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`Paper No. ___
`Filed: March 19, 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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`_____________________________
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`APPLE INC.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2017-00219
`Patent No. 7,116,710
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`_____________________________
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`PATENT OWNER’S SURREPLY
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`TABLE OF CONTENTS
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`I.STATEMENT OF PRECISE RELIEF REQUESTED .......................................... 1
`II.ARGUMENT ...................................................................................................... 1
`A.
`Luby does not teach irregular repetition of information bits ................ 1
`B.
`hindsight, and the corresponding argument unavailing........................ 3
`C.
`The proposed combination does not disclose “partitioning” ................ 5
`D.
`Caltech does not bear the burden of proving no motivation................. 5
`E.
`Reasonable expectation of success was never addressed ..................... 7
`The new experimental data should be rejected .................................... 7
`F.
`III.CONCLUSION .................................................................................................. 8
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`The attorney-generated graphs are erroneous and tainted with
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`In view of new argument and evidence submitted in Petitioner’s Reply
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`briefing, the Board (Papers 50, 52, 54) authorized a short sur-reply but prohibited
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`submission of rebuttal evidence. The Reply materials are replete with untimely and
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`improper new argument and evidence—including submission of new data,
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`attorney-generated Tanner graphs, and a declaration from a new witness. The
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`Reply (2) provides no reasonable justification for replacing Dr. Davis with a new
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`witness. Dr. Davis was aware of his Fulbright commitment since at least February
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`2017 and he testified he remains available for deposition in the U.S. EX1056, ¶3.
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`Accordingly, the Reply materials should be disregarded and given no weight.
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`II. ARGUMENT
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`A. Luby does not teach irregular repetition of information bits
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`The Petition presented the misguided theory that “the irregularity of Luby”
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`could be incorporated into the RA codes by modifying Divsalar’s repeater. See,
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`e.g., Pet. 37, 46. The POR explains, inter alia, that (1) the “irregularity of Luby”
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`refers to a bipartite graph in which the codeword is irregular (repetition of
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`information bits is a fundamendally different concept); (2) Divsalar’s codeword
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`already exhibits “irregularity of Luby”; and (3) modifying the repeater would not
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`affect the codeword’s irregularity. E.g., EX2004 ¶¶84-86; POR 2, 19-26.
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`The Reply (1-3) asserts for the first time that Luby teaches irregular
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`repetition of information bits. This is an improper shift away from the case in the
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`petition. Moreover, the contention is wrong, relying on flawed analysis, wholly
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`unsupported assumptions and a linguistic shell game to confuse the terminology.
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`First, Petitioner fails to acknowledge that its original expert Dr. Davis flatly
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`conceded that Luby does not disclose irregular repetition of information bits.
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`EX2033 196:2-198:15 (testifying, e.g., that a message node’s degree “doesn’t
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`answer the question of whether that information bit is repeated or not”).
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`Beyond that, the entire argument is based on the faulty assumption that
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`“Luby’s codewords contain 8,000 information bits and 8,000 parity bits.” Reply 1.
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`The statement is a conclusory and unexplained nonsequitur to the preceding
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`citation to Luby, which refers neither to parity bits or information bits. And the
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`Reply neglects to mention that Dr. Mitzenmacher (a co-author of Luby)
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`specifically rejected the assertion at his deposition. EX1262 215:21-217:25; see
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`also, EX2004 ¶77; EX1204, 256 (“We do not perform an actual encoding, but
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`instead … use an initial message consisting entirely of zeroes.”). To the extent the
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`Reply is conflating “check bits” with “parity bits,” Dr. Mitzenmacher explained
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`this is erroneous. EX1262 216:25-217:21. Of course, the Reply forces Caltech and
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`the Board to speculate as to the basis of its stated assumption since no reason for
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`the conclusion is ever given. But the petitioner bears the unshifting burden of
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`proof, and the entire argument collapses absent the unfounded assumption of 8,000
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`information bits in Luby’s codeword.
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`-2-
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`The Reply (2-3) argues that Luby discloses irregular repetition because “a
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`POSA [would] preferentially use higher degrees for information bits.” Again, this
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`relies on the erroneous assumption that Luby discloses codewords containing 8,000
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`parity bits and 8,000 information bits (see above).1 And Dr. Mitzenmacher rebutted
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`this hypothetical during his deposition, explaining that it would not be beneficial,
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`and likely harmful, to preferentially resolve information bits relative to parity bits
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`because the entire codeword must still be decoded. EX1262 232:25-233:22.
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`B.
