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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`APPLE INC.,
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`Petitioner
`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
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`Patent Owner.
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`—————————————————
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`Case IPR2017-00219
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`U.S. Patent No. 7,116,710
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`—————————————————
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`PETITIONER’S OPPOSITION TO
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`PATENT OWNER’S MOTION TO EXCLUDE
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`

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`Case IPR2017-00219
`U.S. Patent No. 7,116,710
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` Table of Contents
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`Introduction .......................................................................................................... 1 
`I. 
`II.  Argument ............................................................................................................. 2 
`A.  Exs. 1244-1249, 1257-1261, 1262, 1264, 1265, and 1268: Caltech’s
`Argument That These Are “New Evidence” For “New Arguments” Should Be
`Rejected .................................................................................................................. 2 
`B.  Exs. 1244-1249, 1257-1261, 1265, and 1268: Caltech’s Claim To
`Prejudice Should Be Rejected Because (1) The Board Is Well Suited To Assign
`The Proper Weight to Evidence, (2) Caltech Has Had Ample Opportunity To
`Respond, and (3) Caltech Can Still Respond In Its Sur-Replies And Oral Hearing
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`7 
`C.  Exs. 1232-1234 and 1237: Supplemental Information Was Timely And
`Admissible Because It Was Properly Filed In Accordance With A Board Order
`And Supports The Position Taken In The Petition ................................................ 9 
`D.  Caltech’s Insinuations Regarding The Veracity Of Dr. Davis’s
`Unavailability Are Baseless And Rebutted By Sworn Testimony ....................... 12 
`E.  Caltech Chose Not To Depose Dr. Frey And Faces No Prejudice Because
`Dr. Frey Agreed With Dr. Davis’s Testimony, Considered Caltech’s Criticisms,
`And Stood Available For Cross-Examination ...................................................... 12 
`F.  There Is No Cause To Exclude Ex. 1267 Because The Board Can Assign The
`Appropriate Weight To It ..................................................................................... 13 
`G.  Exs. 1212, 1213, 1216, 1219, 1229-1231, 1235, 1236, 1238-1243, 1245,
`1248, 1249, 1253, 1255, 1259, and 1260 Are Properly In The Record For
`Consideration By The Board ................................................................................ 14 
`III. Conclusion ......................................................................................................... 15 
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`ii
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`Case IPR2017-00219
`U.S. Patent No. 7,116,710
`I.
`Introduction
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`Caltech’s motion to exclude is yet another attempt by Caltech to distract
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`from the invalidity of the claims and avoid the Board’s consideration of the merits.
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`First, a motion to exclude is not the appropriate vehicle for objecting to the
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`scope of reply evidence. As the Board has “stated repeatedly”:
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`a motion to exclude is not a vehicle for arguing that Petitioner’s
`arguments and supporting evidence are outside the proper scope of a
`reply. A motion to exclude evidence for the purpose of striking or
`excluding an opponent’s brief and/or evidence that a party believes
`goes beyond what is permitted under 37 CFR § 42.23 is improper. An
`allegation that evidence does not comply with 37 CFR § 42.23 is not a
`sufficient reason under the Federal Rules of Evidence for making an
`objection and requesting exclusion of such evidence.
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`Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01979, Paper No. 62 at 66 (Mar.
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`15, 2017) (internal footnote citing five other cases to this effect omitted.).
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`Caltech’s brief merely rehashes arguments related to the scope of evidence
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`that it already made in its motion for sanctions (paper 49). Even if it were proper
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`for Caltech to raise these arguments again here (and it is not), Caltech’s motion
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`should still be denied because the challenged exhibits were properly submitted in
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`support of the Petition (paper 5) and in response to arguments made by Caltech in
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`its POR (paper 34). Petitioner has raised no new arguments, and instead Caltech
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`continues to mischaracterize legitimate rebuttals of its positions as “out of scope”
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`1
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`Case IPR2017-00219
`U.S. Patent No. 7,116,710
`(apparently out of a hope to avoid addressing their merits).
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`Second, Caltech’s repeated assertions of prejudice are baseless. Caltech has
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`knowingly elected not to use evidentiary tools at its disposal, including choosing
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`not to cross-examine Petitioner’s experts. In addition, the Board has already
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`generously accommodated Caltech by granting it leave to file a sur-reply and raise
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`its allegations that deposition questions exceeded the scope of direct testimony
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`through a motion for sanctions.
