ex. 1202, 241-244. POSAs would have
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`similarly been motivated to do what Frey2 did and obtain the benefit of Luby’s
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`irregularity in other codes such as Divsalar’s. Ex. 1265, ¶46.
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`Caltech similarly reads Luby’s use of the term “irregular” unduly narrowly.
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`POR 25-26. Caltech attempts to show that Luby offers a different definition of
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`
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`2 Caltech also misreads Frey. POR, 35-37. Caltech’s interpretation is rebutted by
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`Frey itself, which states, e.g., “In this paper, we show that by tweaking a turbocode
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`so that it is irregular, we obtain a coding gain…” Ex. 1202, 241. Additionally, the
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`POR does not dispute that Frey teaches “irregular turbocode clearly performs better”
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`in at least some cases. Id., 246. Thus, Frey provides further evidence a POSA would
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`have been motivated to combine Divsalar and Frey.
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`
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`“irregularity” than Dr. Davis. Caltech states that Luby defines irregularity with
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`U.S. Patent No. 7,116,710
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`respect to the lambda values in Table 1. But as shown above, those lamba values
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`disclose irregular information bits. Thus, Luby’s use of irregularity is consistent
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`with the definition offered by Dr. Davis and with the understanding of POSAs. Ex.
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`1265, ¶47.
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`Second, the POR does not dispute that Divsalar could be made irregular by
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`modifying the repeater to repeat information bits different numbers of times.
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`Instead, the POR argues that such modifications were not sufficiently described and
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`would not have an expectation of success. POR, 37-47. These arguments should be
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`rejected. Ex. 1265, ¶48.
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`As Caltech concedes, rigorous mathematical analysis of codes is difficult, and,
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`as a result, POSAs routinely developed codes by experimentation. POR, 2.
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`Encouraged by Luby’s results, a POSA would have been motivated to use Luby’s
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`irregularity in Divsalar. The Petition showed that POSAs would have had an
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`expectation of success because it was simple to modify Divsalar to repeat
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`information bits different numbers of times, which meets the limitations of the
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`claimed invention. Pet., 37-41. Intelligent Bio-Sys., Inc. v. Illumina Cambridge
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`Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (“The reasonable expectation of success
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`requirement refers to the likelihood of success in combining references to meet the
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`limitations of the claimed invention.”). Dr. Mitzenmacher agreed that repeating
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`some bits in Divsalar “q+10” times and others “q” times would make the code
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`U.S. Patent No. 7,116,710
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`irregular. Ex. 1262, 153:11-154:8. Ex. 1265, ¶49.
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`A POSA’s expectation of success is further illustrated by the Tanner graphs
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`for Divsalar and Luby referenced above. Exs. 1046-1047. All that is required to
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`make Divsalar’s code repeat information bits irregularly is to rearrange the edges for
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`information nodes so that some nodes have different numbers of edges than others.
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`Doing so would have been simple and obvious and would have resulted in a
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`functioning code. Supra, §II.1.ii. Ex. 1265, ¶50.
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`Moreover, Dr. Frey’s simulation confirms that using Luby’s irregularity in
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`Divsalar would not have been difficult, and a POSA would have had an expectation
`
`of success. Exhibit 1268 demonstrates that an irregular version of Divsalar’s code,
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`in which half the bits are repeated three times and the other half are repeated seven
`
`times, outperforms the original. These results show that POSAs would have had an
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`expectation of success and would have easily obtained a coder with improved
`
`performance. As Prof. Frey explains, it took him only 30 minutes to adapt the
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`regular Divsalar code to make it irregular and obtain a result showing that the
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`irregular version had superior performance. Ex. 1265, ¶¶51-63.
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`Third, Caltech’s argument that Luby does not provide a motivation to modify
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`Divsalar’s repeater fails. POR, 33-34. POSAs would have been motivated to apply
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`irregularity to the repeater because it is a simple component that could be easily
`- 10 -
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`modified. Supra, §II.1.ii. Caltech’s argument that Divsalar already has some
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`irregularity also fails. Accumulators such as those in Divsalar were known long
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`before the coding community began discussing irregular codes. POSAs did not
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`consider use of an accumulator to make codes irregular. Ex. 1265, ¶63.