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`The attorney-generated graphs are erroneous and tainted with
`hindsight, and the corresponding argument unavailing
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`Divsalar’s code already has variance in its codeword (i.e., “the irregularity
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`of Luby”) and modifying Divsalar’s repeater would have no effect on its codeword
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`variance—this is plainly evident in the modified Khandekar graph in the petition.
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`EX2004 ¶¶85-86; POR 28-29, 40-41. The Reply (3-5) offers no response on this
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`point.2 Besides repeating the same misguided assertion about changing the
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`1 The Reply (2-3) also confuses the terms “message bits” with “information
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`bits.” The “message bits” in Luby are different than information bits. EX2004 ¶76;
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`EX2033 190:1-6; EX1264 152:20-153:6. Moreover, the whole notion of
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`“preferential assignment” in the Reply argument is fundamentally at odds with
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`Luby’s “randomly choosen graphs.” EX1204 249.
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`2 The Reply (11) statement that accumulators were known is nonresponsive.
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`-3-
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`repeater (which would not affect codeword irregularity), the Reply offers new
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`attorney-created graphs and nonsensical commentary.
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`As an initial matter, the graphs (Reply 5: EX1246, 1247 as well as EX1257,
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`1258) are not in the petition and should be rejected as untimely new argument.
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`Even if considered, simply because Petitioner’s lawyers generated similarly-styled
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`graphs in preparing the Reply in no way demonstrates that the underlying codes
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`would have been combined 18 years ago or that a POSA would have expected such
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`a modification to be successful in improving error-correction. Moreover, the logic
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`in the Reply (5) argument—i.e., that a POSA would desire circles on the left side
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`of one graph to look more like circles on the left side of a different graph—is
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`flawed. The Reply compares different “circles” representing different elements.
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`Luby’s “message nodes” refer to the codeword bits—which for EX1246 are the
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`nodes on the right labelled “X1…” This is a nonsensical argument based on
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`attorney generated graphs, not the logic of a POSA.
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`Furthermore, the new exhibits are tainted with impermissible hindsight.
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`Prior to Caltech’s IRA patents, Tanner graphs were conventionally presented as
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`bipartite graphs depicting the relationship between a codeword and parity check
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`equations. See, e.g., Fig. 2 of Luby (EX1204 253); see also EX2004 ¶40; EX1206
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`¶¶55-56; EX1264 81:6-23. Caltech’s inventors used Tanner graphs in a novel way
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`to illustrate an encoding process. See ’710 patent, Fig. 3; EX2031 ¶15. Petitioner
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`-4-
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`provides no evidence that a POSA would have applied Caltech’s novel Tanner
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`graph representation to any code at the time.
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`In addition to the improper new graphs, the Reply (3-4) falsely claims that
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`applying Luby’s “fundamental teachings” would result in irregular repetition. But
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`Luby’s fundamental teaching is that its codeword bits have irregular degrees.
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`EX2004 ¶63; EX204 249. To the extent the Reply presents “the irregularity of
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`Luby” as some abstract concept, that is unsupported by the reference and a notion
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`soundly rejected by Dr. Mitzenmacher. See, e.g., EX1262 249-250.
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`Moreover, Frey (Reply 6) does not save the day for Petitioner. Frey presents
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`a non-enabling disclosure that, if anything, establishes that finding irregular
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`repetition was a difficult and unpredictable parameter. EX2004 ¶¶65-69.
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`C. The proposed combination does not disclose “partitioning”
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`The Reply (6-7) now argues that it is not making an inherency argument
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`with regard to “partitioning.” Yet, the Reply continues to claim that “irregular
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`repetition ‘de facto’ causes partitioning,” which could not be interpreted as
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`anything but an inherency theory. Id. Dr. Mitzenmacher’s testimony on this point
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`remains unrebutted. POR 29-30; EX2004 ¶ 94; EX1062 376:8-21. The Reply(7) is
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`wrong to make it Caltech’s burden to show his example is “practical or likely,” and
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`Petitioner’s suggestions of probabilities and possibilities are insufficient.
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`D. Caltech does not bear the burden of proving no motivation
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`-5-
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`Remarkably, the Reply (8-11) argues that “Caltech has failed to show that a
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`POSA would not have combined Divsalar and Luby.” But the petitioner bears the
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`unshifting burden of demonstrating unpatentability—the burden is not on Caltech.
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`The Reply (9, bottom of 10) states that “Divsalar could be made irregular.”