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`II. Argument
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`A. Exs. 1244-1249, 1257-1261, 1262, 1264, 1265, and 1268: Caltech’s
`Argument That These Are “New Evidence” For “New Arguments”
`Should Be Rejected
`Caltech argues that portions of the deposition transcripts of Dr.
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`Mitzenmacher (Ex. 1262) and Dr. Divsalar (Ex. 1264) as well as Exs. 1244-1249,
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`1257-1261, 1265, and 1268 should be excluded under 35 CFR §42.23(b) because
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`the evidence “has no relevance to the witnesses’ direct testimony” and because the
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`deposition questions were “beyond the scope of witness’s direct testimony.”1
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`1 Caltech cites Intelligent Bio-Systems, Inc. v. Illumina Cambridge as purported
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`support for its exclusion argument. 821 F.3d 1359, 1370 (Fed. Cir. 2016).
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`However, Bio-Systems Inc. involved an actual shift in the petitioner’s theory of
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`obviousness from using a reference as-is to modifying that reference. Id. at 1366
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`2
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`U.S. Patent No. 7,116,710
`Caltech is mistaken.
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`First, Caltech’s challenge should be rejected because it is an improper
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`attempt to challenge the scope of Petitioner’s evidence. Palo Alto Networks, Inc.,
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`IPR2015-01979, Paper No. 62 at 66 (Mar. 15, 2017).
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`Second, as explained in Petitioner’s Opposition to Patent Owner’s Motion
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`for Sanctions, the questions raised during the cross-examinations of Dr.
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`Mitzenmacher (Ex. 1262) and Dr. Divsalar (Ex. 1264) were properly raised in
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`rebuttal of statements and opinions proffered by Caltech’s experts in declaration
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`testimony and in support of arguments made in the Petition. See Paper 51; Ex.
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`1274 (identifying the relevance for each challenged line of questioning).
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`For the same reasons, as discussed below, the exhibits used to cross-examine
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`and rebut the declaration testimony of Caltech’s experts (including Exs. 1244-
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`1249, 1257-1260, and 1268) as well as Dr. Frey’s declaration regarding these
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`exhibits (Ex. 1265) are also properly in the record. See Vibrant Media, Inc. v.
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`(“[T]he Reply presents new issues by changing the unpatentability rationale from
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`express reliance on Zavgorodny’s deprotecting conditions, to asserting that those
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`conditions would have been obvious to modify.”) (citation omitted). Caltech can
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`identify no analogous situation in the present case because no new arguments and
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`no new theories of invalidity have been presented.
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`3
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`Case IPR2017-00219
`U.S. Patent No. 7,116,710
`General Electric Co., IPR2013-00170, Paper No. 56 at 31-32 (June 26, 2014)
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`(“[T]he mere fact that the rebuttal declaration includes evidence not discussed
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`specifically in the petition is insufficient to establish the impropriety of such
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`evidence, much less inadmissibility under the Federal Rules of Evidence. The very
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`nature of a reply is to respond to the opposition…The need for relying on evidence
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`not previously discussed in the petition may not exist until a certain point has been
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`raised in the patent owner response.”) (citations omitted).
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`For example, Caltech argues that Ex. 1246 “lacks relevance” because “the
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`petition never discusses reasonable expectation of success.” Mot. 2. In fact, the
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`Petition clearly explains that the modification of Divsalar would have been simple,
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`showing that a person of ordinary skill in the art (“POSA”) would have had a
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`reasonable expectation of success. Pet. 37-38. Furthermore, it is irrelevant
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`whether the Petition expressly uses the words “reasonable expectation of success.”
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`Caltech’s POR asserts that “a POSA would have multiple reasons to believe the
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`proposed combination would be ineffective.” POR 45. Dr. Divsalar’s declaration
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`likewise asserts that the proposed change is not a trivial change. Ex. 2031 ¶ 33 (“It
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`would not have been trivial or obvious to a person of ordinary skill to modify [the
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`Divsalar] RA code paper to create IRA codes.”). Petitioner is entitled to respond
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`to these arguments in support of its contention that these modifications would have
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`been simple. Petitioner’s demonstration of the simplicity of such a combination
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`4
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`U.S. Patent No. 7,116,710
`(as originally argued) is not a new argument or theory of invalidity.