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`v.
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`Dr. Divsalar’s testimony confirms that it would have
`been obvious to combine Divsalar and Frey
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`Dr. Divsalar’s declaration should be disregarded because he did not do the
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`work necessary to form an obviousness opinion. First, Dr. Divsalar purports to
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`provide an opinion of non-obviousness, but he did not review any materials related
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`to obviousness, including his (almost 20-year-old) paper, any of the patents or
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`claims, any prior art, or any of Petitioner’s explanations of why the claims are
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`obvious. Ex. 2031, ¶¶9-10, 33; Ex. 1264, 38:9-44:11. He also worked less than six
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`hours on the case prior to his deposition, so the declaration was not well-considered.
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`Ex. 1264, 14:10-17.
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`Second, Dr. Divsalar is biased. He has been employed by Caltech for
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`decades, was paid twice his normal salary for work on this case, and considers the
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`inventor, Dr. McEliece, a friend. Id., 7:1-4, 10:2-10, 11:20-15:21.
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`Third, Dr. Divsalar’s declaration is inconsistent with his own prior
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`statements. In a 2005 publication, Dr. Divsalar stated that IRA codes “generalized
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`the notion of RA codes by allowing irregular repetition of input bits.” Id.,
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`257:21-260:12; Ex. 1261. As Petitioner has explained, IRA codes are no more than
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`an obvious generalization of Divsalar’s RA code.
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`Finally, the basis for Dr. Divsalar’s opinion that a POSA would not have
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`made his RA code irregular is because doing so would decrease the code rate.
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`Ex. 2013, ¶ 36. However, Dr. Divsalar conceded at his deposition that his code can
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`be made irregular without altering the rate, and “there are a very large number of
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`ways” to do so. Ex. 1264, 101:12-22, 104:9-19, 105:5-13; Exs. 1257-1258. For
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`example, he confirmed that modifying a rate 1/5 RA code to repeat half the bits three
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`times and the other half seven times would not change the rate. Id. That is the same
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`example used by Dr. Frey to demonstrate that irregular versions of Divsalar
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`outperform the original. Ex. 1265, ¶64.
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`Moreover, Dr. Divsalar’s deposition confirms a POSA would have been
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`motivated to combine Divsalar and Frey. Dr. Divsalar confirmed that he received an
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`email from Dr. Frey on December 8, 1999 (prior to the alleged priority date) in
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`which Dr. Frey suggested “it would be interesting to extend the work that you and
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`Bob [McEliece] have done to the case of irregular turbocodes.” Ex. 1264,
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`183:15-186:20. Dr. Divsalar confirmed that Dr. Frey’s reference to “irregular
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`turbocodes” was a reference to Frey, which Dr. Divsalar had received by December
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`1999. Id. Ex. 1265, ¶65.
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`Dr. Divsalar additionally confirmed that RA codes in Divsalar could be made
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`irregular by rearranging the edges for information nodes u1 to uk so that some nodes
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`have different numbers of edges than other nodes. Ex. 1264, 95:7-101:22. This
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`demonstrates it would have been simple for a POSA to modify the RA code in
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`Divsalar to arrive at the claimed IRA code. Dr. Divsalar’s suggestion that Tanner
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`graphs were innovative is also incorrect. Ex. 2031, ¶15. Tanner graphs were a
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`standard technique for representing codes, including turbo-like codes, and in fact,
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`Frey used such graphs to represent the irregular code Dr. Frey suggested applying to
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`Divsalar. Ex. 1265, ¶66.
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`2.
