Case No. IPR2017-00219
`Docket No.: 1033300-00287US3
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Apple Inc.,
`Petitioner
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`v.
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`California Institute of Technology,
`Patent Owner
`________________________
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`IPR2017-00219
`Patent No. 7,116,710
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`__________________________
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`PETITIONER’S NOTICE OF APPEAL
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`Docket No.: 1033300-00287US3
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`Apple Inc.,
`Petitioner
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`v.
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`California Institute of Technology,
`Patent Owner
`________________________
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`IPR2017-00219
`Patent No. 7,116,710
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`__________________________
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`PETITIONER’S NOTICE OF APPEAL
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`Case No. IPR2017-00219; Docket No.: 1033300-00287US3
`Petitioner’s Notice of Appeal
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, VA 22314-5793
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`Pursuant to 35 U.S.C. §§ 141-44 and 319, and 37 C.F.R. § 90.2-90.3, notice
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`is hereby given that Petitioner Apple Inc. appeals to the United States Court of
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`Appeals for the Federal Circuit from the Final Written Decision entered
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`December 27, 2018 (Paper 76) in IPR2017-00219 (Exhibit A), and all prior and
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`interlocutory rulings related thereto or subsumed therein.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates
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`that the issues on appeal include, but are not limited to, whether the Patent Trial
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`and Appeal Board erred in determining that Petitioner had not established by a
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`preponderance of the evidence that claims 1–8 and 11–14 of the ’710 patent would
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`have been obvious over the combination of Divsalar and Luby; and that claims 15–
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`17, 19–22, and 24–33 of the ’710 patent would have been obvious over the
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`combination of Divsalar, Luby, and Luby97; and any finding or determination
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`supporting or related to those issues, as well as all other issues decided adversely to
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`Petitioner in any orders, decisions, rulings, and opinions.
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`Pursuant to 37 C.F.R. § 90.3, this Notice of Appeal is timely, having been
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`duly filed within 63 days after the date of the Final Written Decision.
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`Case No. IPR2017-00219; Docket No.: 1033300-00287US3
`Petitioner’s Notice of Appeal
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`A copy of this Notice of Appeal is being filed simultaneously with the Patent
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`Trial and Appeal Board, the Clerk’s Office for the United States Court of Appeals
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`for the Federal Circuit, and the Director of the Patent and Trademark Office.
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`Date: February 22, 2019
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` Respectfully submitted,
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`/Michael Smith/
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`Michael H. Smith
`Registration No. 71,190
`Counsel for Petitioner
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`Case No. IPR2017-00219; Docket No.: 1033300-00287US3
`Petitioner’s Notice of Appeal
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
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`addition to being filed electronically through the Patent Trial and Appeal Board’s
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`End to End (PTAB E2E), a true and correct original version of the foregoing
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`Petitioner’s Notice of Appeal is being filed by Express Mail (Express Mail Label
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`EF 183495769 US) on this 22nd day of February 2019, with the Director of the
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`United States Patent and Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 37 C.F.R. § 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
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`Rule 52(a),(e), I hereby certify that a true and correct copy of the foregoing
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`Petitioner’s Notice of Appeal is being filed in the United States Court of Appeals
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`for the Federal Circuit using the Court’s CM/ECF filing system on this 22nd day of
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`February 2019, and the filing fee is being paid electronically using pay.gov.
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`Case No. IPR2017-00219; Docket No.: 1033300-00287US3
`Petitioner’s Notice of Appeal
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`I hereby certify that on February 22, 2019 I caused a true and correct copy of
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`the Petitioner’s Notice of Appeal to be served via e-mail on the following attorneys
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`of record:
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`Michael Rosato (mrosato@wsgr.com)
`Matthew Argenti (margenti@wsgr.com)
`Richard Torczon (rtorczon@wsgr.com)
`Kevin P.B. Johnson (kevinjohnson@quinnemanuel.com)
`Todd M. Briggs (toddbriggs@quinnemanuel.com)
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`/Michael Smith/
`____________________
`Michael H. Smith
`Registration No. 71,190
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`ii
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`Case No. IPR2017-00219; Docket No.: 1033300-00287US3
`Petitioner’s Notice of Appeal
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`EXHIBIT A
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`ActiveUS 171503316
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`Trials@uspto.gov
`571-272-7822
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` Paper 76
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` Entered: December 27, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
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`Case IPR2017-00219
`Patent 7,116,710 B1
`____________
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`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
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`JEFFERSON, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2017-00219
`Patent 7,116,710 B1
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`I.