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`Caltech similarly argues that Ex. 1268 “must be excluded as it is a
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`completely new and untimely theory.” Mot. 3-4. Caltech is mistaken. Again, the
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`Petition argued that modifying Divsalar would have been simple to implement for
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`a POSA and that a POSA would have understood that doing so would improve
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`performance. Pet. 35-38. Caltech challenged these contentions, and Petitioner was
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`thus entitled to rebuttal by showing that the modification would have been simple
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`and improved performance. See Ex 2031 ¶ 9; 33; Reply 10. No new theories or
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`arguments have been presented, and Petitioner was not required to foresee every
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`baseless argument Caltech might ultimately raise. See Volkswagen Grp. of Am.,
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`Inc. v. Emerachem Holdings, LLC, IPR2014-01555, Paper No. 36 at 5 (Oct. 9,
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`2015) (“[A] petitioner legitimately may respond to arguments made in an
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`opposition….a petitioner does not have to anticipate all possible arguments which
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`a patent owner made present in an opposition on the merits.”).
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`Caltech also argues that Ex. 1268 tests Divsalar’s code in ways not presented
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`in the Petition. Mot. 3. Caltech is mistaken. The Petition explained that it would
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`have been simple to modify Divsalar’s repeater “to make it repeat some bits more
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`than other bits, resulting in an irregular repeater.” Pet. 37-41. Dr. Mitzenmacher
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`argued that a POSA would not “have expected the proposed modification to
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`Divsalar to be successful.” Ex. 2004 ¶ 115-125. Petitioner was entitled to a rebut
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`5
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`U.S. Patent No. 7,116,710
`this argument. Exhibit 1068 does so by showing that modifying Divsalar, as
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`explained in the Petition, was trivial and improves performance.
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`Caltech argues that Exs. 1257 and 1258 “have no relevance to the witnesses’
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`direct testimony.” Mot. 2. This is false. Dr. Divsalar testified that a POSA would
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`have been “deterred” from making the RA code irregular because doing so “would
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`drastically reduce the coding rate.” Ex. 2031 ¶ 36. Exs. 1257 and 1258 show how
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`the coding rate stays the same despite the change and therefore are properly in the
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`record to rebut Dr. Divsalar’s flawed testimony. Reply 12.
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`Caltech argues that Ex. 1261 (a 2005 paper by Dr. Divsalar) “has zero
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`relevance to any issues in this case.” Mot. 3. This is incorrect.2 Dr. Divsalar’s
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`declaration stated that “the irregular repeat accumulate (IRA) codes invented by
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`Dr. Jin, Dr. Khandekar, and Dr. McEliece … are not a subset of the RA codes
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`described in my paper.” Ex. 2031 ¶ 13. In contrast, in 2005 (before he had a
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`2 Evidence is relevant if “it has any tendency to make a fact more or less probable
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`than it would be without the evidence” and “the fact is of consequence in
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`determining the action.” Fed. R. Evid. 401; Apple Inc. v. DSS Tech. Mgmt., Inc.,
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`IPR2015-00369, Paper 40 at 36 (PTAB June 17, 2016) (“the Federal Circuit and
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`the Board have recognized that there is a low threshold for relevancy.”) (citations
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`omitted)
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`6
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`U.S. Patent No. 7,116,710
`reason to advocate for Caltech), Dr. Divsalar published Ex. 1261 in which he
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`agreed that a paper titled “Irregular repeat-accumulate codes” authored by Dr. Jin,
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`Dr. Khandekar, and Dr. McEliece “generalized the notion of RA codes by allowing
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`irregular repetition of the input bits.” Ex. 1261. Ex. 1261 thus impeaches Dr.
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`Divsalar’s declaration with his own prior inconsistent statement. The
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`inconsistency of these two statements demonstrates that Dr. Divsalar is providing a
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`biased opinion regarding the issues in this case. The priority date of the patent is
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`irrelevant to whether Dr. Divsalar’s statements are inconsistent and to whether he
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`is biased. Ultimately, the statement in Ex. 1261 was made before Dr. Divsalar was
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`hired as Caltech’s expert witness, and the statement in his declaration was made
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`after Dr. Divsalar was hired as Caltech’s expert witness. The credibility of
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`Caltech’s expert witness is of consequence in determining this action.