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`Divsalar in view of Luby and Luby97 renders claims 15-17,
`19-22, and 24-33 obvious
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`The Petition showed that, to the extent Divsalar and/or Luby alone do not
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`disclose receiving “streams” of bits, it would have been obvious to incorporate this
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`feature of Luby97 because such encoders were common and well-known. Petition at
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`55-56. The POPR argued that the Petition did not sufficiently identify reasons to
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`combine the references. POPR, 36-42. The Board preliminarily rejected these
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`arguments in the Institution Decision. DI, 22-24. The POR simply repeats these
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`same arguments again, and fails to identify any reasons the Board should reach a
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`different conclusion than it reached at the institution stage. POR, 48-52. Ex. 1265,
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`¶67.
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`Caltech also argues that the LDGM limitation of claims 20 and 28 is not
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`explained. But the Petition explains how Divsalar teaches that limitation for claim 7,
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`and Caltech failed to identify anything missing from the Petition’s explanation.
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`Ex. 1265, ¶67.
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`3.
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`Caltech fails to establish a nexus between its alleged objective
`evidence of non-obviousness and the claimed invention.
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`The Federal Circuit has explained that “[f]or objective evidence of secondary
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`considerations to be accorded substantial weight, its proponents must establish a
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`nexus between the evidence and the merits of the claimed invention.” Merck & Cie
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`v. Gnosis S.P.A., 808 F.3d 829, 837 (Fed. Cir. 2015) (citation omitted). Caltech fails
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`to establish such a nexus.
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`Caltech’s nexus argument rests entirely on its contention that the DVB-S2
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`standard practices the claimed invention. POR, 51-53. It does not. Judge Pfaelzer
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`of the Central District of California addressed this issue in her summary judgment
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`opinion. Ex. 1267. She explained that “[t]he DVB-S2 standard does not appear to
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`require repetition of bits.” Id., *4. As Judge Pfaelzer found, the DVB-S2 standard
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`does not satisfy the limitations of the ’710 patent, which require repetition of
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`information bits.3 Ex. 1265, ¶¶68-69.
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`Caltech presents no evidence beyond what was available to Judge Pfaelzer.
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`Its expert, Dr. Mitzenmacher, relied solely on evidence regarding the DVB-S2
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`standard itself, Ex. 2004, ¶¶133-140; he admitted that he did not review any actual
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`implementation of the DVB-S2 standard. Ex. 1262, 443:17-445:10.
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`Without the requisite nexus to the challenged claims, Caltech’s evidence is
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`entitled to no weight. See Merck, 808 F.3d at 837.
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`i.
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`Long-Felt Need and Failure of Others
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`Caltech’s suggestion that IRA codes represent the endpoint of the
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`development of certain error correction codes is false. POR, 54-56.
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`Information theorists have long sought new codes that performed closer to the
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`Shannon Limit. That search drove the development of LDPC codes, turbocodes, RA
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`codes, and IRA codes. At no time was there a “long-felt need” for IRA codes.
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`Rather, there is always a present need for the next improvement to code performance.
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`Similarly, the codes that came before IRA codes were not “failures.” Rather, they
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`3 While Judge Pfaelzer’s analysis relates to related Patent No. 7,421,032, it
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`applies equally to the ’710 patent, which also requires repetition of information bits.
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`E.g., Ex. 1201, 7:19-20.
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`were improvements on what came before. IRA codes were at most a predictable and
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`incremental step in this process. Ex. 1265, ¶70.
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`Caltech’s argument also fails because it focuses on the alleged success of IRA
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`codes in general, not the claimed invention. IRA codes are not equivalent to the
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`claimed invention. Named inventor Jin testified during deposition that there are
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`multiple forms of IRA codes. Ex. 1263, 60:7-14. The claimed invention is one type
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`of IRA code. Caltech makes no effort to prove that the features claimed in the ’710
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`patent are what drove the alleged success of IRA codes.
`
`ii.
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`Industry Praise and Unexpected Results
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`Caltech’s evidence of alleged industry praise and unexpected results is also
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`irrelevant because it relies on IRA codes and DVB-S2 without establishing a nexus.