`INTRODUCTION
`Petitioner, Apple, Inc. (“Apple”), filed a Petition (Paper 5, “Pet.”)
`requesting an inter partes review of claims 1–8, 10–17, and 19–33 of U.S.
`Patent No. 7,116,710 B1 (Ex. 1201, “the ’710 patent”) pursuant to 35 U.S.C.
`§§ 311–319. Patent Owner, California Institute of Technology (“Caltech”),
`filed a Preliminary Response (Paper 16, “Prelim. Resp.”) to the Petition.
`We instituted an inter partes review on claims 1–8, 11–17, 19–22, and
`24–33 of the ’710 patent on certain grounds of unpatentability presented.
`(Paper 17, “Inst. Dec.”). Caltech filed a Patent Owner Response (Paper 34,
`“PO Resp.”), and Apple filed a Petitioner Reply (Paper 45, “Pet. Reply”).
`Caltech also filed a Sur-Reply (Paper 61, “PO Sur-Reply”), as was
`authorized by our Order of March 2, 2018 (Paper 54). An oral hearing was
`held on April 19, 2018, and a transcript of the hearing is included in the
`record. Paper 71 (“Tr.”).
`Petitioner filed a Declaration of James A. Davis, Ph.D. (Ex. 1206)
`submitted with its Petition and a Declaration of Brendan Frey, Ph.D.
`(Ex. 1265) submitted with its Petitioner’s Reply. Patent Owner filed
`Declarations of Dr. Dariush Divsalar (Ex. 2031) and Dr. Michael
`Mitzenmacher (Ex. 2004) with its Response.
`As authorized in our Order of February 10, 2018 (Paper 47), Patent
`Owner filed a motion for sanctions (Paper 49) related to Petitioner’s cross-
`examination of Patent Owner’s witnesses, Dr. Mitzenmacher and
`Dr. Divsalar, and Petitioner filed an opposition (Paper 51).
`In light of the U.S. Supreme Court’s decision in SAS Institute, Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), we modified our Institution Decision to
`institute on all of the challenged claims and all of the grounds. Paper 68.
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`Subsequently, the parties filed a joint motion to limit the Petitions to the
`claims and grounds that were originally instituted. Paper 70. We granted
`their motion. Paper 72. As a result, the remaining instituted claims and
`grounds are the same as they had been at the time of the Institution Decision.
`See id. at 2.
`The one-year period normally available to issue a Final Written
`Decision was extended under 37 C.F.R. § 42.100(c). Paper 74, 1–2.
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1–8, 11–17, 19–22, and 24–33 of the ’710 patent. For the reasons
`discussed below, Petitioner has not demonstrated by a preponderance of the
`evidence that claims that claims 1–8, 11–17, 19–22, and 24–33 are
`unpatentable.
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`A. Related Proceedings
`The parties indicate that the ’710 patent was involved in the following
`active case, Cal. Inst. of Tech. v. Broadcom Ltd., No. 2:16-cv-03714 (C.D.
`Cal. filed May 26, 2016), and in concluded cases, Cal. Inst. of Tech. v.
`Hughes Commc’ns, Inc., No. 2:15-cv-01108 (C.D. Cal. filed Feb. 17, 2015);
`and Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., 2:13-cv-07245 (C.D. Cal.
`filed Oct. 1, 2013). Pet. 3, Paper 8, 2–3.
`The parties also identify co-pending case IPR2017-00210, in which
`Apple filed a petition for inter partes review of the ’710 patent. Pet. 3;
`Paper 8, 2–3. The Board previously denied petitions for inter partes review
`of the ’710 patent in Hughes Network Sys. v. Cal. Inst. of Tech., Case
`IPR2015-00067 (PTAB April 27, 2015) (Paper 18) (“IPR2015-00067”) and
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`Patent 7,116,710 B1
`Hughes Network Sys. v. Cal. Inst. of Tech., Case IPR2015-00068 (PTAB
`April 27, 2015) (Paper 18) (“IPR2015-00068”). Finally, certain patents
`related to the ’710 patent were challenged in IPR2015-00059, IPR2015-
`00060, IPR2015-00061, and IPR2015-00081. Pet. 3. A Final Written
`Decision cancelling claims 1 and 2 of U.S. Patent No. 7,916,781 B2 was
`issued in Hughes Network Sys. v. Cal. Inst. of Tech., Case IPR2015-00059
`(PTAB April 21, 2016) (Paper 42).