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`Caltech argues that Dr. Frey’s declaration (Ex. 1265) should be excluded
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`because it includes “portions discussing experimental data and attorney created
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`figures.” Mot. 4. But as discussed above, the data figures are properly in the
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`record because they rebut Caltech’s expert’s direct testimony. Therefore, the
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`sections of Dr. Frey’s declaration discussing these exhibits are proper.
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`B.
`Exs. 1244-1249, 1257-1261, 1265, and 1268: Caltech’s Claim To
`Prejudice Should Be Rejected Because (1) The Board Is Well Suited To
`Assign The Proper Weight to Evidence, (2) Caltech Has Had Ample
`Opportunity To Respond, and (3) Caltech Can Still Respond In Its Sur-
`Replies And Oral Hearing
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`7
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`U.S. Patent No. 7,116,710
`Caltech argues that Exs. 1244-1249, 1257-1261, 1265, and 1268 should be
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`excluded as unduly prejudicial. Mot. 4. Caltech does not face any legitimate
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`prejudice, and there is no cause to exclude the challenged exhibits.
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`First, the Board “sitting as a non-jury tribunal, is well positioned to assign
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`appropriate weight to the evidence without the need for formal exclusion.”
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`Samsung Electronics Co., Ltd et al. v. Affinity Labs Of Texas, LLC, IPR2014-
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`00407, Paper No. 48 at 22 (July 20, 2015). Even if the evidence were likely to bias
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`laypersons on a jury (which it is not), the need to exclude such evidence would not
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`apply to experienced administrative judges. As the Board notes in Nichia Corp. v.
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`Emcore Corp., “[t]here is a strong public policy for making all information filed in
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`a non-jury, quasi-judicial administrative proceeding available to the public,
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`especially in an inter partes review which determines the patentability of claims in
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`an issued patent. It is better to have a complete record of the evidence submitted
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`by the parties than to exclude particular pieces.” IPR2012-00005, Paper No. 68 at
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`59 (Feb. 11, 2014).
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`Second, Caltech cannot credibly claim prejudice when it has abstained from
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`using evidentiary tools at its disposal. For example, rather than challenging Dr.
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`Frey’s testimony through cross-examination, Caltech seeks, instead, to exclude his
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`entire declaration (Ex. 1265). Mot. 5-8. There is no basis to exclude Dr. Frey’s
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`declaration when Dr. Frey was available for deposition, and Caltech elected not to
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`8
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`U.S. Patent No. 7,116,710
`cross-examine him. Similarly, Caltech now seeks to exclude the statements of
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`several declarants in connection with the Allerton Conference (which were served
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`on Caltech more than two months before its POR) instead of challenging their
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`opinions in cross-examination or addressing the evidence in its POR. Mot. 9-11.
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`Finally, Caltech has been amply accommodated by the Board, which has
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`granted it leave to file a sur-reply and to challenge the scope of deposition
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`questions through a motion for sanctions. The nature of the IPR proceeding
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`permits Petitioner (which has the burden to establish unpatentability), the last reply
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`prior to the oral hearing. Caltech appears to suggest that it faces prejudice because
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`it will not have the last word (despite having been granted a sur-reply).
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`Nonetheless, Caltech may still address all these issues at oral hearing.
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`For at least the reasons above, Petitioner respectfully submits that Caltech
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`faces no “undue prejudice” and should be denied its motion to exclude the
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`challenged exhibits.
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`C. Exs. 1232-1234 and 1237: Supplemental Information Was Timely
`And Admissible Because It Was Properly Filed In Accordance With A
`Board Order And Supports The Position Taken In The Petition
`Caltech argues that Declarations of Dr. Hajek, Dr. Basar, and Dr. Sreenivas
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`(Exs. 1232-1234) and the letter from Dr. Sreenivas (Ex. 1237) should be excluded
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`for lack of relevance and undue prejudice. Mot. 9-11. Caltech further erroneously
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`argues that these exhibits support “an improper new argument.” Id.