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`iii. Commercial Success
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`Caltech’s claim “widespread adoption of IRA codes in communication
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`standards” similarly fails. POR, 60. The only communication standard it identifies
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`is DVB-S2, which, as detailed above, has been found not to use the claimed
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`invention.
`
`Caltech’s reliance on a single license to establish commercial success is
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`equally unavailing. Caltech has not entered the license into the record, and the little
`
`evidence Caltech has introduced shows that the license was taken to settle litigation.
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`Ex. 2017. In such circumstances, affirmative evidence of a nexus between the
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`- 16 -
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`
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`claimed invention and the license is “specifically require[d] . . . because it is often
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`‘cheaper to take licenses than to defend infringement suits.’” Iron Grip Barbell Co.
`
`v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004) (citation omitted).
`
`Caltech has presented no such affirmative evidence.
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`B. Caltech Mischaracterizes the Testimony of Petitioner’s Expert,
`Prof. Davis.
`
`Caltech’s efforts to discredit the testimony of Prof. Davis are unfounded.
`
`Prof. Davis holds B.S., M.S., and Ph.D. degrees in mathematics. Ex. 1206 ¶ 3. He
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`serves as a Professor of Mathematics at the University of Richmond, where his
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`research focuses on coding theory, algebra, and combinatorics. Id. ¶¶ 4-9; Ex. 2033,
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`294:11-18. He has authored over 50 peer-reviewed publications in those fields. Ex.
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`1206, ¶11. He submitted a 185-page declaration in this proceeding, id., and testified
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`for over six hours of cross-examination in a straightforward manner.
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`In view of Prof. Davis’s experience and well-supported opinions, Caltech
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`resorts to mischaracterizing his testimony. For example, Prof. Davis did not
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`“avoid[] answering whether Frey’s Figure 3(b) graph shows data points for the range
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`of 8-12 degrees.” POR, 16. Rather, when asked whether “Frey obtained the best
`
`results when the elite bits were repeated in the range of 8 to 12 times,” Prof. Davis
`
`answered precisely that with respect to Figure 3(b) “the best degree is roughly 10.”
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`Ex. 2033, 138:21-139:9.
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`- 17 -
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`The other allegations leveled by Caltech are equally baseless.
`
`Caltech contends that Prof. Davis could not answer “basic questions” about
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`Berrou. POR, 12, 15. This is false. Prof. Davis testified that he had not recently
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`reviewed Berrou, Ex. 2033, 54:20-22, 56:17-18, and that he would have to review
`
`the paper to answer counsel’s questions with confidence, id., 55:6-7, 58:4-6,
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`58:15-18, 59:2-3, 59:15-17, 59:22-60:3. Counsel did not allow Prof. Davis to
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`review Berrou during the deposition and Caltech cannot now criticize him for
`
`properly framing his responses.
`
`Caltech criticizes Prof. Davis because “[h]e could not give an opinion on what
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`‘irregular’ meant in the field.” POR, 12, 15-16. But, as Prof. Davis testified, he did
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`“provide in [his] declaration what [he] mean[s] by irregular codes in the context that
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`matters for these proceedings,” Ex. 2033, 88:2-4—i.e., “the codes in the patents as
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`well as the codes in the prior art,” id., 88:11-16. See Ex. 1206, ¶ 59. This is the
`
`proper interpretation of claim terms. See Paper 17, 9 (claims interpreted “in the
`
`context of the entire disclosure”). Prof. Davis then consistently applied this
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`definition to the prior art. For example, contrary to Caltech’s argument to the
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`contrary, POR, 20-24, Prof. Davis testified that POSAs would have understood
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`Luby to disclose “codes in which different information bits or groups of information
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`bits contribute to different numbers of parity bits,” Ex. 1206, ¶59. Specifically, he
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`explained that POSAs would understand Luby to teach assigning message
`- 18 -
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`nodes—which are made up of information bits and parity bits—a higher degree than
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`check nodes. Ex. 2033, 175:16-177:11. And, in the examples disclosed in Luby,
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`e.g., Ex. 1204, 256, there are an insufficient number of high-degree message nodes
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`to assign all information bits a single degree, thereby requiring that some
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`information bits are repeated irregularly.