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`B. The ʼ710 Patent
`The ’710 patent describes the serial concatenation of interleaved
`convolutional codes forming turbo-like codes. Ex. 1201, Title. It explains
`some of the prior art with reference to its Fig. 1, reproduced below.
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`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:
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`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
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`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.
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`Figure 2 of the ’710 patent is a schematic diagram of coder 200. Id. at 2:16–
`17.
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`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
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`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 then-bit output block x can be written as x=TIw,
`where TI is a nonsingular n×n matrix. The inner coder 210 can
`have a rate that is close to 1, e.g., within 50%, more preferably
`10% and perhaps even more preferably within 1% of 1.
`Id. at 2:41–64 (emphasis omitted). Codes characterized by a regular repeat
`of message bits into a resulting codeword are referred to as “regular repeat,”
`whereas codes characterized by irregular repeat of message bits into a
`resulting codeword are referred to as “irregular repeat.” The second
`(“inner”) encoder 206 performs an “accumulate” function. Thus, the two
`step encoding process illustrated in Figure 2, including a first encoding
`(“outer encoding”) followed by a second encoding (“inner encoding”),
`results in either a “regular repeat accumulate” (“RRA”) code or an “irregular
`repeat accumulate (“IRA”) code, depending upon whether the repetition in
`the first encoding is regular or irregular.
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`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.
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`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.
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`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, 3:25. The LDGM coder “performs an irregular repeat of the k
`bits in the block, as shown in FIG. 4.” Id. at 3:52–54. 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.
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`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.
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`Patent 7,116,710 B1
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`C. Challenged Claims
`We instituted challenges on claims 1–8, 10–17, and 19–33 of the
`’710 patent, of which claims 1, 11, 15, and 25 are independent. Inst.
`Dec 25; Pet. 21. Claims 1, 3, and 11 are illustrative and 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.
`3.
`The method of claim 1, wherein said first encoding is
`carried out by a first coder with a variable rate less than one, and
`said second encoding is carried out by a second coder with a rate
`substantially close to one.
`11. A method of encoding a signal, comprising:
`receiving a block of data in the signal to be encoded, the
`data block including a plurality of bits;
`first encoding the data block such that each bit in the data
`block is repeated and two or more of said plurality of bits are
`repeated a different number of times in order to form a first
`encoded data block; and
`second encoding the first encoded data block in such a way
`that bits in the first encoded data block are accumulated.
`Ex. 1201, 7:14–25, 7:28–31, 7:50–59.
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`Patent 7,116,710 B1
`D. The Remaining Grounds of Unpatentability
`The following instituted grounds remain at issue in this case (Inst.
`Dec. 25; Paper 72, 2):
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`Claim(s) Challenged
`1–8 and 11–14
`15–17, 19–22, and 24–33
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`References
`Basis
`Divsalar3 and Luby4
`§ 103(a)
`Divsalar, Luby, and Luby975
`§ 103(a)
`II. ANALYSIS
`A. Claim Interpretation
`Because this inter partes review is based on a petition filed before
`November 13, 2018, we construe the claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b)
`(2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). In applying a broadest reasonable construction, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). Any special definition for a claim term must be set forth in
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`3 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. 1203, “Divsalar”).
`4 “Luby, M., et al, Analysis of Low Density Codes and Improved Designs
`Using Irregular Graphs, PROCEEDINGS OF THE THIRTIETH ANNUAL ACM
`SYMPOSIUM ON THEORY OF COMPUTING, May 23–26, 1997, at 249–258 (Ex.
`1204, “Luby”).
`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. 1211, “Luby97”).
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`the specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`1. “close to one” (claims 1 and 3)
`Petitioner argues that the broadest reasonable construction of “close to
`one” as recited in claims 1 and 3 is “within 50% of one.” Pet. 24–25.
`Petitioner argues that this is consistent with the ’710 patent specification,
`which states that the inner code 210 of Figure 1, “can have a rate that is
`close to one, e.g., within 50%, more preferably 10% and perhaps even more
`preferably within 1% of 1.” Pet. 24–25 (quoting Ex. 1201, 2:62–64 and
`citing Ex. 1206 ¶¶ 102–103) (emphasis omitted). Patent Owner does not
`provide an express claim construction in this proceeding. In related
`proceeding IPR2017-00210, Patent Owner argues that the term “close to
`one” does not require construction and that the ’710 patent explains that the
`rate of a coder is the number of input bits divided by the number of output
`bits. IPR2017-00210, Paper 35, 18.