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`9
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`U.S. Patent No. 7,116,710
`Exs. 1232-1234 and 1237 were properly served in response to Caltech’s
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`objections to evidence and submitted in accordance with the Board’s express grant
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`of permission to file supplemental information. Paper 31. The Board previously
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`rejected Caltech’s challenge regarding the submission of these same exhibits
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`(Papers 22 and 31) as well as its motion for rehearing on this issue (Papers 35 and
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`41). Caltech now seeks to re-hash that same issue for a third time. The Board
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`should reject Caltech’s arguments for a third time.
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`Caltech erroneously contends that these exhibits “are cited to support an
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`improper new argument.” Mot. 10 (“[t]he petition claimed that Exhibit 1202 was
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`‘published on or before March 20, 2000’… [Petitioner] changed its position to a
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`publication date of February 16, 2000.”). First, Caltech’s motion mischaracterizes
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`Petitioner’s Reply, which simply states that each of Exs. 1232-1234 “confirms that
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`the published conference proceedings would have shipped to conference attendees
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`on or around February 16, 2000” and taken together with Ex. 1237 “confirms that
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`Frey was publicly available in printed form no later than February 2000.” Reply
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`22 (emphasis added). Second, the Petition argued that Ex. 1202 was published “on
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`or before March 20, 2000.” Mot. 10. Of course, February 2000 is “on or before
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`March 20, 2000” and thus Petitioner has not submitted any new arguments.
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`Furthermore, Caltech’s attempt to antedate the Frey reference shifted the
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`burden of production to Petitioner regarding the priority of Frey. Petitioner was
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`10
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`U.S. Patent No. 7,116,710
`thus entitled to submit evidence in response to Caltech’s arguments. See Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015)
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`(“Dynamic did not have the burden of producing evidence relating to the Raymond
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`provisional application until after National Graphics made its argument regarding
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`reduction to practice. As a result, it was not necessary for Dynamic to prove in its
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`petition that Raymond was entitled to the filing date of its provisional
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`application.”); id. at 1379 (“The burden of production may entail ‘producing
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`additional evidence and presenting persuasive argument based on new evidence or
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`evidence already of record.’”) (citation omitted). Caltech further erroneously
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`contends that Ex. 1238 is “inconsistent” with Exs. 1232-1234 and 1237. However,
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`the February 21, 2000 bill of lading (Ex. 1238) only reinforces that “the conference
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`proceedings would have shipped to conference attendees on or around February
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`16, 2000” (Reply 22) and that “Frey was publicly available in printed form no later
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`than February 2000” (Reply 22) which is, as noted above, “on or before March 20,
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`2000” (Pet. Table of Exhibits). Again, no new arguments have been presented.
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`Caltech further argues that it “has no meaningful opportunity” to address this
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`evidence. Mot. 12. This is false. Exs. 1232-1234, 1237 were promptly served on
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`Patent Owner on July 14, 2017 in response to its objections, more than two months
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`before its POR. Paper 21 at 2, 11. Thus, Caltech had ample opportunity to
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`consider these exhibits, and to depose the declarants, prior to filing its POR.
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`11
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`U.S. Patent No. 7,116,710
`Caltech cannot credibly argue that it faces prejudice now when it chose not to
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`depose the declarants and also chose not to address these exhibits in its POR.
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`D. Caltech’s Insinuations Regarding The Veracity Of Dr. Davis’s
`Unavailability Are Baseless And Rebutted By Sworn Testimony
`In its efforts to distract from the merits of this case, Caltech resorts to a
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`baseless ad hominem attack on Dr. Davis’s integrity. Mot. 5-8.
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`As Dr. Davis explains in sworn testimony (Ex. 1273),3 he received the
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`Fulbright Global Award. The Fulbright is a prestigious academic exchange
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`program overseen by the U.S. State Department that is “designed to expand and
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`strengthen relationships between the people of the United States and citizens of
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`other nations” and requires participants to “give public talks, mentor students, and
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`otherwise engage with the host community, in addition to their primary research or
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`teaching activities.”4 If Caltech disputes the authenticity of Dr. Davis’s award and
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`corresponding obligations, it was free to cross-examine Dr. Davis on how his time
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`was spent during the preparation of the reply briefs.