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`Prof. Davis’s testimony regarding the Frey reference covers over seventy
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`pages of the deposition transcript. Ex. 2033, 96:5-166:18. Caltech attacks
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`Prof. Davis for not addressing certain aspects of Frey is his declaration—e.g.,
`
`puncturing, error floor. POR, 12-13. But those aspects were irrelevant to Prof.
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`Davis’s analysis.
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`Caltech argues that Dr. Davis “repeatedly contended that [Luby] does not
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`define what it mean by ‘irregular’ despite Luby’s express statement to the contrary.”
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`Id., 13. Yet, Caltech does not recite Luby’s alleged “express statement to the
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`contrary.” And, a review of the page cited by Caltech—i.e., Ex. 1204, 249—comes
`
`up empty. As Dr. Davis accurately testified, “Luby never gives an explicit definition
`
`of what he means by irregular.” Ex. 2033, 181:10-11. Instead, Luby “gives intuition
`
`about what that is and he give examples of what those are, but, in terms of having an
`
`exact definition, we don’t have that.” Id., 183:5-9.
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`Caltech’s criticism of Prof. Davis’s example of modifying an RA code to
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`make it irregular by repeating certain information bits twice misses the mark. POR,
`- 19 -
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`
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`13; Ex. 1206, ¶¶132-124. Divsalar’s statement regarding the minimum number of
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
`
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`repeats necessary in his regular codes is irrelevant to these irregular codes.
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`Caltech’s argument that Prof. Davis’s declaration is entitled to little weight
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`due to similarities to the Petition or an earlier expert report are equally misguided.
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`POR, 14-15. Caltech first misrepresents the Board’s decision in Wowza Media
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`Systems, LLC v. Adobe Systems, Inc. in which the Board afforded an expert
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`declaration little weight because it included the same deficiencies as the petition.
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`See IPR2013-00054, Paper 12, 12 (2013). Here, the Petition tracks Prof. Davis’s
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`declaration because the declaration clearly lays out the case for unpatentability. Any
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`similarity between the earlier Frey report and Dr. Davis’s declaration is due to the
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`fact that they address the same subject, background of the patents and invalidity of
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`the claims.
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`Caltech’s claim that Prof. Davis was “unresponsive” to questions related to
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`puncturing is contradicted by the very transcript Caltech cites. POR, 16 (citing Ex.
`
`2033, 152:12-159:14). Prof. Davis testified that if puncturing were removed from a
`
`specific example in Frey the rate of the code would go down, Ex. 2033, 153:9-154:5;
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`requested additional information when counsel struggled to craft a hypothetical
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`- 20 -
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`
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`U.S. Patent No. 7,116,710
`Apple v. California Institute of Technology
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`scenario, id., 154:6-159:8; and testified that “[i]f you stop puncturing . . . the rate of
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`the code will go down” when given that information, id., 159:9-14.4
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`Caltech’s accusation of “shenanigans” during the deposition is baseless and
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`unsupported by the record. POR, 16. Caltech’s counsel had an opportunity to ask
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`Prof. Davis questions regarding what, if anything, was discussed during breaks.
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`However, Caltech’s counsel chose to ask no questions and having forgone that
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`opportunity cannot now complain. In any event, counsel did not instruct Prof. Davis
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`to change his approach to answering questions.
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`C. Caltech Fails to Antedate Frey.
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`In IPR2017-00210 Caltech attempts to disqualify Frey as prior art.
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`(IPR2017-00210 POR, 13-17.) While Caltech does not pursue the same argument in
`
`its POR in this proceeding, it did file a declaration from named inventor Jin that
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`relates largely to the alleged conception and reduction to practice of the ’710 patent.
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`Because the Petition uses Frey as evidence of a motivation to combine Luby and
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`Divsalar, Petitioner addresses Caltech’s argument here.
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