`We determine that “close to one” as recited in the challenged claims is
`construed as “within 50% of one.”
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`B. Level of Ordinary Skill in the Art
`Petitioner cites Dr. Davis’s testimony that “[a] person of ordinary skill
`in the art is a person with a Ph.D. in mathematics, electrical or computer
`engineering, or computer science with emphasis in signal processing,
`communications, or coding, or a master’s degree in the above area with
`at least three years of work experience in this field at the time of the alleged
`invention.” Pet. 23 (citing Ex. 1206, ¶ 95). Patent Owner expresses no
`position on the level of ordinary skill in the art, but their declarant,
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`Dr. Mitzenmacher, applies the same standard advanced by Petitioner.
`Ex. 2004 ¶ 70.
` We determine that Petitioner’s proposed definition comports with the
`qualifications a person would have needed to understand and implement the
`teachings of the ’710 patent and the prior art of record. Accordingly, we
`apply Petitioner’s definition of the level of ordinary skill in the art.
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`C. Obviousness based on Luby and Divsalar: Claims 1–8 and 11–14
`Petitioner contends that claims 1–8 and 11–14 would have been
`obvious over the combination of Divsalar and Luby. Pet. 42–60 (citing
`Ex. 1206 ¶¶ 399–456). Patent Owner disputes Petitioner’s contentions. PO
`Resp. 19–47.
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`1. Divsalar
`Divsalar discloses “turbo-like” coding systems that are built from
`fixed convolutional codes interconnected with random interleavers,
`including both parallel concatenated convolutional codes and serial
`concatenated convolutional codes as special cases. Ex. 1203, 1. With fixed
`component codes and interconnection topology, Divsalar demonstrates that
`as the block length approaches infinity, the ensemble (over all possible
`interleavers) maximum likelihood error probability approaches zero, if the
`ratio of energy per bit to noise power spectral density exceeds some
`threshold. Id.
`The general class of concatenated coding systems is depicted in
`Figure 1 of Divsalar as follows:
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`Figure 1 illustrates that encoders C2, C3, and C4 are preceded by
`interleavers (permuters) P2, P3, and P4, except C1, which is connected to an
`input rather than an interleaver. Id. at 2–3. The overall structure must have
`no loops and, therefore, is called a “turbo-like” code. Id.
`Divsalar further discloses that “turbo-like” codes are repeat and
`accumulate (RA) codes. Id. at 5. The general scheme is depicted in
`Figure 3 as follows:
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`
`Figure 3 illustrates that information block of length N is repeated q
`times, scrambled by interleaver of size qN, and then encoded by a rate 1
`accumulator. Id. The accumulator can be viewed as a truncated rate-1
`recursive convolutional encoder. Id. Figure 3 further illustrates a simple
`class of rate 1/q serially concatenated codes where the outer code is a q-fold
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`repetition code and the inner code is a rate 1 convolutional code with a
`transfer function 1/(1+ D). Id. at 1, 5.
`2. Luby
`Luby discloses derivation of irregular random graphs that improve
`upon the performance of Gallager’s low-density parity-check (LDPC) codes,
`and finds that irregular codes described in the paper resulted in codes with
`improved error correcting capabilities. Ex. 1204, 257. Luby discloses that
`irregular codes are represented by random irregular bipartite graphs, while
`regular codes are represented using regular graphs derived from Gallager
`codes based on sparse bipartite graphs. Id. at 249.
`Luby discloses that irregular codes are those represented by bipartite
`graphs in which different message nodes have different degrees (i.e., where
`different message nodes are connected to different numbers of check nodes).
`Luby. Id. at 257. Luby further states that message nodes with high degree
`tend to correct their value quickly and then provide good information for
`check nodes. Id. at 253.
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`3. Analysis
`Petitioner contends that claims 1–8 and 11–14 would have been
`obvious over the combination of Divsalar and Luby. Pet. 34–55 (citing Ex.
`1206 ¶¶ 127–456). Petitioner contends that Luby was a significant advance
`in error-correcting codes using irregularity to design codes that were
`superior to regular codes. Id. at 34–35. Petitioner cites Frey,6 which credits
`Luby for providing motivation to study irregular codes, in particular citing
`
`6 Brendan J. Frey and David J.C. MacKay, Irregular Turbocodes,
`PROCEEDINGS OF THE 37TH ALLERTON CONFERENCE ON COMMUNICATION,
`CONTROL, AND COMPUTING (1999) at 241–248 (Ex. 1202, “Frey).