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`E. Caltech Chose Not To Depose Dr. Frey And Faces No Prejudice
`Because Dr. Frey Agreed With Dr. Davis’s Testimony, Considered
`Caltech’s Criticisms, And Stood Available For Cross-Examination
`Caltech argues that Dr. Frey’s declaration (Ex. 1265) should be excluded
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`3 Caltech did not object to Petitioner’s request to file this Exhibit (See Paper 53).
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`4 https://awards.cies.org/content/fulbright-global-scholar-award. Ex. 1275.
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`12
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`because Caltech had no “meaningful opportunity” to cross-examine Dr. Frey and
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`that it was prejudiced “because Dr. Frey has not addressed or considered Dr.
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`Davis’s cross-examination testimony.” Mot. 6. Caltech’s arguments are baseless.
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`First, Dr. Frey states unequivocally that he has “reviewed the Petition and
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`declaration of Dr. Davis and agree[s] with their explanation of why the instituted
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`claims are invalid.” Ex. 1265 ¶ 16. Caltech claims that Dr. Frey somehow did not
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`consider its criticism of Dr. Davis. But Dr. Frey’s declaration specifically states
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`that he reviewed Caltech’s POR, which purports to identify Dr. Davis’s supposed
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`admissions, and this did not alter Dr. Frey’s opinion. Id. at ¶ 12.
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`Caltech was free to depose Dr. Frey regarding the cross-examination
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`transcript of Dr. Davis and the arguments it put forth regarding Dr. Davis in its
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`POR, but chose not to do so. Caltech abstained from using the evidentiary tools
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`available to it, and cannot now claim that it is prejudiced by the evidence that it
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`otherwise chose not to challenge. Additionally, any alleged prejudice from a
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`change of experts has already been specifically addressed by the Board granting
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`Caltech a sur-reply. Therefore, Caltech was not prejudiced.
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`F.
`There Is No Cause To Exclude Ex. 1267 Because The Board Can
`Assign The Appropriate Weight To It
`Caltech argues that Ex. 1267 (a decision from Judge Pfaelzer in the case
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`California Institute of Technology v. Hughes Communications Inc., No. 2:13-cv-
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`07245-MRPJEM, 2015 WL 11089495 (C.D. Cal. May 5, 2015)) should be
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`13
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`excluded. Mot. 13. Ex. 1267 is relevant to rebutting Caltech’s arguments
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`regarding secondary considerations, which rest entirely on the incorrect premise
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`that the DVB-S2 standard practices the claims. Reply 14. The Board is well suited
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`to assign the proper weight to evidence and there is no cause to exclude Ex. 1267.
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`G. Exs. 1212, 1213, 1216, 1219, 1229-1231, 1235, 1236, 1238-1243,
`1245, 1248, 1249, 1253, 1255, 1259, and 1260 Are Properly In The
`Record For Consideration By The Board
`Caltech moves to exclude Exs. 1212, 1213, 1216, 1219, 1229-1231, 1235,
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`1236, 1238-1243, 1245, 1248, 1249, 1253, 1255, 1259, and 1260 because “[t]hese
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`exhibits are not cited in the petition or Petitioner’s reply and are therefore not
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`relevant to any instituted grounds of review.” Mot. 14. Exs. 1212, 1229-1231,
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`1235, 1236, and 1238-1243 are all relevant to the publication dates of the Frey and
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`Divsalar references.5 As the Board noted, “Divsalar is relevant to a claim in which
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`the trial has been instituted, and therefore, so is evidence directed to its status as
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`prior art…we wish to consider the totality of evidence concerning the publication
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`date.” Paper 31 at 3. Similarly, the Board noted that “evidence directed to Frey’s
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`5 In fact, the Board specifically noted that “Petitioner provides sufficient evidence
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`that the Exs. 1027-1041 as supplemental information are relevant to Petitioner’s
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`contentions.” Paper 32 at 4. Exs. 1027-1041 correspond to Exs. 1229-1243 in
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`IPR2017-00219.
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`14
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`status as prior art is relevant.” Id. Ex. 1253 was referenced by name in footnote 5
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`of Petitioner’s Reply and appears in cited portions of the Jin Transcript. Reply 25;
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`Ex. 1263, 98:16-106:13. Ex. 1255 was also discussed in the Jin Transcript. Ex.
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`1263, 206:25-211:10.