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`While the assertion correctly characterizes Petitioner’s obviousness theory, the
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`assertion is factually misguided and legally irrelevant. See, e.g., EX1262 240:19-
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`241:21; EX2031 at, e.g., ¶¶33-37; EX1264 60:1-21. Petitioner clings to assertions
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`of “could have” and the conceptually “simple,” but never establishes that a POSA
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`would have so modified Divsalar with any reasonable expectation of success.
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`The Reply (12) mischaracterizes “the basis” of Dr. Divsalar’s testimony and
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`misses the point—there is no reason why. Modifying Divsalar’s RA code to add
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`irregular repetition would have been adding complexity without expected benefit
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`(or even expectation the code would function). EX2031¶¶33-35; EX1264 60:1-21
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`(“[H]ypothetically someone can … do anything crazy. But there should be some
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`motivation by doing so.”). One of issues with Petitioner’s modification identified
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`by Dr. Divsalar (not “the basis”) was further slowing an already slow RA code.
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`Petitioner’s pivot to a new RA code modification theory underscores the point. The
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`petition originally proposed a modified RA code with a 1/3 rate (where q=3 on
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`average), whereas the new theory proposes a modified RA code with a much
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`slower 1/5 rate (where q=5 on average). And the Reply wholly ignores that Luby’s
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`-6-
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`codes had a rate of ½. EX1204, 256.
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`E. Reasonable expectation of success was never addressed
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`The POR (3-4, 18-19, 44-45) points out that the petition materials wholly
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`lack discussion of reasonable expectation of success or the (now conceded)
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`unpredictability in the field. As such, any discussion of reasonable expectation of
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`success presented in the Reply is improperly new and should be ignored. 37 C.F.R.
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`§42.23(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48767 (Aug. 14, 2012).
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`F.
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`The new experimental data should be rejected
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`The new experimental data (EX1268) and corresponding testimony
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`(EX1265) and argument (Reply 10) should be disregarded for a number of reasons.
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`First, the material is improper as presenting an entirely new theory of
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`unpatentability. The petition only proposed modifying a repeat-three RA code to
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`one in which information bits are repeated 2 and 4 times, which Caltech addressed
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`in detail (e.g., POR 39-44). Petitioner now abandons this theory and pivots to a
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`new one—repeating information bits 3 and 7 times. Reply 10.
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`Second, the experimental data materials are not contemporaneous with the
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`“relevant time” and are irrelevant to the understanding of a POSA. It is completely
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`irrelevant what Dr. Frey claims he can do in the year 2018 when armed with
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`Caltech’s patent disclosures and publications, Dr. Jin’s original coding work,
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`contemporary resources (e.g., Dr. Frey (¶51) used Matlab, a software program that
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`-7-
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`received over 35 version updates since May 2000), and 18 years of post-filing date
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`knowledge. Dr. Frey’s testimony presents zero reflection of the environment in
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`1999-2000, and provides no information as to why a POSA would make the
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`proposed modification 18 years ago or reasonably expected success at that time.
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`If surreply evidence was permitted, Caltech’s witnesses would have been
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`able to provide rebuttal testimony explaining the data’s unreliability—including
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`numerous technical flaws, evident cherry-picking of parameters, and unexplained
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`selection of a single degree profile that in no way flows from any art reference at
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`issue in this case. For example, the Reply materials provide no justification for the
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`Eb/No Gaussian noise parameters highlighted in ¶47 of Dr. Frey’s declaration (-
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`.8, .1, .8). And there is a disconnect between the identified simulation parameters
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`and the “plot” depicted in the graphs in ¶53 (data points between Eb/No 0.2 and
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`0.8). While the “plot” in ¶53 forms the basis of Petitioner’s comparison, the origin
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`of the plotted points is entirely unknown and inconsistent with the identified
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`simulation parameters (¶53 does not even assert the “plot” was generated from the
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`identified simulation). EX1068 is misleadingly presented as a single document
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`when it is, in fact, an amalgamation of five independent documents. The new data
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`is untimely, unexplained, unreliable and fails to comply with 37 C.F.R. §42.65.
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`III. CONCLUSION
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`Accordingly, the Reply materials should be given no weight.
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`-8-
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`Date: March 19, 2018
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-9-
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Surreply was served on this 19th
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`day of March, 2018, on the Petitioner at the electronic service addresses of the
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`Petitioner as follows:
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`
`Richard Goldenberg
`Dominic Massa
`Michael H. Smith
`James M. Dowd
`Mark D. Selwyn
`Arthur Shum
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`james.dowd@wilmerhale.com
`mark.selwyn@wilmerhale.com
`arthur.shum@wilmerhale.com
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`Date: March 19, 2018
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-10-
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