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`Luby’s advancements regarding irregular Gallager codes. Id. at 35 (citing
`Ex. 1202, 1 (discussing Luby as reference [1])). Petitioner notes that Luby
`is expressly discussed as motivation to incorporate irregularity into turbo-
`like codes, and identifies the codes in Divsalar as such turbo-like codes. Id.
`(citing Ex. 1206 ¶ 401). Petitioner argues that a person of ordinary skill
`following Frey “would have understood that incorporating irregularity into
`RA codes would be even more likely to produce favorable results. Id. at 36
`(citing Ex. 1206 ¶ 403). Petitioner also relies on the Khandekar thesis (Ex.
`1218), a thesis written by a co-inventor of the ’710 patent, to support the
`rationale to combine Divsalar and Luby. Pet. 35. Finally, Petitioner argues
`that a person of ordinary skill in the art would have combined Luby and
`Divsalar “for research” purposes to “study irregularity.” Id. at 36.
`Petitioner argues that incorporating irregularity into Divsalar’s RA
`codes would have been a simple matter, accomplished in a number of ways
`requiring minimal modification. Pet. 37–38. Petitioner argues that each of
`their proposed modifications would have been a routine matter for an
`ordinarily skilled artisan. Id.; Ex. 1206 ¶ 407.
`Patent Owner argues that Petitioner’s articulated rationale is
`insufficient to support the motivation to combine the Divsalar and Luby as
`Petitioner proposes. PO Resp. 30–47. Patent Owner first asserts that Luby
`does not teach irregular repetition of information bits because Luby’s
`irregularity is different than the ’710 patent’s irregular repetition of
`information bits. PO Resp. 26, 30–31; Ex. 2004 ¶¶ 96–97 (testimony from
`Dr. Mitzenmacher, a coauthor of Luby reference, distinguishing the
`irregularity discussed in Luby from the irregularity of the ’710 patent).
`Thus, Patent Owner argues that Luby would not have motivated a person of
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`IPR2017-00219
`Patent 7,116,710 B1
`ordinary skill to modify Divsalar. PO Resp. 31–32. Indeed, Petitioner’s
`expert, Dr. Davis, struggled to define irregularity as it was used in Luby and
`could not determine whether Luby’s irregularity was depicted in an example
`from his own testimony. Id. (citing Ex. 2033 181:4–183:9; 194:4–18).
`Patent Owner also argues that “[g]iven the limited scope of Luby’s findings,
`a [person of ordinary skill in the art] would not be motivated to modify
`Divsalar in any way based on Luby.” PO Resp. 33 (citing Ex. 2004 ¶¶ 98–
`100). Patent Owner further asserts that “there was nothing simple about
`developing improved error-correcting codes, and many advancements in the
`field were the product of laborious experimentation and surprising,
`unexpected and unpredictable results.” PO Resp. 37 (citing Ex. 2004 ¶¶ 46,
`49–50, 53, 104–107); see also Ex. 2031 ¶¶ 9–13, 33–34.
`Finally, Patent Owner argues that the petition fails to make a
`sufficient showing that the obviousness combination would have had a
`reasonable expectation of success. PO Resp. 44–45 (citing Intelligent Bio-
`Sys. v. Illumina Cambridge, 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)).
`Patent Owner asserts that the evidence shows “that developing error-
`correction codes that showed an improvement was challenging and
`unpredictable.” PO Resp. 45 (citing Ex. 2004 ¶¶ 116–117; Ex. 2033,
`256:21–257:12; Ex. 2031 ¶ 33–35). Indeed, Patent Owner presents
`persuasive argument and evidence that the combinations proposed by
`Petitioner would not have been simple substitutions or modifications with a
`reasonable expectation of success. PO Resp. 45–47.
`We agree with Patent Owner that Petitioner has not established that an
`ordinarily skilled artisan reasonably would have expected success from the
`combination of Divsalar and Luby. See PO Resp. 44–45. We also agree
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`IPR2017-00219
`Patent 7,116,710 B1
`with Patent Owner that neither Frey (Ex. 1202) nor the Khandekar thesis
`(Ex. 1218) sufficiently or persuasively support modifications to Divsalar in
`view of Luby or a reasonable expectation of success in making those
`modifications. PO Resp. 35–37, 39–44.