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`Additionally, Exs. 1213, 1216, 1219, 1245, 1248-1249, 1259, and 1260 were
`
`originally included as part of declarations and transcripts in this case and Petitioner
`
`submits that they should remain in order to maintain a complete record. Exhibit
`
`1213, 1216 and 12196 were discussed in Dr. Davis’s declaration (Ex. 1206, ¶¶71-
`
`73, 101, 118, 137, 265, and 285). Exs. 1245 and 1248-1249 were discussed in the
`
`deposition of Dr. Mitzenmacher (Ex. 1262). Exs. 1259 and 1260 were discussed in
`
`the deposition of Dr. Divsalar (Ex. 1264). Therefore, these exhibits are properly
`
`on the record.
`
`III. Conclusion
`
`For at least the reasons discussed above, Caltech’s motion to exclude should
`
`be denied in its entirety.
`
`Respectfully submitted,
`
`Date: March 19, 2018
`
`
`
`/Richard Goldenberg/
`
`
`6 These exhibits correspond to 1013, 1016, and 1019 in IPR2017-00210. The
`
`Richard Goldenberg (Reg. No. 38,895)
`
`declaration cites to the IPR2017-00210 exhibits.
`
`15
`
`

`

`Case IPR2017-00219
`U.S. Patent No. 7,116,710
`
`Exhibit
`
`1201
`
`1202
`
`1203
`
`1204
`
`1205
`
`1206
`
`1207
`
`1208
`
`LIST OF EXHIBITS
`
`Description
`
`U.S. Patent 7,116,710
`
`Frey, B. J. and MacKay, D. J. C., “Irregular Turbocodes,” Proc. 37th
`Allerton Conf. on Comm., Control and Computing, Monticello,
`Illinois, published on or before March 20, 2000
`
`D. Divsalar, H. Jin, and R. J. McEliece, “Coding theorems for
`"turbo-like" codes,” Proc. 36th Allerton Conf. on Comm., Control
`and Computing, Allerton, Illinois, pp. 201-10, March, 1999
`
`Luby, M. et al., “Analysis of Low Density Codes and Improved
`Designs Using Irregular Graphs,” STOC ’98, pp. 249-59, published
`in 1998
`
`Pfister et al., “The Serial Concatenation of Rate-1 Codes Through
`Uniform Random Interleavers” (Exhibit 1 to the Siegel Declaration)
`
`Declaration of Professor James Davis, Ph.D. (“Davis Declaration”)
`
`Gallager, R., Low-Density Parity-Check Codes, Monograph, M.I.T.
`Press, 1963
`
`Berrou et al., “Near Shannon Limit Error-Correcting Coding and
`Decoding: Turbo Codes," ICC ’93, Technical Program, Conference
`Record 1064, Geneva 1993
`
`1209 MacKay, D. J. C, and Neal, R. M. “Near Shannon Limit
`Performance of Low Density Parity Check Codes,” Electronics
`Letters, vol. 32, pp. 1645-46, 1996
`
`1210
`
`Benedetto, S. et al., Serial Concatenation of Block and
`Convolutional Codes, 32.10 Electronics Letters 887-8, 1996
`
`1211
`
`Luby, M. et al., “Practical Loss-Resilient Codes,” STOC ’97, 1997
`
`16
`
`

`

`Case IPR2017-00219
`U.S. Patent No. 7,116,710
`f1212 Declaration of Robin Fradenburgh Concerning the “Proceedings,
`36th Allerton Conference on Communications, Control, and
`Computing” Reference
`
`1213
`
`1214
`
`1215
`
`Frey, B. J. and MacKay, D. J. C., “Irregular Turbo-Like Codes”
`presented at the 1999 Allerton Conference on Communications,
`Control, and Computing
`
`Prosecution History of the ’710 Patent, Response Dated May 5, 2005
`
`Table of Contents of Proceedings of the 37th Allerton Conference on
`Communication, Control and Computing from September 22-24,
`1999
`
`1216
`
`Joint Claim Construction Statement (Case No. 2:13-cv-07245, Dkt.
`No. 47)
`
`1217
`
`Expert Report of Dr. Brendan Frey (Case No. 2:13-cv-07245)
`
`1218
`
`1219
`
`1220
`
`1221
`
`Aamod Khandekar, “Graph-based Codes and Iterative Decoding,”
`Thesis submitted June 10, 2002
`
`Richardson, Shokrollahi, and Urbanke, “Design of Provably Good
`Low-Density Parity Check Codes”
`
`Declaration of Paul H. Siegel
`
`U.S. Provisional Application No. 60/205,095
`
`1222 Mitzenmacher, M. “Studying balanced allocations with differential
`equations,” Combinatorics, Probability & Computing 8.5, pp. 473-
`482, September 1999
`
`1223
`
`1224
`
`Barg et al., “Linear-time Binary Codes Correcting Localized
`Structures,” IEEE Transactions on Information Theory 45.7, pp.
`2545-2550, November 1999
`
`Shokrollahi, “New Sequences of Linear Time Erasure Codes
`Approaching the Channel Capacity,” Applied Algebra, Algebraic
`Algorithms and Error-Correcting Codes, pp. 65-76, 1999
`
`17
`
`

`

`1226
`
`1227
`
`1228
`
`1229
`
`1230
`1231
`
`1232
`
`1233
`
`1234
`
`Case IPR2017-00219
`U.S. Patent No. 7,116,710
`1225
`Declaration Of Richard Goldenberg In Support Of Unopposed
`Motions To Submit Replacement Exhibits Pursuant To 37 C.F.R. §
`42.104(c)
`Declaration Of Jonathan Barbee In Support Of Unopposed Motions
`To Submit Replacement Exhibits Pursuant To 37 C.F.R. § 42.104(c)
`Declaration of James M. Dowd in Support of Motion for Admission
`Pro Hac Vice
`Declaration of Mark D. Selwyn in Support of Motion for Admission
`Pro Hac Vice
`OCLC Record of Proceedings of the 36th Allerton Conference on
`Communication, Control and Computing, indicating the 36th
`Allerton Conference Proceeding was published by June 3, 1999
`Declaration of Library Expert Theodore A. Fons
`Affidavit of Pamela Stansbury (an employee in the Original
`Cataloging Unit of the Cornell University Library)
`Affidavit from Dr. Bruce Hajek (a six-time co-chair of the Allerton
`Conference, including the 36th Allerton Conference and the 37th
`Allerton Conference)
`Affidavit from Dr. Tamer Basar (a six-time co-chair of the Allerton
`Conference, including the 36th Allerton Conference)
`Affidavit from Dr. Ramavarapu Sreenivas (a two-time co-chair of
`the Allerton Conference, including the 37th Allerton Conference)
`Declaration of Dr. Brendan Frey
`A Screen Capture of an Archived Version of the Website for the 37th
`Annual Allerton Conference, dated September 9, 1999
`A Purchase Order for the 37th Allerton Conference Proceedings,
`dated December 8, 1999
`A Bill of Lading for the 37th Annual Allerton Conference
`Proceedings, with a ship date of February 21, 2000
`An Excerpt from the Deposition of Dr. Steven Wicker (Case No.
`2:13-cv-07245)
`An Excerpt from the Deposition of Dr. Rüdiger Urbanke (Case No.
`2:13-cv-07245)
`
`1235
`1236
`
`1237
`
`1238
`
`1239
`
`1240
`
`18
`
`

`

`1243
`
`1244
`
`Case IPR2017-00219
`U.S. Patent No. 7,116,710
`1241
`Jafar A. Alzubi, Omar A. Alzubi, and Thomas M. Chen, Forward
`Error Correction Based on Algebraic-Geometric Theory (2014)
`1242 MARC Record of Proceedings of the 37th Allerton Conference on
`Communication, Control and Computing, indicating the 37th
`Allerton Conference Proceeding was published in 1999
`BEACON Record of Proceedings of the 37th Allerton Conference on
`Communication, Control and Computing, indicating the 37th
`Allerton Conference Proceeding was published in 1999
`Tanner Graph for Code Described by Fig. 2 of U.S. Patent No.
`7,116,710
`Block Diagram of Accumulator
`Tanner Graph for Code Described by Divsalar
`Tanner Graph for Code Described by Luby98 Code 14
`Tanner Graph for Code Described by Ping
`Tanner Graph for Code Described by MacKay Profile 93y
`Confidential IRA.cpp with metadata
`Confidential IRA.h with metadata
`Confidential IRAsimu.cpp with metadata
`Confidential IRAsimu.cpp with metadata