`The Khandekar thesis (Ex. 1218) fails to support the combination of
`references. Petitioner provides no arguments or evidence that explains how
`the thesis supports its contention about how or why a person of ordinary skill
`in the art would have modified or combined Luby and Divsalar at the time of
`the ’710 patent. Moreover, Petitioner has not explained adequately why or
`how the thesis of a co-inventor of the ’710 patent, which postdates the
`’710 patent’s priority date, is timely corroborating evidence of how a person
`of ordinary skill in the art would have applied Luby’s teachings to Divsalar
`at the time of patenting. See Pet. 45; Inst. Dec. 25. We also find Petitioner’s
`argument and evidence regarding research motivating the combination to be
`vague and not supported adequately by the declarant testimony (Ex. 1206
`¶ 405).
`With respect to Frey,7 Patent Owner argues that Frey did not show
`superior results for all error codes, and instead showed that most irregular
`codes were inferior to other codes. PO Resp. 36–37; Ex. 2004 ¶¶ 102–103.
`Patent Owner contends that a person of skill in the art would not have been
`motivated to apply aspects of Frey with a reasonable expectation of success
`
`
`7 Patent Owner’s contention that Frey is not a prior art publication (PO Resp.
`36) is not persuasive. Our Final Written Decision in IPR2017-00210
`considered and rejected Patent Owner’s argument that the ’710 patent
`inventors conceived and reduced the ’710 patent invention before the
`March 20, 2000, publication date of Frey. IPR2017-00210, Paper 77.
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`IPR2017-00219
`Patent 7,116,710 B1
`based on Frey only showing improvement in one out of nine profiles. PO
`Resp. 37. We are persuaded by Patent Owner’s arguments that Petitioner’s
`reliance on Frey to does not cure the Petitioner’s deficiencies in addressing a
`reasonable expectation of success.
`Petitioner’s argument in response acknowledges the missing
`expectation of success evidence by turning to the experimental nature of the
`field as being routine practice. Pet. Reply 9. Petitioner states that
`[a]s [Patent Owner] concedes, rigorous mathematical analysis of
`codes is difficult, and, as a result, POSAs routinely developed
`codes by experimentation. POR, 2. Encouraged by Luby’s
`results, a POSA would have been motivated to use Luby’s
`irregularity in Divsalar. The Petition showed that POSAs would
`have had an expectation of success because it was simple to
`modify Divsalar to repeat information bits different numbers of
`times, which meets the limitations of the claimed invention. Pet.,
`37-41. . . . Dr. Mitzenmacher agreed that that [simply] repeating
`some bits in Divsalar “q+10” times and others “q” times would
`make the code irregular. Ex. 1262, 153:11-154:8.
`Pet. Reply 9–10 (emphasis added). To support this contention, Petitioner
`introduces new testimony and simulations from a new declarant, Dr. Frey, to
`confirm that using Frey’s irregularity in Divsalar would not have been
`difficult and would have yielded a reasonable expectation of success. Id. at
`10–11 (citing Ex. 1265).
`Even if we were to deem the testimony and simulation from Dr. Frey
`to be within the proper scope of a reply brief,8 they do not support a
`reasonable expectation of success at the time of the invention. We agree
`
`
`8 We need not reach this issue, because we do not rely on this evidence in a
`manner adverse to Patent Owner. See infra § III.A. (dismissing Patent
`Owner’s Motion to Exclude as moot on the same basis).
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`IPR2017-00219
`Patent 7,116,710 B1
`with Patent Owner that “[i]t is completely irrelevant what Dr. Frey claims he
`could do in the year 2018 when armed with Caltech’s patent disclosures and
`publications, [the inventor’s] original coding work, contemporary resources,
`(e.g., Dr. Frey (¶51) used Matlab, a software program that received over 35
`version updates since May 2000), and 18 years of post-filing date
`knowledge” PO Sur-Reply 7. Because this evidence is not tied to the state
`of the art at the time of the invention, it is not probative of anticipated
`success. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1367
`(Fed. Cir. 2017) (quoting Interconnect Planning Corp. v. Feil, 774 F.2d
`1132, 1138 (Fed. Cir. 1985)) (“Those charged with determining compliance
`with 35 U.S.C. § 103 are required to place themselves in the minds of those
`of ordinary skill in the relevant art at the time the invention was made, to
`determine whether that which is now plainly at hand would have been
`obvious at such earlier time.” (emphasis added)).
`As part of our obviousness analysis, we consider “the scope and
`content of the prior art.” See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). In this regard, we credit Patent Owner’s testimony and evidence that
`an important aspect of the art in this case is the relative unpredictability of
`developing error-correction codes. See PO Resp. 5–6, 45–46 (citing Ex
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